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 with traverse of claims 1-16 in the reply filed on 06/30/2026 is acknowledged. The traversal is on the ground(s) that the restriction requirement does not place an undue search burden on the examiner to examine groups I and II together. This is not found persuasive because the groups are separately classified in the art and have significantly different field of searches. The requirement is still deemed proper and is therefore made FINAL. The Examiner notes the amendment to claim 20 which makes it appropriate for examination with the claims of Group I. Therefore, claims 1-16 and 20 are being examined herein.
Claims 17-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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 1-2, 5-8, 13 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schindelholz et al. (U.S. App. Pub. No. 2018/0298200).
Regarding claims 1 and 6-7, Schindelholz et al. teaches a barrier coating composition including inorganic platelets dispersed in a polyelectrolyte polymer matrix. (par. [0006]). The coating composition may be provided in the form of a 20 bi-layer coating of alternating polyethyleneimine (PEI), a cationic polymer, and polyacrylic acid (PAA), an anionic polymer. (par. [0016], Fig. 2A). The bilayers disclosed in Schindelholz et al. therefore include a polyanionic polymer (PAA) and a polycationic polymer (PEI).
Regarding claim 2, Schindelholz et al. teaches 20 bi-layers in a coating with alternating cationic and anionic layers. (par. [0016]).
Regarding claim 5, Schindelholz et al. teaches a film thickness of 0-1600 nm and 20 bilayers. (par. [0016], Fig. 2A).
Regarding claim 8, the limitations directed to the type and size of first and second particles are considered optional since they further limit optional limitations for the anionic and cationic layers.
Regarding claim 13, the substrate for the barrier coating includes metals. (par. [0012]).
Regarding claim 15, a metal substrate including the barrier coating would meet the limitation of an “electrical device” as claimed. Furthermore, Schindelholz et al. teaches using the composite in an electrical device. (par. [0005]).
Claims 1-8, 10-13 and 15 are rejected under 35 U.S.C. 102(a)(1) as being unpatentable over Grunlan et al. (U.S. App. Pub. No. 2016/0114294).
Regarding claim 1, Grunlan et al. teaches a polyelectrolyte multilayer film for gas separation and purification. (Abstract). The multilayer film includes a stack of bilayers of alternating cationic and anionic polymer films. (Abstract, par. [0026]-[0031]). Furthermore, the cationic and anionic films that are part of each bilayer may further include a colloidal particle, nanoparticle or layerable material in addition to the polymer materials (Abstract). The cationic and anionic polymer films include polycationic and polyanionic polymers. (par. [0056]).
Regarding claim 2, the multilayer film may include 10 or more bilayers. (par. [0056]-[0057] and Fig. 7-8).
Regarding claims 3-4, the 10 or more bilayers would include a stack with one bilayer an additional anionic layer/cationic bilayer applied in sequence wherein the additional bilayers are in contact with each other (i.e. additional cationic layer in contact with additional anionic layer) and one of the additional cationic or anionic layer is in contact with the bilayer already present on the substrate, oppositely charged from the additional layer due to them being “alternating”. (see Abstract, Fig. 1, par. [0026]). Furthermore, each of the cationic or anionic layers, either already on the substrate or additionally applied, may include therein a colloidal particle, nanoparticle or layerable material in addition to the polymer materials (Abstract) which would meet the limitations of “first” and “second” particles as claimed.
Regarding claim 5, the thickness of the coating may be in the range of 10nm to 2 micrometers (par. [0028]) with 10 or more bilayers. (par. [0056]-[0057]).
Regarding claims 6-7, the polyanionic polymer includes polystyrene sulfonate, polymethacrylic acid, polyacrylic acid, polyvinyl sulfonic acid (par. [0030]) and the polycationic polymer materials includes branched polyethyleneimine, polyvinyl amine, poly(diallyldimethylammonium chloride). (par.[0031]).
Regarding claim 8, the colloidal particle, nanoparticle or layerable materials include vermiculite, montmorillonite, halloysite silica and graphene oxide. (par. [0030]-[0031], Table 2).
