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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/9/2026 has been entered.
The amendment filed 2/18/2026 has been entered. Claims 2, 4, 16, and 19 have been canceled. Claims 1, 3, 5-15, 17-18, and 20 are pending in the application. Claims 13-15 have been withdrawn from further consideration as being directed to non-elected inventions, wherein election was made with traverse in the response filed 12/5/2023. 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 § 112
Claims 1, 3, 5-12, 17-18, and 20 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. Claim 1 has been amended to recite, “wherein the method results in formation of the silane-based coating having an average thickness of at least 500 nanometers” (emphasis added), however, given that an “average” thickness is known to be a relative property dependent upon how the “average” is obtained, particularly when the thickness is on the nanoscale or less than 1 micron, the recitation of an “average thickness” without clearly reciting or defining how said “average” thickness is obtained renders the claims indefinite. Hence, given that the specification fails to define the claimed “average thickness” or provide a standard for determining said “average” thickness, 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.
Claim Rejections - 35 USC § 103
Claims 1, 3, 5-12, 17-18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over W. J. van Ooij, University of Cincinnati (EP1333107A2, hereinafter referred to as “van Ooij”, see also USPN 6,416,869, the specification of which is substantially the same as the EP document with the exception of the addition of magnesium and magnesium alloys as metal substrates in Paragraph 0020 and in the additional Example 14 of the EP document, which are not relied upon by the Examiner, and thus for simplicity, the below cited paragraph numbers refer to the EP document but the same disclosure can be similarly found in the US document), in view of Palomares Gil (US2006/0162769A1) and in further view of Palanivel (Master's thesis, University of Cincinnati, entitled “Modified Silane Thin Films as an Alternative to Chromates for Corrosion Protection of AA2024-T3 Alloy”, Faculty Advisor/Committee Chair: Dr. W. J. van Ooij).
As previously discussed on the record, van Ooij teaches a method of treating a metal substrate, such as an aluminum or aluminum alloy substrate, by applying a coating of a silane composition having at least one substantially unhydrolyzed aminosilane having at least one secondary or tertiary amino group (Abstract, Paragraph 0020) that not only provides improved adhesion to rubber and other polymers, but also provides corrosion protection, with or without a polymer layer thereon (Paragraphs 0001 and 0007); wherein particularly preferred aminosilanes include bis-silyl aminosilanes having two trisubstituted silyl groups with the substituents individually chosen from alkoxy, aryloxy and acryloxy groups (Paragraphs 0014-0016). van Ooij teaches that the silane composition may further include at least one other substantially unhydrolyzed silane other than the unhydrolyzed aminosilane having at least one secondary or tertiary amino group, particularly at least one substantially unhydrolyzed bis-silyl polysulfur silane (reading upon the claimed “sulfur-containing silanes” of instant claim 1 and particularly the sulfur-containing silanes as in instant claim 18) in order to provide adhesion to a polymer such as a paint (Paragraph 0016); wherein in a preferred embodiment, one or more substantially unhydrolyzed bis-silyl aminosilanes are combined with one or more substantially unhydrolyzed bis-silyl polysulfur silanes and applied to a metal substrate (Paragraphs 0017 and 0044-0047). van Ooij specifically teaches that the “silanes do not have to be hydrolyzed, as previously believed, since these silane mixtures provide corrosion protection and enhanced polymer adhesion whether hydrolyzed or unhydrolyzed”, and can form a dry film on the metal substrate that provides corrosion protection (Paragraphs 0019 and 0048), wherein van Ooij teaches that the term “substantially unhydrolyzed” means that the silane(s) are applied either in a pure state with no added solvents (as in instant claim 6), or from a solution which does not include water, such that water is not purposefully added to the silane(s), although the silanes may absorb some water from the atmosphere, and form a dried silane film at room temperature, typically in 30 minutes or less, or at elevated temperature that will readily crosslink without applying the silanes from a solution that includes water (Paragraphs 0023-0024 and 0048). van Ooij teaches that the unhydrolyzed silane(s) are simply coated onto the metal substrate, such as by wiping, dipping or spraying the silane or silane mixture onto the metal, wherein diluting the unhydrolyzed silane(s) with a compatible solvent allows the thickness of the silane to be controlled (Paragraph 0047), and that when the unhydrolyzed silane mixture that is applied to the metal substrate includes both an aminosilane, such as a bis-silyl aminosilane, and an organofunctional silane, such as a bis-silyl polysulfur silane, the coating is preferably dried by heating the coated metal to a temperature between about 100°C and about 250°C for a period of time sufficient to form a dry film, such as about 10 to about 60 minutes, wherein as the coating dries, unhydrolyzed silanes will become partially crosslinked, thereby forming a semi-crosslinked silane coating which not only provides significant corrosion protection but also improved adhesion to polymers such as paints (Paragraph 0049), while if the silane film is intended for corrosion protection only, the silane film may be fully crosslinked or cured simply by heating the silane coated metal substrate for a longer period of time and/or at a higher temperature (Paragraph 0049), wherein in general, the amount of crosslinking can be tailored to suit one’s particular needs (Paragraphs 0033 and 0049, Examples).
