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
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
WHEN CLAIMS ARE DIRECTED TO MULTIPLE CATEGORIES OF INVENTIONS
As provided in 37 CFR 1.475(b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
A product and a process specially adapted for the manufacture of said product; or
A product and process of use of said product; or
A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
A process and an apparatus or means specifically designed for carrying out the said process; or
A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475(c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-8 drawn to a formulation.
Group II, claim(s) 9-14 drawn to a composite material comprising a substrate and reflecting coating from a formulation on the substrate.
Group III, claims 15-20 drawn to a method for producing a composite material.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I-III lack unity of invention because even though the inventions of these groups require the technical feature of a formulation of claim 1, this technical feature is not a special technical feature as it does not make a contribution over the prior art
During a telephone conversation with KENT ERICKSON on July 30, 2026 a provisional election was made with traverse to prosecute the invention of Group I, claims 1-8. Affirmation of this election must be made by applicant in replying to this Office action. Claims 9-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention or species may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected invention or species.
Should applicant traverse on the ground that the inventions have unity of invention (37 CFR 1.475(a)), applicant must provide reasons in support thereof. Applicant may submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. Where such evidence or admission is provided by applicant, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other invention.
Applicant is reminded that upon the cancellation 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).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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
Claim(s) 1-4, 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kiyoto (US 2018/0079917).
Regarding claims 1-4, 7 Kiyoto discloses heat insulation paint includes fibrous conductive particles and a binder that would exhibit an average transmittance of 50% or more for far infrared rays having a wavelength of 5 μm to 25 μm when the binder is formed into a coated film having a film thickness of 2 μm, and the content of the fibrous conductive particles with respect to the total solid content is from 2% by mass to 30% by mass (abstract). A metal for forming the fibrous conductive particles is not particularly limited and may be any metal. In addition to one metal type, two or more metals may be used in combination, or an alloy may be used. Among these, fibrous conductive particles formed from a single metal or a metal compound are preferable, and fibrous conductive particles formed from a single metal is more preferable (0057).Specific examples of the metal include copper, silver, gold, platinum, palladium, nickel, tin, cobalt, rhodium, iridium, iron, ruthenium, osmium, manganese, molybdenum, tungsten, niobium, tantalum, titanium, bismuth, antimony, lead, an alloy containing at least one of these metals, and the like (para 0059). As the solvent used for producing the fibrous conductive particles, hydrophilic solvents are preferable, and examples thereof include water, alcohol-based solvents, ether-based solvents, ketone-based solvents, and the like. These may be used alone, or two or more kinds thereof may be used in combination (para 0066). The heat insulation paint of the present invention preferably contains, as a binder, at least one organic polymer binder selected from the group consisting of polycycloolefin and polyacrylonitrile. In a case where the heat insulation paint of the present invention contains at least one organic polymer binder selected from the group consisting of polycycloolefin and polyacrylonitrile as a binder, in a case where the content of the organic polymer binder with respect to the total amount of the binder contained in the heat insulation paint exceeds 50% by mass, it is preferable because a heat insulation layer having particularly excellent heat insulation property and radio wave permeability can be obtained (para 0099). The content of the fibrous conductive particles in the heat insulation paint is preferably from 5% by mass to 25% by mass, because a heat insulation layer having both excellent heat insulation property and radio wave permeability can be obtained (para 0062). If the binder component present in the heat insulation paint is greater than 50 wt%, it would be obvious that weight ratio of metal nanomaterial to binder is less than 2.
Alternatively, with respect to the weight ratio of metal nanomaterial to binder of greater than 0.05 and less than 2 in claims 1-2, When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
However, the recitation in the claims that the heat insulation paint formulation is “for IR radiation-reflecting coating” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Kiyoto disclose formulation as presently claimed, it is clear that the heat insulation paint formulation of Kiyoto would be capable of performing the intended use, i.e. IR radiation-reflecting coating, presently claimed as required in the above cited portion of the MPEP.
Regarding claim 8, Kiyoto discloses an aspect ratio of the fibrous conductive particles contained in the heat insulation paint is preferably 10 or more (para 0051).
Claim(s) 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Kiyoto (US 2018/0079917) as applied to claim 1, further in view of (KR 100638393).
Regarding claims 5-6, Kiyoto fails to disclose that the heat insulation paint further comprises carbon nanotube and additives such as wetting agents.
Whereas, KR’393 discloses electromagnetic shielding paint includes 10.0 to 30.0 parts by weight of binder resin, 30.0 to 80.0 parts by weight of solvent, 0.1 to 5.0 parts by weight of dispersant, 0.1 to 5.0 parts by weight of carbon nanotube, and 15.0 to 40.0 parts by weight of metal powder or metal fiber (abstract). Wetting and dispersing agents, defoamers, interfacial binders, leveling agents are added to facilitate the dispersion of the metal powder in a slurry containing a solvent or carbon nanotubes, as well as to improve the coating surface properties of the paint composition (page 5).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include carbon nanotube and wetting agents as taught by KR’393 in the heat insulation paint of Kiyoto motivated by the desire to have desired level of electrical conductivity and improved coating surface properties and to facilitate dispersion and improved the coating surface properties of the paint composition.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RONAK C PATEL whose telephone number is (571)270-1142. The examiner can normally be reached M-F 8:30AM-6:30PM (FLEX).
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, ALICIA CHEVALIER can be reached at 5712721490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RONAK C PATEL/Primary Examiner, Art Unit 1788
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