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 .
The amendment filed 2/13/2026 has been entered. Claims 2-9, 12-15, 17-19, 21-24, 27, 29, 31, 33, and 35-37 have been canceled. Claims 1, 10-11, 16, 20, 25-26, 28, 30, 32, 34, and 38-43 are pending in the application. 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 Objections
Claim 1 is objected to because of the following informalities: the extra space and close parenthesis on line 5 after “(bis-DMCT)” should be deleted, and the extra space and close parenthesis on line 10 after “(Zn(DMCT)2)” should be deleted. Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
Claim 16 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 16 recites the limitation "the organometallic compound" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Claims 25-26, 28, and 42-43 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Independent claim 25 has been amended to recite, “An article, comprising: a first corrosion protection layer…wherein the first corrosion protection layer comprises a sol-gel composition comprising an alkoxy zirconium compound, and 3-glycidoxypropyltrimethoxysilane (GTMS), and a first corrosion inhibitor comprising bis-2,5-dimercapto-1,3,4-thiadiazole (bis-DMCT), wherein the bis-DMCT is micronized” (emphasis added) on lines 1-5; and then recites on lines 6-9 that the article comprises “a second corrosion protection layer disposed on the first corrosion protection layer, wherein the second corrosion protection layer comprises a polyurethane composition and a second corrosion inhibitor comprising zinc 2,5-dimercapto-1,3,4-thiadiazole (Zn(DMCT)2), wherein the bis-DMCT is micronized” (emphasis added), however, given that the second corrosion protection layer is not recited as comprising bis-DMCT but instead Zn(DMCT)2, and that the claim already recites at line 5 that the bis-DMCT is micronized, it is unclear as to whether the second “the bis-DMCT is micronized” limitation as recited on lines 8-9 is meant to require the second corrosion protection layer to also include micronized bis-DMCT in addition to the Zn(DMCT)2 that does not need to be micronized, or is merely a redundant duplication of the same limitation recited at line 5, or is an error and is actually meant to recite that the Zn(DMCT)2 is micronized (given Applicant’s accompanying arguments). Hence, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Dependent claims 26, 28, and 42-43 do not remedy the above and hence are indefinite for the same reasons.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 16 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 16 recites, “The method of claim 11, wherein the organometallic compound comprises an organozirconium compound” (emphasis added), however, claim 11 has been amended to change “an organometallic compound” to “an alkoxy zirconium compound” which is inherently “an organozirconium compound” and hence claim 16 does not further limited amended claim 11. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claims 38-40, and 42 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 38 and 39 depend upon amended claim 1 and recite that the bis-DMCT and the Zn(DMCT)2, respectively, are micronized. However, claim 1 has been amended to already recite that the bis-DMCT and the Zn(DMCT)2 are micronized and hence claims 38-39 do not further limit claim 1. Similarly, claim 40 which depends upon amended claim 11 and claim 42 which depends upon amended claim 25 recite that the bis-DMCT is micronized, however, both claim 11 and claim 25 have been amended to already recite that the bis-DMCT is micronized.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
Claims 1, 10-11, 16, 20, 25-26, 28, 30, 32, 34, and 38-43 are rejected under 35 U.S.C. 103 as being unpatentable over Kinlen (US2016/0145443A1, hereinafter referred to as Kinlen ‘443) in view of Kinlen (US2016/0090486A1, hereinafter referred to as Kinlen ‘486).
As generally discussed in a prior office action, Kinlen ‘443 teaches a corrosion-inhibiting sol-gel coating system wherein a metal substrate (20), such as an aircraft component (Paragraph 0029), is coated with a first corrosion-inhibiting sol-gel layer (10) comprising a corrosion-inhibiting compound (12) having at least one disulfide group, such as a polymer of 2,5-dimercapto-1,3,4-thiadiazole and/or 5,5-dithiobis-(1,3,4-thiadiazole-2(3H)-thione) commercially available as VANLUBE® 829 (aka bis-DMCT as in the claimed invention) as utilized in the examples, in a sol-gel network (14), and formed by mixing said corrosion-inhibiting compound into a sol solution comprising a mixture of organo-metallic compounds, particularly a silicon-zirconium-based sol-gel formed from a mixture of a zirconium alkoxide such as zirconium tetrapropoxide (TPOZ) (an alkoxy zirconium compound as in the claimed invention as recited in instant claims 1 and 11, and particularly an “alkoxy zirconium compound that has a general formula Zr(OR)4 wherein R is a lower aliphatic having 2-8 carbon atoms” as in instant claim 25) and an organosilane such as 3-glycidoxypropyltrimethoxysilane (GTMS) (as in the claimed invention), wherein the coated substrate may include a secondary layer(s) (40) including an organic material such as an epoxy, a polyurethane and/or combinations thereof (e.g., as in the claimed second corrosion protection layer) that is configured to bind and/or adhere to the first coating material (10) (Entire document, particularly Abstract, Figs. 1-2, Paragraphs 0009-0011, 0015-0023, 0025, 0029, and 0031).