van Ooij specifically teaches working examples utilizing a mixture of unhydrolyzed silanes including bis-(trimethoxysilylpropyl)amine and bis-(triethoxysilylpropyl)tetrasulfide (reading upon the silanes as recited in instant claims 1, 3 and 18), applied to a cleaned metal substate (reading upon the claimed “optionally cleaned” and “brought into contact with a mixture comprising…at least one unhydrolyzed silane” steps i) and ii) of instant claim 1), with at least one example utilizing an aluminum substrate, and then dried in an ambient atmosphere, at room temperature or elevated temperature (as in the claimed steps iv) and v) of instant claim 1) prior to optionally applying a polymer coating thereon (as in the claimed step vi) of instant claim 1); and although van Ooij clearly teaches that the silane(s) applied to the metal surface may absorb some water from the atmosphere, which would at least partially hydrolyze the applied silane coating layer and thus affect the crosslinking thereof wherein no additional step is present between the application of the unhydrolyzed silane(s) (e.g., similar to step ii) of the claimed invention) and contact with water in the atmosphere (e.g., similar to step iii) of the claimed invention), and that the silane coatings provided by the unhydrolyzed silane composition provide a high level of corrosion protection even without a polymer layer thereon (Paragraph 0054), van Ooij does not teach: 1) that the silane composition comprises a mixture comprising benzotriazole and the unhydrolyzed silane(s) as in the claimed step ii) (Difference 1); 2) that the process includes the claimed step iii) wherein the solid surface is brought into contact with water for a time in a range of 8 to 330 seconds by immersion of the solid surface into liquid water or by spraying, rolling, or brushing liquid water on the solid surface such that the silane layer is at least partially hydrolyzed (Difference 2); and 3) that the silane coating layer has “an average thickness of at least 500 nanometers” (Difference 3), with respect to the claimed invention as recited in instant claims 1, 3, 6, and 18.
However, with respect to Difference 2, as discussed in a prior office action, Palomares Gil teaches a similar method of producing a metal oxide coating on a substrate comprising the steps of coating a surface of the substrate with a non-hydrolyzed precursor solution of one or more moisture-sensitive metal alkoxides in an organic solvent at a temperature of less than 150°C (Abstract), such as by dipping the surface of the substrate in the precursor solution or by spraying or spin-coating the surface with the precursors (e.g. contacting the solid surface with at least one unhydrolyzed metal alkoxide such that an unhydrolyzed layer is formed on the solid surface as in van Ooij and as in step ii) of instant claim 1; Paragraphs 0013-0016); rinsing the precursor solution coated on the surface of the substrate in water to hydrolyze the precursor solution at the surface of the substrate (Abstract), preferably by dipping the coated surface in a water bath (reading upon the claimed “brought into contact with water…by immersion of the solid surface into liquid water…such that the [unhydrolyzed] silane layer is at least partially hydrolyzed” as in instant claim 1 and particularly as in instant claim 7; Paragraphs 0021 and 0106-0107); to thereby form a conformal metal oxide coating on the surface; wherein preferably the method further comprises a step of drying the rinsed surface (as in van Ooij and reading upon the claimed step iv) of instant claim 1), and particularly by directing a gas flow thereover of preferably air or nitrogen (as in instant claim 9; Paragraphs 0022-0024 and 0109). Palomares Gil teaches that the metal alkoxides comprise M(OR)z where M is any metal and OR is an alkoxide group, with suitable metals selected from the group consisting of Al, Ce, Mg, Nb, Si, Sn, Ti, V, Zn and Zr (Paragraphs 0010-0011), with specific examples of suitable precursor solutions including a solution of silicon methoxide (i.e. tetramethoxysilane) in dry methanol (Paragraph 0101), thus a “silane-based coating” comprising an “unhydrolyzed silane” as in van Ooij (Entire document, particularly as noted above Abstract, Paragraphs 0010-0011, and 0101). Palomares Gil also teaches that in another aspect of the invention, the method comprises the steps of coating a surface of a substrate with a non-hydrolyzed precursor solution of one or more moisture-sensitive metal alkoxides in an organic solvent at a temperature of less than 150°C; and hydrolyzing the precursor solution at the surface of the substrate to form a metal oxide coating at a temperature of less than 150°C, wherein preferably the step of hydrolyzing the precursor solution coated