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 July 14, 2026 was received. No claim was amended, added or canceled.
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 January 14, 2026.
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.
The claim rejections under 35 U.S.C. 103 as being unpatentable over Horton (US20110177358) in view of Shi (KR20160012940) on claims 1-6, 8-9 and 11 are maintained.
Regarding claim 1, Horton teaches a method for cathodic protection of a metal substrate (abstract, paragraphs 0002, 0005 and 0010). Horton teaches to apply a inner coating to the surface of the substrate by a first deposition method (paragraphs 0011, 0024 and 0061), wherein the inner coating (first layer coating) composed of a first metal that is anodic in comparison to the substate (paragraph 0025) and the substrate is metal (paragraphs 0021-0022). Horton teaches to apply an intermediate coating over the first layer coating by a second deposition method, wherein the intermediate coating comprises a third metal which similar to the first metal (including aluminum, zinc or alloy) (paragraphs 0040-0041 and 0061). Thus, the third metal have a different composition from the first metallic layer. Horton teaches the third metal function as a sacrificial anode to the metallic substrate and/or inner coating (metallic first-layer coating) (paragraph 0040).
Horton does not explicitly teach the sacrificial anode have an open circuit potential equal to the metallic first layer coating. However, Shi teaches a chemical mechanical polishing composition for the cobalt or a cobalt containing substate (abstract), wherein two different metals (Co and Cu) are in direct contact with each other (example). Shi teaches the open circuit potential of the two different metal films are identical to eliminate possible galvanic corrosion reaction at the two metal layers interface (example 7). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose similar/same open circuit potential materials for two adjacent metal layers (the first metallic layer and the sacrificial anode layer) as suggested by Shi in the method of Horton because Shi teaches the identical open circuit potential eliminate possible galvanic corrosion reaction at the two metal layers interface (example 7), which is desired by Horton (see abstract, paragraphs 0001-0005).
Regarding claim 2, Horton teaches the first and second depositions are selected from hot dip galvanizing, metal thermal spraying such as flame spraying, plasma spraying, arc spraying etc, or cold spraying (paragraph 0061).
Regarding claims 3-4, Horton teaches the first and second depositions are selected from hot dip galvanizing, metal thermal spraying such as flame spraying, plasma spraying, arc spraying etc, or cold spraying (paragraph 0061), but does not explicitly teach if the first and second depositions are the same or different. However, it is obvious to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143 I E). In this case, there are only two identified, predictable solutions: using the same or different method for the first and second deposition. Since Horton teaches both depositions are selected from the same group of deposition techniques (paragraph 0061), there will be a reasonable expectation of success to use the same or different techniques for the two depositions. It will be obvious to use the same or different techniques for the first and second depositions in light of the teaching of Horton.
Regarding claim 5, Horton teaches the metallic first layer coating is essentially pure metallic aluminum or aluminum alloy (paragraph 0025). Horton teaches the thickness of the coating governs the cost/weight and durability/longevity (paragraph 0024). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the thickness of the metallic first coating layer in the process to yield the desired cost/weight and durability/longevity of the coating. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Regarding claim 6, Horton teaches the metallic second layer coating is aluminum alloy that is anodic to aluminum (paragraphs 0040-0041). Horton teaches the thickness of the coating governs the weight and durability (paragraph 0048). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the thickness of the metallic first coating layer in the process to yield the desired weight and durability the coating. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Regarding claim 8, Horton teaches the metallic first layer is an aluminum and magnesium alloy, wherein the coating comprises at least about 90% aluminum (paragraph 0025), which overlaps with the claimed range of 5% magnesium. 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 9, For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising’ (MPEP 2111.03 III). Horton teaches the metallic first-layer consists essentially of pure aluminum (paragraph 0025).
Regarding claim 11, Horton teaches Horton teaches the first and second depositions are selected metal thermal spraying such as flame spraying, plasma spraying, arc spraying etc, or cold spraying (paragraph 0061).
