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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/12/2026 has been entered.
This action is responsive to Applicant’s request for continued examination and amendment/remarks filed 05/12/2026.
Claims 1-3, 7-9, 11, 13-15, and 19-27 are currently pending.
Response to Amendment
The 103 rejections over/based on Black (US 2016/0160057 A1) in view of Wu (US 4,526,813 A) or Avakian et al. (US 7,422,789 B2) are withdrawn in view of the above amendment. Applicant’s amendments to the independent claims narrowing the flowable material to polybitumeate, aspartate, or rubber renders the Gurin primary reference closer prior art than the Black primary reference.
The 103 rejections over/based on Gurin (US 2003/0151030 A1) in view of Wu (US 4,526,813 A) and optionally in view of Avakian et al. (US 7,422,789 B2) and
previously set forth in the Office action mailed 11/12/2025 are generally maintained and have been revised below to reflect the changes in claim scope made by Applicant’s present claim amendments. New, additional secondary references are also relied upon where necessary due to amendments in dependent claims. See below.
Applicant’s amendments to claim 15 also raises a new 112 issue in claim 26. See below.
The claims are also objected to due to spacing issues. See below.
Claim Objections
The claims are objected to because the lines are crowded too closely together, making reading difficult. The present claim set contains multiple claims in the same paragraph, even multiple claims on the same line (see, e.g., claims 6 to 8, 12 to 14, and 18 to 20). Please put each claim in its own paragraph and/or line. Substitute claims with lines one and one-half or double spaced are required. See 37 CFR 1.52(b).
Claim Rejections - 35 USC § 112
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 26 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 pre-AIA the applicant regards as the invention.
It is unclear (under an indefiniteness rationale rather than clear cut 112(d) rationale) whether the limitations of claim 26 further limit and/or include all the limitations of its parent claim (claim 15). Independent claim 15 recites, "wherein the carbonaceous material comprises graphitic carbon, wherein said graphitic carbon comprises at least one graphitic carbon of microhorns, single-walled nanotubes, double-walled nanotubes, multi-walled nanotubes, graphite, and graphene". Claim 26, dependent on claim 15, recites, "wherein the carbonaceous material is multi-walled graphitic carbon."
While the parent claim recites "multi-walled nanotubes" as one of the closed species of graphitic carbon as the carbonaceous material, due to the difference in antecedent basis between the terms ("multi-walled nanotubes" as the "graphitic carbon" in claim 15 versus simply, possibly more broadly, "multi-walled graphitic carbon" in claim 26 that may include any multi-walled graphitic carbon rather than merely multi-walled nanotubes) it is unclear whether claim 26 is actually referencing the multi-walled nanotubes of claim 15 or fails to further limit and/or include all the limitations of claim 15 by requiring a graphitic carbon species outside the closed Markush group of claim 15. In essence, the "multi-walled graphitic carbon" of claim 26 lacks antecedent basis in the claims.
For purposes of further examination (or else claim 26 would not be considered relative to prior art), claim 26 is construed as if it said "wherein the carbonaceous material is multi-walled nanotubes" as they are the only multi-walled substance recited in the graphitic carbon Markush group.
Appropriate correction/clarification is required.
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.
Please note the Claim Interpretation of record regarding certain limitations recited in claims 1, 13, and 15. The claim interpretation of record remains in effect. See, for example, pages 4-5 of the Non-Final Office action mailed 04/25/2025 and page 3 of the Final Office action mailed 11/12/2025.
Claims 1-3, 7, 8, 13, and 21-25 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Gurin (US 2003/0151030 A1) in view of Wu (US 4,526,813 A) and optionally in view of Avakian et al. (US 7,422,789 B2).
As to claim 1, Gurin teaches a corrosion prevention composition (conductive composition is capable of providing corrosion resistance, and is therefore a corrosion prevention composition, para. 0029 and 0087) comprising sacrificial metal particles (metal powder) wherein said sacrificial metal particles are any of nickel, molybdenum, or cobalt (para. 0033) and a carbonaceous material forming electrical contact between said sacrificial metal particles (conductive blend containing carbon particles, abstract and para. 0033), and a polymeric matrix comprising epoxy (para. 0111). Regarding the presence of an additional flowable material, Gurin teaches the composition further comprises a flowable material comprising polymeric elastomers (see, for example, the polyetherester elastomers, neoprene, and ethylene/propylene/diene (EPDM) elastomers polymer material species as a carrier medium, para. 0108 and 0111) in addition to the prior-cited epoxy, which read on the claimed presence of a flowable material comprising a rubber polymer. While Gurin further teach the metal particles (metal powder) is passivated in the final obtained composition, the particles themselves appear to be initially provided merely as pure, implicitly non-passivated, metallic particles/powder that are later-passivated in the work-up to the final composition or composite (see, e.g., para. 0059-0060, 0089, 0135, etc.), which reads on the claimed negative limitation of the sacrificial metal particles are not passivated; alternatively, note that the Patent Trial and Appeal Board found the limitation regarding the claimed sacrificial metal particles being not passivated and other limitations as inherently met in Gurin (see pages 8, 9, & 12, Decision mailed 02/04/2025). Gurin teaches the composition is capable of forming an electrically conductive, corrosion preventing and coating/layer forming composition (para. 0029, 0066, 0081 and 0087).
