Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The Amendment filed February 10, 2026 has been entered. The amendments to the claims have overcome the rejection under 112(b) previously set forth in the Non-Final Rejection mailed September 10, 2025. Claims 1-4 and 7-30 remain pending in the application.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2-4 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 2, it is unclear if the organosilane that is a polysiloxane precursor is further limiting “the reactive silicone polymer” or if the ceramic film-forming agent comprises a mixture of a reactive silicone polymer and the organosilane. For examination purposes it has been interpreted as the organosilane that is a polysiloxane precursor is a further limitation of the reactive silicone polymer. Appropriate correction is required.
Claim 3 recites the limitation "wherein organosilane" in line 1. There is insufficient antecedent basis for this limitation in the claim. It appears the claim should be dependent upon claim 2 and has been interpreted as such. For proper antecedent basis the claim should recite “the organosilane” or “said organosilane”.
Claim 4 is rejected due to dependency on claim 3.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 2, 7-10, 13-16 and 23-30 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/167626 (Kutchko et al.) in view of US 2024/0199173 (Gaier et al.).
Regarding claim 1, Kutchko discloses a coating composition comprising graphene (see paragraph 330), a ceramic film-forming agent (see paragraphs 134 and 327), a UV-absorber (see paragraphs 273-274), and a hindered amine light stabilizer (HALS) (see paragraph 386) in a liquid (see paragraph 104), wherein the graphene comprises graphene nanoplatelets (GNPs) (see paragraph 331-332, where it is discussed that the graphene has a structure comprising one or more stacked layers of carbon particles which may be flakes; paragraph 0142 of Gaier defines graphene nanoplatelets as multi-layered graphene flakes). Kutchko also discloses that the coating further comprises a UV-absorber may have a structure based on benzophenone (see paragraphs 273-274, paragraph 386), and the ceramic film-forming agent comprises a reactive silicone polymer (see paragraphs 400-402).
Kutchko does not disclose that the graphene has an aspect ratio between 2000 and 15000; however, Gaier teaches that when providing a coating with graphene having a flake size of 1 to 100 micrometers (1000-100,000 nm) and a thickness of 30 nm, yielding an aspect ratio of 33 to 3333 (1000nm/30nm=33 to 100,000nm/30nm=3333), the flakes can act a physical and/or chemical barrier against corrosion (see paragraph 0145). It would have been obvious to one having ordinary skill in the art before the effective filing date to provide graphene flakes of with an aspect ratio from 33 to 3333 in the Kutchko coating in order to create a physical and/or chemical barrier against corrosion, as taught by Gaier. An aspect ratio of 33 to 3333 overlaps the claimed range of 2000 to 15000. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 2, Kutchko also discloses that the ceramic film-forming agent is an organosilane that is a polysiloxane precursor (see paragraphs 279-280).
Regarding claim 7, Kutchko also discloses that the UV-absorber is present in an amount of 0.5-5 wt% of the coating composition (see paragraphs 273-275), which overlaps the claimed range of 0.01-2 wt%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 8, Kutchko also discloses that the graphene comprises GNPs (see paragraph 331-332, where it is discussed that the graphene has a structure comprising one or more stacked layers of carbon particles which may be flakes; paragraph 0142 of Gaier defines graphene nanoplatelets as multi-layered graphene flakes).
Regarding claim 9, Kutchko also discloses that the graphene has an average mass median diameter of 100-500 nm (see paragraph 332), which overlaps the claimed range of 200-20,000 nm. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 10, Kutchko also discloses that the graphene is present in an amount of 2-50 wt% of the coating composition (see paragraph 336), which overlaps the claimed range of 0.001-5 wt%.
Regarding claim 13, Kutchko also discloses that the coating composition may further comprise an additive such as a blue colorant (see paragraph 387-388), or titanium dioxide (see paragraph 296).
Regarding claim 14, Kutchko also discloses that the coating composition comprises the blue colorant (see paragraph 387-388).
Regarding claim 15, Kutchko also discloses that the composition comprises titanium dioxide (see paragraph 296).
Regarding claim 16, Kutchko also discloses that the coating composition may be a dispersion of graphene in a single-phase (one-part) liquid, the single-phase liquid comprising an organic solvent system (see paragraphs 110, 119-122 and 320-330).
Regarding claim 23, Kutchko also discusses providing a first component and a second component that form a coreactive sealant composition (see paragraph 4), meeting the dictionary definition of a kit of “a set of articles or equipment needed for a specific purpose”.
Regarding claim 24, while Kutchko does not state that instructions for use are provided, it would have been obvious to one having ordinary skill in the art to provide instructions to a user to explain how to use the first component and second component to form a coreactive sealant.
