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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/17/26 has been entered.
Claims 1-2, and 4-13 are pending examination, claim 3 was canceled.
Claim Rejections - 35 USC § 112
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.
Claims 2, 10, and 13 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.
The term “high speed” in claims 2, 10, and 13 is a relative term which renders the claim indefinite. The term “high speed” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The claim does not establish a particular feed, pressure, flow, scan speed etc ( such as greater than 1 slm, 5 slm, 40 slm, 5 psi, 10 psi, 25 psi, 1 g/ min, 2 g/min, 10 g/m,, 10 mm/s, 50mm/s, 100mm/s, etc?) threshold to delineate what spraying is or is not within the scope of the claims. For purposes of examination “high speed” will be interpreted as at least inclusive of any such scenario.
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.
Claim(s) 1-2, 4-9, and 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mazany et al (US 2007/0154721; provided in 2/29/24 IDS; hereafter Mazany) in view of Andrus et al (US 5,153,070; hereafter Andrus).
Claim 1: Mazany teaches a method for protecting a carbon/carbon composite material part from oxidation (see, for example, abstract), the method comprising:
applying onto at least a portion of an external surface of the part an impregnation composition comprising mono-aluminum phosphate (MALP) (see, for example, pretreatment with composition comprising MALP (see, for example, abstract, [0008-0010], [0088], [0098], [0101-0104]);
depositing, after application of the impregnation composition, onto at least a portion of the external surface of the part an oxidation-resistant glass composition (at least on phosphate glass) (see, for example, abstract, [0031], [0065]);
and performing an impregnation heat treatment in order to soften or melt the deposited composition, to allow the impregnation of the internal porosity of the part by the composition thus softened or melted, and to form an oxidation-resistant glass in the internal porosity of the part (see, for example, abstract, figures, [0018], [0068], [0076])
Mazany has taught wherein deposition of the impregnation composition can be achieved by painting, dipping, spraying or other application methods, but does not explicitly teach dry depositing solid oxidation-resisting glass composition (see, for example, [0065]). Andrus teaches a method of for protecting a carbon/ carbon composite material part from oxidation, further with oxidation -resistant glass compositions (See, for example, abstract, col 1 lines 1-25, and col 3 lines 15-28). Andrus further teaches wherein such coatings can predictably be applied by mixing the glass with a liquid medium and drying, or preferably can be performed by electrostatic spraying wherein dry glass powder is sprayed with a high degree of uniformity onto the surface of the selected substrate; and then subsequently heated to allow the glass composition to soften and flow (See, for example, col 5 line25 -col 6 line 14). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated dry depositing the solid oxidation-resisting glass composition as such a mode is a well known and predictable alternative to wet deposition methods (Where two known alternatives are interchangeable for a desired function, an express suggestion to substitute one for the other is not needed to render a substitution obvious. In re Fout, 675 F.2d 297,301 (CCPA 1982); In re Siebentritt, 372 F.2d 566, 568 (CCPA 1967))); and / or since dry depositing via electrostatic spraying has been demonstrated to provide for enhanced uniformity of deposition.
Mazany further teaches a preliminary heat treatment step at a temperature comprised between about 200-900oC, or about 400oC to 850oC, carried out after the impregnation composition application step and before the solid composition deposition step (See, for example, [0089]). Although such a range is not explicitly between 680° C. and 740° C., it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a temperature within the claimed range since 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, 191USPQ 90 (CCPA 1976).
Claim 2: Mazany in view of Andrus teach the method of claim 1 above, and Andrus has further taught wherein the dry deposition of the solid composition is carried out by electrostatic spraying (see, for example, col 5 line25 -col 6 line 14).
Claims 4-5: Mazany in view of Andrus teach the method of claim 1 above, and Mazany further teaches after the impregnation / second impregnation heat treatment step: dry depositing onto at least a portion of the external surface of the part a second / third solid oxidation-resistant glass composition, identical or different to the solid composition; then performing a second / third impregnation heat treatment in order to soften or melt the second dry deposited solid composition, to allow the impregnation of the internal porosity of the part by the second / third composition thus softened or melted, and to form a second / third oxidation-resistant glass in the internal porosity of the part (see, for example, Fig 1 and [0069-0070], [0076-0078] wherein multiple cycles such 4 cycles of deposition and heating have been explicitly taught).
Claim 6 Mazany in view of Andrus teach the method of claim 1 above, and Mazany further teaches a total quantity of solid composition deposited onto at least a portion of the external surface of the part during the dry deposition step or steps of a solid composition is 10-60mg/cm2 (see, for example, [0063-65]; for sake of argument that this is not “solid composition” but inclusive of liquid components, the examiner notes that the composition is taught to comprise “about 35% to about 40% by weight of at least one phosphate glass, so there is at least 3.5 mg/cm2 solids deposited (actually more when considering the other solid components such as phosphates and refractory compounds).
