DETAILED ACTION
This is an Office action based on application number 18/143,998 filed 5 May 2023, which claims priority to provisional application number 63/339,289 filed 6 May 2022. Claims 1, 3-6, and 8-21 are pending. Claims 13-20 are withdrawn due to Applicant’s amendments. Claims 2 and 7 are canceled.
Amendments to the claims, filed 12 February 2026, have been entered into the above-identified application.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12 February 2026 has been entered.
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 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:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3-6, and 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over Moore et al. (US Patent Application Publication No. US 2019/0002739 A1) (Moore) in view of Matzdorf et al. (US Patent Application Publication No. US 2012/0187350 A1) (Matzdorf) and Kinlen et al. (US Patent Application Publication No. US 2018/0087162 A1) (Kinlen).
Reference is made to FIG. 1 of Moore, reproduced below:
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Regarding instant claims 1, 3-4, and 11-12:
Moore discloses a sol-gel coating system comprising a metal substrate and a sol-gel formulation disposed on the substrate (Claim 16).
Moore discloses that the sol-gel formulation comprises an organosilane, a metal alkoxide, and an acid stabilizer (Claim 1).
Moore further discloses that the sol-gel formulation has from about 0.1 wt% to about 20 wt% organosilane (Claim 2).
Moore further discloses that the sol-gel is a reaction product (paragraph [0026]).
Moore further discloses that the organosilane is inclusive of 3-glycidoxy-propyltriethoxysilane, 3-glycidoxypropyldiisopropylethoxysilane, 2-(3,4-epoxycyclohexyl)ethyltrimethoxysilane, 2-(3,4-epoxycyclohexyl)ethyltriethoxysilane (Claim 9) (i.e., epoxy-containing organosilanes).
Moore further discloses that the acid stabilizer is acetic acid (paragraph [0055]).
Moore further discloses that the metal alkoxide is inclusive of zirconium (IV) tetra-n-propoxide and zirconium (IV) tetra-isopropoxide (paragraph [0037]) (i.e., zirconium propoxide).
Moore further discloses that the sol-gel comprises organic solvents for dissolving, suspending, emulsifying, and/or dispersing the sol-gel components, wherein said organic solvents are inclusive of alcohols (paragraph [0060]). Said alcohols are construed to read on the broadly claimed “surfactant”.
Moore further discloses that the sol-gel further comprises a corrosion inhibitor in an amount of about 4 wt %, about 5 wt %, about 7 wt %, about 10 wt %, or about 15 wt % (paragraph [0063]).
Moore further discloses that the corrosion inhibitors are organic (paragraph [0041]).
FIG. 1 illustrates the sol-gel system <100> comprising a sol-gel <102> disposed on a metal substrate <104>, wherein the sol-gel <102> promotes adherence between metal substrate <104> and a secondary layer <106> that includes a primer (paragraph [0064]).
Moore further discloses that said secondary layer includes an organic material (paragraph [0067]); therefore, Moore meets the claimed organic primer.
Moore further discloses that the secondary layer additionally includes corrosion inhibitors (paragraph [0067]).
Moore also discloses another embodiment wherein the secondary layer is a topcoat layer (paragraph [0067]).
Moore does not explicitly disclose the claimed composition of the primer.
However, Matzdorf discloses an electrochemically corrosion-resistant composition for application onto metal substrates comprising a film-forming binder inclusive of an inorganic binder or epoxy polymers and aluminum alloy powder pigments (Claim 1).
Matzdorf further disclosed that he inorganic binder is inclusive of polymers derived from siloxanes (paragraph [0085]).
Matzdorf further discloses that the aluminum alloy powder-pigment is coated with an effective amount of a semi-conducting corrosion inhibitor comprising at least a trivalent chromium compound and hexafluorozicronate (Claim 1).
Said “aluminum alloy powder-pigment is coated with an effective amount of a semi-conducting corrosion inhibitor comprising at least a trivalent chromium compound and hexafluorozicronate” meets the claimed inorganic corrosion inhibitor and the plurality of metal particles that are different from the organic corrosion inhibitors disclosed by Moore (i.e., the first corrosion inhibitor recited by claim 21).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to use the composition of Matzdorf as the primer of Moore. The motivation for doing so would have been that the composition of Matzdorf is usable as a primer containing corrosion inhibitors, which is desired by Moore, that also provides additional corrosion-resistance when applied to metal substrates.
Moore does not explicitly disclose a topcoat layer disposed on the primer layer.
However, Kinlen discloses an article comprising a first corrosion protection layer composed of a sol-gel disposed on a substrate, and a second corrosion protection layer disposed on the first corrosion protection layer (Claim 1).