Regarding claim 25, Kutchko also discloses that the coating is used to seal surfaces of automotive vehicles (see paragraphs 463-465). While it is not specifically stated that it is applied to automobile body surface made of carbon-fiber, it would have been obvious to one having ordinary skill in the art before the effective filing date that the Kutchko coating composition could be applied to any automobile body surface where a sealant is desired to protect a surface from an environment, regardless of the material it is made from.
Regarding claim 26, Kutchko also discloses that the coating is used to seal surfaces of automotive vehicles (see paragraphs 463-465). While it is not specifically stated that the coating composition is applied to a vinyl automotive body wrap surface it would have been obvious to one having ordinary skill in the art before the effective filing date that the Kutchko coating composition could be applied to any automobile body surface where a sealant is desired to protect a surface from an environment, regardless of the material it is made from.
Regarding claim 27, Kutchko also discloses a method of surface treating a vehicle body comprising applying a layer of the coating composition to a surface of the vehicle body to provide a coating (see paragraphs 463-465).
Regarding claim 28, Kutchko also discloses that the vehicle is selected from an automobile, a motorcycle, a watercraft, a bicycle, a railed vehicle, or a spacecraft (see paragraph 463 and 477).
Regarding claim 29, Kutchko also discloses that the vehicle is an automobile (see paragraph 463).
Regarding claim 30, Kutchko also discloses that the composition is applied via spraying, wiping (roller coating, spreading) or brushing (see paragraph 104).
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/167626 (Kutchko et al.) in view of US 2024/0199173 (Gaier et al.) further in view of US 6,994,890 (Ohlhausen et al.).
Kutchko in view of Gaier discloses a coating composition as discussed above.
Regarding claim 3, Kutchko does not state that the organosilane comprises an organosilane quaternary ammonium compound; however, Ohlhausen in the analogous endeavor of coatings teaches using organosilanes that are organosilane quaternary ammonium compounds helps to improve water and soil repellency and residual antimicrobial activity (see Abstract, column 3 line 49 through column 4, line 50). It would have been obvious to one having ordinary skill in the art before the effective filing date to use an organosilane that is an organosilane quaternary ammonium compound as the polysiloxane precursor of Kutchko, in order to improve water and soil repellency and residual antimicrobial activity as taught by Ohlhausen.
Regarding claim 4, Kutchko in view of Ohlhausen also discloses that the organosilane quaternary ammonium compound has a formula as recited in the claim (see 3 line 49 through column 4, line 50).
Claims 1-3, 7, 8, 10-13, 15 and 23-30 are rejected under 35 U.S.C. 103 as being unpatentable over US 2024/0199173 (Gaier et al.) in view of Tinuvin® 99-2 Technical Data Sheet (Tinuvin TDS).
Regarding claim 1, Gaier discloses a coating composition comprising graphene (see paragraphs 0002, 0142), a ceramic film-forming agent (see paragraph 0019), wherein the graphene comprises graphene nanoplatelets (see paragraph 0145), and the ceramic-film forming agent comprises a reactive silicone polymer (see paragraph 0017). Gaier also discloses that the coating composition further comprises a UV-absorber (see paragraphs 0168-0170). The Tinuvin® 99-2 UV absorber that is used by Gaier has a structure based on benzotriazole (see paragraph 0170 and Tinuvin TDS page 1). Gaier also discloses that the graphene nanoplatelets have a flake size of 1 to 100 micrometers (1000-100,000 nm) and a thickness of 30 nm (see paragraph 0145), which yields an aspect ratio of 33 to 3333 (1000nm/30nm=33 to 100,000nm/30nm=3333), which overlaps the claimed range of 2000 to 15000. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Gaier does not state that the coating includes a hindered amine light stabilizer (HALS) in a liquid; however, at paragraphs 0168-0170 it is disclosed that a UV absorber such as Tinuvin® 99-2 may be used in the coating composition. Page 2 of the Tinuvin TDS states that “the performance of Tinuvin 99-2 is enhanced when it is used in combination with a HALS stabilizer such as Tinuvin 292, Tinuvin 249 or Tinuvin 123”. It would have been obvious to one having ordinary skill in the art before the effective filing date to include a hindered amine light stabilizer (HALS) in the Gaier coating composition in order to enhance the performance of the Tinuvin® 99-2 UV absorber that is included in the coating, as taught by Tinuvin TDS.
Regarding claim 2, Gaier also discloses that the ceramic film-forming agent is an organosilane that is a polysiloxane precursor (see paragraphs 0071, 0748, and Table pages 97-98).
Regarding claim 3, Gaier also discloses that the organosilane comprises an organosilane quaternary ammonium compound (see paragraph 0748, and Table pages 97-98).