Claim 7: Mazany in view of Andrus teach the method of claim 1 above, and Mazany further teaches the solid composition(s) are chosen from: a composition comprising, in mol percentages: 3 to 80%, preferably 40-60% phosphorus pentoxide P.sub.2O.sub.5; 5 to 50%, preferably 15-30 of a combination of potassium oxide K.sub.2O and sodium oxide Na.sub.2O; 1-20% aluminum oxide Al.sub.2O.sub.3; and 1 to 70%, further 5-20% boron sesquioxide B.sub.2O.sub.3 (See, for example, [0033-0039], and [0045]). Although such a chemistry concentration is not explicitly one of the recited ranges, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated concentrations within the claimed range since 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, 191USPQ 90 (CCPA 1976), “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), and generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical.(MPEP 2144.05 II A).
Claim 8: Mazany in view of Andrus teach the method of claim 1 above, and Mazany further teaches wherein the carbon/carbon composite material part is a friction part (such a brakes) (see, for example, [0002-0006], [0065]).
Claim 9: Mazany in view of Andrus teach the method of claim 1 above, and Mazany further teaches wherein the oxidation-resistant glass is formed to a depth about 2-5 mm, measured from the external surface of the part (See, for example, [0076], Table 4)).
Claim 11: Mazany in view of Andrus teach the method of claim 1 above, and Mazany further teaches wherein the quantity of impregnation composition deposited on the external surface of the part is 10-60 mg/cm2 (see, for example, [0092]).
Claim 12: Mazany in view of Andrus teach the method of claim 1 above, and Mazany further teaches wherein the impregnation composition forms, after impregnation in the internal porosity, a layer for trapping oxidation catalysts (See, for example, [0088], pretreating composition can fill all pores and serves an oxidation inhibitor).
Claim(s) 1-2 and 4-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mazany et al (US 2007/0154721; provided in 2/29/24 IDS; hereafter Mazany) in view of Sambasivan et al (US 2004/0011245; hereafter Sambasivan) and Bernecki et al (US 5,744,777; hereafter Bernecki).
Claims 1, 2, and 10: Mazany teaches a method for protecting a carbon/carbon composite material part from oxidation (see, for example, abstract), the method comprising:
applying onto at least a portion of an external surface of the part an impregnation composition comprising mono-aluminum phosphate (MALP) (see, for example, pretreatment with composition comprising MALP (see, for example, abstract, [0008-0010], [0088], [0098], [0101-0104]);
depositing, after application of the impregnation composition, onto at least a portion of the external surface of the part an oxidation-resistant glass composition (at least on phosphate glass) (see, for example, abstract, [0031], [0065]);
and performing an impregnation heat treatment in order to soften or melt the deposited composition, to allow the impregnation of the internal porosity of the part by the composition thus softened or melted, and to form an oxidation-resistant glass in the internal porosity of the part (see, for example, abstract, figures, [0018], [0068], [0076])
Mazany has taught wherein deposition of the impregnation composition can be achieved by painting, dipping, spraying or other application methods (See, for example, [0065]), but does not explicitly teach dry depositing solid oxidation-resisting glass compositions. Sambasivan teaches a method of for protecting materials, including composites, from oxidation, further with oxidation -resistant glass compositions, further phosphate based (See, for example, abstract, [0003], [0016], [0039], [0054]). Sambasivan further teaches wherein such coatings can predictably be applied by wet methods with glass/ precursor with a liquid medium and drying, or can be performed by thermal / plasma spraying (See, for example, [0009], [0052-0054). Sambasivan further incorporates Bernecki in its entirety for its teaching of plasma spray processing (see, for example, [0054]). Bernecki further teaches wherein thermal / plasma spraying at high speed can predictably provide coatings for protection from harsh environments of lower thickness, closed porosity and improved coating to substrate bonding strength (See, for example, col 1 lines 36-40, col 2 lines 29-41, col 3 lines 25-35, examples) Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated dry depositing the solid oxidation-resisting glass composition, such as by thermal spraying of powder at high speed / plasma spraying as such a mode is a well-known and predictable alternative to wet deposition methods (where two known alternatives are interchangeable for a desired function, an express suggestion to substitute one for the other is not needed to render a substitution obvious. In re Fout, 675 F.2d 297,301 (CCPA 1982); In re Siebentritt, 372 F.2d 566, 568 (CCPA 1967))); and / or since dry depositing via thermal spraying of powder at high speed / plasma spraying has been demonstrated to enhance protection from harsh environments / oxidation at lower thickness, closed porosity and improved coating to substrate bonding strength.