Regarding claim 10, the layers (i.e. cationic and anionic) may have a thickness of 1-100 nm. (par. [0029]).
Regarding claim 11, the anionic and cationic layers may be crosslinked via a crosslinking agent (i.e. covalently crosslinked) for imparting washability and durability. (par. [0041]).
Regarding claim 12, the layers may be ionically crosslinked (par. [0045]) and would therefore be free of covalent crosslinking.
Regarding claim 13, the substrate may include metals, polymers and minerals (silica, zirconia, ceramics). (par. [0029]).
Regarding claim 15, the multilayer film can be applied to a metal substrate (par. [0029]) which would meet the limitation of an electrical device.
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 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 9 is rejected under 35 U.S.C. 103 as being unpatentable over Grunlan et al. (U.S. App. Pub. No. 2016/0114294) in view of Laufer et al. (Growth and fire resistance of colloidal silica-polyelectrolyte thin film assemblies, Journal of Colloidal and Interface Science 356 (2011) pp. 69-77) (cited in the IDS filed on 10/22/2024).
Grunlan et al. is relied upon as described in the rejection of claim 1 above.
Grunlan et al. does not teach the weight ratio of the first and second particles within the polyanionic and polycationic layers as claimed.
Laufer et al. teaches a colloidal-silica polyelectrolyte film composition wherein bilayers of anionic and cationic materials are alternately applied onto the surface of cotton fibers for imparts fire resistance. (Abstract). The colloidal silica is applied as the anionic material, sans polyanionic material, as well as in combination with the polycationic branched PEI material with relative ratios of the polymer to the inorganic polymer material of 0.1:1 wt% in solution. (Section 2.1). The ratio of the particle to the polycation material is therefore in the range of 10:1, lying within the same range as presently claimed. As set forth in MPEP 2144.05, in the case where the claimed range “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).
It would have been obvious to one of ordinary skill in the art to optimize the relative amount of particle in each of the polycationic polymer containing and polyanionic polymer containing layers disclosed in Grunlan et al. in view of the teachings of Laufer et al. Onee of ordinary skill in the art would have found it obvious to optimize the relative amounts of solid particle to the polymeric materials in order to optimize the material properties, such as fire resistance or gas barrier properties, of the final composite while ensuring that the particles are not present in an excessive amount in the cationic/anionic solutions to be sufficiently homogenously dispersed. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05 (II). Given that Laufer et al. teaches an acceptable ratio of silica particle to cationic polymer for use as a bilayer in a layer-by-layer process as disclosed in Grunlan et al., one of ordinary skill in the art would have a reasonable expectation of success that the ratio would be usable in the multilayer film of the primary reference including both the anionic and cationic polymeric materials.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Grunlan et al. (U.S. App. Pub. No. 2016/0114294) in view of Perez et al. (U.S. App. Pub. No. 2017/0240788).
Grunlan et al. is relied upon as described in the rejection of claim 1, above.
Regarding claim 14, Grunlan et al. does not teach a film composition having a thermal conductivity or dielectric breakdown strength within the presently claimed range. However, Grunlan et al. does teach the inclusion of particles, platelets and other fillers that have impactful thermal conductivity and dielectric breakdown properties in a coating. (par [0012]).
Perez et al. teaches a thermally conductive dielectric film composition based a polyester binder material having dispersed therein thermally conductive fillers. (Abstract). Perez et al. teaches that electrical devices generate heat that needs to be dissipated and that using a coating composition having a high thermal conductivity can help increase the reliability and lifetime of the device. (par. [0001]-[0003]). Examples of conductive fillers including metal oxides, nitrides and metal powders included within the coating composition. (par. [0027]). Several of these materials in Grunlan et al. are cited as being suitable platelets or particles and would therefore be expected to have substantially similar heat dissipating properties in the coating film. (alumina, boron nitride, metal powders, par. [0012] of Grunlan et al.). Perez et al. teaches that desirable values of thermal conductivity of 0.05 W/(m*K) or more. (par. [0029]), overlapping with the presently claimed range. Perez et al. further teaches that a dielectric film applied to the electronic device should have a dielectric breakdown strength of at least 20 kV/mm (par. [0030]), overlapping with the presently claimed range. The product of both the thermal conductivity and dielectric breakdown strength in the film of Perez et al. therefore also overlaps with the product value in claim 14. As set forth in MPEP 2144.05, in the case where the claimed range “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)
It would have been obvious to one of ordinary skill in the art to optimize the dielectric breakdown strength and thermal conductivity of the coating composition of Grunlan et al., based on the teachings of Perez et al., to lie in the range taught by the secondary reference.