Regarding claim 7, Gaier also discloses that the UV-absorber is present in an amount of 0.5-5 wt% (see paragraphs 0170), based on the total weight of Part A of the composition. Paragraph 0059 states that generally, total wt. percentages are about 1.5 times lower than that of Part A wt. %, yielding a range of 0.33-3.33 wt% (0.5/1.5 = 0.33, 5/1.5 = 3.33 wt%), which overlaps the claimed range of about 0.01-2 wt%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 8, Gaier also discloses that the graphene comprises GNPs (see paragraph 0145).
Regarding claim 10, Gaier also discloses that the graphene is present in an amount from 0.01-2 wt% (see paragraphs 0145 and 0148), which overlaps the claimed range of 0.001-5 wt%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 11, Gaier in view of Tinuvin TDS also discloses that the HALS is present in an amount of 0.5-2.0 wt% (see page 2 Tinuvin TDS), which is within the claimed range of 0.05-5 wt%.
Regarding claim 12, Gaier in view of Tinuvin TDS also discloses that the graphene and HALS are present in a weight ratio of 1:50 to about 1:1 (if graphene is present in an amount from 0.01-2 wt% and HALS is present in an amount from 0.5-2.0 wt%), which is within the claimed range of 1:5000 to about 100:1.
Regarding claim 13, Gaier also discloses that the coating composition further comprises titanium dioxide (see paragraph 0065) or a dispersant (see paragraph 0032).
Regarding claim 15, Gaier also discloses that the coating composition further comprises titanium dioxide (see paragraph 0065).
Regarding claim 23, Gaier also discloses a kit for coating a surface comprising the composition of claim 1 (see paragraph 0201).
Regarding claim 24, while Gaier does not state that instructions for use are provided, it would have been obvious to one having ordinary skill in the art to provide instructions to a user to explain how to use the composition to form a cured coating.
Regarding claim 25, Gaier also discloses that the substrate the coating composition is applied to may be a carbon-fiber automobile body surface (see paragraphs 0202-0203).
Regarding claim 26, Gaier also discloses that the coating is used to coat surfaces of automotive vehicles (see paragraphs 463-465). While it is not specifically stated that the coating composition is applied to a vinyl automotive body wrap surface it would have been obvious to one having ordinary skill in the art before the effective filing date that the coating composition could be applied to any automobile body surface where a coating is desired to protect a surface from an environment, regardless of the material it is made from.
Regarding claim 27, Gaier also discloses a method of treating an vehicle body comprising applying a layer of the coating composition of claim 1 to a surface of the vehicle body to provide a coating (see paragraphs 0202-0203).
Regarding claim 28, Gaier also discloses that the vehicle may be an automobile or a watercraft (see paragraph 0203).
Regarding claim 29, Gaier also discloses that the vehicle is an automobile (see paragraph 0203).
Regarding claim 30, Gaier also discloses that the composition is applied by spraying or brushing (see paragraph 0676).
Claims 1, 2, 8 and 13-22 are rejected under 35 U.S.C. 103 as being unpatentable over US 2023/0086610 (Cooper et al.) in view of US 2024/0199173 (Gaier et al.) further in view of US 5,260,135 (Corrigan et al.) further in view of US 2021/0079256 (Iseda et al.).
Regarding claim 1, Cooper discloses a coating composition comprising graphene in a liquid (see paragraph 0071), a ceramic film-forming agent (see paragraphs 0004-0005), a UV-absorber (see paragraph 0081), a light stabilizer (see paragraph 0081), and the ceramic film-forming agent comprises a reactive silicone polymer (organopolysiloxane) (see paragraphs 0004-0005, 0009).
Cooper does not disclose that the graphene comprises graphene nanoplatelets; however, Gaier in the analogous endeavor of coatings, teaches that using graphene nanoplatelets (GNPs) as a filler can impart improved mechanical strength and/or bending strength of coatings (see paragraphs 0144-0145). It would have been obvious to one having ordinary skill in the art before the effective filing date to use GNPs as the graphene source for the Cooper coating, in order to improve the mechanical strength and/or bending strength of the coating, as taught by Gaier. Gaier also discloses that when providing a coating with graphene having a flake size of 1 to 100 micrometers (1000-100,000 nm) and a thickness of 30 nm, yielding an aspect ratio of 33 to 3333 (1000nm/30nm=33 to 100,000nm/30nm=3333), the flakes can act a physical and/or chemical barrier against corrosion (see paragraph 0145). It would have been obvious to one having ordinary skill in the art before the effective filing date to provide graphene flakes of with an aspect ratio from 33 to 3333 in the Cooper coating in order to create a physical and/or chemical barrier against corrosion, as taught by Gaier. An aspect ratio of 33 to 3333 overlaps the claimed range of 2000 to 15000. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Cooper also does not state that the light stabilizer is a hindered amine light stabilizer (HALS) in a liquid; however, in the analogous field of coatings, Corrigan teaches that using hindered amine light stabilizers help to reduce photodegradation which can lead to delamination (see column 2, lines 30-40). It would have been obvious to one having ordinary skill in the art before the effective filing date to use a hindered amine light stabilizer as the light stabilizer in the Cooper coating, in order to reduce photodegradation/delamination as taught by Corrigan.
