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 .
Response to Amendments
This is a final office action in response to applicant's arguments and remarks filed on
12/14/2025.
Status of Rejections
The rejections of claims 11 and 12 are obviated by the Applicant’s cancellation.
The rejections of claim 9 is withdrawn in view of the Applicant’s amendment.
All other previous rejections are maintained.
The rejections of claims 1 and 14 have been updated in response to the Applicant’s amendments. No new art is cited.
New grounds of rejection are necessitated for claim 9 due to the Applicant’s amendment.
Claims 1, 4, 5, 9, 14, and 15 are pending and under consideration for this Office Action.
Claim Rejections - 35 USC § 112(a)
The text of the sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 9 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 9: The original specification does not have written support for a device comprising “an electrically conductive metal mounting strap affixed to said zinc body and projecting from opposing ends of said zinc body to present a pair of opposing mounting tabs for engagement by said fastener members to mount said zinc body to said steel or aluminum frame member of the land vehicle or machine” and “said mounting strap and said zinc body being separate components to enable the zinc body to be detached from said mounting strap without requiring said mounting strap to be disconnected from said frame member of said land vehicle or machine”. The original specification only supports an electrically conductive metal mounting strap affixed to said zinc body and projecting from opposing ends of said zinc body to present a pair of opposing mounting tabs for engagement by said fastener members to mount said zinc body to said steel or aluminum frame member of the land vehicle or machine when the strap is molded to the zinc body.
Claim Rejections - 35 USC § 102
The text of the sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 14, and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Erhlich et al (US 2010/0096837 A1).
Claim 1: Erhlich discloses a corrosion inhibitor device (see e.g. abstract of Ehrlich) comprising:
a corrosion inhibiting apparatus (see e.g. #410 on Fig 9) including a zinc body (see e.g. #400 on Fig 9 and Fig 10 and [0038] of Erhlich); and
an electrically conductive metal mounting strap (see e.g. #404 on Fig 10 and [0043]) secured to the zinc body (see e.g. [0043]) and engaged by fastener members (see e.g. #414 on Fig 10 and [0043] of Erhlich) to connect said mounting strap to a piece to be protected (see e.g. #12 on Fig 10), said mounting strap being integrally molded into the zinc body (see e.g. [0043] of Erhlich) and extending outwardly from said body to secure said body to said piece to be protected and provide an electrically conductive connection therebetween (see e.g. #400 and #414 on Fig 10); and
said fastener members detachably connecting the zinc body and engaged mounting strap (see e.g. #420 on Fig 10 of Erhlich) to said piece to be protected (see e.g. #12 on Fig 10) by the fastener members (see e.g. #420 on Fig 10) passing through holes within said mounting strap (see e.g. #420 on Fig 9) to engage corresponding holes within the piece being protected (see e.g. #12 and #420 on Fig 9 and Fig 10) so that the zinc body is electrically conductive with respect to the component (see e.g. [0005]).
The limitation of the preamble claiming “mounted on a frame of a land vehicle or machine operating over the surface of the land” is an intended use for the device. MPEP § 2111.02 II states “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997)”. Erhlich discloses all the claimed structure of the device and would be capable of being mounted on a steel or aluminum component of a land vehicle or machine operating over the surface of the land. Furthermore, Erhlich teaches that the device can used for a trailer coupler attached to vehicles (see e.g. [0003] of Erhlich).
The limitation claiming that the zinc body is “adapted to be detachably connected to the steel or aluminum frame” is an intended use/function of the device. MPEP § 2114 II states ‘"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)’. Erhlich discloses all the claimed structure of the device and would be capable of having the zinc detachably connected to the steel or aluminum component of a land vehicle or machine. Furthermore, Erhlich discloses that the zinc body is attached to the piece being protected via bolts, making it detachably attached.
The claim contains functional limitations such as “engaged by fastener members connect said mounting strap to said steel or aluminum frame” that specifies what the device is being intended to be used with. MPEP § 2114 II states ‘"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)’. Erhlich discloses all the claimed structure of the device and would be capable of being connected to a steel or aluminum frame of a land vehicle or machine. Furthermore, Erhlich teaches that the device can used for a trailer coupler attached to vehicles (see e.g. [0003] of Erhlich).