Gurin fails to teach the epoxy comprises at least one amino hardened epoxy and the composition further comprises ligand component comprising a cyano group.
However, Wu teaches corrosion inhibiting compositions comprising an epoxy resin (abstract) and further teaches epoxy is an amino hardened epoxy (the composition further comprises a curing agent, i.e. hardening agent, for the epoxy resin which includes amine compounds having amino groups, col. 4 line 25 - col. 5 line 15) in order to obtain a composition having high corrosion inhibition effectiveness over an extended period of time, reduced cost and strength under severe conditions for the purpose of protecting oxidizable surfaces (col. 6 line 54 - col. 7 line 2). Wu further teach amino nitriles as a suitable group/species of curing agent (col. 5 lines 16-20), which comprise cyano groups (the nitrile groups). An amino hardened epoxy cured/hardened with an amino nitrile curing agent, as taught by Wu, also reads on a ligand component comprising a cyano group by double inclusion.
Thus, it would have been obvious to a person of ordinary skill in the art to provide the amino (e.g., amino nitrile) hardened epoxy resin composition taught by Wu (abstract and col. 4 line 25 - col. 5 line 15) as the epoxy resin in Gurin (para. 0111) in order to achieve a corrosion inhibiting composition having a high and improved effectiveness over an extended period of time, reduced cost and strength under severe conditions for the purpose of protecting iron and steel surfaces (Wu, col. 6 line 54 - col.7 line 2; Gurin, para. 0029 and 0087). Note the amino hardened epoxy taught by Wu also reads on the claimed cyano group-containing ligand in addition to the claimed polymeric matrix by double inclusion.
Alternatively concerning the claimed ligand component comprising a cyano group, Avakian et al. similarly teach a protective coating comprising a binder flowable material, sacrificial metal particles, and carbonaceous material dispersed therein to provide electrical conductivity (abstract and col. 2 lines 13-42) further comprising cyanide and thiocyanate compounds such as NaCN, KCN, NaSCN, and KSCN, which all comprise a cyano group, as a complexing agent that reduces passivation of sacrificial metal particles contained in the composition as well as stabilizes any metallic ions formed by dissolution of the metal (col. 8 line 14 to col. 9 line 2).
Accordingly, it would have also been obvious to a person of ordinary skill in the art to further provide a cyano-containing complexing agent as taught by Avakian et al. as an additive in the composition of Gurin in view of Wu order to obtain a stable coating composition suitable for corrosion protection purposes and/or reduce/inhibit the passivation of metal particles contained therein.
Alternatively concerning the claimed ligand component comprising a cyano group, Gurin further teaches providing acrylonitrile polymers in their composition (para. 0111 & 0112), which contain a cyano (nitrile) group as claimed.
The combination of Gurin in view of Wu (and optionally Avakian et al.) also reads on the claimed limitation that the polymeric matrix binds individual metal atoms in the sacrificial metal particles. Gurin teaches a polymeric matrix comprising epoxy and other polymers termed broadly as a ‘carrier media’ (Id. & para. 0109-0113) and Wu teach an amino hardened epoxy provides high corrosion inhibition effectiveness over an extended period of time, reduced cost and strength under severe conditions for the purpose of protecting oxidizable surfaces to a corrosion inhibitor composition (Id.). The teachings of the references constructively amount to the epoxy/amino-hardened epoxy resin/carrier being a binder, which implicitly, if not inherently, reads on the epoxy binding all components dispersed or contained therein, e.g., metal particles and the atoms constituting such particles. Applicant’s comments on page 7 of the response filed 10/25/2022 regarding this limitation appearing to be an implicit, if not an inherent, function of the polymeric matrix functioning as a binder are also noted (“The polymeric matrix locks the sacrificial and graphitic particles, so that contact is maintained. The remainder of the metal atoms in the sacrificial metal particles are bound by the polymer matrix.”).
The remaining limitations reciting the composition being adapted to form a layer on top of a layer of iron (II) oxide on an associated metal substrate comprising iron, prevention of oxidation of the layer of iron (II) on the associated metal substrate, and relative reduction potential of the associated metal substrate compared to the sacrificial metal particles are optional and extended little patentable weight since these are intended use limitations of the claimed composition. The composition comprises metal particles, a polymeric matrix, and carbonaceous material, and any substrate and its features are wholly separate from the recited composition.
As to claim 2, Gurin the sacrificial metal particles are microparticles or nanoparticles (the average particle size of the powders is from about 1 nanometer to about 100 microns, para. 0024) and comprise 0.00001 to about 95% by weight of said composition (3-90 wt% powders, para. 0126). Gurin also teaches the carbonaceous material comprises graphitic carbon, wherein the graphitic carbon comprises at least one graphitic carbon of single-walled carbon nanotubes and graphite (para. 0033, 0061 and 0062).
As to claim 3 regarding the exclusion of lithium salts, Wu and Avakian et al. are wholly silent to the presence of lithium salts, let alone any lithium whatsoever. However, Gurin teaches, although merely in passing, the potential provision of lithium halides as an antioxidant/heat stabilizer for thermoplastic materials among a laundry list of other suitable additives (para. 0100), lithium hydride and lithium nitrate trihydrate as phase change material and/or primary loop media among laundry lists of other suitable phase change material and/or primary loop media (para. 0114 & 0117).
