DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The amendments filed 25 September 2025 have been entered. The amendments to claims 2, 6–8, and 21 have overcome the 112(b) rejections previously set forth in the non-final office action dated 03 Jul 2025, and the cancellation of claim 22 renders the 112(b) rejection of claim 22 moot. The amendment to claim 9 has overcome the objection previously set forth. Claims 34 and 35 have been introduced as new claims dependent on claim 1. Claims 3, 12, 15–18, 23, 26–29, 31 and 33 have been canceled by this or a previous amendment. After entry of the amendments, claims 1, 2, 4–11, 13, 14, 19–21, 24, 25, 30 and 32 remain pending, wherein claims 19, 24, 25, 30 and 32 stand withdrawn from consideration.
It is noted that in the Remarks filed 25 September 2025, applicants initially refer to claim 22 as pending, and later refer to it as having been canceled. The amended claims show that claim 22 has been canceled, and so the Examiner will treat it as such herein.
Claim Objections
Claim 21 is objected to because of the following informalities:
The amendment to claim 21 seems to have erroneously deleted the word “comprises”, such that claim 21 now reads, “wherein the coating at least 70 wt.% matrix.” Since the original claim language makes the intended meaning of this claim clear, for purposes of examination, the Examiner will interpret this claim as including the word “comprises”. Appropriate correction is required.
Claim Interpretation
In the Remarks filed 25 September 2025, applicants presented an argument that the applied reference is non-analogous because it does not explicitly recite an anti-corrosive composition for coating electrical conductors (see the below “Response to Arguments” section). In the interest of clarifying the Examiner’s position, “anti-rust” is considered to be a sub-type of “anti-corrosive”; rust is oxidative corrosion of metal, and so anti-rust is a form of anti-corrosion. Additionally, as discussed in the Claim Interpretation section of the non-final office action dated 03 July 2025, “for coating an overhead conductor” is considered an intended use (see MPEP 2111.02(II)), which is not limiting because there is no functional difference between the claimed composition and an equivalent composition used to bestow anti-corrosive protections to substrates besides overhead conductors.
Claims 13 and 14 recite “optional” limitations. As discussed in the Claim Interpretation section of the non-final office action dated 03 July 2025, the broadest reasonable interpretation of these claims is determined in view of the positively recited limitations, not any optional limitations. If the limitations are not required to establish the metes and bounds of the claims, they are also not required to render the claims as anticipated or obvious over prior art. Therefore, the Examiner will apply any prior art that meets the positively recited limitations, even if said prior art fails to teach the optional limitations.
Claim 35 introduces the negative limitation, “wherein the composition does not include Zn metal”. For clarity of the record, the Examiner notes that ionic zinc is considered to be different from metallic zinc. Applicants cite support for this claim in their specification, at page 13, line 6, which recites “zinc 5-nitroisophthalate”, wherein the zinc is present as Zn2+. Thus, any prior art that recites the use of zinc ions, but not zinc metal, is considered to read on this claim.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 4–10, 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Fukuda et al. (WO 2019088155 A1, hereinafter “Fukuda”, previously cited).
Regarding claim 1, Fukuda teaches an anti-rust composition with excellent corrosion resistance (see paragraph 0001), which is capable of being used to coat an overhead conductor, comprising:
at least 70 weight percent of a binder which comprises a solvent and, inter alia, organically modified silica (see paragraph 0028 teaching the composition as comprising organic solvents and alkyl silicate condensate, which is an organically modified silica; see paragraph 0034 teaching the content of alkyl silicate condensate as being 10–30 wt.%; see paragraph 0081 teaching the content of solvent as being 25–50 wt.%; since the binder comprises both a solvent and a modified silica, Fukuda teaches a binder content of 35–80 wt.% [10 wt.% + 25 wt.% = 35 wt.%; 30 wt.% + 50 wt.% = 80 wt.%]; also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges); and,
an anti-corrosion agent, wherein the anti-corrosion agent is selected from, inter alia, an inhibitor pigment and a sacrificial pigment (see paragraph 0055 teaching rust-inhibitor pigments including zinc phosphate and calcium phosphate; also see paragraph 0037 teaching the use of metallic zinc powder as a sacrificial pigment).