The claim rejections under 35 U.S.C. 103 as being unpatentable over Horton (US20110177358) in view of Shi (KR20160012940) as applied to claims 1-6, 8-9 and 11 above, and further in view of Keyvani (Anodic behavior of Al-Zn-In sacrificial anodes at different concentration of zinc and indium), on claims 7 and 10 are maintained.
Regarding claim 7, Horton in view of Shi teaches the second metallic layer coating comprises an aluminum and zinc alloy and is a sacrificial anode to the metallic first coating and/or the metallic substrate, and same metal as first metallic layer (paragraphs 0040-0041), wherein Horton teaches the first metallic coating comprising aluminum, zinc and indium (paragraph 0025). Horton further teaches the second metallic layer coating is formed by metal thermal spraying or cold spraying (paragraph 0061), which is known to operate by feeding the coating material feedstock to the spray to forming the coating. Thus, Horton teaches all the limitations of this claim, including the second coating comprising indium. Nevertheless, Keyvani teaches an Al-Zn-In sacrificial anodes material (abstract, page 1533) and discloses such sacrificial anodes coating has more active anode potential than aluminum and better current capacity than Al anodes (page 1537). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use Al-Zn-In as the sacrificial anodes (metallic second layer coating) as suggested by Keyvani in the method of Horton in view of Shi because Keyvani teaches such layer is more anodic than aluminum (the metallic first layer coating) and has good current capacity compared to just Al-Zn (page 1537), which is desired by Horton (paragraph 0040).
Regarding claim 10, Horton in view of Shi teaches the second metallic layer coating comprises an aluminum, indium and zinc alloy (paragraphs 0040-0041 and 0025). Horton teaches the thickness of the coating governs the weight and durability of the coating (paragraph 0048). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the thickness of the metallic first coating layer in the process to yield the desired weight and durability the coating. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215. Thus, Horton teaches all the limitations of this claim, except the coating composition of Al-Zn-In. However, Keyvani teaches an Al-Zn-In sacrificial anodes material with 5 wt % of Zn, 0.02 wt% indium and the balance of aluminum (abstract, pages 1533 and 1537) and discloses such sacrificial anodes coating has more active anode potential than aluminum and better current capacity than Al anodes (page 1537). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use Al-Zn-In as the sacrificial anodes (metallic second layer coating) as suggested by Keyvani in the method of Horton in view if Shi because Keyvani teaches such layer is more anodic than aluminum and has good current capacity compared to just Al-Zn (page 1537), which is desired by Horton (paragraph 0040).
Response to Arguments
Applicant's arguments filed on July 14, 2026 have been fully considered but they are not persuasive.
Applicant’s principal arguments are:
Shi merely teaches the existence of two adjacent layers having different composition but not a sacrificial anode having an open circuit potential equal to, and a different compositing from, the metallic first layer coating as required in claim 1.
Shi cannot be combined with Honton because it is non-analogous art.
In response to Applicant’s arguments, please consider the following comments:
As discussed in the rejection above, Honton teaches the sacrificial anode with different composition from the metallic first layer coating but does not explicitly teach such sacrificial anode layer (metal layer) has an open circuit potential equal to the metallic first layer. Shi is relied upon to show that the open circuit potential of the two different metal films adjacent to each other are identical for the benefit of eliminating possible galvanic corrosion reaction at the two metal layers interface (example 7). 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 Shi is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Shi teaches the open circuit potential of the two different metal films adjacent to each other are identical for the benefit of eliminating possible galvanic corrosion reaction at the two metal layers interface (example 7), indicating Shi is intended to avoid corrosion of the metal, which is similar to the claimed invention and Horton (protecting component from electrochemical corrosion). Thus, Shi is pertinent to the particular problem with which the inventor was concerned.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Howells (CN105593391A, Example 2, Zn content in aluminum alloy governs the level of open circuit potential).
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
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