Cooper does not disclose that the UV-absorber has a structure based on triazine, benzophenone or benzotriazole; however, in the analogous field of coatings, Iseda teaches that triazine, benzophenone and benzotriazole are known UV-absorbers that have a high UV light absorption ability (see paragraph 0206). It would have been obvious to one having ordinary skill in the art before the effective filing date to use a triazine, benzophenone, or benzotriazole as the UV-absorber in the Cooper coating, in order to achieve high UV absorption ability.
Regarding claim 2, Cooper also discloses that the ceramic film-forming agent is an organosilane that is a polysiloxane precursor (see paragraphs 0008 and 0050).
Regarding claim 8, as discussed above, Cooper in view of Gaier also discloses that the graphene comprises GNPs.
Regarding claim 13, Cooper also discloses that an additive of a surfactant, titanium dioxide, or a colorant may be included (see paragraphs 0073-0074 and 0081).
Regarding claim 14, Cooper also discloses that a colorant may be included in the coating (see paragraph 0081). While Cooper does not specifically state that the colorant is blue, it would have been obvious to one having ordinary skill in the art before the effective filing date to select any color, depending on the desired appearance of the coating.
Regarding claim 15, Cooper also discloses that an additive of titanium dioxide may be included (see paragraph 0073-0074).
Regarding claim 16, Cooper also discloses that the coating composition is a dispersion of filler (graphene) in a single-phase liquid, the single-phase liquid comprising an aqueous solvent system or an organic solvent system (see paragraphs 0082-0086).
Regarding claim 17, Cooper also discloses that the composting composition is a dispersion of graphene in a multi-phase system of two or more immiscible liquids, the two or more liquids comprising an aqueous phase and an organic phase (see paragraphs 0085 where it is discussed that the carrier vehicle may comprise a polar organic solvent that is compatible with water, which suggests a mixed-solvent system; see also paragraph 0082).
Regarding claims 18, Cooper also discloses that the carrier vehicle is generally a combination of a solvent and an oil (see paragraph 0082), which would result in an emulsion.
Regarding claims 19 and 20, while Cooper does not state that the composition is an oil-in-water emulsion or a water-in-oil emulsion, it would have been obvious to one having ordinary skill in the art to vary the ratio of water to oil depending on the desired final formulation of the coating composition.
Regarding claim 21, Cooper also discloses that the organic solvent system may be a branched C8-20 hydrocarbon (see paragraph 0084).
Regarding claim 22, while Cooper does not state that the aqueous phase comprises deionized water, it would have been obvious to one having ordinary skill in the art to use deionized water in order to avoid introducing ions into the formulation.
Response to Arguments
In light of the amendments, the rejections under 35 USC 102 by Kutchko have been withdrawn. New ground of rejection under 35 USC 103 is set forth above.
Applicant’s arguments with respect to Zhong reference have been considered and the rejections have been withdrawn. Specifically, the examiner agrees the reference does not disclose a reactive silicone polymer.
Applicant also argues that Gaier in view of Tinuvin TDS does not disclose graphene having an aspect ratio of 2000 to 15000, and does not disclose that the ceramic film-forming agent comprises a reactive silicone polymer. As discussed above, Gaier discloses that the graphene nanoplatelets have a flake size of 1 to 100 micrometers (1000-100,000 nm) and a thickness of 30 nm (see paragraph 0145), which yields an aspect ratio of 33 to 3333 (1000nm/30nm=33 to 100,000nm/30nm=3333), which overlaps the claimed range of 2000 to 15000. At paragraph 0017, Gaier discloses a reactive silicone polymer.
Applicant’s arguments with respect to Liu reference have been considered and the rejections have been withdrawn. Specifically, the examiner agrees Liu does not disclose a reactive silicone polymer.
Applicant also argues that the Cooper reference does not motivate a person of ordinary skill in the art to specifically select graphene nanoplatelets. While graphene is listed amongst other fillers, the motivation to select graphene is provided by the Gaier reference as discussed above, which teaches that using graphene nanoplatelets (GNPs) as a filler can impart improved mechanical strength and/or bending strength of coatings (see paragraphs 0144-0145). Also discussed above, Gaier teaches that graphene nanoplatelets having an aspect ratio of 33 to 3333 create a physical and/or chemical barrier against corrosion.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WENDY L BOSS whose telephone number is (571)272-7466. The examiner can normally be reached 8:30-6:30.
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/WENDY L BOSS/Examiner, Art Unit 1749
/ALICIA J WEYDEMEYER/Primary Examiner, Art Unit 1781
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