Regarding claim 2, Fukuda teaches the composition of claim 1, and further teaches the limitation wherein the composition comprises 5 to 25 wt.% of, inter alia, organically modified silica (see paragraph 0034 teaching alkyl silicate condensate as preferably comprising 16–23 wt.% of the composition).
Regarding claim 4, Fukuda further teaches the limitation wherein the binder comprises a solvent and silica or organically modified silica (see paragraph 0028 teaching the use of organic solvents and alkyl silicate condensate, which is an organically modified silica; while Fukuda does not explicitly group these components together as a “binder”, they are present in the overall composition and fulfill the same role as the claimed “binder”).
Regarding claim 5, Fukuda fails to explicitly teach the limitation wherein the composition comprises 1 wt.% or less of water. Fukuda does not explicitly teach the use of water in the composition, but it is used to synthesize the alkyl silicate condensate (see paragraph 0099). 5 parts by mass are mixed with the silica precursor to form component A (the alkyl silicate condensate), and then component A is mixed with component B at an approximately 1:1 ratio (see Table 3), which means the water content can be no more than 2.5 wt.%. However, since the silica precursor undergoes hydrolysis, to form the sol-gel coating, the water is being consumed to drive the reaction. Therefore, while Fukuda fails to explicitly teach residual water content, it can be surmised that the amount of remaining water is negligible. This is further supported by Fukuda’s statement that zinc in the composition may react with water to form white rust (see paragraph 0072), which teaches away from having residual water since the formation of rust would hinder the anti-corrosive capabilities of the coating. Thus, while Fukuda is silent as to the residual water content, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to ensure there is less than 1 wt.% residual water in order to ensure the coating functions as intended.
Regarding claim 6, Fukuda further teaches the limitation wherein the composition comprises at least 80 wt.% binder (see the above rejection of claim 1, wherein Fukuda is shown to teach 35–80 wt.% binder; also see MPEP 2144.05(I) regarding the obviousness of a range that has an overlapping endpoint with a claimed range).
Regarding claim 7, Fukuda further teaches the limitation wherein the composition comprises from 2 to 6 wt.% anti-corrosion agent (see paragraph 0066 teaching the anti-rust component is preferably used in an amount of between 0–6 wt.%; see MPEP 2144.05(I) regarding the obviousness of overlapping ranges; Fukuda teaches a variety of agents that can serve as anti-corrosive agents [see paragraph 0028], including zinc dust [component B], a pigment [component C], and an anti-rust pigment [component D]; since the claim says the composition “comprises” an anti-corrosion agent, component D is herein applied to meet this claim limitation, and components B and C are considered to be additionally present in their own amounts).
Regarding claim 8, Fukuda fails to explicitly teach the limitation wherein the binder comprises a solvent and (i) from 70 wt.% to 90 wt.% silica (and equivalents); and (ii) from 10 wt.% to 30 wt.% of a precursor to component (i), based on the weight of (i) and (ii). Specifically, Fukuda teaches the reaction of a precursor (ethyl silicate 40, paragraph 0099) in the formation of alkyl silicate condensate, but fails to indicate the degree to which the reaction proceeded. However, Fukuda’s composition is substantially similar to what is claimed, and applicants’ specification indicates the hydrolysis reaction only proceeds until it is 70–95% complete (see specification, pg. 22, ll. 6–9), and further indicates that 100% completion would result in a solid film of silica which could not be applied as a coating. A person of ordinary skill in the art before the effective filing date of the claimed invention would have understood to be obvious that Fukuda’s composition must still be flowable, given its subsequent use as a coating (see paragraph 0109). Furthermore, although Fukuda is silent as to the amount of precursor remaining, the similarity to the claimed composition would strongly suggest that the reaction proceeds to the same degree as claimed, i.e., 70–95 wt.%, with 5–30 wt.% precursor remaining (see MPEP 2144.05(I) regarding the obviousness of overlapping ranges).
