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 9-23 are pending. Claims 13-20 are withdrawn from consideration due to Applicant’s election. Claims 2 and 7-8 are canceled.
Amendments to the claims, filed 22 May 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 .
Claim Rejections - 35 USC § 112
Claims 1, 3-6, 8-12, and 21-23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1, as amended, recites the limitation “wherein the aqueous sol-gel comprises greater than 10 wt% water based on a total weight of the aqueous sol-gel” in lines 4-5. There is insufficient written support for the entirety of the claimed range in the original description.
At best the original disclosure provides support for “[t]he acid is added to the metal alkoxide to allow a water-based system” (paragraph [0037]) and the addition of 1000 mL of Milli-Q water during the production method (paragraph [00111]). Neither citation provides reasonable support for the entirety of the claimed range.
Claims 3-6 and 8-12 do not remedy the deficiency of parent claim 1 and are rejected under the same rationale.
Claim 21, as amended, recites the limitation “wherein the aqueous sol-gel comprises greater than 10 wt% water based on a total weight of the aqueous sol-gel” in lines 4-5. There is insufficient written support for the entirety of the claimed range in the original description.
At best the original disclosure provides support for “[t]he acid is added to the metal alkoxide to allow a water-based system” (paragraph [0037]) and the addition of 1000 mL of Milli-Q water during the production method (paragraph [00111]). Neither citation provides reasonable support for the entirety of the claimed range.
Claims 22-23 do not remedy the deficiency of parent claim 1 and are rejected under the same rationale.
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.
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, 3-6, and 9-12 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:
PNG
media_image1.png
513
530
media_image1.png
Greyscale
Regarding instant claims 1, 3-4, and 9-12:
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]).
Moore further discloses that the corrosion inhibitor is inclusive of 2,5-dimercapto-1,3,4-thiadiazole (paragraph [0043]).
Moore further discloses that the sol-gel formulation has about 10 wt% or less water content (paragraph [0025]). The disclosure of “about 10 wt%” water content allows for an amount of water slightly above 10 wt%, which would overlap the claimed range; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
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.
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 discloses that a 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).
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.
Claims 21-23 are 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 corrosion inhibitor is inclusive of 2,5-dimercapto-1,3,4-thiadiazole (paragraph [0043]).
Moore further discloses that the sol-gel formulation has about 10 wt% or less water content (paragraph [0025]). The disclosure of “about 10 wt%” water content allows for an amount of water slightly above 10 wt%, which would overlap the claimed range; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
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.
Claims 1, 3-6, and 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Schuette et al. (US Patent Application Publication No. US 2019/0241752 A1) (Schuette) in view of Moore, Matzdorf, and Kinlen.
Reference is made to FIG. 1 of Schuette, reproduced below:
PNG
media_image2.png
506
528
media_image2.png
Greyscale
Regarding instant claims 1, 3-6, and 9-12:
Schuette discloses a component comprising a metal substrate and a sol-gel disposed on the metal substrate (Claim 17).
Schuette discloses the sol-gel is a reaction product of at least an organosilane, a metal alkoxide, an acid, and a corrosion inhibitor (paragraph [0016]).
Schuette further discloses that the sol-gel comprises about 50 wt% or greater water (paragraph [0102]).
Schuette further discloses that the organosilane is (3-glycidyloxypropyl)trimethoxysilane (paragraph [0025]).
Schuette further discloses that the acid is acetic acid (paragraph [0018]).
Schuette further discloses that the metal alkoxide is inclusive of zirconium alkoxides such as zirconium (IV) tetra-n-propoxide and zirconium (IV) tetra-isopropoxide (paragraph [0029]), which are construed to meet the claimed zirconium propoxide.
Schuette further discloses that an optional primer is disposed on the sol-gel (paragraph [0026]).
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> (paragraph [0104]).
Schuette further discloses that secondary layer <106> is a topcoat that includes a polymer (paragraph [0107]) (i.e., an organic topcoat).
Schuette further discloses that the weight fraction (wt %) of (metal alkoxide+organosilane+acid) in the sol-gel is from about 0.3 wt % to about 50 wt % (paragraph [0094]).
Schuette further discloses that the weight fraction of corrosion inhibitor is from about 0.1 wt % to about 500 wt % (paragraph [0094]); however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Schuette does not disclose the specific organic corrosion inhibitor, the specific content of organosilane, and the specific organic primer coating.
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.
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 Schuette. 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.
Schuette 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 discloses that a 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 Schuette. The motivation for doing so would have been that said topcoat is durable, abrasion resistant, chemical resistant, heat resistant, and visually appealing.
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).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the at to add the organosilane of Schuette in the amount prescribed by Moore. The motivation for doing so would have been that Moore provides an art-recognized amount of organosilane for the production for a remarkably similar sol-gel formulation.
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]).