While Gurin’s invention may include the provision of lithium salts in its scope, at the time of the effective filing date it would have still been obvious to a person of ordinary skill in the art to forego the inclusion of lithium salt in the teachings of Gurin as it is merely included and listed as an optional antioxidant, heat stabilizer, phase change material, or primary loop media in laundry lists of other alternative suitable antioxidants, heat stabilizers, phase change materials, or primary loop media. For example, the teachings of Gurin encompass a sterically hindered phenol or hydroquinone as an alternate stabilizer (para. 0100) and it would have been within the purview of a person of ordinary skill in the art to include the provision of a sterically hindered phenol or hydroquinone without a lithium halide stabilizer, i.e., without/free of lithium salt, which meets the claimed negative limitation of the composition having no lithium salts.
Further to claim 3 regarding the carbonaceous material being functionalized and its concentration, Gurin also teaches the carbonaceous material is functionalized (para. 0065).
Gurin fails to explicitly teach a weight range of said carbonaceous material comprises about 0.1 to about 20% by weight of said composition.
However, Gurin further teaches varying the optimal amount of employed powder between 1-99 wt% and/or 3-90% depending on the particular application of the conductive powder/composition (para. 0126) which broadly overlaps and renders obvious the claimed weight ranges of carbonaceous material.
Thus, it would have been obvious to a person of ordinary skill in the art to arrive at the claimed weight range of said carbonaceous material comprises about 0.1 to about 20% by weight of said composition because Gurin further teaches varying the optimal amount of employed powder between 1-99 wt% and/or 3-90% depending on the particular application of the conductive powder/composition (Para 0126) which broadly overlaps and renders obvious the claimed weight ranges of carbonaceous material.
Further to claim 3 regarding the composition not being a nanocomposite, Applicant’s discussion of what constitutes a nanocomposite versus a conventional composite at [0004] of the present application’s specification is noted. Generally, the difference between nanocomposites and conventional composites seems to lie in the presence of nanoparticulate, high surface to volume ratio, or exceptionally high aspect ratio reinforcing material(s) in nanocomposites and the lack thereof in conventional materials. Also, Applicant seems to further imply at [0044] and [0051] of the present application’s specification that particles of about 0.1 µm to about 300 µm in size are microparticles.
While Gurin’s invention it titled as drawn to nanocomposites, Gurin’s invention has entirely different meanings and discussions than that set forth in the present application’s specification such that Gurin being drawn to nanocomposites is merely a difference in terminology that does not preclude Gurin from meeting the claimed exclusion of a nanocomposite. Gurin succinctly defines their "nanocomposite" as being a "carrier media comprised of nanoscale particles" where "nanoscale" is itself defined as "particles having a mean average diameter of less than 1 micron meter and more particularly having a mean average diameter of less than 100 nanometers" (para. 0010-0011). In view of Gurin defining particles less than 1 µm as nanoscale particle whereas the present invention views particles larger than 0.1 µm as microparticles, many embodiments and aspects of Gurin's invention viewed from the lens of Applicant's definitions and terminology reveals Gurin's teachings encompass what the Applicant would deem a microcomposite or even a conventional composite. This meets the claimed compositions of Gurin (and/or Gurin in view of Wu) not being a nanocomposite. Alternatively, Gurin elsewhere and alternatively teach their powders may have an average particle size of up to 100 microns (para. 0024, 0034, 0058 and claim 1), which certainly encompass microcomposites or even conventional composites rather than strictly nanocomposites and meets the claimed compositions of Gurin (and/or Gurin in view of Wu) not being a nanocomposite. Clearly, Gurin is drawn to much more than merely nanocomposites commensurate with Applicant’s definition/discussion of the claimed term. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989).
As to claim 7, Gurin teaches the composition further comprises cellulose including functionalized cellulose as a carrier medium (para. 0113).
As to claim 8, Gurin teaches the composition further comprises an antioxidant additive including hydrochinon (hydroquinone, para. 0100; note Gurin teaches phenol compounds as alternatives to the hydroquinone).
As to claim 13, Gurin teaches the composition further comprises a second set of aluminum sacrificial metal particles having a lower reduction potential than said metal substrate (para. 0033).
In the event Gurin fails to explicitly teach the claimed limitation of the composition further comprises a second set of aluminum sacrificial metal particles, the selection of a second set of particles including aluminum in the composition in Gurin would have been obvious to a person of ordinary skill in the art because Gurin further teaches selecting and providing aluminum metal powder in the mixture/blend of metal particles in the composition (para. 0033).
As to claim 21, Gurin teaches the sacrificial metal particles are or may be selected to be cobalt (Id., e.g., para. 0033).
