DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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 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.
Claim(s) 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Moore et al. (US 2019/0002740) in view of Matzdorf et al. (US 2012/0187350) and Lawless et al. (US 2015/0191604).
Regarding claims 1, 3, 4 5, and 7, Moore et al. teaches aircraft surfaces are typically made of a metal, such as aluminum, a primer can be coated on the metal surface and adhesive coatings are typically disposed between a metal surface and a primer (paragraphs [0004] and [0041], [0065]), wherein the adhesive coatings are adhesive sol-gel films comprising a metal alkoxide, an acid stabilizer, and an organosilane (paragraphs [0005] and [0007]). A corrosion inhibitor may be used (paragraph [0041]).
Moore et al. fails to teach the organic primer coating having a plurality of metal particles.
However, Matzdorf et al. teaches aluminum alloy powder-pigments coated with a semi-conducting corrosion inhibiting oxide combined with film-forming binders for coating metal substrates to inhibit corrosion (See Abstract, paragraphs [0052], [0085]-[0086]). Matzdorf et al. further discloses the coating may be used as primers (paragraph [0042]) and wherein the binder for the coating composition can be siloxane (paragraph [0085]).
It would have been obvious to one of ordinary skill in the art to use primer including aluminum alloy powder-pigments and polysiloxane as the organic primer coating of Moore et al. in order to impart additional corrosion resistance (Matzdorf et al., paragraph [0086]).
Moore et al. in view of Matzdorf et al. fails to teach the surfactant as claimed.
However, Lawless et al. teaches a corrosion inhibiting composition including a liquid carrier and an electrically conductive nanomaterial dispersed in the liquid carrier (See Abstract) and applied to a substrate such as aluminum (paragraph [0023]), wherein the liquid carrier includes a surfactant such as ethoxylated alcohol (paragraph [0038]), i.e. ethylene-oxide alcohol. Given the surfactant of Lawless et al. is identical to that presently claimed, the surfactant necessarily has surface-wettability-enhancing characteristics as presently claimed.
It would have been obvious to one of ordinary skill in the art to use ethoxylated alcohol in the sol-gel coating of Moore et al. in view of Matzdorf et al. in order to achieve the desired surface tension (Lawless et al., paragraph [0038]).
Regarding claim 2, Moore et al. teaches wherein the corrosion inhibitor has two or more thiol moieties (paragraphs [0041]-[0043]).
Regarding claim 6, note that because claim 5 is in the form of alternatives, and Matzdorf et al. teaches siloxane, it is not required that Matzdorf et al. meet the further limitation of the non-selected groups via subsequent dependent claims.
Regarding claim 8, Moore et al. teaches wherein the corrosion inhibitor is a mercaptothiadiazole (paragraph [0044]).
Regarding claim 9, Moore et al. teaches wherein the dimercaptothiadiazole is 2-amino-5-mercapto-1,3,4-thiadiazole, wherein at least one aspect, for example, the azole may be 2,5-dimercapto-1,3,4-thiadiazole (paragraph [0044]).
Regarding claim 10, Moore et al. teaches wherein the sol-gel coating has a concentration of the corrosion inhibitor of from about 0.1 wt % to about 50 wt % (paragraph [0077]). It is noted that Moore et al. discloses amounts of particles in weight percent while claims recite percent by volume. However, given that the amounts disclosed by Moore et al. overlaps those amounts claimed, respectively, it is clear that Moore et al. meets the ranges as presently claimed, absent evidence to the contrary.
Regarding claim 11, Moore et al. teaches wherein the organosilane is glycidoxypropyltrimethoxy silane (paragraph [0035]), the acid is acetic acid (paragraph [0056]), and the metal alkoxide is zirconium propoxide (paragraph [0038]).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2 and 8-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-6, and 8-12 of copending Application No. 18143998. Although the claims at issue are not identical, they are not patentably distinct from each other because both disclose a coated substrate.
Regarding claims 1-2 and 8-11, claims 1, 3-6, and 8-12 of copending claims are substantially identical aside from the amount of organic corrosion inhibitor. However, the range disclosed by the copending claim falls within the range presently claimed.
Further, regarding limitations recited in the patented claims not found in the present claims, these limitations are encompassed by the present claims given that the present claims use the open language of "comprising".
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 11/24/2025 have been fully considered but they are not persuasive.
Applicant amended claim 1 to recite surfactant “having surface-wettability-enhancing characteristics” and overcame 35 USC 112(b) rejection of record.
Applicant argues that Moore does not disclose or suggest any component capable of providing surface wettability-enhancing characteristics, now expressly required by amended claim 1
It is agreed that Moore does not disclose surfactant as presently claimed which is why claim 1 is now rejected over Moore in view of Matzdorf and Lawless. Given the surfactant of Lawless et al. is identical to that presently claimed, the surfactant necessarily has surface-wettability-enhancing characteristics as presently claimed.
Applicant argues that Matzdorf does not disclose a sol-gel layer, adding any surfactant to a sol-gel coating, or any component having surface wettability-enhancing characteristics.
However, note that while Matzdorf does not disclose all the features of the present claimed invention, Matzdorf is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, namely organic primer coating having a plurality of metal particles, and in combination with the primary reference, discloses the presently claimed invention.
Applicant argues that Lawless does not disclose or suggest any surfactant or any compound having surface-active or wettability-enhancing characteristics. Lawless describes corrosion-inhibiting compositions that include a carrier liquid such as water or alcohols and optional additives but nowhere identifies or implies the presence of a surfactant.
However, Lawless explicitly states the carrier may be or may include a surfactant, such as ethoxylated alcohol (see paragraph [0038]) which is identical to that presently claimed and therefore, would necessarily have wettability-enhancing characteristics as presently claimed.
With respect to the double patenting rejection of record, Applicant argues that no primer coating is required in the independent claim.
However, in the amendment filed 07/14/25 of 18/143,998, claims 1, 2, and 3 disclose a primer coating and metal particles and now, in the amendment filed 02/12/2026, claim 1 includes a primer coating and along with claim 3 which discloses metal particles, would still meet present claim 1.
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 CHENG HUANG whose telephone number is (571)270-7387. The examiner can normally be reached on Monday-Thursday from 7 AM to 5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHENG YUAN HUANG/Primary Examiner, Art Unit 1787