Regarding claim 9, Fukuda further teaches the limitation wherein the inhibitor pigment is selected from the group consisting of, inter alia, zinc phosphate, calcium phosphate (see paragraph 0055; although Fukuda does not explicitly use the term “inhibitor pigments” when describing these components, they are inherently serving this role, as a chemical and its properties are considered inseparable [see MPEP 2112.01(II)]).
Regarding claim 10, Fukuda further teaches the limitation wherein the sacrificial pigment is selected from the group consisting of, inter alia, metallic zinc (see paragraph 0037 teaching the use of metallic zinc dust; while Fukuda does not explicitly use the term “sacrificial pigment”, zinc dust is inherently serving this role, as a chemical and its properties are considered inseparable [see MPEP 2112.01(II)]).
Regarding claims 13 and 14, Fukuda further teaches the limitation wherein the anti-corrosion agent is selected from, or is, an inhibitor pigment (see paragraph 0055 teaching the use of components that are considered inhibitor pigments; also see the above rejection of claim 9, wherein Fukuda is shown to teach several of the claimed inhibitor pigments).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Fukuda as applied to claim 1 above, and further in view of Zhang et al. (J. Coat. Technol. Res. 2016, 13(1), 11–29, hereinafter “Zhang”, previously cited).
Regarding claim 11, Fukuda teaches the composition of claim 1, but fails to explicitly teach the composition as containing a superhydrophobic agent. Zhang teaches a review of superhydrophobic coatings with anti-corrosive properties (see generally abstract), wherein modified ZnO nanoparticles were mixed with superhydrophobic polysiloxane (see pg. 17, col. 2, ll. 9–18 teaching the use of fluorinated polysiloxanes). Since Fukuda and Zhang both teach anti-corrosive coatings which include zinc, a person of ordinary skill in the art before the effective filing date of the claimed invention would have understood to be obvious that these references can be combined; by modifying the composition of Fukuda to include superhydrophobic fluorinated polysiloxanes as taught by Zhang, the anti-corrosive properties can be increased, as superhydrophobic coatings inherently repel water which might otherwise corrode the coated substrate. As fluorinated polysiloxanes are an example of the claimed functional polysiloxanes, this combination meets the limitations of claim 11, thus rendering it prima facie obvious.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Fukuda and Hack et al. (US 2012/0021232 A1, hereinafter “Hack”).
Regarding claim 20, Fukuda teaches a coating comprising, inter alia, organically modified silica and an anti-corrosion agent selected from, inter alia, an inhibitor pigment (see Fukuda, paragraph 0028, wherein component A is organically modified silica and component D is an inhibitor pigment; also see the above rejection of claim 1).
Fukuda fails to explicitly teach the limitation wherein the coating comprises a matrix of organically modified silica. Fukuda does teach the use of organically modified silica, which would assemble into a 3D network to some degree, but it is unclear if this network expands the entire coating as a matrix would, or if there are only localized matrices in the dried coating. Applicants state that the claimed matrix phase is formed by a sol-gel process (see specification, pg. 6, ll. 28–30), and although Fukuda does not explicitly refer to a sol-gel synthesis, alkyl silicate condensate is produced via a process that appears to be a sol-gel synthesis (see paragraph 0099 teaching the dissolution and hydrolysis of precursors; the fact that the resulting product is called “condensate” indicates that the hydrolyzed precursors polymerize into a 3D network). Based on this, it can be surmised that Fukuda’s composition is likely a 3D matrix.
