DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The Applicant's amendment filed on September 4, 2025 was received. No claim was amended. No claim was canceled. Claims 4-8 were withdrawn.
The text of those sections of Title 35. U.S.C. code not included in this action can be found in the prior Office Action Issued June 4, 2025.
Claim Rejections - 35 USC § 103
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.
Claims 1-3 and 13-18 are rejected under 35 U.S.C. 103 as being unpatentable over Eddinger (US6074464) in view of Klotz (US20060166014).
Regarding claim 1, Eddinger teaches a method of forming corrosion protection layer on a substrate, wherein the layer comprises at least one overlay coating (abstract, column 1 lines 1-10, column 3 line 65 to column 4 line 5) (forming on a corrodible substrate a corrosion resistant multiply coating). Edinger teaches the overlay coating comprises two basecoats and a topcoat (column 5 lines 10-30, column 7 line 55 to column 8 line 5; column 8 lines 18-30). Eddinger teaches the first basecoat is formed by applying a slurry bonding composition comprising particulate metallic aluminum on the surface of the substrate (applying an aluminum containing slurry onto the surface of the substate (column 5 lines 10-30, column 6 lines 45-55, column 7 lines 55-60), heating the deposited slurry to form a cured aluminum containing basecoat that is not electrically conductive (column 7 lines 60-67, column 8 line 6-10). Eddinger teaches the second basecoat is formed by applying the bonding composition comprising particulate metallic aluminum, phosphate ions and aluminum ions with +1 valance (trivalent aluminum) on the surface of the first basecoat (applying an initial solution of trivalent aluminum and phosphate ions to the surface of said basecoat) (column 5 lines 10-30, column 4 lines 28-65, column 6 lines 45-55, column 7 lines 55-60), heating the substate that has thereon said solution to form a cured ply comprising a composite that is not electrically conductive (column 7 lines 60-67, column 8 line 6-10). Eddinger teaches to mechanically working the surface of the second basecoat (composite) to form a modified composite which is in electrically conductive form (column 8 lines 10-20). Eddinger teaches to form the topcoat on the surface of the second basecoat (modified composite) by applying to the surface of the modified composite the bonding composition (column 8 line 20-30) comprising particulate metallic aluminum, phosphate ions and aluminum ions with +1 valance (trivalent aluminum) (column 5 lines 10-30, column 4 lines 28-65, column 6 lines 45-55, column 7 lines 55-60) (applying to the surface of the modified composite an additional solution of trivalent aluminum and phosphate ions , the composition of which is the same from the initial solution), heating the modified conductive coated surface having thereon said additional solution under condition which cure it to form said multiply coating which his not electrically conductive (column 7 lines 60-67, column 8 lines 6-10, column 8 lines 20-30).
Eddinger does not explicitly teaches the first basecoat slurry comprises silicate. However, Klotz teaches a coating process for forming corrosion resistant coating on a metallic surface (paragraph 0002). Klotz teaches the slurry to form such basecoat comprises silicate, solid aluminum particles and phosphate ions (paragraphs 0010 and 0030). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include silicate in the basecoat corrosion resistant coating composition as suggested by Klotz in the method of Eddinger, because Klotz teaches silicate component of the coating functions as a film former and binder which binds together the other constituent of the coating and the coating to the underlying substrate to ensure the coating is continuous adherent (paragraphs 0016 and 0024).
