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 .
Restriction/Election
Applicant's election with traverse of Group I (claims 1-15 & 17) in the reply filed on 6 February 2026 is acknowledged. The traversal is on the ground(s) that the Restriction requirement is too restrictive, the examiner has not shown a serious burden to perform a complete search & examination of the claims, and points to MPEP § 803 for support (Remarks, p. 7, bottom half.
This is not found persuasive because, as discussed in the previous Office Action, Restriction for examination purposes as indicated is proper because all the inventions listed in said Office Action are independent or distinct for the reasons given and there would be a serious search and/or examination burden if restriction were not required because the inventions of Groups I, II, III & IV are classified separately as set forth in said Office Action.
Separate classification shows that each invention has attained recognition in the art as a separate subject for inventive effort, and also requires a separate field of search. This is sufficient to demonstrate a serious search and/or examination burden. See MPEP § 808.02.
The requirement is still deemed proper and is therefore made FINAL.
Claims 16, 18 & 19 are withdrawn as being directed to a non-elected invention.
For claim 4, The Applicants elect species (ii):
The at least one metal phosphate salt comprises at least one metal cation selected from alkali metal cations, alkaline earth metal cations, transition metal cations and cations of the boron group.
For claim 11, The Applicants elect species (ii):
The at least one vulcanization system consists of (b2) at least one peroxide or disulfide vulcanization systems.
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 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, 2, 4-6, 8, 9, 11-15 & 17 are rejected under 35 U.S.C. § 103 as being unpatentable over Motoda et al. (US 2020/0308313 A1) in view of Kondos et al. (US 2017/0152369 A1).
Regarding claims 1, 8, 9 & 17, Motoda teaches modified liquid diene rubbers and rubber compositions suitable for use as an adhesive or sealing material (p. 1, [0008]), especially in automotive bodies (p. 11, [0162]). Preferable liquid diene rubbers include maleic anhydride-modified liquid polybutadiene and/or maleic anhydride-modified liquid polyisoprene (p. 3, [0059]). Suitable solid elastomers include natural rubber, styrene-butadiene rubber, acrylonitrile-butadiene rubber, butyl rubber (p. 6, [0090]). The invention also comprises a vulcanization accelerator & vulcanization aid, which may be used alone or in combination (p. 9, [0135], [0138], [0139]). The invention may further comprise pigments (p. 11, [0173]), however, Motoda is silent on pigments that abide by the corrosion protection pigment, as defined (Specification, p. 8, [0037]), as required by the claims.
In the same field of endeavor, Kondos teaches reactive compositions suitable for use in coatings, sealants, adhesives (p. 1, [0001]) especially for automotive parts (p. 17, [0168]). Kondos teaches an embodiment comprising anti-corrosive pigments such as metal phosphates, including aluminum triphosphates and aluminum zinc phosphates (p. 14, [0141]).
As Motoda teaches the inventive curable composition may be used as an anticorrosive paint for metals (p. 12, [0176]), it would have been obvious to one of ordinary skill in the art at the time of filing to select either aluminum triphosphate or aluminum zinc phosphate as the pigment for use in Motoda’s invention, as Kondos recognizes both pigments as suitable for use in anti-corrosive capacities in similar compositions with similar end uses. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Modification of Motoda in view of Kondos as detailed above reads on limitations established by claims 1, 8, 9 & 17.
Regarding claims 2 & 4, maintaining the modification of Motoda in view of Kondos previously detailed, Kondos teaches various metal phosphates such as zinc phosphates, chromium phosphates, aluminum triphosphates, aluminum zinc phosphates, barium phosphates (p. 15, [0152]). It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claims 5 & 6, maintaining the modification of Motoda in view of Kondos previously detailed, aluminum zinc phosphates, taught by Kondos as suitable compounds for the aforementioned metal phosphates (p. 15, [0152]), reads on limitations established by claims 5 & 6. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claims 11 & 12, maintaining the modification of Motoda in view of Kondos previously detailed, Motoda teaches vulcanization may occur via disulfides or organic peroxides, such as dicumyl peroxide. Said vulcanizing agent is present in amounts of 0.1-10 wt.% (p. 9, [0130], [0131]). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claims 13 & 14, maintaining the modification of Motoda in view of Kondos previously detailed, Kondos teaches the inclusion of a reactive resin (b) which includes multi-(meth)acrylate compounds with multiple functional groups (p. 7, [0065]). Non-limiting representative examples of said polyfunctional (meth)acrylates include triethylene glycol diacrylate, trimethylolpropane trimethacrylate, dipentaerythritol pentaacrylate and the commercial product therefore, provided as SR399 (p. 8, [0067], [0068]). SR399 is the same commercial product for the crosslinking agent as provided in the Specification (p. 10, [0044]). Kondos teaches said component (b) is present in amounts of 5-99.9 wt.% (p. 8, [0073]). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07
Regarding claim 15, maintaining the modification of Motoda in view of Kondos previously detailed, Motoda teaches the curable composition may further comprise fillers, dyes/other colorants, processing aids (p. 11, [0173]). It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Claims 3, 7 & 10 are rejected under 35 U.S.C. § 103 as being unpatentable over Motoda et al. (US 2020/0308313 A1) in view of Kondos et al. (US 2017/0152369 A1) in further view of Gothlich et al. (US 2009/0029155 A1).
Regarding claims 3 & 7, maintaining the modification of Motoda in view of Kondos previously detailed, both Motoda & Kondos are silent on relative amounts of the corrosive protection pigment as required by the claims.
In the same field of endeavor, Gothlich teaches preparation for and methods for applying corrosive protecting coats (Abstract), particularly in automobile bodies (p. 1, [0003]). Suitable anti-corrosion pigments include zinc aluminum phosphates, strontium aluminum polyphosphate, zinc molybdenum orthophosphate & the like. Said anti-corrosion pigments are present in amounts of 5-60 wt.% (p. 10, [0143], [0150]).
It would have been obvious to one of ordinary skill in the art at the time of filing to employ the range of 5-60 wt.% for the corrosion protection pigment, taught by Gothlich, as a guide for the amount of corrosion protection pigment to be used when modifying Motoda in view of Kondos as detailed above, as Gothlich teaches the suitability of corrosion protection pigments of this nature present in these amounts are appropriate for similar compositions with similar end uses. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Modification of Motoda in view of Kondos in further view of Gothlich as described above reads on limitations established by claims 3 & 7.
Regarding claim 10, maintaining the modification of Motoda in view of Kondos in further view of Gothlich previously detailed, Gothlich teaches corrosion protection pigments are present in amounts of 5-60 wt.% (p. 10, [0150]). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
Conclusion
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/CHRISTIAAN ROELOFSE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762