Kinlen ‘443 teaches that the corrosion-inhibiting compounds (12) are organic compounds as described in Paragraphs 0016-0018, and may include a metal atom, such as zinc, in a metal-thiolate complex with a metal center with one or more thiol groups or ligands bonded and/or coordinated with the metal center of the general formula M-(S-R1)n, where M is a metal such as zinc, n is an integer from 2 to 9, and R1 is an organic group as described in Paragraph 0016 that may be a heterocyclic group such as a thiadiazole (thereby clearly teaching and/or suggesting zinc 2,5-dimercapto-1,3,4-thiadiazole, Zn(DMCT)2); and that the corrosion-inhibiting compounds (12) may be incorporated into the sol-gel composition as dispersed powders or solid particles (Paragraphs 0016-0018 and 0033-0036). Kinlen ‘443 specifically teaches working examples comprising bis-DMCT (VANLUBE® 829) as the disulfide corrosion inhibitor added to a sol solution of 3M™ AC-131, a silicon-zirconium-based sol-gel solution including a mixture of GTMS and TPOZ (Examples).
Kinlen ‘443 further teaches that the secondary layer(s) (40) may be, and/or may include, a paint, a topcoat, a polymer coating such as a urethane coating, a polymeric material, and/or a laminated material; wherein the secondary layers (40) may be, and/or include, a polyurethane and may further include a pigment, a binder, a surfactant, a diluent, a solvent, particulate fillers, fibers, and/or other formulation additives as desired for a particular application (Paragraph 0031), such that the incorporation of corrosion inhibitor pigments, an obvious species of pigments in the art, into the polyurethane secondary layer and/or topcoat layer of Kinlen ‘443 would have been obvious to one skilled in the art., and the use of a “laminated material” as taught by Kinlen ‘443 comprising both a polyurethane coating layer and a topcoat would have been obvious to one having ordinary skill in the art based upon the teachings of Kinlen ‘443 given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Hence, with respect to the claimed invention as recited in instant claims 1, 10-11, 16, 20, 30, 32, 34, and 38-43, Kinlen ‘443 clearly teaches an article and method for forming an article comprising a layer structure as instantly claimed provided on a metal substrate wherein the layer structure includes a first corrosion protection layer comprising a sol-gel composition and first corrosion inhibitor as instantly claimed that is formed by applying a sol-gel composition comprising an alkoxy zirconium compound, GTMS, and the first corrosion inhibitor to the metal substrate; followed by a second corrosion protection layer comprising a polyurethane composition and pigments, particulate fillers, and/or other formulation additives as desired applied on the first corrosion protection layer; and a topcoat layer applied thereon that may also comprise pigments and/or other formulation additives; wherein the first corrosion inhibitor is a corrosion-inhibiting compound(s) with at least one disulfide group such as bis-DMCT as utilized in the examples and/or a metal-thiolate complex such as Zn(DMCT)2 as discussed above, such that the differences between the teachings of Kinlen ‘443 and the claimed invention as recited in independent claims 1 and 11 is that Kinlen ‘443 does not teach: 1) that the bis-DMCT is micronized; 2) that the polyurethane of the secondary layer (or claimed second corrosion protection layer) is an aliphatic polyurethane that is free of epoxy; and 3) that the polyurethane secondary layer also includes the disulfide corrosion inhibitor(s), particularly, Zn(DMCT)2 as in instant claims 1 and 11 as a second corrosion inhibitor in the polyurethane secondary layer as a second corrosion protection layer as instantly claimed, and more particularly, 4) wherein the Zn(DMCT)2 is micronized as in instant claim 1.