Regarding claims 2 and 3, It is noted that the instant claim is a product-by-process claim. “Even though product-by-process claims are limited by and defined by the process, determination of the patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thrope, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Eddinger teaches a method of forming corrosion protection layer on a substrate, wherein the layer comprises at least one overlay coating (abstract, column 1 lines 1-10, column 3 line 65 to column 4 line 5) (forming on a corrodible substrate a corrosion resistant multiply coating). Edinger teaches the overlay coating comprises two basecoats and a topcoat (column 5 lines 10-30, column 7 line 55 to column 8 line 5; column 8 lines 18-30). Eddinger teaches the first basecoat is formed by applying a slurry bonding composition comprising particulate metallic aluminum on the surface of the substrate (applying an aluminum containing slurry onto the surface of the substate (column 5 lines 10-30, column 6 lines 45-55, column 7 lines 55-60), heating the deposited slurry to form a cured aluminum containing basecoat that is not electrically conductive (column 7 lines 60-67, column 8 line 6-10). Eddinger teaches the second basecoat is formed by applying the bonding composition comprising particulate metallic aluminum, phosphate ions and aluminum ions with +1 valance (trivalent aluminum) on the surface of the first basecoat (applying an initial solution of trivalent aluminum and phosphate ions to the surface of said basecoat) (column 5 lines 10-30, column 4 lines 28-65, column 6 lines 45-55, column 7 lines 55-60), heating the substate that has thereon said solution to form a cured ply comprising a composite that is not electrically conductive (column 7 lines 60-67, column 8 line 6-10). Eddinger teaches to mechanically working the surface of the second basecoat (composite) to form a modified composite which is in electrically conductive form (column 8 lines 10-20). Eddinger teaches to form the topcoat on the surface of the second basecoat (modified composite) by applying to the surface of the modified composite the bonding composition (column 8 line 20-30) comprising particulate metallic aluminum, phosphate ions and aluminum ions with +1 valance (trivalent aluminum) (column 5 lines 10-30, column 4 lines 28-65, column 6 lines 45-55, column 7 lines 55-60) (applying to the surface of the modified composite an additional solution of trivalent aluminum and phosphate ions , the composition of which is the same from the initial solution), heating the modified conductive coated surface having thereon said additional solution under condition which cure it to form said multiply coating which his not electrically conductive (column 7 lines 60-67, column 8 lines 6-10, column 8 lines 20-30).
Eddinger does not explicitly teaches the first basecoat slurry comprises silicate. However, Klotz teaches a coating process for forming corrosion resistant coating on a metallic surface (paragraph 0002). Klotz teaches the slurry to form such basecoat comprises silicate, solid aluminum particles and phosphate ions (paragraphs 0010 and 0030). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include silicate in the basecoat corrosion resistant coating composition as suggested by Klotz in the method of Eddinger, because Klotz teaches silicate component of the coating functions as a film former and binder which binds together the other constituent of the coating and the coating to the underlying substrate to ensure the coating is continuous adherent (paragraphs 0016 and 0024).
Thus, Eddinger in view of Klotz teaches the multi-ply coating prepared by the process of claim 1 and an article that is coated with the multi-ply coating of claim 2.
Regarding claim 13, Klotz teaches the slurry comprises sodium silicate and lithium silicate (paragraph 0019).
Regarding claim 14, Klotz teaches the slurry comprises lithium polysilicate (paragraph 0022).