Hack additionally teaches an anti-corrosive coating for metal substrates (see generally abstract), wherein the coating is explicitly taught to be a sol-gel matrix comprising SiO2, Al2O3, and ZrO2 (see Hack, paragraph 0034; two of these compounds are explicitly recited in the composition of Fukuda as well: see Fukuda, paragraph 0051 teaching the use of silica [SiO2] and aluminum oxide [Al2O3]). Furthermore, Hack teaches the sol-gel matrix as being anti-corrosive, containing corrosion-inhibiting silane compounds (see paragraph 0027). A person of ordinary skill in the art before the effective filing date of the claimed invention would have understood to be obvious that Fukuda and Hack are functionally equivalent compositions, meaning it is prima facie obvious to combine them to form a third composition to be used for the same purpose (see MPEP 2144.06(II). In the instant case, the only difference is that Hack explicitly states that the sol-gel coating is a matrix, while Fukuda only inherently suggests this, and so by combining these references, a person of ordinary skill in the art would arrive at the claimed matrix coating. However, Hack provides additional motivation to modify Fukuda, teaching the covalent bonds within the sol-gel matrix as providing higher stability and more uniform distribution of anti-corrosive components (see paragraph 0017). Thus, a person of ordinary skill in the art would be sufficiently motivated to modify Fukuda according to Hack, arriving at a coating composition which explicitly is taught to be a sol-gel matrix.
Regarding the limitation wherein the coating has a thickness of from 30–100 microns, Fukuda teaches a dry coating thickness of as high as 30 µm (see Fukuda, paragraph 0093), although Fukuda also indicates that the coating thickness is preferably 10 µm or less when the coating is primarily a rust-preventative coating film. Hack further teaches a coating thickness of from 0.1–100 µm (see Hack, paragraph 0068; also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges).
Claim 34 is rejected under 35 U.S.C. 103 as being unpatentable over Fukuda as applied to claim 1 above, and further in view of Hack.
Regarding claim 34, Fukuda teaches the composition of claim 1, but fails to explicitly teach the binder as comprising a matrix of silica (see the above rejection of claim 20, wherein it is shown that Fukuda likely, but not definitely, teaches a matrix). Hack teaches a functionally equivalent composition wherein the coating is explicitly taught to comprise a sol-gel matrix (see Hack, paragraph 0034). As explained in the above rejection of claim 20, there is sufficient motivation for a person of ordinary skill in the art to modify Fukuda according to the teachings of Hack, arriving at an anti-corrosive coating composition wherein the binder comprises a matrix of organically modified silica.
Claims 1 and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Hack, as modified by Fukuda.
Regarding claim 1, Hack teaches an anti-corrosive composition (see generally abstract), which is capable of coating an overhead conductor, comprising:
a binder which comprises a solvent and silica (see paragraph 0034 teaching the inclusion of silica [SiO2] in the sol-gel coating; see paragraph 0038 teaching various organic solvents to be used with the sol-gel; also see paragraphs 0076 and 0077 teaching the sol-gel as being in a mixed solvent of ethanol and isopropanol when applied to a substrate); and,
an anti-corrosion agent, wherein the agent is selected from, inter alia, an inhibitor pigment (see paragraph 0064 teaching various corrosion-inhibiting non-silane compounds [since the anti-corrosive silanes taught by Hack do not generally fall into any of the claimed genera]; in particular, Hack teaches the use of zinc 5-nitroisophthalate, strontium aluminum tripolyphosphate, and zinc phosphate, all of which are named by applicants as inhibitor pigments [see claim 9 of the instant application]).