However, with respect to differences 2) and 3), Kinlen ‘443 clearly teaches that the secondary layers (40) may be and/or include an epoxy, a polyurethane, and/or combinations thereof (Paragraph 0031), and may further include a pigment, particulate, and/or other formulation additives as desired for a particular application (Paragraph 0031), such that the incorporation of corrosion inhibitor pigments, an obvious species of pigments in the art, particularly those as taught by Kinlen ‘443, e.g., Zn(DMCT)2, into the secondary layer and the use of a polyurethane for the secondary layer while excluding an epoxy, given the “and/or” recitation, would have been obvious to one having ordinary skill in the art, and given that polyurethanes in the art are either aliphatic or aromatic polyurethanes, the instantly claimed second corrosion protection layer comprising “an aliphatic polyurethane that is free of epoxy” and a second corrosion inhibitor comprising Zn(DMCT)2, an obvious species of (corrosion inhibitor) pigment or formulation additive based upon the teachings of Kinlen ‘443, would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention over the teachings of Kinlen ‘443 given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success. Further, Kinlen ‘486 teaches similar corrosion resistant coatings for protecting a metal surface against corrosion (Abstract), such as for protecting metal components of an airplane (Paragraph 0010, e.g., as in Kinlen ‘443), comprising corrosion-inhibiting particles that may be useable in a sol-gel coating for a pre-treatment or conversion coating alone or in combination with an additional resin coating (as in Kinlen ‘443), wherein the corrosion-inhibiting particles may be incorporated into a corrosion-inhibiting coating composition that includes a matrix resin such as an epoxy, olefin, or polyurethane resin coating (Paragraphs 0007, 0009, 0015, 0030-0031, 0047, and Example 2; as in Kinlen ‘443). Kinlen ‘486 teaches that the corrosion-inhibiting particles may include an insoluble thiol or sulfide containing organic corrosion inhibitor that more particularly “may be a polysulfide, such as a mercaptan-terminated polysulfide of dimercaptothiadiazole (DMcT),” wherein “[m]icronizing or reducing crude particle size, for example, by milling the crude corrosion inhibitor, may be performed to enrich reactive groups, such as the thiol functional groups of the mercaptan-terminated chains of the polydisulfide corrosion inhibitor, on a surface of a particle core” (Paragraphs 0031-0033), with suitable polydisulfides represented by formula I as recited in Paragraphs 0033-0034. Kinlen ‘486 teaches that the corrosion-inhibiting particles may include a protectant disposed on at least a portion of the surface of the core prior to incorporation into the matrix composition, or may be directly incorporated into the matrix composition as micronized core particles wherein micronizing the corrosion-inhibiting core particles enriches the thiol functional groups of the thiol-terminated corrosion-inhibitor such that thiol groups enriched on the surface can react with a component of a corrosion-inhibiting coating composition such as an epoxy or urethane resin without forming a discrete shell over the core (Paragraphs 0031-0042 and 0047).