Regarding claims 15-16, It is noted that the instant claim is a product-by-process claim. “Even though product-by-process claims are limited by and defined by the process, determination of the patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thrope, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Eddinger teaches a method of forming corrosion protection layer on a substrate, wherein the layer comprises at least one overlay coating (abstract, column 1 lines 1-10, column 3 line 65 to column 4 line 5) (forming on a corrodible substrate a corrosion resistant multiply coating). Edinger teaches the overlay coating comprises two basecoats and a topcoat (column 5 lines 10-30, column 7 line 55 to column 8 line 5; column 8 lines 18-30). Eddinger teaches the first basecoat is formed by applying a slurry bonding composition comprising particulate metallic aluminum on the surface of the substrate (applying an aluminum containing slurry onto the surface of the substate (column 5 lines 10-30, column 6 lines 45-55, column 7 lines 55-60), heating the deposited slurry to form a cured aluminum containing basecoat that is not electrically conductive (column 7 lines 60-67, column 8 line 6-10). Eddinger teaches the second basecoat is formed by applying the bonding composition comprising particulate metallic aluminum, phosphate ions and aluminum ions with +1 valance (trivalent aluminum) on the surface of the first basecoat (applying an initial solution of trivalent aluminum and phosphate ions to the surface of said basecoat) (column 5 lines 10-30, column 4 lines 28-65, column 6 lines 45-55, column 7 lines 55-60), heating the substate that has thereon said solution to form a cured ply comprising a composite that is not electrically conductive (column 7 lines 60-67, column 8 line 6-10). Eddinger teaches to mechanically working the surface of the second basecoat (composite) to form a modified composite which is in electrically conductive form (column 8 lines 10-20). Eddinger teaches to form the topcoat on the surface of the second basecoat (modified composite) by applying to the surface of the modified composite the bonding composition (column 8 line 20-30) comprising particulate metallic aluminum, phosphate ions and aluminum ions with +1 valance (trivalent aluminum) (column 5 lines 10-30, column 4 lines 28-65, column 6 lines 45-55, column 7 lines 55-60) (applying to the surface of the modified composite an additional solution of trivalent aluminum and phosphate ions , the composition of which is the same from the initial solution), heating the modified conductive coated surface having thereon said additional solution under condition which cure it to form said multiply coating which his not electrically conductive (column 7 lines 60-67, column 8 lines 6-10, column 8 lines 20-30).
Eddinger does not explicitly teaches the first basecoat slurry comprises silicate. However, Klotz teaches a coating process for forming corrosion resistant coating on a metallic surface (paragraph 0002). Klotz teaches the slurry to form such basecoat comprises silicate, solid aluminum particles and phosphate ions (paragraphs 0010 and 0030). Klotz teaches the slurry comprises sodium silicate and lithium silicate (paragraph 0019), wherein the lithium silicate is lithium polysilicate (paragraph 0022). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include silicate in the basecoat corrosion resistant coating composition as suggested by Klotz in the method of Eddinger, because Klotz teaches silicate component of the coating functions as a film former and binder which binds together the other constituent of the coating and the coating to the underlying substrate to ensure the coating is continuous adherent (paragraphs 0016 and 0024).
Thus, Eddinger in view of Klotz teaches the multi-ply coating prepared by the process of claim 15 and an article that is coated with the multi-ply coating of claim 16.
Regarding claim 17, Eddinger teaches the initial solution includes Mg ion (column 5 line 65 to column 6 line 5) and has a pH of 1.5-4.5 (column 5 lines 30-31), which overlaps the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
Regarding claim 18, Eddinger teaches the pH is 1.5-4.5 (column 5 lines 30-31), which overlaps the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
Claims 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Eddinger (US6074464) in view of Klotz (US20060166014) as applied to claims 1-3 and 13-18 above, and further in view of Bolov (US20200331815).
Regarding claim 9, Eddinger in view of Klotz teaches all limitations of this claim, except the one or both of said initial solution and said addition solution contain trivalent chromium and nitrate. However, Belov teaches slurries that are suitable in the production of corrosion resistant protective coating systems formed by silicate based basecoats that are sealed with phosphate based topcoats (abstract). Belov teach teaches that phosphate based top coat is formed by an acidic slurry comprising phosphate ions the addition of nitrate anions and trivalent chromium cations (paragraphs 0062, 0064). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the nitrate anions and trivalent chromium cations in the solutions as suggested by Belov in the method of Eddinger in view of Klotz because Belov teaches the additions of the ions allow the coating to achieve a full cure at temperatures below 500 degrees F with acceptable corrosion and heat resistance (paragraphs 00300061-0062 and 0067).
Regarding claim 10, Eddinger teaches the initial solution and additional solution are the same composition, thus, it would be obvious to have the trivalent chromium and nitrate in both solution (slurries) in light of the teaching of Eddinger and Belov.
Regarding claim 11, Belov teaches the top coat composition (additional solution) comprises the trivalent chromium and nitrate.
Regarding claim 12, Eddinger teaches the initial solution and additional solution are the same composition, thus, it would be obvious to have the trivalent chromium and nitrate in both solution (slurries) in light of the teaching of Eddinger and Belov.
