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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 9, 2025 has been entered.
Claims 1, 3, 5-6, 8-13, 15, 18 are pending.
The rejection of claim 1 is withdrawn in view of Applicant’s amendment.
The rejection of claims 1, 3, 5-16 under 35 U.S.C. 103 as being unpatentable over McDaniel in view of Hu et al is withdrawn in view of Applicant’s amendment.
The rejection of claims 1, 3, 6-10, 12-16 under 35 U.S.C. 103 as being unpatentable over Dotson et al is withdrawn in view of Applicant’s amendment.
The rejection of claims 5 and 11 under 35 U.S.C. 103 as being unpatentable over Dotson et al in view of Hu et al is withdrawn in view of Applicant’s amendment.
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.
Claims 1, 3, 5-6, 8-13, 15 are rejected under 35 U.S.C. 103 as being unpatentable over McDaniel (US Patent Application 2004/0109853 (already of record)) in view of Hu et al (CN 109796844 (already of record)) in view of Shu et al (WO Patent 2017/206162).
Regarding claims 1, 3, 5-6, 8-13, 15, McDaniel further teaches coating compositions comprising a binder, liquid component, additives and combinations thereof (Paragraph 297), wherein liquid components include solvent, diluent, thinner (Paragraph 298). McDaniel teaches 0.001-20wt% of surfactant, corrosion inhibitor, biocide, buffer (which satisfies claimed pH stabilizer), defoamers, dispersant/emulsifier (which include functionalized wax, wax and oil), a silicone additive (which satisfies claimed binder), neutralizing agent and rheological control agents (Paragraphs 82, 558, 561, 573, 711, 735-737, 746, 884). McDaniel further teaches 50wt% of water of a water-borne coating and 0-49.999wt% of an additional liquid component (Paragraph 607). McDaniel further teaches a liquid components can comprise 5-20% of an oil and Group IV-V oils (Paragraph 388, 392-397). McDaniel further teaches 0.2-6wt% of biocides in the coating composition (Paragraph 721). McDaniel further teaches 1% of each corrosion inhibitor in the coating composition (Paragraph 771). McDaniel further teaches 0.2-1.5% of a functionalized wax (Paragraph 735). McDaniel further teaches 1-5wt% of surfactants including Triton X100 (which satisfies claimed nonionic surfactant of the formula in claim 5) (Paragraph 728). McDaniel further teaches hydrocarbon resin binders (Paragraph 418) and polyurethane-acrylic (Paragraph 511) and a polyester (Paragraph 423). McDaniel further teaches the addition of an amine neutralizing agent (Paragraph 427). McDaniel further teaches a cellulose compound as a rheology modifier (which satisfies claimed gelling agent) (Paragraph 742). McDaniel further teaches rheology modifiers that alter viscosity can be included in the coating composition and providing viscosities for the coating composition between 50-250mPas (Paragraph 740). McDaniel further teaches the binder and/or coating reversibly softens or liquifies when heated (Paragraph 382). McDaniel further teaches film formation/drying at room temperature (Paragraphs 393, 811). However, McDaniel fails to specifically disclose ammonia, demineralized water, alkali sulfonate, equations of desired viscosity, desired travel distance and desired factor tan and the rapid gelling at shear rates of the composition of 1s-1 to 10s-1 with 1s≥t≤80s.
In the same field of endeavor, Hu et al teaches a wax modified anticorrosion coating composition (Paragraph 8) comprising an alkali sulfonate (Paragraphs 10-16) and deionized water having a conductivity of less than 50µs/cm (Paragraph 21).
In the same field of endeavor, Shu et al teaches an aqueous polymer dispersion/coating composition with good anti-corrosion properties (Abstract). Shu et al further teaches additives such as neutralizers such as ammonia (Pg. 10, Lines 24-26, Examples).
With regard to ammonia, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted ammonia in McDaniel in view of Shu et al as a neutralizing agent; the broad teachings of McDaniel already encompass a neutralizing agent. 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). See MPEP 2144.07.
