DETAILED CORRESPONDENCE
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 .
Allowable Subject Matter
The indicated allowability of claim 19 is withdrawn in view of the newly discovered reference(s) to He. Rejections of the new claim based on the newly cited reference(s) follow.
Election/Restrictions
Claims 1-5 and claims 14-20 were restricted as subcombination Bsp and combination, ABbr.
The subcombination (1-5) required specifics that were not required by the combination (14-20). ABbr/Bsp (Restriction Proper).
As amended, claim 1 newly claims a subcombiantion that does not require specifics distinct from the combination. ABbr/Bbr (Restriction Improper). Thus claim 1 is rejoined.
Claims 2-5 are subcombinations that require specifics that are not required by the combination (14-20). ABbr/Bsp (Restriction Proper).
Response to Arguments
Applicant's arguments have been fully considered.
Applicant argues that “Independent Claim 14's range is critical and not prima facie obvious.”
Examiner does not find this persuasive no evidence has been submitted. Applicant must show that the particular range is critical, generally by providing evidence that shows that the claimed range achieves unexpected results relative to the prior art range (MPEP 2144). Seiler’s range overlaps the claimed range, and the rejection is not overcome because Applicant has not presented evidence demonstrating criticality. Argument cannot take the place of evidence.
Additionally it is expected that increasing the amount of conductive fibrous material makes the material more conductive and would make the material more difficult to process. Optimizing these two conflicting parameters is routine optimization.
See for example, PilchPitera (NPL 2019) which demonstrates that carbon nanotubes improves the scratch resistance of powder coatings (Table 1) but that “Due to growing viscosity of powder coating, it was not possible to obtain compositions with a higher MWCNTs content.” (Section 3.1)
Similar situations exist in all field of engineering. For example, adding glass fiber makes cement stronger but makes it more difficult to shape in certain methods. It is not the exception, but the rule that that an ingredient improves one property and hurts another.
Applicant argues that claim 16 narrows the claimed surface.
Examiner does not find this persuasive because the claim 14 claims “A powder coating system for powder-coating a surface”. This is not a positive recitation of the surface.
In other words, claim 14 requires a kit for coating a surface, but as written it does not require the surface itself to be included in the kit.
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(s) 14-20 is/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 pre-AIA the applicant regards as the invention.
In reference to claim 14, Applicant’s arguments regarding claim 16 (e.g., “Claim 16 further narrows the claimed surface.”) suggest that they intend for claim 14 to be read as requiring a surface in the claim, however, claim 14 does not positively recite a surface. The surface in claim 14 describes an intended use of the claimed collection of materials. Thus, claim 14 is rejected for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention (i.e., a kit comprising a surface).
In reference to claim 17, it is unclear if “binding layer” refers to
(A) an already formed binding layer; or,
(B) material for forming a binding layer
Does Applicant intend for the kit to comprise the material for making a binding layer or a binding layer (e.g., a surface that is coated with binding material)?
The claim will be examined as written (i.e., A). If applicant intends for the kit to comprise the material for forming the binding layer then the claim should be corrected (e.g., see claim 2).
Note: Claims 15-20 are also rejected by virtue of their dependence on claim 14.
Note: Claims 18-19 are also rejected by virtue of their dependence on claim 17.
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.
Claim 1 and 6 is/are rejected under 35 U.S.C. 102(a)(1) as being unpatentable over Cierpisz (NPL 20201)
In reference to claim 1 and 6, Cierpisz discloses a powder mixture comprising fluoropolymer and 0.5-2.5% carbon nanotubes (“Neoflon AC-5600 PFA powder (Daikin, Inc.) was used as the polymer matrix… Three grades of carbon nano-powders were selected as the filler materials: AO-2 grade graphene, AO-4 grade graphene, and MW-CNTs…. The composites were prepared by adding various fractions of (1-20 wt%) the carbon nano-powders into the PFA powder” [Top of Pg 28];
1% is shown as an explicit example at Table 4 of Pg. 61)
Cierpisz’s further states that “PFA can be applied electrostatic powder coating” (Pg. 14), which implies the present of a powder spray gun.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim 14-16 and 20, and 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Seiler (US 20210171793 A1)
In reference to claim 14, and 1, Seiler discloses a powder coating system for powder-coating a surface with a conductive, non-stick layer, comprising:
a powder mixture, comprising: (“dry blending of powders, or by melt blending the additive with the fluoropolymer prior to forming the powder that will be coated onto a substrate” [P0032])
a first portion comprising a fluoropolymer; and (“fluoropolymer composition”
a second portion comprising carbon nanotubes, (“carbon nanotubes;” [P0032])
wherein the second portion comprises about 0.5% to about 2.5% by weight of the powder mixture; and (“0.001 to 20 weight percent” [P0032])
a powder coating gun for spraying the powder mixture onto the surface (“powder coating gun” [P0082]).