Claim 14: Erhlich discloses a corrosion inhibitor device (see e.g. abstract of Ehrlich) comprising:
a sacrificial metal body (see e.g. #100 on Fig 7 and [0033] of Erhlich);
a mounting apparatus secured to said sacrificial metal body (see e.g. #300 on Fig 7 of Erhlich);
fastener members associated with said mounting apparatus to connect the sacrificial metal body (see e.g. #304 on Fig 7 of Erhlich),
said mounting apparatus incorporating a central opening formed as a slot (see e.g. opening in #311 on Fig 7 of Erhlich).
The limitation of the preamble claiming “for mounting on a frame of a land vehicle operating over the surface of the land” is an intended use for the device. MPEP § 2111.02 II states “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997)”. Erhlich discloses all the claimed structure of the device and would be capable of being mounted on a frame of a land vehicle operating over the surface of the land. Furthermore, Erhlich teaches that the device can used for a trailer coupler attached to vehicles (see e.g. [0003] of Erhlich).
The limitation claiming that the sacrificial body is “to connect detachably the sacrificial metal body…” is an intended use/function of the device. MPEP § 2114 II states ‘"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)’. Erhlich discloses all the claimed structure of the device and would be capable of having the sacrificial metal body detachably connected to the steel or aluminum component of a land vehicle or machine. Furthermore, Erhlich discloses that the sacrificial metal body is attached to the piece being protected via bolts, making it detachably attached (see e.g. bolts #302 and #306 on Fig 7).
The limitation claiming that the fastener members “connect the sacrificial metal body to said frame of the land vehicle in an electrically conductive manner” is an intended use/function of the device. MPEP § 2114 II states ‘"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)’. Erhlich discloses all the claimed structure of the device and would be capable having the sacrificial metal body detachably connected to the steel or aluminum component of a land vehicle or machine. Furthermore, Erhlich discloses that the sacrificial metal body is attached to the piece being protected via fasteners (bolts), making it detachably attached and the sacrificial metal body corrodes preferentially the piece being protected (see e.g. [0030] of Erhlich).
The limitation claiming the central opening permits “said sacrificial metal body to be positioned so as to be connected directly to said frame of said land vehicle in said electrically conductive manner by said fastener members” is an intended use/function of the device. MPEP § 2114 II states ‘"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)’. Erhlich discloses all the claimed structure of the device and would be capable having the sacrificial metal body detachably connected to the steel or aluminum component of a land vehicle or machine. Furthermore, Erhlich discloses that the central opening permits said sacrificial zinc body to be connected directly to said mounting apparatus by said fastener members (see e.g. #302 on Fig 7 of Erhlich).
Claim 15: Erhlich discloses that said sacrificial metal body is formed of zinc (see e.g. [0043] of Erhlich).
Claim Rejections - 35 USC § 103
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(s) 1, 4, and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Douglas (US 2,855,358 A) in view of Jacob (US 3,809,640).
Claim 1: Douglas discloses a corrosion inhibitor device (see e.g. col 1, lines 15-17 of Douglas) comprising:
a corrosion inhibiting apparatus (see e.g. #22 on Fig 3) including a sacrificial body (see e.g. col 3, lines 35-40 of Douglas); and
an electrically conductive metal mounting strap (see e.g. col 3, lines 35-40 and col 4, lines 56-59) secured to the sacrificial anode body and engaged by fastener members (see e.g. col 3, lines 48-54) to a component (see e.g. #38 on Fig 6),
said mounting strap is integrally molded into the sacrificial body and extending outwardly from said body (see e.g. #24 and #24a on Fig 1 and 4 of Douglas) to secure said sacrificial body to said component (see e.g. #20 on Fig 6) and provide electrically conductive connection therebetween (see e.g. col 4, lines 59-64);
said fastener members connecting the sacrificial metal body and engaged mounting strap to said component (bolts, see e.g. #24a on Fig 1 and Fig 4 and col 3, lines 48-54 of Douglas) by the fastener members passing through holes within said mounting strap to engage corresponding holes in the component (in order for the zinc body to be fastened with the bolts, the fastener members would have to pass through holes in the component, see e.g. #24a on Fig 1 and Fig 6 of Douglas) so that the sacrificial body is electrically conductive with respect to the component (see e.g. col 4, lines 59-64).