Moore further discloses that the corrosion inhibitor is inclusive of 2,5-dimercapto-1,3,4-thiadiazole (paragraph [0043]).
Moore teaches that these corrosion inhibitors comprise one or more thiol moieties that interact with copper-containing intermetallics on a metal surface (such as an aluminum alloy surface) to prevent corrosion of the metal surface by slowing the rate of oxygen reduction and decreasing oxidation of the metal alloy (paragraph [0040]).
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 add the corrosion inhibitors of Moore into the sol-gel of Schuette. The motivation for doing so would have been to provide further corrosion resistance by slowing the rate of oxygen reduction and decreasing oxidation of the metal alloy.
Therefore, it would have been obvious to combine Moore, Matzdorf, and Kinlen with Schuette to obtain the invention as specified by the 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:
Schuette discloses the sol-gel composition as cited in the rejection of claim 1, above.
Schuette 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 Schuette. The motivation for doing so would have been that said ethoxylated propoxylated C8-C10 alcohol meet those alcohols desired by Schuette. Furthermore, Kinlen establishes that said alcohols are known additives for the remarkably similar sol-gel compositions disclosed by Schuette 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).
Claim 5 is alternatively rejected under 35 U.S.C. 103 as being unpatentable over Schuette in view of Moore, Matzdorf, and Kinlen as applied to claim 4 above, and further in view of Wu.
Regarding instant claim 5:
Schuette in view of Moore, Matzdorf, and Kinlen discloses the coated substrate comprising the sol-gel and the cured epoxy primer.
Schuette in view of Moore, Matzdorf, and Kinlen 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 Schuette in view of Moore, Matzdorf, and Kinlen to obtain the invention as specified by the instant claim.
Claims 21-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schuette in view of Moore and Matzdorf.
Regarding instant claims 21-23:
Schuette discloses a component comprising a metal substrate and a sol-gel disposed on the metal substrate (Claim 17).
Schuette discloses the sol-gel is a reaction product of at least an organosilane, a metal alkoxide, an acid, and a corrosion inhibitor (paragraph [0016]).
Schuette further discloses that the sol-gel comprises about 50 wt% or greater water (paragraph [0102]).
Schuette further discloses that the organosilane is (3-glycidyloxypropyl)trimethoxysilane (paragraph [0025]).
Schuette further discloses that the acid is acetic acid (paragraph [0018]).
Schuette further discloses that the metal alkoxide is inclusive of zirconium alkoxides such as zirconium (IV) tetra-n-propoxide and zirconium (IV) tetra-isopropoxide (paragraph [0029]), which are construed to meet the claimed zirconium propoxide.
Schuette further discloses that an optional primer is disposed on the sol-gel (paragraph [0026]).
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> (paragraph [0104]).
Schuette further discloses that secondary layer <106> is a topcoat that includes a polymer (paragraph [0107]) (i.e., an organic topcoat).
Schuette further discloses that the weight fraction (wt %) of (metal alkoxide+organosilane+acid) in the sol-gel is from about 0.3 wt % to about 50 wt % (paragraph [0094]).
Schuette further discloses that the weight fraction of corrosion inhibitor is from about 0.1 wt % to about 500 wt % (paragraph [0094]); however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Schuette does not disclose the specific organic corrosion inhibitor, the specific content of organosilane, and the specific organic primer coating.
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 Schuette. 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 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).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the to add the organosilane of Schuette in the amount prescribed by Moore. The motivation for doing so would have been that Moore provides an art-recognized amount of organosilane for the production for a remarkably similar sol-gel formulation.
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]).
Moore further discloses that the corrosion inhibitor is inclusive of 2,5-dimercapto-1,3,4-thiadiazole (paragraph [0043]).
Moore teaches that these corrosion inhibitors comprise one or more thiol moieties that interact with copper-containing intermetallics on a metal surface (such as an aluminum alloy surface) to prevent corrosion of the metal surface by slowing the rate of oxygen reduction and decreasing oxidation of the metal alloy (paragraph [0040]).
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 add the corrosion inhibitors of Moore into the sol-gel of Schuette. The motivation for doing so would have been to provide further corrosion resistance by slowing the rate of oxygen reduction and decreasing oxidation of the metal alloy.
Therefore, it would have been obvious to combine Moore and Matzdorf with Schuette to obtain the invention as specified by the claims.
Answers to Applicant’s Arguments
In response to Applicant’s amendments, the grounds of rejection are altered. Applicant’s arguments regarding the prior art references are fully considered, but are unpersuasive.
Applicant contends that he prior art references do not disclose the claimed water content. However, as discussed in the rejections above, the water content range disclosed by Moore overlaps the range recited by the claims.
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 Thomas A Mangohig whose telephone number is (571)270-7664. The examiner can normally be reached M-F 9-5 Eastern.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia Chevalier can be reached at (571)272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TAM/Examiner, Art Unit 1788 08/27/2026
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788
Prosecution Insights