As to claim 22, Gurin meets the claimed limitation that the sacrificial metal particles comprise 0.00001% by weight of said composition substantially for the same reasons described above regarding claim 14. Note that 0.00001 wt.% equates to 0.1 parts per million (ppm) of the composition. This specific amount of nickel, molybdenum, and/or cobalt sacrificial metal particles is so infinitesimally small approaching zero wt.% that the claim can be interpreted that the component is optional and therefore not present or required. Gurin teach providing alternate non-Ni/Mo/Co species of metal powders and even teach providing metal oxide powders instead of metals (para. 0033), which read on the claimed optionality of nickel, molybdenum, and/or cobalt sacrificial metal particles. In other words, provision of any one of the other alternative species of metal powder or metal oxide powder other than metallic nickel, molybdenum, and/or cobalt metal powder reads on the claimed limitation. Alternatively, para. 0033 teach and encompass blends of the recited metal powder species; provision of a non-Ni/Mo/Co metal powder of any other metal powder disclosed at para. 0033 of Gurin with an infinitesimally small amount of nickel, molybdenum, and/or cobalt metal powder such as a blend of metal powders containing mostly non-Ni/Mo/Co metal powders with a mere pinch of nickel, molybdenum, and/or cobalt metal powder blended therein also reads on the limitation. Alternatively, persons of ordinary skill in the art would regard 0.00001 wt.% or 0.1 ppm of a nickel, molybdenum, and/or cobalt metal powder in a metal powder-containing composite/composition so infinitesimally small that an unavoidable impurity of nickel, molybdenum, and/or cobalt contained within another alternative metal powder species, such as those disclosed at para. 0033 of Gurin, reads on the limitation. In any event, Applicant has not demonstrated 0.00001 wt.% of sacrificial metal particles possesses criticality.
As to claim 23, Gurin teaches the carbonaceous material is or may be selected to be multi-walled graphitic carbon (Id., e.g., 0033, 0056, 0061 and 0062).
As to claims 24 and 25, Gurin teaches the average particle size of the powders is from about 1 nanometer to about 100 microns (Id., e.g., para. 0024), which reads/overlaps on the sacrificial metal particles being nanoparticles of about 1 to 2,500 nm in size and being microparticles of about 0.1 µm to about 300 µm in size.
Claims 8 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Gurin (US 2003/0151030 A1) in view of Wu (US 4,526,813 A) and optionally in view of Avakian et al. (US 7,422,789 B2) as applied to claims 1-3, 7, 8, 13, and 21-25 above, and further in view of Fukaya et al. (US 2015/0175817 A1), Tadamasa (US 2018/0171161 A1), or Abrams (US 4,419,279 A).
The disclosure of Gurin in view of Wu and Avakian et al. is relied upon as set forth above.
As to claim 14, Gurin teaches the sacrificial metal particles are or may be selected to be cobalt (Id., e.g., para. 0033). Gurin teaches the carbonaceous material is or may be selected to be multi-walled graphitic carbon (Id., e.g., 0033, 0056, 0061 and 0062). Gurin and/or Gurin in view of Wu/Avakian et al. teach the composition has no lithium salts or may be formulated to contain no lithium salts (Id., see the above rationale to the rejection of claim 3).
Regarding the claimed limitation that the sacrificial metal particles of cobalt comprise 0.00001% by weight of said composition, note that 0.00001 wt.% equates to 0.1 parts per million (ppm) of the composition. This specific amount of cobalt sacrificial metal particles is so infinitesimally small approaching zero wt.% that the claim can be interpreted that the component is optional and therefore not present or required. Gurin teach providing alternate non-cobalt species of metal powders and even teach providing metal oxide powders instead of metals (para. 0033), which read on the claimed optionality of cobalt sacrificial metal particles. In other words, provision of any one of the other alternative species of metal powder or metal oxide powder other than metallic cobalt metal powder reads on the claimed limitation. Alternatively, para. 0033 teach and encompass blends of the recited metal powder species; provision of a molybdenum metal powder (or any other metal powder disclosed at para. 0033 other than cobalt) with an infinitesimally small amount of cobalt metal powder such as a blend of metal powders containing mostly non-cobalt metal powders with a mere pinch of cobalt metal powder blended therein also reads on the limitation. Alternatively, persons of ordinary skill in the art would regard 0.00001 wt.% or 0.1 ppm of a cobalt metal powder in a metal powder-containing composite/composition so infinitesimally small that an unavoidable impurity of cobalt contained within another alternative metal powder species, such as those disclosed at para. 0033 of Gurin, reads on the limitation. In any event, Applicant has not demonstrated 0.00001 wt.% of sacrificial metal particles possesses criticality.
Gurin further teach the presence of a carrier media (that may comprise and organic carrier media, i.e., an organic solvent, para. 0109) and/or (directly) a solvent (para. 0099).
Gurin, Wu, and Avakian et al. fail to teach the presence of pine oil as claimed.
However, Fukaya et al. teach conductive coating compositions comprising conductive powder and epoxy resin (abstract). Fukaya et al. teach such coating compositions typically contain an organic dispersion medium as an organic solvent and terpineol (i.e., a pine oil as it is an organic liquid that can be made or derived from pine) is an exemplary solvent thereof (para. 0068-0069). Alternatively, Tadamasa teaches conductive coating compositions comprising metal particles, binder, and a dissolving agent (abstract). The binder may include an epoxy resin (para. 0019). Tadamasa teaches the dissolving agent is a solvent that may be an organic solvent, and alpha-terpineol (i.e., a pine oil as it is an organic liquid that can be made or derived from pine) is an exemplary solvent thereof (para. 0020-0021). Also, Abrams teaches pine oil as an inert inorganic material to apply a conductive paste proper rheology (abstract and col. 9 lines 51-63).
