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 .
Election/Restrictions
Applicant’s election without traverse of Group II, Claims 13-18, in the reply filed on 18 February 2026, is acknowledged.
Claims 1-12 and 19-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 18 February 2026.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 13-15, 21, and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Malcolm (US 4,494,651) in view of Kritchevsky et al. (US 4,678,699).
Regarding Claims 13,14, 21, and 22, Malcolm (US’651) teaches an enclosure comprising: an enclosure body (comprising top and bottom enclosure means 2, 3 connected by hinge means) formed integrally from conductive molding composition, including side walls (e.g. of bottom enclosure means 3) that extend integrally around an internal cavity 16 capable of containing electronics and that define an opening into the internal cavity (Figs. 1-7; col. 7, lines 1-5; col. 6, lines 23-28; col. 12, lines 3-12; col. 11, lines 51-55); and a cover (e.g. top enclosure means 2) formed from the conductive molding composition and sized to block the opening into the internal cavity (Figures; col. 4; lines 15-25; col. 6, lines 23-59). The conductive molding composition can comprise thermoplastic materials and conductive particles (e.g. carbon black) (col. 6, lines 23-59). US’651 teaches 17% carbon black, for example (col. 6, lines 48-51 and 64-65).
US’651 fails to teach a conductive sheet molding compound. Kritchevsky et al. (US’699) is analogous art in the field of manufacture of articles (including enclosures) from conductive molding compounds and for providing protection from electromagnetic fields (Abstract; col. 1, lines 10-68). US’699 provides evidence that as early as 1982, it was known to produce an enclosure for an electronic device (computer printer) from a sheet molding compound (col. 1, lines 63-68). Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the conductive enclosure of US’651 by substituting one known conductive molding material for another (i.e. conductive sheet molding compound for conductive thermoplastic compound, containing carbon black), because US’699 suggests that both sheet molding compounds and thermoplastic composites can be used to form an enclosure to shield electronic equipment from electromagnetic fields.
Because the claims define a conductive additive and a flame retardant functionally instead of compositionally, and carbon black is both a conductive additive and a flame retardant, 0.1 wt. % to 5 wt. % of the carbon black in US’651 can be considered to be the recited “conductive additive” and the other 12-16.9% can be considered the “flame retardant.” In addition, generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical.
Regarding Claim 14, US’651 teaches that the enclosure body is a body capable of being grounded via the conductive molding material, forming the enclosure, in order to bleed off internally generated static electrical charge (col. 12, lines 13-28). It would have been obvious to use the same technique of grounding with conductive enclosures in general in order to bleed off internally generated static electrical charge.
Regarding Claim 15, US’651 teaches that the enclosure body defines a conductive outer surface that extends onto protruding grounding attachment points 9 (e.g. “pole or rod-like configuration” to which alligator clips can be attached) (Figs. 1,6; col. 11, lines 11-24).
Claim(s) 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Malcolm (US 4,494,651) in view of Kritchevsky et al. (US 4,678,699) as applied to Claim 13 above, and further in view of Drzal et al. (US 2008/0118736).
Regarding Claims 16-17, the combination of US’651 in view of US’699 fails to teach a cured powder coating on the surface of the enclosure (either body or cover). Drzal et al. (US’736) is analogous art in the field of conductive sheet molding compounds, including for EM shielding [0011], and pertinent to inventor’s problem of manufacturing paintable conductive objects, including for EM shielding applications, from conductive molding materials. US’736 suggests a reinforced conductive sheet molding compound (SMC) which is paintable and a cured powder coating to color (pigmented paint) an object made with SMC (Abstract; [0011-0012,0017,0021,0079,0082,0103]). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the conductive enclosure of the combination of US’651 in view of US’699 with a cured powder coating on at least one surface of the enclosure (body or cover), because US’736 suggests a cured powder coating (also paint) on conductive objects as a paint, including in EM shielding applications, and painting an object is commonly understood to be a generally desirable aesthetic modification of an object.