One of ordinary skill in the art would have found it obvious target a high dielectric strength and thermal conductivity values for the film composition of Grunlan et al. to impart improved longevity to an underlying electrical device coated with the bilayer structure of Grunlan et al. One of ordinary skill in the art would have a reasonable expectation of success that such a coating composition with the selection of polymer and inorganic fillers to result in high thermal conductivity and dielectric breakdown values would provide coating with desirable properties for an electrical device
Claims 16 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Grunlan et al. (U.S. App. Pub. No. 2016/0114294) in view of Fahami et al. (Mica-Based Multilayer Nanocoating as a Highly Effective Flame Retardant and Smoke Suppressant, ACS Appl. Mater. Interfaces 2020, 12, 19938-19943) and Perez et al. (U.S. App. Pub. No. 2017/0240788)
Regarding claim 16, Grunlan et al. teaches a polyelectrolyte multilayer film for gas separation and purification. (Abstract). The multilayer film includes a stack of bilayers of alternating cationic and anionic polymer films. (Abstract, par. [0026]-[0031]). Furthermore, the cationic and anionic films that are part of each bilayer may further include a colloidal particle, nanoparticle or layerable material in addition to the polymer materials (Abstract). The cationic and anionic polymer films include polycationic and polyanionic polymers. (par. [0056]). The polyanionic polymer includes polystyrene sulfonate, polymethacrylic acid, polyacrylic acid, polyvinyl sulfonic acid (par. [0030]) and the polycationic polymer materials includes branched polyethyleneimine, polyvinyl amine, poly(diallyldimethylammonium chloride). (par.[0031]). Grunlan et al. further teaches that the anionic layer may include particles including vermiculite. (par. [0030]).
Grunlan et al. further teaches that the cationic layers may include colloidal particles including clays, hydroxides, nanotubes and graphene. Grunlan et al. does not teach that the cationic layer includes mica or boehmite.
Fahami et al. teaches a coating composition formed by a layer-by-layer alternative cationic/anionic layer structure wherein the cationic and anionic layers may include mica therein to improve the fire retardancy of materials such as a polyurethane foam material. (Abstract. Page 19938).
It would have been obvious to one of ordinary skill in the art to select mica as the particle material for use in the cationic layers of Grunlan et al.
One of ordinary skill in the art would have found it obvious to use mica in view of the disclosed improved flame retardant and smoke suppressing properties of the material when used in a layer-by-layer assembly similar to the one disclosed in Grunlan et al., thereby imparting improved flame retardancy to the substrate onto which the coating is applied.
Grunlan in view of Fahami et al. does not disclose the thermal conductivity times the dielectric breakdown strength of the coating composition.
Perez et al. teaches a thermally conductive dielectric film composition based a polyester binder material having dispersed therein thermally conductive fillers. (Abstract). Perez et al. teaches that electrical devices generate heat that needs to be dissipated and that using a coating composition having a high thermal conductivity can help increase the reliability and lifetime of the device. (par. [0001]-[0003]). Examples of conductive fillers including metal oxides, nitrides and metal powders included within the coating composition. (par. [0027]). Several of these materials in Grunlan et al. are cited as being suitable platelets or particles and would therefore be expected to have substantially similar heat dissipating properties in the coating film. (alumina, boron nitride, metal powders, par. [0012] of Grunlan et al.). Perez et al. teaches that desirable values of thermal conductivity of 0.05 W/(m*K) or more. (par. [0029]), overlapping with the presently claimed range. Perez et al. further teaches that a dielectric film applied to the electronic device should have a dielectric breakdown strength of at least 20 kV/mm (par. [0030]), overlapping with the presently claimed range. The product of both the thermal conductivity and dielectric breakdown strength in the film of Perez et al. therefore also overlaps with the product value in claim 14. As set forth in MPEP 2144.05, in the case where the claimed range “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)
It would have been obvious to one of ordinary skill in the art to optimize the dielectric breakdown strength and thermal conductivity of the coating composition of Grunlan et al., based on the teachings of Perez et al., to lie in the range taught by the secondary reference.