With regard to demineralized water, it would have been obvious to one of ordinary skill in the art to have provided demineralized water in McDaniel in view of Hu et al in order to provide coatings with a conductivity of less than 50µs/cm.
With regard to alkali sulfonate, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have provided alkali sulfonate in McDaniel in view of Hu et al in order to provide corrosion inhibiting properties to the coating composition wherein McDaniel already includes the addition of corrosion inhibiting agents.
With regard to equations of desired viscosity, desired travel distance and desired factor tan, it would have been obvious to one of ordinary skill in the art to expect the equation of desired viscosity, desired travel distance and desired factor tan in McDaniel in view of Hu et al as McDaniel and Hu teach overlapping amounts of all of the components of the instant invention; hence, this would provide the claimed desired viscosity, desired travel distance and desired loss factor tan. Likewise, McDaniel teaches adjusting the viscosity of the composition and provides a composition with a viscosity as the same as the instantly claimed range, 50mPas.
With regard to the gelling at shear rates of the composition of 1s-1 to 10s-1 with 1s≥t≤80s., it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have expected the gelling at shear rates of the composition of 1s-1 to 10s-1 with 1s≥t≤80s in McDaniel in view of Hu et al as McDaniel in view of Hu et al teaches a similar composition as the instant invention with overlapping amounts of the claimed components and it is expected to have a similar gelling at shear rates as instantly claimed. Furthermore, the instant claims are drawn to the water-based anticorrosion composition and not the method of making the anticorrosion composition or method of using/applying the composition to a substrate.
Claims 1, 3, 6, 8-10, 12-13, 15 are rejected under 35 U.S.C. 103 as being unpatentable over Dotson et al (US Patent 4,990,184 (already of record)) in view of Shu et al (WO Patent 2017/206162).
Regarding claims 1, 3, 6, 8-10, 12-13, 15, Dotson et al discloses the invention substantially as claimed. Dotson et al teaches a coating composition comprising a) about 10-30wt% of an oxidized wax selected from the group consisting of slack wax, paraffin wax and a petrolatum that are oxidized, and mixtures thereof; (which satisfies/overlaps the claimed functionalized wax and wax or waxlike substance) b) about 1.5-5wt% of a film forming polymer selected from the group consisting of polyethylene, polybutene and polypropylene; (which satisfies/overlaps the claimed organic binder) c) about 1-4wt% of a naphthenic oil or paraffinic oil; (which satisfies/overlaps claimed Group I or V oil) d) about 1-6wt% of a corrosion inhibitor including a sulfonic acid salt including sodium, calcium, and potassium sulfonates, e) about 1-10wt% of mineral spirits, (which satisfies/overlaps claimed oil) f) about 1-6wt% of surfactants and g) about 30-80wt% of water (Col. 3, Line 62-Col 4, Line 28, Col. 6, Lines 17-49). Dotson et al further teaches coating compositions for both temporary and permanent protection of a metal part such as cold rolled steel (Col. 1, Lines 10-13). Dotson et al further teaches the composition is applied by dip coating by immersing a part to be coated within the composition, removing and allowing excess to drip off or flow off from the part there by forming a protective film coating thereon…It is still another object of the invention to provide a coating composition that when formed into a film yields a film which can be both permanent or easily removed (which satisfies claimed anticorrosion and protective coating that is reversibly gelling and physically drying and satisfies claimed two stage filming/autonomous gelling) (Col. 3, Lines 1-6). Dotson et al further teaches water that does not have interfering cations, and deionized water is preferred (Col. 7, Lines 40-50). However, Dotson et al fails to specifically disclose the 0.1-5wt% of ammonia, 0.1-5wt% of pH stabilizer and 0.1-2wt% of biocide, equations of desired travel distance and desired factor tan and the rapid gelling at shear rates of the composition of 1s-1 to 10s-1 with 1s≥t≤80s.