Thus, it would have been obvious to one of ordinary skill in the art to provide a pine oil (an organic liquid that can be made or derived from pine) as taught by Fukaya et al., Tadamasa, or Abrams as a solvent or carrier media of Gurin in view of Wu in order to obtain a coating composition with sufficient rheological properties or sufficient dispersion of components therein suitable for corrosion protection purposes with a reasonable expectation of success. It is also noted the Fukaya et al., Tadamasa, and Abrams references do not expressly require any lithium salts, which further meets the claimed negative limitation of the composition having no lithium salts
Alternatively regarding claim 8, while the claim is met by the teachings of Gurin for the reasons described above, the present rationale to claim 14 also meets the alternative limitation of claim 8 (that the composition further comprises pine oil).
While it is noted the cited references teach a pine oil as a solvent rather than as antioxidant as claimed, the recitation that the pine oil is an antioxidant is merely the intended use of the component and is extended little patentable weight. The mere presence of a pine oil reads on the claim regardless of whether the reference specifically appreciates or provides the component as an antioxidant. There no difference in chemical structure whether the pine oil component is provided as an antioxidant or as a solvent; the chemical structure is the same in either instance. However, arguendo, discovery that a pine oil (or any terpene or terpenoid for that matter, i.e., a compound with an isoprene unit therein) has antioxidant properties would flow naturally from the chemical structure of the compound.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Gurin (US 2003/0151030 A1) in view of Wu (US 4,526,813 A) and optionally in view of Avakian et al. (US 7,422,789 B2) as applied to claims 1-3, 7, 8, 13, and 21-25 above, and further in view of Kordomenos et al. (US 4,767,829 A) and Briand et al. (US 6,287,372 B1)
The disclosure of Gurin in view of Wu and Avakian et al. is relied upon as set forth above.
Gurin teaches the composition further comprises a compound of silica or alumina which is a microparticle or nanoparticle (fine pulverulent fillers and reinforcing agents including silica or alumina, para. 0100), which meets the at least one compound further comprised in the composition. Alternatively regarding the at least one compound, Gurin teaches the composition further comprises a compound of tin oxide (metal oxide of tin, para. 0033). In the event Gurin fails to explicitly teach the claimed limitation of the composition further comprises an additional compound of tin oxide, the selection of additional particles including tin oxide in the composition in Gurin would have been obvious to a person of ordinary skill in the art because Gurin further teaches selecting and providing powders of metal oxide of tin in the mixture/blend of metal particles in the composition (para. 0033).
While Gurin further teaches the composition may comprise an effective amount of additives (para. 0100), Gurin (and Gurin in view of Wu and Avakian et al.) fails teach the composition further comprises both aluminum i-propoxide and trimethyl borate.
However, Kordomenos et al. teach corrosion protective coating/paint composition (col. 2 lines 41-46) and teaches employing an effective amount aluminum isopropoxide as an epoxy polymerization catalyst (Col. 11, Lines 50-62). In essence, Kordomenos et al. teach aluminum isopropoxide is a known additive useful for corrosion inhibition/preventative compositions, especially epoxy-containing compositions as those disclosed in Gurin (and/or in Gurin in view of Wu).
Separately, Briand et al. teach corrosion resistant coating/paint compositions (abstract and col. 1 lines 14-21) and teaches employing trimethyl borate as a moisture scavenging or desiccant additive in order to enhance storage stability (col. 3 lines 32-35). In essence, Briand et al. teach trimethyl borate is a known additive for corrosion inhibition/preventative compositions.
Thus, it would have been obvious to one of ordinary skill in the art to provide aluminum isopropoxide as an epoxy polymerization initiation catalyst as taught by Kordomenos et al. as an additional additive in the composition of Gurin and/or in Gurin in view of Wu and Avakian et al. in order to polymerize and obtain a paint/coating composition suitable for corrosion preventative purposes. Concurrently, it would have also been obvious to one of ordinary skill in the art to provide trimethyl borate as an additive as taught by Briand et al. as an additional additive in the composition of Gurin in order to obtain a coating composition suitable for corrosion resistant purposes.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Gurin (US 2003/0151030 A1) in view of Wu (US 4,526,813 A) and optionally in view of Avakian et al. (US 7,422,789 B2) as applied to claims 1-3, 7, 8, 13, and 21-25 above, and further in view of V.S. Sastri (“Green Corrosion Inhibitors, Theory and Practice,” John Wiley & Sons, Inc., New Jersey, 2011).
The disclosure of Gurin in view of Wu and Avakian et al. is relied upon as set forth above.
While Gurin further teaches the composition may comprise an effective amount of additives (para. 0100), Gurin (and Gurin in view of Wu) fails teach the composition further comprises lead oxide.
However, V.S. Sastri teaches industrial applications of corrosion inhibition (Chapter 6 Title) and teaches the incorporation of lead oxides (red lead or lead suboxide) as a component used as an additive (filler) in coatings for corrosion protection (Page 235 and Table 6.16, Page 236). Red lead is also known as lead (II,IV) oxide or Pb3O4, and therefore comprises lead (II) oxide. Lead suboxide is also known as lead (I) oxide or Pb2O. In essence, V.S. Sastri teaches compounds such lead oxide are well known components useful for corrosion protection compositions/coatings.
