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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/25/2026 has been entered, however, it is noted that the previously submitted “Response to Final Office Action filed May 4, 2026” noted on the RCE Transmittal form was previously entered by the Examiner as noted in the Advisory Action mailed 5/29/2026. See particularly Boxes 5 and 7 of the PTOL-303 form as well as Paragraphs 2-4 on page 2 of the detailed Advisory Action mailed 5/29/2026.
The amendment filed 5/4/2026 was previously entered as noted above. 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 Rejections - 35 USC § 103
Claims 1, 10-11, 16, 20, 25-26, 28, 30, 32, 34 and 38-43 (as amended on 5/4/2026) are rejected under 35 U.S.C. 103 as being unpatentable over Kinlen ‘443 in view of Kinlen ‘486 for the reasons discussed in detail in the prior office actions, see particularly the Advisory Action dated 5/29/2026 and the Final Rejection dated 3/27/2026, both of which are incorporated herein by reference.
Response to Arguments
Applicant’s arguments filed 5/4/2026 were previously considered by the Examiner and were found to be unpersuasive with respect to the obviousness rejection over Kinlen ‘443 in view of Kinlen ‘486 for the reasons discussed in detail in the Advisory Action (see Paragraphs 4-7 of the detailed action) and restated below.
The Applicant argues that allegedly “neither Kinlen '443 nor Kinlen '486, alone or in combination, teaches or suggests the specific combination of an aliphatic polyurethane that is free of epoxy with micronized Zn(DMCT)2 as recited by claims 1, 11, and 25 as amended” and that the “Examiner's assertion that selecting an aliphatic polyurethane free of epoxy would be obvious because polyurethanes are either aliphatic or aromatic [allegedly] overlooks that Kinlen '443 teaches secondary layers that ‘may be, and/or may include’ epoxy, polyurethane, and/or combinations thereof, without any teaching or suggestion to specifically exclude epoxy from the polyurethane layer or to specifically select an aliphatic polyurethane” (see page 9 of the response). However, the Examiner respectfully disagrees and again notes that Kinlen ‘443 clearly teaches that the secondary layers may be an epoxy, a polyurethane, and/or combinations thereof such that the use of an epoxy and a polyurethane, or an epoxy and no polyurethane, or a polyurethane and no epoxy would have been obvious to one skilled in the art given the specific recitation of “and/or” by Kinlen ‘443 in at least Paragraphs 0023 and 0031 with respect to the secondary layers; and given again that polyurethane resins, in general, are considered either aliphatic or aromatic, the Examiner maintains her position that absent any clear showing of criticality and/or unexpected results with respect to the claimed “aliphatic polyurethane that is free of epoxy” over the teachings of Kinlen ‘443 with respect to secondary layer(s) of epoxy and/or polyurethane, the instantly claimed “aliphatic polyurethane that is free of epoxy” would have been obvious over the teachings of Kinlen ‘443 in view of Kinlen ‘486 given again that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success, e.g., obvious to choose polyurethane and no epoxy from epoxy and/or polyurethane, and obvious to choose aliphatic polyurethane from polyurethanes that in general are either aliphatic or aromatic.
The Applicant also argues that Kinlen ‘486 teaches particles size reduction (e.g., micronization) of VANLUBE® 829 dispersed into Sherwin Williams polyurethane primer, wherein VANLUBE® 829 is bis-DMCT not Zn(DMCT)2 as in instant claims 1, 11, and 25 as amended; and utilizes micronized INHIBICOR® 1000 or Zn(DMCT)2 in the AC-131 sol-gel composition, not in a polyurethane composition (see page 10, first full paragraph), however, the Examiner first notes that the obviousness rejection was based upon the combined teachings of Kinlen ‘443 in view of Kinlen ‘486, and not Kinlen ‘486 taken alone or taken as the primary reference; and although Kinlen ‘486 does not specifically teach an example wherein the micronized Zn(DMCT)2 is incorporated into a polyurethane composition, particularly an aliphatic polyurethane that is free of epoxy as claimed, Kinlen ‘486 does not limit the crosslinkable resin into which a particular micronized corrosion inhibitor is incorporated. In fact, Kinlen ‘486 provides a clear teaching and/or suggestion that any of the micronized corrosion inhibitors, particularly micronized VANLUBE® 829 or micronized INHIBICOR® 1000 as recited in Paragraph 0042, may be utilized in any of the crosslinkable resins recited in Paragraph 0047 including “epoxy urethane coatings, coal tar epoxies, oil-modified polyurethanes, moisture cured polyurethanes, blocked urethanes, two component polyurethanes, aliphatic isocyanate curing polyurethanes, polyvinyl acetals and the like, ionomers, fluorinated olefin resins, mixtures of such resins” (Paragraph 0047); and given that Kinlen ‘486 clearly teaches that micronization or particle size reduction of the corrosion inhibiting particles enriches the functional groups, such as thiol-terminated (mercapto-terminated) end groups (chains) on the particles’ surfaces as in amended claims 38-43, Applicant’s arguments over Kinlen ‘443 in view of Kinlen ‘486 are not persuasive, particularly in the absence of any clear showing of criticality and/or unexpected results.
In terms of unexpected results, the Applicant refers to objective evidence on page 10 of the response, and argues on pages 10-11 that the examples in the present specification allegedly provide evidence of unexpected results or “unexpected synergistic corrosion protection results” with respect to the “claimed combination of aliphatic polyurethane that is free of epoxy with micronized Zn(DMCT)2,” specifically referring to examples coated with AC-131 sol-gel containing 24 PVC VANLUBE® 829 and JETFLEX® polyurethane primer loaded with either 20 PVC WAYNCOR® 204 or INHIBICOR® 1000, wherein as noted in Paragraph 0064 of the specification, such coated samples “experienced synergistic corrosion-inhibiting effects that resulted in passing scores for three tests with performance equal to or exceeding unloaded AC-131 over-coated with inhibitor-free JetFlex polyurethane primer.” However, the Examiner notes that JETFLEX® Polyurethane Primer (CM0480930) is an aromatic polyurethane provided as a two-component composition wherein the curing agent/catalyst component or Part B (CM0120930) contains toluene diisocyanate – an aromatic diisocyanate, as evidenced by the (previously attached) Sherwin-Williams JETFLEX® Product Data and Safety Data Sheets, see particularly the Product Data Sheet and Section 3 of the Safety Data Sheet for Part B CM0120930, and hence, is not an aliphatic polyurethane as required by the instant claims. Thus, Applicant’s examples and data are not commensurate in scope with the claimed invention and cannot be relied upon for a showing of unexpected results with respect to the claimed invention over the teachings of Kinlen ‘443 in view of Kinlen ‘486.
Lastly, the Applicant argues that “[f]urthermore, the specification teaches that ‘the second carrier may comprise a polyurethane. Because the corrosion inhibitor may react with epoxy, the second carrier may be substantially free of epoxy.’ Specification, paragraph [0037]. This provides a technical reason for excluding epoxy from the polyurethane layer that is not recognized or addressed by either Kinlen ‘443 or Kinlen ‘486” (see page 11, first full paragraph), however, the Examiner does not find this argument persuasive and notes that the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Hence, the Examiner maintains her position that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 1, 10-11, 16, 20, 25-26, 28, 30, 32, 34 and 38-43 (as amended on 5/4/2026) would have been obvious over the teachings of Kinlen ‘443 in view of Kinlen ‘486.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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
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