on the surface of the substrate is performed in water (Paragraphs 0046-0051; Claims 100 and 103), as in the first aspect above but with an emphasis on the second step being a hydrolyzing step. Palomares Gil teaches that the substrate may be a flat substrate (Paragraph 0025) similar to the teachings of van Ooij, and given that van Ooij clearly teaches that after application of the unhydrolyzed silane(s) to the metal substrate, the unhydrolyzed silane(s) may come into contact with water and that the crosslinking degree may be tailored based upon the desired end use of the coated substrate as discussed in detail above, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize an alternative method of contacting the unhydrolyzed silane coating with water and at least partially hydrolyzing the unhydrolyzed silane(s) of van Ooij such as by dipping in water as in the invention taught by Palomares Gil, wherein absent any clear showing of criticality and/or unexpected results, one skilled in the art would have been motivated to determine the water contact or immersion time, such as in instant claims 1 and 8, to provide the desired degree of hydrolysis for a given silane mixture and/or particular degree of crosslinking and thus corrosion resistance for a particular end use of the invention taught by van Ooij.
Further, with respect to Differences 1 and 3, Palanivel teaches that corrosion protection, thickness and/or strength of silane coating films applied to an aluminum alloy substrate, particularly silane films formed from bis-(3-triethoxysilylpropyl)tetrasulfide (SILQUEST A1289®) or bis-(trimethoxysilylpropyl)amine (SILQUEST A1170®), e.g. silanes as utilized in van Ooij, can be improved by incorporating corrosion inhibitors such as benzotriazole and/or nanoparticles such as silica, alumina, zinc oxide or carbon fibers (as in instant claims 5 and 20) into the silane coating composition before applying the composition to the substrate surface, and although the Experimental procedures of Palanivel utilize either a completely water-based system or a solvent-based system wherein the bis-sulfur silane (A1289) is partially hydrolyzed (i.e. as in the alternative hydrolyzed embodiment(s) taught by van Ooij in Paragraphs 0025-0043) to provide a sufficient number of active SiOH groups to be “functional” and form “a solid rather than an oily silane film” which “still contains a considerable amount of non-hydrolyzed ester groups” (Section 2.1), given that Palanivel is in the same field of endeavor as van Ooij with both concerned with corrosion resistance as well as adhesion to paints or polymer coatings (see for example, Palanivel: pages 10, 18, and 21; Sections 2.5.2, 2.6.10, 4.2.5, and Chapter 5) as in the instant invention, and that Palanivel generally teaches that it is known in the art that “[o]ne of the ways to increase the corrosion performance of these silanes is to add corrosion inhibitors to the films” (Section 4.1), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to similarly incorporate corrosion inhibitors such as benzotriazole and/or nanoparticles such as silica, alumina zinc oxide, or carbon fibers as in the teachings of Palanivel into the unhydrolyzed silane compositions of van Ooij to further improve the corrosion resistance properties of the silane films taught by van Ooij, wherein incorporation of the nanoparticles can increase the thickness of the silane film from the normal around thickness of around 200-400 nm (Section 1.9.0, page 18) to greater than 500 nm as shown in Fig. 3.5 thereby reading upon and/or suggesting the claimed “average thickness of at least 500 nanometers” as in instant claim 1 (Palanivel: Entire document, particularly Abstract, Sections 1.10, 2.1-2.4, and Chapters 3-5). Hence, given that van Ooij and Palanivel are of the same field of endeavor, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate benzotriazole as in instant claim 1 and/or nanoparticles such as silica, alumina, zinc oxide or carbon fibers as in instant claims 5 and 20, into the silane composition taught by van Ooij to further improve the corrosion resistance and/or strength properties thereof as taught by Palanivel, given that it is prima facie obviousness to combine prior art elements according to known methods to yield predictable results and/or prima facie obviousness to use a known technique to improve similar devices in the same way. Hence, the claimed invention as recited in instant claims 1, 3, 5-8, 18, and 20 would have been obvious over the teachings of van Ooij in view of Palomares Gil and in further view of Palanivel given that it is prima facie obviousness to combine prior art reference teachings to arrive at the claimed invention where there is some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference.