Regarding Claim 18, US’651 (col. 6, lines 39-55) and US’699 (col. 5, line 18) both teach carbon black as a conductive additive for conductive molding compositions and US’699 teaches conductive sheet molding compound, reinforced with carbon pigment (col. 1, lines 65-67). The combination of US’651 in view of US’699 does not expressly teach carbon black specifically in SMC. US’736 teaches that conductive fillers, including carbon black, are typically dispersed in SMC [0012]. Thus, it would have been obvious to modify the enclosure of the combination of US’651 in view of US’699 with SMC, including carbon black as a conductive filler, because US’736 suggests that carbon black is a typical conductive filler in SMC.
Claim(s) 13-15, 18, 21, and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Malcolm (US 4,494,651) in view of Kritchevsky et al. (US 4,678,699) and Friend et al. (US 5,611,964).
Regarding Claims 13, 14, 18, 21, and 22, Malcolm (US’651) teaches an enclosure comprising: an enclosure body (comprising top and bottom enclosure means 2, 3 connected by hinge means) formed integrally from conductive molding composition, including side walls (e.g. of bottom enclosure means 3) that extend integrally around an internal cavity 16 capable of containing electronics and that define an opening into the internal cavity (Figs. 1-7; col. 7, lines 1-5; col. 6, lines 23-28; col. 12, lines 3-12; col. 11, lines 51-55); and a cover (e.g. top enclosure means 2) formed from the conductive molding composition and sized to block the opening into the internal cavity (Figures; col. 4; lines 15-25; col. 6, lines 23-59). The conductive molding composition can comprise thermoplastic materials and conductive particles (e.g. carbon black) (col. 6, lines 23-59). US’651 teaches 17% carbon black, for example (col. 6, lines 48-51 and 64-65).
US’651 fails to teach a conductive sheet molding compound. Kritchevsky et al. (US’699) is analogous art in the field of manufacture of articles (including enclosures) from conductive molding compounds and for providing protection from electromagnetic fields (Abstract; col. 1, lines 10-68). US’699 provides evidence that as early as 1982, it was known to produce an enclosure for an electronic device (computer printer) from a sheet molding compound (col. 1, lines 63-68). Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the conductive enclosure of US’651 by substituting one known conductive molding material for another (i.e. conductive sheet molding compound for conductive thermoplastic compound, containing carbon black), because US’699 suggests that both sheet molding compounds and thermoplastic composites can be used to form an enclosure to shield electronic equipment from electromagnetic fields.
Because the claims define a conductive additive and a flame retardant functionally instead of compositionally, and carbon black is both a conductive additive and a flame retardant, 0.1 wt. % to 5 wt. % of the carbon black in US’651 can be considered to be the recited “conductive additive” and the other 12-16.9% can be considered the “flame retardant.” In addition, generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. Nevertheless, the combination of US’651 and US’699 fails to associate carbon black with flame retardancy, even though carbon black has both conductive and flame retardant properties. Friend et al. (US’964) is analogous art in the field of conductive sheet molding compounds (col. 2, lines 10-21), and teaches a conductive additive (e.g. carbon nanoparticles or nanotubes/fibrils) in a concentration of preferably less than or equal to 4% by weight (col. 2, lines 19-40). In addition to the conductive additive, US’964, filed in 1995, also teaches a flame-retardant component of the conductive sheet molding compound, and provides evidence that a flame retardant were a conventional component of conductive sheet molding compounds at the time of invention (col. 3, lines 58-62; col. 6, lines 4-14). Additionally, US’964 provides evidence that concentration of conductive additive is a result-effective variable, known in the prior art to affect the sheet molding compound’s ability to direct electrostatic overcoating and/ or to dissipate static electricity (col. 2, lines 15-21). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the enclosure of the combination of US’651 and US’699 with a conductive sheet molding compound, including conductive additive, including carbon black and/ or carbon nanoparticles and/or nanotubes in a concentration within the recited range and a flame retardant, because US’964 suggests this concentration of such conductive additives in sheet molding compound and also a flame retardant, which were conventional components of conductive sheet molding compounds at the time of invention. Also, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the enclosure of the combination of US’651 and US’699 with conductive additive in a concentration within the recited range, through routine optimization of a result-effective variable.