In the same field of endeavor, Shu et al teaches an aqueous polymer dispersion/coating composition with good anti-corrosion properties (Abstract). Shu et al further teaches additives such as neutralizers such as ammonia, biocides and buffers in the amount of 0.001-10wt% (Pg. 10, Lines 24-26, Examples).
With regard to 0.1-5wt% of ammonia, 0.1-5wt% of pH stabilizer and 0.1-2wt% of biocide, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided 0.1-5wt% of ammonia, 0.1-5wt% of pH stabilizer and 0.1-2wt% of biocide in Dotson in view of Shu et al as a neutralizing agent, stabilizer and substance to control harmful organisms. 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). See MPEP 2144.07.
With regard to the specific ranges of the components, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the specific ranges of the components in the composition in Dotson et al as Dotson et al teaches overlapping values of the claimed components as recited above; a prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclosed by the prior art", see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05(I).
With regard to equations of desired travel distance and desired factor tan, it would have been obvious to one of ordinary skill in the art to expect the equation of desired travel distance and desired factor tan in Dotson et al as Dotson et al teaches overlapping amounts of all of the components of the instant invention; hence, this would provide the claimed desired viscosity, desired travel distance and desired loss factor tan
With regard to the gelling at shear rates of the composition of 1s-1 to 10s-1 with 1s≥t≤80s., it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have expected the gelling at shear rates of the composition of 1s-1 to 10s-1 with 1s≥t≤80s in Dotson et al as Dotson et al teaches a similar composition as the instant invention with overlapping amounts of the claimed components and it is expected to have a similar gelling at shear rates as instantly claimed. Furthermore, the instant claims are drawn to the water-based anticorrosion composition and not the method of making the anticorrosion composition or method of using/applying the composition to a substrate.
Claims 5 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Dotson et al (US Patent 4,990,184 (already of record)) as applied to claims 1, 3, 6, 8-10, 12-13, 15 above, and in further view of Hu et al (CN 109796844 (already of record)).
Regarding claims 5 and 11, Dotson et al discloses the invention substantially as claimed. Dotson et al teaches the features above. However, Dotson et al fails to specifically disclose a fatty alcohol polyoxyethylene ether having C8-29 fatty acid structure and the water conductance.
In the same field of endeavor, Hu et al teaches a wax modified anticorrosion coating composition (Paragraph 8) comprising a surfactant such as a fatty alcohol polyoxyethylene ether having C8-C28 fatty acid (Paragraph 18) and water having a conductivity of less than 50µs/cm (Paragraph 21).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided a fatty alcohol polyoxyethylene ether having C8-C29 fatty acid structure in Dotson et al in view of Hu et al as Dotson et al teaches the use of surfactants in the coating composition in order to stabilize the composition, it would only be obvious to the ordinary artisan to provide an additional surfactant component. It is well settled that it is prima facie obvious to combine ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided a water conductance of less than 50µs/cm in Dotson et al in view of Hu et al as Dotson et al teaches the preferences of water that does not have interfering cations which would have a lower conductivity; it would only be obvious to the ordinary artisan to provide a conductivity within the claimed ranges.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over McDaniel (US Patent Application 2004/0109853) in view of Hu et al (CN 109796844 (already of record)).