Thus, it would have been obvious to one of ordinary skill in the art to provide a lead oxide as taught by V.S. Sastri as an additive in the composition of Gurin in view of Wu in order to obtain a coating composition suitable for corrosion protection purposes.
Claims 15, 19, 26, and 27 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Gurin (US 2003/0151030 A1) in view of Wu (US 4,526,813 A) and V.S. Sastri (“Green Corrosion Inhibitors, Theory and Practice,” John Wiley & Sons, Inc., New Jersey, 2011) and optionally in view of Avakian et al. (US 7,422,789 B2).
As to claim 15, Gurin teaches a corrosion prevention composition (conductive composition is capable of providing corrosion resistance, and is therefore a corrosion prevention composition, para. 0029 and 0087) comprising sacrificial metal particles (metal powder) wherein said sacrificial metal particles are molybdenum (para. 0033) and a carbonaceous material forming electrical contact between said sacrificial metal particles (conductive blend containing carbon particles, abstract and para. 0033), and a polymeric matrix comprising epoxy (para. 0111). Gurin the sacrificial metal particles comprise 0.00001 to about 95% by weight of said composition (3-90 wt% powders, para. 0126). Gurin also teaches the carbonaceous material comprises graphitic carbon, wherein the graphitic carbon comprises at least one graphitic carbon of single-walled carbon nanotubes, multi-wall carbon nanotubes, and graphite (para. 0033, 0056, 0061 and 0062). Regarding the presence of an additional flowable material with the epoxy polymeric matrix, Gurin teaches the composition further comprises a flowable material comprising polymeric elastomers (see, for example, the polyetherester elastomers, neoprene, and ethylene/propylene/diene (EPDM) elastomers polymer material species as a carrier medium, para. 0108 and 0111) in addition to the prior-cited epoxy, which read on the claimed presence of a flowable material comprising a rubber polymer. While Gurin further teach the metal particles (metal powder) is passivated in the final obtained composition, the particles themselves appear to be initially provided merely as pure, implicitly non-passivated, metallic particles/powder that are later-passivated in the work-up to the final composition (see, e.g., para. 0059-0060, 0089, 0135, etc.), which reads on the claimed timed negative limitation of the sacrificial metal particles are not passivated prior to the electrical contact with the carbonaceous material. Gurin teaches the composition is capable of forming an electrically conductive, corrosion preventing and coating/layer forming composition (para. 0029, 0066, 0081 and 0087).
Gurin fails to teach the epoxy comprises at least one amino hardened epoxy and the composition further comprises ligand component comprising a cyano group.
However, Wu teaches corrosion inhibiting compositions comprising an epoxy resin (abstract) and further teaches epoxy is an amino hardened epoxy (the composition further comprises a curing agent, i.e. hardening agent, for the epoxy resin which includes amine compounds having amino groups, col. 4 line 25 - col. 5 line 15) in order to obtain a composition having high corrosion inhibition effectiveness over an extended period of time, reduced cost and strength under severe conditions for the purpose of protecting oxidizable surfaces (col. 6 line 54 - col. 7 line 2). Wu further teach amino nitriles as a suitable group/species of curing agent (col. 5 lines 16-20), which comprise cyano groups (the nitrile groups). An amino hardened epoxy cured/hardened with an amino nitrile curing agent, as taught by Wu, also reads on a ligand component comprising a cyano group by double inclusion.
Thus, it would have been obvious to a person of ordinary skill in the art to provide the amino (e.g., amino nitrile) hardened epoxy resin composition taught by Wu (abstract and col. 4 line 25 - col. 5 line 15) as the epoxy resin in Gurin (para. 0111) in order to achieve a corrosion inhibiting composition having a high and improved effectiveness over an extended period of time, reduced cost and strength under severe conditions for the purpose of protecting iron and steel surfaces (Wu, col. 6 line 54 - col.7 line 2; Gurin, para. 0029 and 0087). Note the amino hardened epoxy taught by Wu also reads on the claimed cyano group-containing ligand in addition to the claimed polymeric matrix by double inclusion.
Alternatively concerning the claimed ligand component comprising a cyano group, Avakian et al. similarly teach a protective coating comprising a binder flowable material, sacrificial metal particles, and carbonaceous material dispersed therein to provide electrical conductivity (abstract and col. 2 lines 13-42) further comprising cyanide and thiocyanate compounds such as NaCN, KCN, NaSCN, and KSCN, which all comprise a cyano group, as a complexing agent that reduces passivation of sacrificial metal particles contained in the composition as well as stabilizes any metallic ions formed by dissolution of the metal (col. 8 line 14 to col. 9 line 2).
Accordingly, it would have also been obvious to a person of ordinary skill in the art to further provide a cyano-containing complexing agent as taught by Avakian et al. as an additive in the composition of Gurin in view of Wu order to obtain a stable coating composition suitable for corrosion protection purposes and/or reduce/inhibit the passivation of metal particles contained therein.