One of ordinary skill in the art would have found it obvious target a high dielectric strength and thermal conductivity values for the film composition of Grunlan et al. to impart improved longevity to an underlying electrical device coated with the bilayer structure of Grunlan et al. One of ordinary skill in the art would have a reasonable expectation of success that such a coating composition with the selection of polymer and inorganic fillers to result in high thermal conductivity and dielectric breakdown values would provide coating with desirable properties for an electrical device
Regarding claim 20, Grunlan et al. is relied upon as described in the rejection of claim 1, above.
Grunlan et al. further teaches that the anionic layer may include particles including vermiculite. (par. [0030]).
Grunlan et al. further teaches that the cationic layers may include colloidal particles including clays, hydroxides, nanotubes and graphene. Grunlan et al. does not teach that the cationic layer includes mica or boehmite.
Fahami et al. teaches a coating composition formed by a layer-by-layer alternative cationic/anionic layer structure wherein the cationic and anionic layers may include mica therein to improve the fire retardancy of materials such as a polyurethane foam material. (Abstract. Page 19938).
It would have been obvious to one of ordinary skill in the art to select mica as the particle material for use in the cationic layers of Grunlan et al.
One of ordinary skill in the art would have found it obvious to use mica in view of the disclosed improved flame retardant and smoke suppressing properties of the material when used in a layer-by-layer assembly similar to the one disclosed in Grunlan et al., thereby imparting improved flame retardancy to the substrate onto which the coating is applied.
Grunlan in view of Fahami et al. does not disclose the thermal conductivity times the dielectric breakdown strength of the coating composition.
Perez et al. teaches a thermally conductive dielectric film composition based a polyester binder material having dispersed therein thermally conductive fillers. (Abstract). Perez et al. teaches that electrical devices generate heat that needs to be dissipated and that using a coating composition having a high thermal conductivity can help increase the reliability and lifetime of the device. (par. [0001]-[0003]). Examples of conductive fillers including metal oxides, nitrides and metal powders included within the coating composition. (par. [0027]). Several of these materials in Grunlan et al. are cited as being suitable platelets or particles and would therefore be expected to have substantially similar heat dissipating properties in the coating film. (alumina, boron nitride, metal powders, par. [0012] of Grunlan et al.). Perez et al. teaches that desirable values of thermal conductivity of 0.05 W/(m*K) or more. (par. [0029]), overlapping with the presently claimed range. Perez et al. further teaches that a dielectric film applied to the electronic device should have a dielectric breakdown strength of at least 20 kV/mm (par. [0030]), overlapping with the presently claimed range. The product of both the thermal conductivity and dielectric breakdown strength in the film of Perez et al. therefore also overlaps with the product value in claim 14. As set forth in MPEP 2144.05, in the case where the claimed range “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)
It would have been obvious to one of ordinary skill in the art to optimize the dielectric breakdown strength and thermal conductivity of the coating composition of Grunlan et al., based on the teachings of Perez et al., to lie in the range taught by the secondary reference.
One of ordinary skill in the art would have found it obvious target a high dielectric strength and thermal conductivity values for the film composition of Grunlan et al. to impart improved longevity to an underlying electrical device coated with the bilayer structure of Grunlan et al. One of ordinary skill in the art would have a reasonable expectation of success that such a coating composition with the selection of polymer and inorganic fillers to result in high thermal conductivity and dielectric breakdown values would provide coating with desirable properties for an electrical device.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRE F FERRE whose telephone number is (571)270-5763. The examiner can normally be reached M-F: 8 am to 4 pm ET.
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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 08/13/2026
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