Claims 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Eddinger (US6074464) in view of Klotz (US20060166014) and Bolov (US20200331815) as applied to claims 1-3, 9-12 and 13-18 above, and further in view of Groh (US20110159175).
Regarding claim 19, Eddinger in view of Klotz and Bolov teaches all limitations of these claims, except the initial solution or additional solution contains a polymeric resin. However, Groh teaches a method for inhibiting corrosion of a high strength steel turbine component (abstract) and discloses a sealer coating is formed on the substrate comprising a polymer or phosphate binder (paragraph 0026). Polymer and phosphate binder in sealing topcoat for corrosion resistant are considered as functionally equivalent material as evidenced by Groh. The invention as a whole would have been obvious to one of ordinary skill in the art at the time the invention was made to combine the two compound, polymer and phosphate binder to be used as sealant material in the topcoat. It is prima facie obvious to combine two techniques, each of which is taught be the prior art to be useful for the same purpose, in order to forma third technique which is to be used for the very same purpose. In re Kerkhoven, 205 USPQ 1069, 1072.
Regarding claim 20, Groh teaches the resin is polytetrafluoroethylene (paragraph 0026).
Response to Arguments
Applicant's arguments filed on September 4, 2025 have been fully considered but they are not persuasive.
Applicant’s principal arguments are:
Eddinger underscores the careful and deliberative design choice within the phosphate-based chemistry and demonstrate that its composition are highly sensitive to changes in formulation and processing, thus there is no motivation for a person of ordinary skill in the art to add silicate to the basecoats disclosed in Eddinger.
The aluminum-phosphate basecoat in Eddinger contains metallic aluminum, which is different from the instant application.
the compositions of the as-filed application have improved anti-corrosive properties compared to Eddinger.
None of the references teach to mix aluminum filled basecoats of different chemistries with the same conductive basecoat system. Such mixing would have been expected to interfere with the mechanical working step required to form the modified composite, thereby disrupting the electrical conductivity and sacrificial protection necessary for corrosion resistance.
The composition of Klotz has a pH typically ranging between 10 and 14, while the compositions in Eddingon require acidic condition.
Belov does not teach the same coatings as the claimed invention or require the mechanical working step as required by claim 1. Belove’s system does not shows the markedly superior performance as the claimed invention.
In response to Applicant’s arguments, please consider the following comments:
Eddinger does not specifically disclosed to not add silicate to the composition, or adding silicate would renders the compositions or method inoperable. Thus, it would be obvious to one of ordinary skill in the art to add silicate component to the coating as Klotz teaches the benefit of silicate as a film former and binder which binds together the other constituent of the coating and the coating to the underlying substrate to ensure the coating is continuous adherent (paragraphs 0016 and 0024).
Instant claim does not exclude the addition component, such as metallic aluminum, present int eh basecoat.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the relative improved anti-corrosive properties) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
As discussed above, Eddinger teaches all feature of claim 1, except the basecoat composition further comprises silicate, which is discloses by Klotz with motivation. In response to applicant's arguments against the references individually (none of reference teaches all the claimed features), one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Regarding the argument of the mixing (addition of silicate to the basecoat) would have been expected to interfere with the mechanical working step, such statement is merely an opinion without factual support.
The rejection does not base on replacing the pH range or the whole composition of Eddinger by Klotz. While Klotz teaches, in general, the aluminum particles or the metallic surface, for example, mild steels, which tend to be attacked or degraded by other types of coating compositions that are relatively acidic (paragraph 0049), Klotz does not teach the addition of silicate requires the alkaline condition to be present in the composition. Thus, the teaching of aluminum particle or steel surface tend to be attached by “relatively acidic” (undefined pH value) by Klotz, does not considered to contradict with Eddinger’s teaching, especially the claim itself does not include pH range as a limitation.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the performance of the coating system) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Conclusion
THIS ACTION IS MADE FINAL. 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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/N.V.L/Examiner, Art Unit 1717
/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717