Kinlen further discloses that said second corrosion protection layer comprises a primer (paragraph [0027]).
Kinlen further disclose a that topcoat layer is formed on the second corrosion protection layer, wherein said topcoat layer is durable, abrasion resistant, chemical resistant, heat resistant, and visually appealing (paragraph [0020]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to include the topcoat of Kinlen on the structure of Moore. The motivation for doing so would have been that said topcoat is durable, abrasion resistant, chemical resistant, heat resistant, and visually appealing.
Therefore, it would have been obvious to combine Matzdorf and Kinlen with Moore to obtain the invention as specified by the instant claims.
Regarding instant claim 5:
Matzdorf further discloses that the epoxies are made from curable epoxy precursors (paragraph [0123]).
The term “amine-cured epoxy” is construed to be a product-by-process limitation (i.e., using an amine to cure the epoxy). “[E]ven though product‑by‑process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the 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 Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP § 2113.
Therefore, absent evidence of criticality regarding the presently claimed curing process and given that Matzdorf meets the requirements of the claimed cured epoxy composition, the prior art combination meets the requirements of the instant claim.
Regarding instant claim 6:
Moore discloses the sol-gel composition as cited in the rejection of claim 1, above.
Moore does not explicitly disclose the surfactant recited by the claims.
However, Kinlen discloses a corrosion protection layer disposed on a substrate, wherein said corrosion protection layer comprises a sol-gel composition composed of an organosilane, a metal alkoxide, an organic acid, and an ethoxylated propoxylated C8-C10 alcohol surfactant (Claims 1 and 7; paragraphs [0028; 0033]).
Said “ethoxylated propoxylated C8-C10 alcohols” read on the claimed ethylene-oxide-propylene-oxide alcohol.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings before him or her, to include the ethoxylated propoxylated C8-C10 alcohol of Kinlen in the sol-gel composition of Moore. The motivation for doing so would have been that said ethoxylated propoxylated C8-C10 alcohol meet those alcohols desired by Moore. Furthermore, Kinlen establishes that said alcohols are known additives for the remarkably similar sol-gel compositions disclosed by Moore and Kinlen. The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007). See MPEP § 2143(A).
Regarding instant claims 8-10:
Moore further discloses that the corrosion inhibitor is inclusive of 2,5-dimercapto-1,3,4-thiadiazole (paragraph [0043]).
Claim 5 is alternatively rejected under 35 U.S.C. 103 as being unpatentable over Moore in view of Matzdorf and Kinlen as applied to claim 4 above, and further in view of Wu (US Patent No. 4,526,813) (Wu).
Regarding instant claim 5:
Moore in view of Matzdorf discloses the coated substrate comprising the sol-gel and the cured epoxy primer.
Moore in view of Matzdorf does not explicitly disclose an amine-cured epoxy.
However, Wu discloses a composition which, when applied to a metal surface, forms a corrosion-inhibiting film on the metal surface, wherein the film comprises an epoxy resin and an effective amount of an amine curing agent for the epoxy resin (col. 2, lines 5-9).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to use the epoxy resin curable with an amine curing agent of Wu as the epoxy in the primer of Matzdorf. The motivation for doing so would have been that said amine-curable epoxy resin of Wu is recognized as a resin usable to make corrosion-inhibiting films also desired by Matzdorf.
Therefore, it would have been obvious to combine Wu with Moore in view of Matzdorf and Kinlen to obtain the invention as specified by the instant claim.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Moore in view of Matzdorf.
Regarding instant claim 21:
Moore discloses a sol-gel coating system comprising a metal substrate and a sol-gel formulation disposed on the substrate (Claim 16).
Moore discloses that the sol-gel formulation comprises an organosilane, a metal alkoxide, and an acid stabilizer (Claim 1).
Moore further discloses that the sol-gel is a reaction product (paragraph [0026]).
Moore further discloses that the organosilane is inclusive of 3-glycidoxy-propyltriethoxysilane, 3-glycidoxypropyldiisopropylethoxysilane, 2-(3,4-epoxycyclohexyl)ethyltrimethoxysilane, 2-(3,4-epoxycyclohexyl)ethyltriethoxysilane (Claim 9) (i.e., epoxy-containing organosilanes).
Moore further discloses that the sol-gel comprises organic solvents for dissolving, suspending, emulsifying, and/or dispersing the sol-gel components, wherein said organic solvents are inclusive of alcohols (paragraph [0060]). Said alcohols are construed to read on the broadly claimed “surfactant”.
Moore further discloses that the sol-gel further comprises a corrosion inhibitor in an amount of about 4 wt %, about 5 wt %, about 7 wt %, about 10 wt %, or about 15 wt % (paragraph [0063]).
