DETAILED ACTION
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 .
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.
Claim Rejections - 35 USC § 103
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 – 3, 5, 6, 8 and 10 - 14 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020017563 A1 to Sheng et al., hereinafter “Sheng”.
Sheng is directed to coating film comprising a resin and graphene (Abstract).
Regarding claims 1 – 3, 5, 6, 8, 10 and 11, Sheng teaches the formulation of an undercoat layer which can comprise curable resins such as (meth)acrylic resins, urethane resins, epoxy and silicone resins (13: 28 – 38). The undercoat further comprises graphene at 0.01 to 10% by mass (14: 3 – 7) and zinc powder at 50 – 99% by mass where the zinc powder has a preferably spherical shape with an average particle size of 0.1 to 30 microns (14: 12 – 18). The average longest particle diameter (size in a direction parallel to a graphene layer) of the graphene is 0.001 to 50 microns (3: 24) and has a layer thickness of 0.1 to 100 nm (0.0001 – 0.1 microns). See (3: 19 – 28). Addressing the ratio of Ra/Rb using the upper limits of sizes Zinc 30 micron / graphene 50 micron = 0.6. This is within the claimed range. Additionally, specific examples of Sheng use graphene of 4 and 6 microns in thickness (16: 34 – 17: 1).
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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness with [applicant’s] claimed range”). MPEP 2144.05
Therefore, it would have been obvious to one of ordinary skill based on the overlapping or encompassing ranges taught by Sheng.
As to claims 12 – 14, the coated substrate is obtained by applying an undercoat paint on the substrate to form an undercoat layer (16: 12 – 13). The coated substrate can comprise, for example, a bridge, highway and power transmission towers (16: 21 – 22).
Allowable Subject Matter
Claims 4 and 9 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Prior Art of Record
US 20150375051 A1
US 11814543 B2
Conclusion
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PAS 8/19/26
/PETER A SALAMON/Primary Examiner, Art Unit 1759
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