Mazany further teaches a preliminary heat treatment step at a temperature comprised between about 200-900oC, or 400oC to 850oC, carried out after the impregnation composition application step and before the solid composition deposition step (See, for example, [0089]). Although such a range is not explicitly between 680° C. and 740° C., it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a temperature within the claimed range since 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, 191USPQ 90 (CCPA 1976).
Claims 4-5: Mazany in view of Sambasivan and Bernecki teach the method of claim 1 above, and Mazany further teaches after the impregnation / second impregnation heat treatment step: dry depositing onto at least a portion of the external surface of the part a second / third solid oxidation-resistant glass composition, identical or different to the solid composition; then performing a second / third impregnation heat treatment in order to soften or melt the second dry deposited solid composition, to allow the impregnation of the internal porosity of the part by the second / third composition thus softened or melted, and to form a second / third oxidation-resistant glass in the internal porosity of the part (see, for example, Fig 1 and [0069-0070], [0076-0078] wherein multiple cycles such 4 cycles of deposition and heating have been explicitly taught).
Claim 6: Mazany in view of Sambasivan and Bernecki teach the method of claim 1 above, and Mazany further teaches a total quantity of solid composition deposited onto at least a portion of the external surface of the part during the dry deposition step or steps of a solid composition is 10-60mg/cm2 (see, for example, [0063-65]; for sake of argument that this is not “solid composition” but inclusive of liquid components, the examiner notes that the composition is taught to comprise “about 35% to about 40% by weight of at least one phosphate glass, so there is at least 3.5 mg/cm2 solids deposited (actually more when considering the other solid components such as phosphates and refractory compounds).
Claim 7: Mazany in view of Sambasivan and Bernecki teach the method of claim 1 above, and Mazany further teaches the solid composition(s) are chosen from: a composition comprising, in mol percentages: 3 to 80%, preferably 40-60% phosphorus pentoxide P.sub.2O.sub.5; 5 to 50%, preferably 15-30 of a combination of potassium oxide K.sub.2O and sodium oxide Na.sub.2O; 1-20% aluminum oxide Al.sub.2O.sub.3; and 1 to 70%, further 5-20% boron sesquioxide B.sub.2O.sub.3 (See, for example, [0033-0039], and [0045]). Although such a chemistry concentration is not explicitly one of the recited ranges, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated concentrations within the claimed range since 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, 191USPQ 90 (CCPA 1976), “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), and generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical.(MPEP 2144.05 II A).
Claim 8: Mazany in view of Sambasivan and Bernecki teach the method of claim 1 above, and Mazany further teaches wherein the carbon/carbon composite material part is a friction part (such a brakes) (see, for example, [0002-0006], [0065]).
Claim 9: Mazany in view of Sambasivan and Bernecki teach the method of claim 1 above, and Mazany further teaches wherein the oxidation-resistant glass is formed to a depth about 2-5 mm, measured from the external surface of the part (See, for example, [0076], Table 4)).
Claim 11: Mazany in view of Sambasivan and Bernecki teach the method of claim 1 above, and Mazany further teaches wherein the quantity of impregnation composition deposited on the external surface of the part is 10-60 mg/cm2 (see, for example, [0092]).
Claim 12: Mazany in view of Sambasivan and Bernecki teach the method of claim 1 above, and Mazany further teaches wherein the impregnation composition forms, after impregnation in the internal porosity, a layer for trapping oxidation catalysts (See, for example, [0088], pretreating composition can fill all pores and serves an oxidation inhibitor).
Claim 13: refer to the rejection of claims 1 and 10-12 over Mazany in view of Sambasivan and Bernecki above. Mazany further teaches wherein the preliminary heat treatment step is performed under an inert atmosphere (see, for example, [0089]).
Response to Arguments
Applicant's arguments, filed 4/17/26, directed to the 35 USC 103 rejections of non- amended claims 1-2 and 4-9 over Mazany in view of Andrus have been fully considered but they are not persuasive.