Kinlen ‘486 specifically teaches that crude corrosion inhibitor particles that may be micronized include bis-DMcT particles that may be precipitated by adding an organic solvent comprising dissolved bis-DMcT into water to precipitate bis-DMcT particles as a crude corrosion inhibitor particle;, or alternatively, crude corrosion inhibitor particles may be derived from VANLUBE® 829 (i.e., bis-DMCT as instantly claimed) available from Vanderbilt Chemicals, LLC, or INHIBICOR® 1000 (i.e., Zn(DMCT)2 as instantly claimed) available from Wayne Pigment Corporation, or a combination of both (e.g., as in instant claim 34; Paragraph 0042). Kinlen ‘486 further teaches a working example utilizing VANLUBE® 829 corrosion inhibitor particles that are micronized in the presence of Sherwin Williams JETFLEX® Reducer/thinner CM0110845 to enrich the particles’ surfaces with functional groups and then mixed with a polyurethane primer available from Sherwin Williams as CM0480 and additional Sherwin Williams JETFLEX® Reducer/thinner CM0110845 and Sherwin Williams primer catalyst CM0120930 (e.g., as utilized in the examples of the present application) to form a corrosion-inhibiting polyurethane primer composition; as well as an example utilizing INHIBICOR® 1000 that is micronized and neutralized to provide corrosion-inhibitor particles that are mixed in a 3M™ AC-131 pretreatment composition (a sol-gel composition as utilized in the working examples of the present application and in Kinlen ‘443 comprising TPOZ and GMTS as discussed above) and comparing the results with a coating utilizing non-micronized (as-is) and micronized INHIBICOR® 1000 particles as shown in Figs. 7A-7C and Figs. 8-9 (Paragraphs 0024-0026, 0070-0071, Examples). Hence, given that Kinlen ‘443 and Kinlen ‘486 are of the same field of endeavor, with both directed to providing a corrosion-resistant coating system on a metal substrate, particularly for aircraft components, wherein the coating system may include a sol-gel coating layer and a resin coating layer, it is first noted that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate corrosion-inhibiting particles such as VANLUBE® 829 (i.e., bis-DMCT) and/or INHIBICOR® 1000 (i.e., Zn(DMCT)2) as in Kinlen ‘486 into the polyurethane secondary coating of the invention taught by Kinlen ‘443 to further improve the corrosion resistant properties of the coating system provided on the metal substrate, thereby rendering above differences 2) and 3) obvious over the teachings of Kinlen ‘443 in view of Kinlen ‘486 given that it is prima facie obviousness to combine prior art elements according to known methods to yield predictable results. Additionally, given that Kinlen ‘486 specifically teaches benefits with respect to micronizing crude corrosion inhibitor particles such as VANLUBE® 829 (i.e., bis-DMCT) and/or INHIBICOR® 1000 (i.e., Zn(DMCT)2), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the bis-DMCT and/or Zn(DMCT)2 corrosion inhibitors in the invention taught by Kinlen ‘443 as micronized bis-DMCT and/or Zn(DMCT)2 particles as taught by Kinlen ‘486, and to utilize any of the micronized particles or combinations thereof in any of the coating system layers taught by Kinlen ‘443, thereby rendering above differences 1) and 4) obvious to one skilled in the art given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results and/or prima facie obviousness to use a known technique to improve similar devices in the same way. Hence, absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in independent claims 1 and 11 as well as dependent claims 16, 34, and 38-41 would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention based upon the above teachings of Kinlen ‘443 in view of Kinlen ‘486.
With respect to instant claims 10, 20, 25-26, 28, 30, 32, and 42-43, each of which further includes a topcoat layer comprising a third corrosion inhibitor and with independent claim 25 being similar to independent claim 1 as discussed in detail above (and incorporated herein by reference) but further defining the alkoxy zirconium compound as being of the general formula Zr(OR)4 with the TPOZ taught by Kinlen ‘443 reading upon the claimed formula as discussed in detail above, it is again noted that Kinlen ‘443 clearly teaches that the coating system may comprise a topcoat layer that may also comprise pigments and/or other formulation additives wherein the Examiner again takes the position that corrosion-inhibiting pigments/particles, such as those taught by Kinlen ‘443 and/or Kinlen ‘486, are obvious pigments and/or “other formulation additives” in the art such that it would have been obvious to one having ordinary skill in the art to incorporate corrosion inhibiting particles into the topcoat layer taught by Kinlen ‘443 in order to further improve the corrosion resistance of the coating system, wherein the use of any of the corrosion inhibitor particles taught by Kinlen ‘443 and/or Kinlen ‘486 would have been obvious to one skilled in the art. Hence, the claimed topcoat layer of instant claims 10, 20, 25-26, 28, 30, and 32 including a third corrosion inhibitor as instantly claimed would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention given that it is prima facie obviousness to combine prior art elements according to known methods to yield predictable results, and therefore, absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 10, 20, 25-26, 28, 30, and 32, as well as claims 42-43 would have been obvious over the teachings of Kinlen ‘443 in view of Kinlen ‘486.
Response to Arguments
Applicant’s arguments filed 2/13/2026 have been fully considered but are moot in view of the new grounds of rejection presented above.
Any objection or rejection from the prior office action not restated above has been withdrawn by the Examiner in light of Applicant amendments and arguments filed 2/13/2026.
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 MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787