With respect to instant claims 9-11, van Ooij does not teach a drying step conducted by air-blowing or wiping as in instant claim 9, particularly after the substrate “is kept for at least 15 seconds to allow water dropping” prior to at least partially drying as in instant claim 10, nor that the heating step taught by van Ooij is conducted in an oven as recited in instant claim 11, however, given that air-blowing is an obvious method of drying in the art as evidenced by van Ooij and Palanivel, both of which utilize blow-drying with air to dry the cleaned substrate prior to applying the silane coating (van Ooij: Example 1; Palanivel: Section 2.2), with air-blowing as well as “water dropping” also being obvious methods to allow excess coating to be removed from a surface to reduce thickness and/or drying time, and that “an oven” as broadly recited in instant claim 11 is an obvious means in the art to heat a coated substrate to an elevated temperature as in the teachings of van Ooij, the claimed invention as recited in instant claims 9-11 would have been obvious over the teachings of van Ooij in view of Palomares Gil and in further view of Palanivel given that it is prima facie obviousness to use a known technique to improve similar devices in the same way.
With respect to instant claim 12, van Ooij teaches that the coatings provided by the unhydrolyzed silane compositions are also highly stable and “[t]herefore, a polymer layer may be applied long after the silane coating is established on the metal substrate, and the silane coated metal (without a polymer layer) may be exposed to the environment without significant deleterious effect” and “will still provide improved polymer adhesion even after a lengthy exposure to the environment” (Paragraph 0054); and given that van Ooij also teaches that the silane coatings of the invention may be applied to the metal prior to shipment to the end user, providing corrosion protection during shipment and storage, wherein the end user may apply a polymer layer such as paint directly on top of the silane coating (Paragraph 0021), van Ooij provides a clear teaching and/or suggestion that the silane-treated metal surface is painted not before a long period of time, e.g., not before shipment to an end user and even possible storage before and/or after shipment. Further, given that shipment to an end user may take several days or weeks, and that Palanivel provides corrosion test results for several of the example silane-treated metal substrates after exposure to a corrosive environment for 7 days or 10 days (see for example, Figs. 4.3, 4.12-4.15, and 5.3), the claimed invention as recited in instant claim 12 would have been obvious over the teachings of van Ooij in view of Palomares Gil and in further view of Palanivel.
With respect to instant claim 17, van Ooij teaches that the silane coatings may be used on a variety of metals, including but not limited to galvanized or coated steels, aluminum and aluminum alloys (Paragraph 0020), and although van Ooij teaches that the metal surface may be pretreated prior to application of the silanes by sandblasting and/or cleaning, wherein the silane compositions of the invention eliminate the need for phosphate conversion coatings (Paragraphs 0020-0023), van Ooij does not teach that the metal substrate is an anodized or conversion-coated metal surface as recited in instant claim 17. However, given that anodized aluminum is an obvious species of aluminum substrate utilized in the art to provide a thicker protective oxide layer on the aluminum surface than the thinner oxide layer that forms naturally on aluminum or aluminum alloys, and that Palanivel indicates that the silane coatings are applied to a metal, particularly aluminum, wherein the metal/aluminum has an oxide surface to which the silane film is bonded (Section 1.4, Figs. 4.8, 4.22), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize an anodized aluminum or anodized metal substrate as the metal substrate in the invention taught by van Ooij, thereby rendering the claimed invention as recited in instant claim 17 obvious over van Ooij in view of Palomares Gil and in further view of Palanivel given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results.
Response to Arguments
Applicant's arguments filed 2/18/2026 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’s claim amendments and arguments filed 2/18/2026.
Citation of pertinent prior art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. van Ooij (US2005/0179011A1) discloses a silane film that can be used on metals as a standalone process or as a primer for a top-coating by common paint systems, wherein the film generally comprises a bis-silane, a polymer, and nanoparticles, having an increased film thickness in the range of 1 to 20 µm; while van Ooij (US2005/0079364A1) teaches a silane composition for treating metal substrate wherein the composition comprises at least one substantially hydrolyzed amino silane, at least one substantially hydrolyzed sulfur-containing silane, and optionally a nano-sized particulate material, wherein a coating formed from the silane composition has a thickness of about 1 micron or less and advantageously, a thickness of about 0.2 to about 0.6 µm.
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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