Alternatively concerning the claimed ligand component comprising a cyano group, Gurin further teaches providing acrylonitrile polymers in their composition (para. 0111 & 0112), which contain a cyano (nitrile) group as claimed.
The combination of Gurin in view of Wu also reads on the claimed limitation that the polymeric matrix binds individual metal atoms in the sacrificial metal particles. Gurin teaches a polymeric matrix comprising epoxy and other polymers termed broadly as a ‘carrier media’ (Id. & para. 0109-0113) and Wu teaches an amino hardened epoxy provides high corrosion inhibition effectiveness over an extended period of time, reduced cost and strength under severe conditions for the purpose of protecting oxidizable surfaces to a corrosion inhibitor composition (Id.). The teachings of the references constructively amount to the epoxy/amino-hardened epoxy resin/carrier being a binder, which implicitly, if not inherently, reads on the epoxy binding all components dispersed or contained therein, e.g., metal particles and the atoms constituting such particles. Applicant’s comments on page 7 of the response filed 10/25/2022 regarding this limitation appearing to be an implicit, if not an inherent, function of the polymeric matrix functioning as a binder are also noted (“The polymeric matrix locks the sacrificial and graphitic particles, so that contact is maintained. The remainder of the metal atoms in the sacrificial metal particles are bound by the polymer matrix.”).
While Gurin further teaches the composition may comprise an effective amount of additives (para. 0100), Gurin (and Gurin in view of Wu and Avakian et al.) fails teach the composition further comprises lead oxide.
However, V.S. Sastri teaches industrial applications of corrosion inhibition (Chapter 6 Title) and teaches the incorporation of lead oxides (red lead or lead suboxide) as a component used as an additive (filler) in coatings for corrosion protection (Page 235 and Table 6.16, Page 236). Red lead is also known as lead (II,IV) oxide or Pb3O4, and therefore comprises lead (II) oxide. Lead suboxide is also known as lead (I) oxide or Pb2O. In essence, V.S. Sastri teaches compounds such lead oxide are well known components useful for corrosion protection compositions/coatings.
Thus, it would have been obvious to one of ordinary skill in the art to provide a lead oxide as taught by V.S. Sastri (Pages 235-238 and 162) as an additive in the composition of Gurin in view of Wu in order to obtain a coating composition suitable for corrosion protection purposes (Gurin, Para 0029, 0087; Wu, col. 6 line 54 - col. 7 line 2; V.S. Sastri, Chapter 6 Title and Pages 235-237).
Regarding the claimed exclusion of lithium salts, Wu is wholly silent to the presence of lithium salts, let alone any lithium whatsoever. However, Gurin teaches, although merely in passing, the potential provision of lithium halides as an antioxidant/heat stabilizer for thermoplastic materials among a laundry list of other suitable additives (para. 0100), lithium hydride and lithium nitrate trihydrate as phase change material and/or primary loop media among laundry lists of other suitable phase change material and/or primary loop media (para. 0114 & 0117).
While Gurin’s invention may include the provision of lithium salts in its scope, at the time of the effective filing date it would have still been obvious to a person of ordinary skill in the art to forego the inclusion of lithium salt in the teachings of Gurin as it is merely included and listed as an optional antioxidant, heat stabilizer, phase change material, or primary loop media in laundry lists of other alternative suitable antioxidants, heat stabilizers, phase change materials, or primary loop media. For example, the teachings of Gurin encompass a sterically hindered phenol or hydroquinone as an alternate stabilizer (para. 0100) and it would have been within the purview of a person of ordinary skill in the art to include the provision of a sterically hindered phenol or hydroquinone without a lithium halide stabilizer, i.e., without/free of lithium salt, which meets the claimed negative limitation of the composition having no lithium salts. It is also noted V.S. Sastri does not expressly require any lithium salts, which further meets the claimed negative limitation of the composition having no lithium salts; in the event V.S. Sastri mentions or lists any lithium salts or compounds in passing in the textbook as a potential optional additive for corrosion inhibitor compositions, like is immediately disclosed prior regarding Gurin, it would have been within the purview of a person of ordinary skill in the art to forego the inclusion of an optional additive and/or include the provision of V.S. Sastri’s lead oxide corrosion inhibiting additive without any potential alternative lithium salt or lithium compound which meets the claimed negative limitation of the composition having no lithium salts.
The remaining limitations reciting the composition being adapted to form a layer on top of a layer of iron (II) oxide on an associated metal substrate comprising iron, prevention of oxidation of the layer of iron (II) on the associated metal substrate, and relative reduction potential of the associated metal substrate compared to the sacrificial metal particles are optional and extended little patentable weight since these are intended use limitations of the claimed composition. The composition comprises metal particles, a polymeric matrix/flowable material(s), carbonaceous material, a ligand, and lead oxide, and any substrate and its features are wholly separate from the recited composition.
As to claim 19, Gurin teaches the composition further comprises cellulose including functionalized cellulose as a carrier medium (para. 0113).
As to claim 26, Gurin teaches the carbonaceous material is or may be selected to be multi-walled graphitic carbon as multi-walled carbon nanotubes (Id., e.g., 0033, 0056, 0061 and 0062).