Douglas does not explicitly teach that sacrificial metal is zinc. Douglas teaches the device can be used to protect metallic structures exposed to seawater (see e.g. col 5, lines 50-56 of Douglas) and uses magnesium as an example metal material for the sacrificial metal body (see e.g. col 3, lines 35-38 of Douglas). Jacob teaches an anode structure similar to that of Douglas (see e.g. Fig 1 of Douglas and Fig 1 of Jacob) for protecting metal structures exposed to seawater (see e.g. col 1, line 39-50 of Jacob). Said anode of Jacob comprises “aluminum… magnesium, zinc or alloys thereof” (see e.g. col 2, lines 1-3 of Jacob). It would have been obvious to a person having ordinary skill in the art at the time of filing to modify the device of Douglas so that the sacrificial metal body is made of zinc because Jacob teaches zinc is a suitable replacement for magnesium. KSR rationale E states it obvious to choose “from a finite number of identified, predictable solutions, with a reasonable expectation of success” and MPEP § 2144.07 states “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
The limitation of the preamble claiming “mounted on a frame of a land vehicle or machine operating over the surface of the land” is an intended use for the device. MPEP § 2111.02 II states “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997)”. Douglas in view of Jacob teaches all the claimed structure of the device and would capable being mounted on a steel or aluminum component of a land vehicle or machine operating over the surface of the land.
The limitation claiming that the zinc body is ”detachably connected to the steel or aluminum frame” is an intended use/function of the device. MPEP § 2114 II states ‘"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)’. Douglas in view of Jacob teaches all the claimed structure of the device and would be capable of having the zinc body detachably connected to the steel or aluminum component of a land vehicle or machine. Furthermore, Douglas in view of Jacob teaches that the zinc body is attached to the piece being protected via bolts, making it detachably attached.
The limitation claiming that the fastener members “to connect said mount strap to said steel or aluminum frame of the land vehicle or machine” is an intended use/function of the device. MPEP § 2114 II states ‘"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)’. Douglas in view of Jacob teaches all the claimed structure of the device and would be capable of having the zinc body to connect said mount strap to a steel or aluminum frame of the land vehicle or machine.
Claim 4: Douglas in view of Jacob teaches that said fastener members are bolts that pass through holes formed in said mounting strap (see e.g. #24a on Fig 1 and Fig 4 and col 3, lines 48-54 of Douglas).
The limitation claiming the fastener members pass through “aligned holes in said steel or aluminum frame to secure the mounting strap to the steel or aluminum component” is an intended use/function for the device. MPEP § 2111.02 II states “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997)”. Douglas in view of Jacob teaches all the claimed structure of the device and would capable of having fastener members pass through aligned holes in said steel or aluminum component to secure the mounting strap to the steel or aluminum frame. Furthermore, Douglas in view of Jacob teaches the fastener members pass through aligned holes in piece being protected (see e.g. col 3, lines 48-54 of Douglas).
Claim 5: Douglas in view of Jacob teaches that said mounting strap extends from opposing ends of the zinc body to present mounting tabs (see e.g. #24 and #24a on Fig 1 and Fig 4 of Douglas).
The limitation claiming the mounting tabs “connect directly to said steel or aluminum frame of said land vehicle or machine” is an intended use/function for the device. MPEP § 2111.02 II states “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997)”. Douglas in view of Jacob teaches all the claimed structure of the device and would capable of having the mounting tabs connect directly to said steel or aluminum frame of said land vehicle or machine. Furthermore, Douglas in view of Jacob teaches the mounting tabs connect directly to the piece being protected (see e.g. col 3, lines 48-54 of Douglas).
Response to Arguments
Applicant's arguments filed 12/14/2025 have been fully considered but they are not persuasive.
On page(s) 5-7, the Applicant argues that the cited prior art does not disclose a detachable connection of the zinc body to a frame of land vehicle. Despite the Applicant’s amendments to the claims, the claims are still drawn to the device and does not positively recite the frame as a required structure of the claim; the frame is only defined as something the device is intended to be used with.
Furthermore, the Applicant admits the “Applicant has invented a new use for an old device” (see page 7). The claims are drawn to a device, not the use of a device. The Applicant agrees the device itself is known and therefore, the invention is anticipated and obvious over the prior art.
The subject material of claim 9 is not allowable because it fails to comply with the requirements of 35 USC 112(a).
Conclusion
THIS ACTION IS MADE FINAL. 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 ALEXANDER W KEELING whose telephone number is (571)272-9961. The examiner can normally be reached 7:30 AM - 4:00 PM. 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, Luan Van can be reached at 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALEXANDER W KEELING/Primary Examiner, Art Unit 1795