Regarding Claim 14, US’651 teaches that the enclosure body is a body capable of being grounded via the conductive molding material, forming the enclosure, in order to bleed off internally generated static electrical charge (col. 12, lines 13-28). It would have been obvious to use the same technique of grounding with conductive enclosures in general in order to bleed off internally generated static electrical charge.
Regarding Claim 15, US’651 teaches that the enclosure body defines a conductive outer surface that extends onto protruding grounding attachment points 9 (e.g. “pole or rod-like configuration” to which alligator clips can be attached) (Figs. 1,6; col. 11, lines 11-24).
Claim(s) 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Malcolm (US 4,494,651) in view of Kritchevsky et al. (US 4,678,699) and Friend et al. (US 5,611,964) as applied to Claim 13 above, and further in view of Drzal et al. (US 2008/0118736).
Regarding Claims 16-17, the combination of US’651 in view of US’699 and US’964 fails to teach a cured powder coating on the surface of the enclosure (either body or cover). Drzal et al. (US’736) is analogous art in the field of conductive sheet molding compounds, including for EM shielding [0011], and pertinent to inventor’s problem of manufacturing paintable conductive objects, including for EM shielding applications, from conductive molding materials. US’736 suggests a reinforced conductive sheet molding compound (SMC) which is paintable and a cured powder coating to color (pigmented paint) an object made with SMC (Abstract; [0011-0012,0017,0021,0079,0082,0103]). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the conductive enclosure of the combination of US’651 in view of US’699 and US’964 with a cured powder coating on at least one surface of the enclosure (body or cover), because US’736 suggests a cured powder coating (also paint) on conductive objects as a paint, including in EM shielding applications, and painting an object is commonly understood to be a generally desirable aesthetic modification of an object.
Response to Arguments
Applicant's arguments filed 12 June 2026 have been fully considered but they are not persuasive.
In response to Applicant’s argument that the combination of US’651 in view of US’699 fails to teach a conductive additive in the recited concentrations (Remarks, pp. 5-6), generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. Additionally, US’651 teaches 17% carbon black, for example (col. 6, lines 48-51 and 64-65). Because the claims define a conductive additive and a flame retardant functionally instead of compositionally, and carbon black is both a conductive additive and a flame retardant, 0.1 wt. % to 5 wt. % of the carbon black in US’651 can be considered to be the recited “conductive additive” and the other 12-16.9% can be considered the “flame retardant.” Moreover, Friend et al. (US 5,611,964) is now cited a) to show the obviousness of conductive additive in the recited range of concentration and b) as evidence that concentration is a result-effective variable, obvious to optimize. As to flame retardants, they were conventional in sheet molding compounds, including conductive sheet molding compounds, at the time of invention, and US’964, published in 1997, both teaches flame retardants in an analogous composition and provides evidence of conventionality.
In response to Applicant’s argument concerning whether conductive thermoplastic formulations and conductive SMC formulations are interchangeable (Remarks, p. 6), the prior art itself suggests the analogy and suitability of a SMC formulation for the claimed enclosure.
In response to Applicant’s argument concerning the additive loading parameter and differences in Drzal (Remarks, p. 7), one expects differences from one prior art reference to another. Drzal is cited to show the obviousness of providing cured powder coating on the surface of the enclosure (either body or cover). The arguments do not address Drzal for what it is offered to show.
Conclusion
No claim is allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Pierce (US 5,188,783) (conductive sheet molding compound, including conductive polymers and fire retardant; evidence from 1993 that fire retardants are conventional components of sheet molding compound)
Guha et al. (US 2008/0096032) (conductive sheet molding compound, including conductive carbon in a concentration of 0.3-1.4% and flame retardant; evidence from 1997 that fire retardants are conventional components of sheet molding compound
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 ALEXANDER M WEDDLE whose telephone number is (571)270-5346. The examiner can normally be reached 9:30-6:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Cleveland can be reached at 571-272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
ALEXANDER M WEDDLE
Examiner
Art Unit 1712
/ALEXANDER M WEDDLE/Primary Examiner, Art Unit 1712
Prosecution Insights