Regarding claim 18, McDaniel further teaches coating compositions comprising a binder, liquid component, additives and combinations thereof (Paragraph 297), wherein liquid components include solvent, diluent, thinner (Paragraph 298). McDaniel teaches 0.001-20wt% of surfactant, corrosion inhibitor, biocide, buffer (which satisfies claimed pH stabilizer), defoamers, dispersant/emulsifier (which include functionalized wax, wax and oil), a silicone additive (which satisfies claimed binder), neutralizing agent and rheological control agents (Paragraphs 82, 558, 561, 573, 711, 735-737, 746, 884). McDaniel further teaches 50wt% of water of a water-borne coating and 0-49.999wt% of an additional liquid component (Paragraph 607). McDaniel further teaches a liquid components can comprise 5-20% of an oil and Group IV-V oils (Paragraph 388, 392-397). McDaniel further teaches 0.2-6wt% of biocides in the coating composition (Paragraph 721). McDaniel further teaches 1% of each corrosion inhibitor in the coating composition (Paragraph 771). McDaniel further teaches 0.2-1.5% of a functionalized wax (Paragraph 735). McDaniel further teaches 1-5wt% of surfactants including Triton X100 (which satisfies claimed nonionic surfactant of the formula in claim 5) (Paragraph 728). McDaniel further teaches hydrocarbon resin binders (Paragraph 418) and polyurethane-acrylic (Paragraph 511) and a polyester (Paragraph 423). McDaniel further teaches the addition of an amine neutralizing agent (Paragraph 427). McDaniel further teaches a cellulose compound as a rheology modifier (which satisfies claimed gelling agent) (Paragraph 742). McDaniel further teaches rheology modifiers that alter viscosity can be included in the coating composition and providing viscosities for the coating composition between 50-250mPas (Paragraph 740). McDaniel further teaches the binder and/or coating reversibly softens or liquifies when heated (Paragraph 382). McDaniel further teaches film formation/drying at room temperature (Paragraphs 393, 811). However, McDaniel fails to specifically disclose to demineralized water, alkali sulfonate, equations of desired viscosity, desired travel distance and desired factor tan and the rapid gelling at shear rates of the composition of 1s-1 to 10s-1 with 1s≥t≤80s.
In the same field of endeavor, Hu et al teaches a wax modified anticorrosion coating composition (Paragraph 8) comprising an alkali sulfonate (Paragraphs 10-16) and deionized water having a conductivity of less than 50µs/cm (Paragraph 21).
With regard to demineralized water, it would have been obvious to one of ordinary skill in the art to have provided demineralized water in McDaniel in view of Hu et al in order to provide coatings with a conductivity of less than 50µs/cm.
With regard to alkali sulfonate, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have provided alkali sulfonate in McDaniel in view of Hu et al in order to provide corrosion inhibiting properties to the coating composition wherein McDaniel already includes the addition of corrosion inhibiting agents.
With regard to equations of desired viscosity, desired travel distance and desired factor tan, it would have been obvious to one of ordinary skill in the art to expect the equation of desired viscosity, desired travel distance and desired factor tan in McDaniel in view of Hu et al as McDaniel and Hu teach overlapping amounts of all of the components of the instant invention; hence, this would provide the claimed desired viscosity, desired travel distance and desired loss factor tan. Likewise, McDaniel teaches adjusting the viscosity of the composition and provides a composition with a viscosity as the same as the instantly claimed range, 50mPas.
With regard to the gelling at shear rates of the composition of 1s-1 to 10s-1 with 1s≥t≤80s., it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have expected the gelling at shear rates of the composition of 1s-1 to 10s-1 with 1s≥t≤80s in McDaniel in view of Hu et al as McDaniel in view of Hu et al teaches a similar composition as the instant invention with overlapping amounts of the claimed components and it is expected to have a similar gelling at shear rates as instantly claimed. Furthermore, the instant claims are drawn to the water-based anticorrosion composition and not the method of making the anticorrosion composition or method of using/applying the composition to a substrate.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Dotson et al (US Patent 4,990,184 (already of record)).
