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
This action is responsive to applicant’s amendment filed 7/14/2026.
Claims 15, 17, 19, 21-24, 26-28, 30, 32, and 34 are pending. Claims 23, 24, 26-28, 30, 32, and 34 are withdrawn from consideration as being drawn to non-elected inventions.
The previous rejection of claim 21 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, is withdrawn in view of applicant’s amendment.
The previous rejection of claims 15-17, 19, and 22 under 35 U.S.C. 103 as being unpatentable over Kong et al (CN114479613) in view of Cesareo et al (US2017/0190581) is withdrawn in view of applicant’s amendment.
The previous rejection of claims 18, 20 and 21 under 35 U.S.C. 103 as being unpatentable over Kong et al (CN114479613) in view of Cesareo et al (US2017/0190581) and Ma et al. (US2023/0115050) is withdrawn in view of applicant’s amendment.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claims 15, 17, 19, 21, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Kong et al (CN114479613) in view of Cesareo et al (US2017/0190581) and Ma et al. (US2023/0115050). The machine translation CN114479613 is replied upon for rejection purposes.
Regarding claim 15, Kong discloses a granular composition (an epoxy resin powder coating) comprising: from 20 to 95% by weight of a particulate material which is a filler (pigments and fillers); from 0.02 to 50% by weight of graphene nano-platelets (graphene nanosheets; from 0.5 to 60% by weight of a binder; wherein at least 90% of the graphene nano-platelets have a lateral dimension (x, y) from 50 to 20000 nm and a thickness (z) from 1 to 50 nm (the graphene nanosheets have a sheet diameter of 3 μm to 9 μm and a sheet thickness of 1 nm to 3 nm). See para 0007-0013 and examples 1-5. Kong does not disclose the graphene nano-platelets have a carbon-oxygen (C/O) ratio ≥40:1. Cesareo discloses graphene nano-platelets which have a lateral size (x, y) from 50 to 50,000 nm and a thickness (z) from 0.34 to 50 nm, having a C/O ratio ≧100:1 (abstract). It would have been obvious to one of ordinary skill in the art before the filling date of the invention to use the graphene nano-platelets which have a lateral size (x, y) from 50 to 50,000 nm and a thickness (z) from 0.34 to 50 nm, having a C/O ratio ≧100:1 taught by Cesareo in the composition of Kong, which is highly pure, inexpensive to produce and very safe from a health and environmental point of view, with a reasonable expectation of success for providing an epoxy resin powder coating with high adhesion, low friction, high wear resistance, and high corrosion resistance.
Kong does not disclose the granules having a particle size of from 50 to 4000 μm as claimed. Ma discloses a powder coating composition, which can be ground to any desired particle size and in an electrostatic coating application, the composition can be ground to an average particle size of at least 10 microns or at least 20 microns and up to 130 microns (para 0110). It would have been obvious to one of ordinary skill in the art before the filling date of the invention to grind the powder coating composition of Kong to an average particle size of at least 10 microns or at least 20 microns and up to 130 microns with a reasonable expectation of success of forming a protective anti-corrosion coating, and achieving the effect of corrosion protection in the electrostatic coating application.
Regarding claim 17, Kong discloses the particulate material also comprises pigments, the pigment is P. Black 6 (nano-carbon black, para 0040).
Regarding claim 19, Kong discloses the fillers are selected from the group consisting of: calcium carbonate; kaolin; mica; talc; silica; barium sulphate; zinc phosphate; calcium phosphate; organic and metallic stearates such as stearates of aluminum, barium, calcium, magnesium, tin, and zinc; aluminium silicate; and any combination thereof (para 0022).
Regarding claim 21, Kong does not disclose the binder is a wetting and dispersing agent as recited in the claims. Ma discloses a dispersant used in a powder coating composition (para 0090). Ma discloses dispersants for use in the composition include fatty acid, phosphoric acid esters, polyurethanes, polyamines, polyacrylates, polyalkoxylates, sulfonates, polyethers, and polyesters, or any combination thereof (para 0090). It would have been obvious to one of ordinary skill in the art before the filling date of the invention to use the dispersant taught by Ma in the powder coating of Kong, to improve the separation of the filler particles by wetting the particles and breaking apart agglomerates (para 0090).
Regarding claim 22, Kong discloses the granular composition does not contain Zinc phosphate or calcium phosphate.
Response to Arguments
Applicant's arguments filed 7/14/2026 have been fully considered but they are not persuasive.
Applicant argued that one of skill in the art, when considering the composition of Kong, would have no apparent reason to further consider the composition of Ma and more particularly the specific particle sizes thereof, at least because there is no indication from either reference that such particle sizes would contribute to improvements in the anti-corrosive features already disclosed by Kong. The examiner respectfully disagrees with applicant’s arguments. The law held that the rationale to modify or combine the prior art does not have to be expressly stated in the prior art; the rationale may be expressly or impliedly contained in the prior art or it may be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law. 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); see also In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1317 (Fed. Cir. 2000) (setting forth test for implicit teachings); In re Eli Lilly & Co., 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990) (discussion of reliance on legal precedent); In re Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988) (references do not have to explicitly suggest combining teachings); Ex parte Clapp, 227 USPQ 972 (Bd. Pat. App. & Inter. 1985) (examiner must present convincing line of reasoning supporting rejection); and Ex parte Levengood, 28 USPQ2d 1300 (Bd. Pat. App. & Inter. 1993) (reliance on logic and sound scientific reasoning). In addition, the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991).
Both Kong and Ma direct to powder coating compositions used in electrostatic coating applications. Ma discloses the composition can be ground to an average particle size of at least 10 microns or at least 20 microns and up to 130 microns (para 0110). Ma provides a reason for one of ordinary skill in the art to pursue the known potential solutions with a reasonable expectation of success since the reference is directed to a similar field of endeavor. It is also noted that there is no evidence nor teaching that the selection of said granular particle size range would be unacceptable to a skilled artisan. Further, obviousness only requires a reasonable expectation of success. See MPEP 2143.
Applicant also argued that Cesareo appears to be completely silent about using graphene in granular compositions, or in water- borne or solvent-born applications to produce paints or coatings in a manner as claimed. It is held that the strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983). See also Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006) ("Indeed, we have repeatedly held that an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal—and even common-sensical—we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves."). Moreover, "The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). See also In re Sneed, 710 F.2d 1544, 1550, 218 USPQ 385, 389 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review."); and In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973) ("Combining the teachings of references does not involve an ability to combine their specific structures."). Highly pure, inexpensive to produce and very safe from a health and environmental point of view of the graphene nano-platelets having a lateral size (x, y) from 50 to 50,000 nm and a thickness (z) from 0.34 to 50 nm, having a C/O ratio ≧100:1 taught by Cesareo provides the motivation to use them in the composition of Kong with a reasonable expectation of success for providing an epoxy resin powder coating with high adhesion, low friction, high wear resistance, and high corrosion resistance.
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 HAIDUNG D NGUYEN whose telephone number is (571)270-5455. The examiner can normally be reached M-Th: 10a-3p.
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/HAIDUNG D NGUYEN/Primary Examiner, Art Unit 1761
9/21/2026
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