The claim is rejected under 35 USC 103 because it combines different embodiments of Seiler.
In reference to claim 15, the prior art discloses the invention as in claim 14.
Seiler further discloses an oven for curing the powder mixture into the conductive, non-stick layer (P0082).
In reference to claim 16, the prior art discloses the invention as in claim 14.
The intended use of the system does not structurally limit the system.
In reference to claim 20, the prior art discloses the invention as in claim 17.
Seiler further discloses wherein the fluoropolymer is selected from a group consisting of: perfluoroalkoxy alkanes, polyvinyl fluoride, polyvinylidene fluoride, polytetrafluorethylene, polychlorotrifluoroethylene, fluorinated ethylene-propylene, polyethylene tetrafluoroethylene, polyethylene chlorotrifluoroethylene, perfluorinated elastomer, fluorelastomer, perfluoropolyether, and perfluoro sulfonic acid (“PVDF” [P0082]).
Claim 17-19 and 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over He (NPL 20152 - of record, however an annotated copy is newly made of record with cited portions underlined) in view of PilchPitera (NPL 2019)
In reference to claim 17-18 and 1, He discloses a powder coating system (“An electrostatic powder coating technique was utilized to apply the coating material onto metallic substrates.” [Pg. 388]) for powder-coating a surface with a conductive, non-stick layer, comprising:
an insulating binding layer (“For coatings with a primer, a Daikin Neoflon ACP-5909BK primer powder was first applied to the substrates.” [Pg. 388]);
a powder mixture, comprising: (“the primer-coated specimens were top coated with the graphite-blended AC-5600 composite” [Pg. 388])
a first portion comprising a fluoropolymer; and (“virgin PFA utilized in this study was a Neoflon AC-5600 coating powder” [Pg. 388])
a second portion comprising carbon …, (“Graphite powder was simply post-blended into virgin PFA powder to form a polymer matrix com-posite to improve thermal conductivity” [Pg. 388])
…
a powder coating gun for spraying the powder mixture onto the surface (“electrostatic powder coating” [Pg. 388]).
He adds graphite powder at 10-50wt% (Fig 8) and does not describe using carbon nanotubes at 0.5 to about 2.5wt%.
In the same field of endeavor or reasonably pertinent to the particular problem faced by the inventor, conductive coatings (title), PilchPitera discloses that it was known to add 1 wt% of carbon nanotubes to powder coatings in order to prepare coatings with increased scratch resistance and increased conductivity (See Table 4 on Pg. 4).
Therefore, it would have been obvious to one of ordinary skill in the art with a reasonable expectation of success before the effective filing date of the claimed invention to either replace He’s graphite with or add carbon nanotubes as taught by PilchPitera.
In reference to claim 19, He further discloses a drill (“drilled” [Pg. 388])
In reference to claim 6, PilchPitera discloses 1% and 2% (Table 1) which reads on or obviates about 1.5%.
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 NICHOLAS KRASNOW whose telephone number is (571)270-1154. The examiner can normally be reached M-R: 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xiao Zhao can be reached at 571-270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS KRASNOW/Examiner, Art Unit 1744
1 Cierpisz, M., 2020. Development of Graphene-Filled Fluoropolymer Composite Coatings for Condensing Heat Exchangers (Master's thesis, University of Windsor (Canada)).
https://uwindsor.scholaris.ca/bitstreams/29c66255-31a9-4da8-b712-e3a0730e2c2e/download
2 https://www.sciencedirect.com/science/article/pii/S1359431115008303?via%3Dihub