Applicant argues the process can be summed as a “four-step process”, “i” through “iv”. The examiner Agrees with Applicant that Mazany fails to teach deposition step “iii” is performed by dry deposition, and thus the Examiner has relied upon Andrus for this deficiency. Applicant then argues that baking of [0089] of Mazany “is oriented, structurally, to the drying chemistry of a liquid-applied pretreatment, not to preconditioning a phosphate layer for a subsequent dry deposition”. It is noted that the features upon which applicant relies (i.e., step “ii” is oriented, structurally, to the drying chemistry of a liquid-applied pretreatment, not to preconditioning a phosphate layer for a subsequent dry deposition” are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). As presently recited, the claim only requires wherein a solid oxidation resistance glass composition is “dry deposit(ed) (ing)”. The claim places no limitation as to the mode of application of the impregnation composition, solely reciting “applying” it, thus the impregnation composition is not required to be deposited by dry deposition method. The examiner asserts that as “step i” is conducted per the guidance or primary reference Mazany, similarly following the guidance of Mazany as to appropriate thermal treatment of such a deposited layer from step ”i” would not undermine the combination, but rather is explicitly taught by Mazany. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., Mazany’s thermal treatment is “a slurry-drying step, not as glass preconditioning , and its teaching is structurally inconsistent with the claimed preheat”, and “Mazany is indifferent to phosphate phase chemistry”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). As the heating step of Mazany chronologically exists between “step i” and “step iii” it satisfies what is presently actually claimed / required of “step ii” as this claimed step only requires that heat treatment (within the claimed range) is performed at some point between “i”’ and “iii”. The step only explicitly recites “a preliminary heat treatment step”, there is nothing further of “glass preconditioning” or associated “structure” recited, and there is presently nothing requiring any particular link (other than chronologically) between this heat treatment and any prior or subsequent process step(s).
In response to applicant's argument that reliance upon Andrus would result in not performing steps “i” and “ii”, as Andrus doesn’t teach them; the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the rejection is over the combination of Mazany and Andrus; wherein Mazany is open to step “iii” being performed by any application method, and Andrus explicitly provides the motivation for implementing deposition via dry method / electrostatic spraying as Andrus further teaches such a method provides enhanced uniformity of deposition. Thus when considering the combination as a whole all if the 4 steps are taught.
With respect to Applicant’s arguments that “a person of ordinary skill in the art optimizing Mazany’s process would have no reason to avoid temperatures approaching 1000oC; the examiner disagrees as explicitly the ranges relied upon from Mazany, such as 200-900C or 400-850 C are all below the argued threshold, therefore there exists explicit guidance in Mazany to perform heating at temperatures that are not 1000C. Further, as discussed below, Applicant has not adequately demonstrated sufficient evidence of unexpected results for the claimed range, further there is no comparative evidence provided at the upper endpoint of the range. Second, avoidance of Al(PO3)3 decomposition is not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Third, again, the particular argued range has not been relied upon, and further Mazany is not solely / rigidly taught the argued range of 600-1000C, but rather has taught alternative ranges, such as 200-900C or 400-850C ([0089]), which have been relied upon and which would not reach the argued temperature of 1000C, thus such alternative ranges would not achieve the argued phosphate decomposition.
The arguments herein to unexpected results and declaration under 37 CFR 1.132 filed 11/13/25 are still insufficient to overcome the rejection of claims 1-2 and 4-9 based upon the 35 USC 103 rejection over Mazany in view of Andrus, and rejections above to newly presented claims 10-13, because:
There is no adequate basis for reasonably concluding that the great number and variety of compositions / materials / conditions included in the claim would behave in the same manner as the unique combination tested (MPEP 716.02(d)). For example, the two experiments reported have selected a singular type of substrate (not provided), pretreatment composition (inclusive of chemistry and concentration, not provided), and one singular particular chemical composition of glass thereon (not provided), applied and then treated under particular conditions (pg 3-4 of Declaration). Such limits are not similarly shared with the claims which are open to any C/C composite material, any composition comprising MALP, and any “solid-oxidation-resistant glass composition” and wherein applicant and treatment thereof is open a multitude of methods and conditions. Applicant argues there exists a particular adhesion benefit, but the examiner notes that adhesion would be influenced by not only the chemistry of the pretreatment material, but additionally the interfacing materials of the substrate and the overlaying protective material, as well as various conditions in which the materials are prepared and processed and further combinations of such conditions / materials. So the supplied evidence is not commensurate in scope with the essentially infinite combinations of materials and processing conditions claimed. Further the evidence only presents data from two different temperature treatments 1) 90oC then 200oC vs 2) “in the 680-740oC range”. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). The low temperature testing is not sufficiently close to the lower boundary of the claimed range to sufficiently establish the argued unexpected result, and there is no evidence establishing unexpected results of the upper boundary (740C). Further the evidence does not identify what exact temperature(s) was actually even used within the range of 680-740C, or what particular materials were even tested. As such, In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
As to the remaining dependent claims they remain rejected as no additional separate arguments are provided
Applicant’s arguments that the references do not teach the newly added limitations of claim 10 and new claim 13 are unconvincing in view of newly-cited Sambasivan and Bernecki as discussed in the rejections above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN H EMPIE whose telephone number is (571)270-1886. The examiner can normally be reached Monday-Thursday 5:30AM - 4 PM.
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/NATHAN H EMPIE/Primary Examiner, Art Unit 1712