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 .
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.
Claim 18 is 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.
In claim 18, “an interfacial weld between the coating and the conductor” is unclear to how this relates to “an interfacial weld between the coating and the conductor” cited in claim 10.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4, 7-10, 12, 14, 17, 19, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dolan et al. (2017/0148548).
Dolan et al. discloses a coated overhead conductor comprising a conductor (18) comprising aluminum ([0025]) or an alloy thereof and a coating (62) comprising a ceramic or a ceramic and a filler, wherein the coated overhead conductor comprises an interfacial weld between the coating and the conductor ([0031], coating is directly and chemically bonded to the wire surface and has an interface with the metal surface. Inclusion of aluminum, at least partially from the metal surface into the coating provides improved adhesion of the coating) (re-claims 1 and 10), wherein the ceramic comprises alumina (re-claim 10). Dolan et al. also discloses that the conductor comprises an ACSS (aluminum conductor steel support) ([0025]) (re-claims 2 and 12); the ceramic comprising alumina ([0028]) (re-claim 3); the filler comprises a rare earth metal compound ([0033], cerium oxides or yttrium oxides) (re-claims 4 and 14); the interfacial weld comprises the aluminum or the alloy thereof and the ceramic ([0031]) (re-claims 7 and 17); the coating has a thickness of about 5 µm to about 30 µm ([0038]) (re-claims 8, 9, 19, and 20).
Claims 1, 6, 10, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoshida et al. (10090079).
Yoshida et al. discloses a coated overhead conductor comprising a conductor (11) comprising aluminum or an alloy thereof and a coating (13) comprising a ceramic or a ceramic and a filler (re-claims 1 and 10), wherein the ceramic comprises alumina (col. 6 lines 21-23) (re-claim 10). It is noted that since the coated overhead conductor of Yoshida et al. comprises structure and material (including the claimed method, spraying, col. 5 lines 42-43), there is an interfacial weld between the coating and the conductor (re-claims 1 and 10).
Re-claims 6 and 16, it has been held that the patentability of a product claim is determined by the novelty and nonobviouness of the claimed product itself without consideration of the process for making it, thermal spray, which is recited in the claim. In re Thorpe, 111 F. 2d 695, 698, 227 USPQ 964, 966; see also In re Nordt Development Co., LLC, [2017-1445] (February 8, 2018).
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 5 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Dolan et al. in view of Singer et al. (4657787).
Claims 5 and 15 additionally recite the coating further comprising one or more aluminum splats. Singer et al. discloses an invention directed to spraying a coating comprising aluminum splats onto a metal substrate. It would have been obvious to one skilled in the art to provide a coating comprising aluminum splats as taught by Singer et al. in the coated conductor of Dolan et al. to provide a smooth coating (Singer, col. 2 lines 23-24).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Dolan et al. in view of Aoki (WO 2021/193690).
Claim 11 additionally recites the coating further comprising a hydrophobe. Aoki discloses a coating comprising a ceramic and further comprising a hydrophobe (page 5 of the English machined translation, hydrophobic alumina or hydrophobic titania). It would have been obvious to one skilled in the art to include a hydrophobe in the coating of Dolan et al. to increase the water resistance of the coating (see Aoki, page 3).
Claims 13 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Dolan et al. in view of Kobayashi et al. (2024/0359998).
Dolan et al. discloses the invention substantially as claimed including an interfacial weld between the coating and the conductor (re-claim 18). Dolan et al. does not disclose the ceramic comprising black titania (re-claim 13). Kobayashi et al. discloses a ceramic composition. Kobayashi et al. discloses that black titania (black titanium dioxide, [0002]) is known in the art for being used as a black pigment. It would have been obvious to one skilled in the art to modify the ceramic of Dolan et al. to comprise black titania (i.e., using black titania as the metal oxide other than aluminum oxide) to provide the coating with a color since black titania is known in the art for being used as a black pigment.
Response to Arguments
Applicant’s arguments with respect to claims 1 and 10 have been considered but are moot in view of new ground of rejection.
Applicant argues that Yoshida discloses several methods of forming the coating, each describing applying a viscous liquid followed by blowing the inclusions onto the surface of the wire. Therefore, there cannot be an interfacial weld between the coating and the conductor. Examiner would disagree. Yoshida, col. 5 lines 42-44, discloses that “or a method of spraying the inclusions 13 from top, bottom, right and left of the wire 11 just before applying a resin for forming a covering layer 12”. In this alternative method, there is no liquid being coated on the conductor beforehand. The fact that Yoshida utilized the same method as claimed (spraying) when forming the coating; there is an interfacial weld between the coating and the conductor.
Applicant argues that there is no interfacial weld between the coating and the conductor in the coated overhead conductor of Dolan. Examiner would disagree. Dolan, [0031], discloses that the coating is directly, chemically bonded to the wire substrate surface and has an interfacial with the metal surface. Inclusion of aluminum, at least partially from the metal surface into the coating provides improved adhesion of the coating. Therefore, Dolan does teach an interfacial between the coating and the conductor.
Applicant argues that Dolan uses electrolytic deposition process to form the coating. Singer discloses spraying molten aluminum on a substrate such that aluminum splats flow into each other. These are two incompatible processes. Examiner would disagree. Again, the patentability of a product claim is determined by the novelty and nonobviouness of the claimed product itself without consideration of the process for making it. Examiner relied upon the Singer reference only for the teaching of splats included in the coating to provide a smooth coating as taught by Singer, col. 2 lines 23-24.
Applicant argues that Aoki relates to a hydrophobic oxide powder, while Dolan relates to electrolytic deposition process which does not contemplate powdered materials. Examiner would disagree. Examiner relied upon the Aoki reference for the teaching of a coating comprising a hydrophobe, i.e., using hydrophobic alumina, to increase the water resistance of the coating, not using powdered material.
Applicant argues that nothing in Kobayashi relates to the application of reduced titanium dioxide to a conductor that results in an interfacial weld between the coating and the conductor. Examiner would disagree. Kobayashi discloses a ceramic composition. Kobayashi discloses that black titania is known for being used as a black pigment. The Kobayashi reference is relied upon only to support the position of using black pigment in a ceramic composition to provide the coating with a color. Features of an interfacial weld between the coating and the conductor are already disclosed in Dolan.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHAU N NGUYEN whose telephone number is (571)272-1980. The examiner can normally be reached M-Th, 7am to 5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Imani N Hayman can be reached at 571-270-5528. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHAU N NGUYEN/Primary Examiner, Art Unit 2841
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