Regarding the claimed limitation that the sacrificial metal particles of molybdenum comprise 0.00001% by weight of said composition, note that 0.00001 wt.% equates to 0.1 parts per million (ppm) of the composition. This specific amount of molybdenum sacrificial metal particles is so infinitesimally small approaching zero wt.% that the claim can be interpreted that the component is optional and therefore not present or required. Gurin teach providing alternate non-molybdenum species of metal powders and even teach providing metal oxide powders instead of metals (para. 0033), which read on the claimed optionality of molybdenum sacrificial metal particles. In other words, provision of any one of the other alternative species of metal powder or metal oxide powder other than metallic molybdenum metal powder reads on the claimed limitation. Alternatively, para. 0033 teach and encompass blends of the recited metal powder species; provision of any other metal powder disclosed at para. 0033 other than molybdenum with an infinitesimally small amount of molybdenum metal powder such as a blend of metal powders containing mostly non-molybdenum metal powders with a mere pinch of molybdenum metal powder blended therein also reads on the limitation. Alternatively, persons of ordinary skill in the art would regard 0.00001 wt.% or 0.1 ppm of a molybdenum metal powder in a metal powder-containing composite/composition so infinitesimally small that an unavoidable impurity of molybdenum contained within another alternative metal powder species, such as those disclosed at para. 0033 of Gurin, reads on the limitation. In any event, Applicant has not demonstrated 0.00001 wt.% of sacrificial metal particles possesses criticality.
As to claim 27, Gurin teaches the average particle size of the powders is from about 1 nanometer to about 100 microns (para. 0024), which overlaps, if not falls within, the claimed sacrificial metal particle size of about 1 nm to about 300 µm.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Gurin (US 2003/0151030 A1) in view of Wu (US 4,526,813 A) and V.S. Sastri (“Green Corrosion Inhibitors, Theory and Practice,” John Wiley & Sons, Inc., New Jersey, 2011) and optionally in view of Avakian et al. (US 7,422,789 B2) as applied to claims 15, 19, 26, and 27 above, and further in view of Fukaya et al. (US 2015/0175817 A1), Tadamasa (US 2018/0171161 A1), or Abrams (US 4,419,279 A).
The disclosure of Gurin in view of Wu, V.S. Sastri, and Avakian et al. is relied upon as set forth above.
Gurin further teach the presence of a carrier media (that may comprise and organic carrier media, i.e., an organic solvent, para. 0109) and/or (directly) a solvent (para. 0099).
Gurin, Wu, V.S. Sastri, and Avakian et al. fail to teach the presence of pine oil as claimed.
However, Fukaya et al. teach conductive coating compositions comprising conductive powder and epoxy resin (abstract). Fukaya et al. teach such coating compositions typically contain an organic dispersion medium as an organic solvent and terpineol (i.e., a pine oil as it is an organic liquid that can be made or derived from pine) is an exemplary solvent thereof (para. 0068-0069). Alternatively, Tadamasa teaches conductive coating compositions comprising metal particles, binder, and a dissolving agent (abstract). The binder may include an epoxy resin (para. 0019). Tadamasa teaches the dissolving agent is a solvent that may be an organic solvent, and alpha-terpineol (i.e., a pine oil as it is an organic liquid that can be made or derived from pine) is an exemplary solvent thereof (para. 0020-0021). Also, Abrams teaches pine oil as an inert inorganic material to apply a conductive paste proper rheology (abstract and col. 9 lines 51-63).
Thus, it would have been obvious to one of ordinary skill in the art to provide a pine oil (an organic liquid that can be made or derived from pine) as taught by Fukaya et al., Tadamasa, or Abrams as a solvent or carrier media of Gurin in view of Wu and V.S. Sastri in order to obtain a coating composition with sufficient rheological properties or sufficient dispersion of components therein suitable for corrosion protection purposes with a reasonable expectation of success.
While it is noted the cited references teach a pine oil as a solvent rather than as antioxidant as claimed, the recitation that the pine oil is an antioxidant is merely the intended use of the component and is extended little patentable weight. The mere presence of a pine oil reads on the claim regardless of whether the reference specifically appreciates or provides the component as an antioxidant. There no difference in chemical structure whether the pine oil component is provided as an antioxidant or as a solvent; the chemical structure is the same in either instance. However, arguendo, discovery that a pine oil (or any terpene or terpenoid for that matter, i.e., a compound with an isoprene unit therein) has antioxidant properties would flow naturally from the chemical structure of the compound.
Response to Arguments
Applicant's arguments filed 05/12/2026 have been fully considered but they are not persuasive. Applicant generally argues claims 1 and 15 have been amended rendering claim 1, claim 15, and their dependent claims nonobvious in light of Gurin and Wu. For example:
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(see p.1 of the remarks).
These arguments are not persuasive because the prior art of record renders obvious the claims as amended. See the revised rationale, above.
Applicant’s arguments also fail to provide evidence specifically pointing out how the language of the claims are patentably distinguished from the relied upon prior art references. A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of 37 C.F.R. 1.111. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. See also MPEP 714.02 and 37 C.F.R. 1.111.
The remaining references listed on Forms 892 and 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon or described above.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R DIAZ whose telephone number is 571-270-0324. The examiner can normally be reached Monday-Friday 9:00a-5:00p EST.
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/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
May 19, 2026
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