FINAL REJECTION
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 .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1, 3-5 and 19-22 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/197869 A1 in view of Applicant’s provided English Language translation of CN 105349000 A.
WO 2018/197869 A1 discloses an additive for adding to a coating that imparts corrosion resistance to a metal substrate, which includes a particle-shaped corrosion inhibitor containing an organic cation in a cation exchange resin, wherein azole (e.g. benzotriazole or its derivatives) or oxime are used as the organic cation, and wherein a styrene/divinylbenzene copolymer having a negatively charged group may be used as a cation exchange resin. The organic cation in a cation exchange resin corrosion inhibitor is preferably admixed with other components such as an inorganic cation modified silica (e.g. calcium silicate) used as a secondary corrosion inhibitor, and a polymer/resin binder (e.g. acrylic, polyurethane, or polyvinyl butyral), see claims, and page 4, line 9 to page 5, line 26.
WO 2018/197869 A1 differs from Applicant’s claimed invention in that there is not an explicit disclosure to the further addition of a phosphate compound as an additional corrosion inhibitor.
The secondary reference to CN 105349000 A discloses a primary core emulsion obtained by polymerizing a mixture of acrylic acid monomers which has benzotriazole absorbed thereto to thereby obtain a secondary core emulsion. Said secondary core emulsion is then polymerized with styrene so as to produce styrene acrylate copolymer nanoparticles coated with benzotriazole, see paragraphs [0022]-[0025]. Said styrene acrylate copolymer nanoparticles coated with benzotriazole, are deemed to be read on an organic cation within a cation exchange resin.
Said styrene acrylate copolymer nanoparticles coated with benzotriazole are then combined with other components to produce the final metal corrosion inhibiting coating composition. Said metal corrosion coating composition comprises: epoxy acrylic resin 60-80 parts, butyl ether amino resin 10-15 parts, fluorocarbon resin 5-8 parts, methyl isobutyl ketone 2-5 parts, cobalt oxide 2-4 parts, zinc phosphate 1-2 parts, 3-aluminum polyphosphate 1-2 parts, polymer nanoparticles coated with benzotriazole 5-10 parts, polyacrylate 2-4 parts, xylene 1-2 parts, 3-ethylenetetraamine 2-5 parts and industrial water 40-60 parts, see paragraph [0026] and claim 1. CN 105349000 A thus clearly discloses that zinc phosphate and aluminum polyphosphates are both well-known corrosion inhibitors used in corrosion inhibiting compositions for metal substrates.
The examiner calculated weight ratio of CN 105349000 A’s styrene acrylate copolymer nanoparticles coated with benzotriazole (an organic cation within a cation exchange resin) to total (zinc phosphate and aluminum polyphosphate) is: 10:2 to 5:4 which is equal to 5:1 to 1.25:1. It should be noted that Applicant’s claimed weight ratios, as set forth in claim 1 and claims 19-21, extensively overlap the Examiner’s said calculated weight ratios.
It would have been obvious to one having ordinary skill in the art to use the disclosure of the secondary reference to CN 105349000 A as strong motivation to actually incorporate zinc phosphate and/or aluminum polyphosphate particles as additional corrosion inhibitor(s) into WO 2018/197869 A1’s corrosion inhibiting coating compositions for the benefits they would individually impart to enhance corrosion protection. This incorporation of zinc phosphate and/or aluminum polyphosphate particles into WO 2018/197869 A1’s corrosion inhibiting coating compositions is further strongly supported by the fact that both WO 2018/197869 A1 and CN 105349000 A both use an organic cation in a cation exchange resin as the required first corrosion inhibiting component.
Response to Arguments
Applicant's arguments filed 12/09/25 with the amendment and the 37 C.F.R. 1.132 declaration have been fully considered but are not persuasive to put the application in condition for allowance for the reasons set forth above. Additional examiner comments are set forth next.
The Examiner after reviewing the data set forth in the 37 C.F.R. 1.132 declaration, agrees that the data supports a determination of superior and unexpected results for a coating solution: 1) comprising 3 wt.% of AXI and 2 wt.% zinc phosphate, and another coating solution: 2) comprising 3 wt.% AXI and 2 wt.% aluminum tripolyphosphate. In both coating solutions, the weight ratio of AXI to metal phosphate is 3:2 or 1.5:1.
Yet none of Applicant’s claims 1, 3-5 and 19-22 are deemed to be patentable over said showing because the showing is NOT commensurate is scope with the breath of these claims in regards to their weight ratios. Thus it seems to the Examiner, that Applicant has basically two options: 1) limit the weight ratio of independent claim 1 to 3:2 or 1.5:1 to make independent claim 1 allowable, or 2) file additional data under a new 37 C.F.R. 1.132 declaration in an attempt to show superior and unexpected results under broader weight ratios. If Applicant were to choose this second path, Applicant should file the 37 C.F.R. 1.132 declaration in conjunction with a RCE type Application so as to give the examiner time to consider the data presented therewithin. Furthermore, it would be highly beneficial and thus advised, to include quantitative data instead of just photographs in the comparison tests.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH DAVID ANTHONY whose telephone number is (571)272-1117. The examiner can normally be reached M-F: 10:00AM-6:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH D ANTHONY/Primary Examiner, Art Unit 1764
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