Moore further discloses that the corrosion inhibitors are organic (paragraph [0041]).
FIG. 1 illustrates the sol-gel system <100> comprising a sol-gel <102> disposed on a metal substrate <104>, wherein the sol-gel <102> promotes adherence between metal substrate <104> and a secondary layer <106> that includes a primer (paragraph [0064]).
Moore further discloses that said secondary layer includes an organic material (paragraph [0067]); therefore, Moore meets the claimed organic primer.
Moore further discloses that the secondary layer additionally includes corrosion inhibitors (paragraph [0067]).
Moore does not explicitly disclose the claimed composition of the primer.
However, Matzdorf discloses an electrochemically corrosion-resistant composition for application onto metal substrates comprising a film-forming binder inclusive of an inorganic binder or epoxy polymers and aluminum alloy powder pigments (Claim 1).
Matzdorf further disclosed that he inorganic binder is inclusive of polymers derived from siloxanes (paragraph [0085]).
Matzdorf further discloses that the aluminum alloy powder-pigment is coated with an effective amount of a semi-conducting corrosion inhibitor comprising at least a trivalent chromium compound and hexafluorozicronate (Claim 1).
Said “aluminum alloy powder-pigment is coated with an effective amount of a semi-conducting corrosion inhibitor comprising at least a trivalent chromium compound and hexafluorozicronate” meets the claimed inorganic corrosion inhibitor and the plurality of metal particles that are different from the organic corrosion inhibitors disclosed by Moore (i.e., the first corrosion inhibitor recited by claim 21).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to use the composition of Matzdorf as the primer of Moore. The motivation for doing so would have been that the composition of Matzdorf is usable as a primer containing corrosion inhibitors, which is desired by Moore, that also provides additional corrosion-resistance when applied to metal substrates.
Therefore, it would have been obvious to combine Matzdorf with Moore to obtain the invention as specified by the instant claim.
Answers to Applicant’s Arguments
In response to Applicant’s amendments, the grounds of rejection are altered. Applicant’s arguments regarding the prior art rejections of record are fully considered, but are unpersuasive.
Applicant argues that the rejection of claims 1 and 21 in view of the combination of Moore and Matzdorf is flawed because a person of ordinary skill in the art would not have been motivated to replace a coating specifically configured to coat a sol-gel layer with a composition specifically configured to coat a metallic layer. Specifically, Applicant alleges that the secondar coating of Moore is a coating specifically formulated to adhere to a sol-gel material, whereas the composition of Matzdorf is formulated to adhere to a metallic substrate. Applicant argues that a person of ordinary skill in the art knows very well that adhesion mechanism for adhering to a metallic surface is very different that the adhesion mechanism for adhering to a coating of non-metallic material, such as a sol-gel material. To support their position, Applicant offers references which broadly disclose that the adhesiveness epoxy-based materials is dependent on the surface chemistries to which they are applied.
Applicant’s argument is unpersuasive. Moore broadly discloses that the secondary layer <106> includes at least a polymeric coating (e.g., and epoxy coating) (paragraph [0067]).
Similarly, Matzdorf discloses a corrosion-resistant composition comprising a film-forming binder composed of an inorganic binder and epoxy polymers and aluminum alloy powder pigments, wherein the composition is usable as a primer.
One of ordinary skill in the art would have been motivated to use the epoxy-based composition of Matzdorf as the generic epoxy-based coating desired by Moore with a reasonable expectation of success (i.e., both are epoxy-based coatings useable as primers) based on the motivation that the composition of Matzdorf provides an additional corrosion-resistance property.
Applicant’s argument that the composition of Matzdorf is not useable as a coating onto a sol-gel are unpersuasive because the evidence upon which they rely are broad and merely state that the adhesion strength of epoxy-based compounds are dependent on the surface chemistries to which they are applied. Applicant has not persuasively shown that the primer composition of Matzdorf would not function in the structure of Moore when Moore broadly discloses that epoxy-based compositions are usable to coat its sol-gel layer. In other words, merely arguing that the surface chemistries of a metal layer and a sol-gel layer may impact the adhesiveness of an epoxy-based composition is not persuasive to show that the references are combinable. Further, there is substantial reason to believe that the sol-gel composition of Moore would increase the adhesiveness (see paragraph [0004] of Moore, reproduced below):
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Applicant further argues that the remaining prior art references do not cure the deficiencies set forth above.
Applicant’s arguments are unpersuasive as the alleged deficiencies are addressed above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Thomas A Mangohig whose telephone number is (571)270-7664. The examiner can normally be reached M-F 9-5 Eastern.
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/TAM/Examiner, Art Unit 1788 02/17/2026
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788