Regarding claim 18, Dotson et al discloses the invention substantially as claimed. Dotson et al teaches a coating composition comprising a) about 10-30wt% of an oxidized wax selected from the group consisting of slack wax, paraffin wax and a petrolatum that are oxidized, and mixtures thereof; (which satisfies/overlaps the claimed functionalized wax and wax or waxlike substance) b) about 1.5-5wt% of a film forming polymer selected from the group consisting of polyethylene, polybutene and polypropylene; (which satisfies/overlaps the claimed organic binder) c) about 1-4wt% of a naphthenic oil or paraffinic oil; (which satisfies/overlaps claimed Group I or V oil) d) about 1-6wt% of a corrosion inhibitor including a sulfonic acid salt including sodium, calcium, and potassium sulfonates, e) about 1-10wt% of mineral spirits, (which satisfies/overlaps claimed oil) f) about 1-6wt% of surfactants and g) about 30-80wt% of water (Col. 3, Line 62-Col 4, Line 28, Col. 6, Lines 17-49). Dotson et al further teaches coating compositions for both temporary and permanent protection of a metal part such as cold rolled steel (Col. 1, Lines 10-13). Dotson et al further teaches the composition is applied by dip coating by immersing a part to be coated within the composition, removing and allowing excess to drip off or flow off from the part there by forming a protective film coating thereon…It is still another object of the invention to provide a coating composition that when formed into a film yields a film which can be both permanent or easily removed (which satisfies claimed anticorrosion and protective coating that is reversibly gelling and physically drying and satisfies claimed two stage filming/autonomous gelling) (Col. 3, Lines 1-6). Dotson et al further teaches water that does not have interfering cations, and deionized water is preferred (Col. 7, Lines 40-50). However, Dotson et al fails to specifically disclose the specific ranges of the components, equations of desired travel distance and desired factor tan and the rapid gelling at shear rates of the composition of 1s-1 to 10s-1 with 1s≥t≤80s.
With regard to the specific ranges of the components, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the specific ranges of the components in the composition in Dotson et al as Dotson et al teaches overlapping values of the claimed components as recited above; a prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclosed by the prior art", see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05(I).
With regard to equations of desired travel distance and desired factor tan, it would have been obvious to one of ordinary skill in the art to expect the equation of desired travel distance and desired factor tan in Dotson et al as Dotson et al teaches overlapping amounts of all of the components of the instant invention; hence, this would provide the claimed desired viscosity, desired travel distance and desired loss factor tan.
With regard to the gelling at shear rates of the composition of 1s-1 to 10s-1 with 1s≥t≤80s., it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have expected the gelling at shear rates of the composition of 1s-1 to 10s-1 with 1s≥t≤80s in Dotson et al as Dotson et al teaches a similar composition as the instant invention with overlapping amounts of the claimed components and it is expected to have a similar gelling at shear rates as instantly claimed. Furthermore, the instant claims are drawn to the water-based anticorrosion composition and not the method of making the anticorrosion composition or method of using/applying the composition to a substrate.
Response to Arguments
Applicant’s arguments with respect to claims 1, 3, 5-6, 8-13, 15, 18 have been considered but are moot in view of the new grounds of rejection.
With respect to the obviousness rejection over McDaniel et al in view of Hu et al and Dotson et al, a new rejection has been applied above.
With respect to claim 18, an obviousness rejection over McDaniel et al in view of Hu et al and Dotson et al, the rejection is maintained for the same reasons provided in the previous office action. With regard to equations of desired travel distance and desired factor tan, it would have been obvious to one of ordinary skill in the art to expect the equation of desired travel distance and desired factor tan in Dotson et al as Dotson et al teaches overlapping amounts of all of the components of the instant invention; hence, this would provide the claimed desired viscosity, desired travel distance and desired loss factor tan. With regard to equations of desired viscosity, desired travel distance and desired factor tan, it would have been obvious to one of ordinary skill in the art to expect the equation of desired viscosity, desired travel distance and desired factor tan in McDaniel in view of Hu et al as McDaniel and Hu teach overlapping amounts of all of the components of the instant invention; hence, this would provide the claimed desired viscosity, desired travel distance and desired loss factor tan. Likewise, McDaniel teaches adjusting the viscosity of the composition and provides a composition with a viscosity as the same as the instantly claimed range, 50mPas.
Conclusion
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/TANISHA DIGGS/Primary Examiner, Art Unit 1761 February 21, 2026