Hack fails to explicitly teach the limitation wherein the binder is at least 70 wt.% of the composition (see paragraphs 0076 and 0077, wherein the composition of the sol-gel is given using volumes; volumes cannot be converted into a weight percentage without knowing the concentration of the sol-gel in solvent, or without knowing the density of the non-volatile solids contained therein). Fukuda teaches a functionally equivalent anti-corrosive composition (see the above rejection of claim 1 over Fukuda), wherein the binder is comprised of 10–30 wt.% modified silica and 25–50 wt.% solvent, which represents a compositional range of 35–80 wt.% (see MPEP 2144.05(I) regarding the obviousness of overlapping ranges). It is prima facie obvious to combine two equivalent compositions to produce a third composition directed towards the same application (see MPEP 2144.06(I)). Thus, a person of ordinary skill in the art would be sufficiently motivated to modify the composition of Hack according to Fukuda, using the weight percentage of binder taught by Fukuda in lieu of the volumetric percentages disclosed by Hack. This modification arrives at the claimed invention, rendering it obvious.
Regarding claim 35, Hack, as modified by Fukuda, teaches the composition of claim 1. Hack further teaches the limitation wherein the composition does not include zinc metal. Hack teaches the use of zinc as a potential substrate to be coated, but zinc metal is not a component of the composition. While Fukuda explicitly requires the use of zinc metal (see Fukuda, Table 3, wherein all examples include component B, which is either metallic zinc or a zinc alloy), Hack does not require zinc at all. Thus, a practitioner following the teachings of Hack and modifying the binder amounts as taught by Fukuda would arrive at a composition that does not include any metallic zinc, thus arriving at the claimed invention.
Response to Arguments
Applicant's arguments filed 25 September 2025 have been fully considered but they are not persuasive.
Applicants present two primary arguments: (1) that Fukuda does not contain a clear and unambiguous disclosure of a composition according to presently amended claim 1, and (2) that Fukuda is non-analogous to the present invention.
Regarding (1), while the amended subject matter does overcome the non-final anticipation rejection, Fukuda still teaches the amended subject matter sufficiently well to render amended claim 1 obvious, as shown in the above 103 rejection of claim 1. Applicants specifically note that in Fukuda’s Table 3, only 58 wt.% alkyl silicate condensate is present in the composition. This argument is not compelling, because claim 1 explicitly recites the composition as comprising at least 70 wt.% of a binder, which comprises silica and a solvent. Even if Fukuda only teaches 58 wt.% alkyl silicate condensate, that is only part of the binder’s overall weight. By including the solvent mass as well, the binder does meet the claimed limitation.
Regarding (2), applicants argue that Fukuda is non-analogous because, “As explained on page 1 of the application as-filed, the present invention relates to anti-corrosion compositions for coating electric overhead conductors,” and “Fukuda does not relate to compositions for coating electric overhead conductors”. In response to this argument, the Examiner reiterates that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Applicants argue that their coatings are produced using a sol-gel method, and may be useful in, for example, a desert environment, where highly corrosive salt laden moisture or dew can form on a conductor overnight or first thing in the morning. However, this argument is not compelling, because the composition would be just as anti-corrosive if used in a non-desert environment, and any comparable composition is expected to be useful in the same intended applications, even if the intended use is not explicitly stated.
Allowable Subject Matter
Claim 21 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 21 recites the coating of claim 20, wherein the coating comprises at least 70 wt.% matrix. As explained in the above rejection of claim 20, Fukuda, as modified by Hack, teaches a coating comprising a silica matrix. However, Hack teaches the coating composition in terms of volumetric percentages, which cannot reasonably be converted to weight percentages with the disclosed information (this is discussed more in-depth in the above rejection of claim 1 over Hack and Fukuda). Fukuda teaches a binder composition that meets the 70 wt.% limitation, but the binder includes the solvent content in addition to the non-volatile solids content; claim 21 is drawn to the dried coating composition, meaning there is no solvent present any longer. As shown in Fukuda, Table 3, all of the example coatings only have 17–21 wt.% of the silica component after drying, meaning the matrix cannot comprise more than 21 wt.% of the coating.
Thus, because the applied prior art fails to teach the limitation of claim 21, claim 21 is determined to contain allowable subject matter.
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.
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/R.P.L./Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731
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