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 .
Claims Status
Claims 1, 3-6,8-10 and 16-22 are under current examination encompassing the elected invention to: a copper zinc alloy (Groups I and IV) with alumina and an intermediary layer that includes aluminum.
Applicants' arguments and amendments filed 10/22/2025, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
New rejections in view of claim amendments
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, 4, 6, 9,16 and new claims 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Etsuo et al. (JP2633649B2-english translation attached) in view of Suk et al. ( KR100545384B1).
Etsuo et al. teach paint compositions comprising a copper based antifouling agent that includes copper-zinc alloy present from 10-60% by weight, see abstract and page 3. The undercoat composition can comprise alumina powders from 5-40% by weight to help with adhesion to a substrate, see pages 2-3 and 6. Examples of substrates are ships ( marine body), see page 2 and entire document. The coating thickness can comprise 50-100 microns with thicker coatings providing better antifouling effect, see page 3 and 6. Etsuo teaches the presence of an intermediary (lower layer) on a metal surface, see pages 2-7. Etsuo et al. teach a cooper zinc alloy as a copper based antifouling agent (c) which can be combined with fillers, see pages 3 and 6. Fillers are inclusive of metal oxides, see second paragraph of page 3. Thus, Etsuo suggests that filler particles can be present with the copper based antifouling agent.
Etsuo does not teach the amount of the filler with the copper zinc alloy layer or that the metal oxide is ceramic alumina filler.
Suk e al. teach that ceramic fillers improve the durability and impact resistance of coatings and reduces adhesion of aquatic organisms, see abstract and page 7. Alumina is an example of a ceramic filler and is used from 9-19% by weight, see page 7. The particle size can be 0.02-5 microns to provide uniform dispersion, see page 7. The coating composition can further comprise metal alloys that include zinc, see pages 3 and 7. The coatings are intended to prevent underwater corrosion of marine structures, see pages 5-6.
It would have been prima facie obvious to provide the filler of Etsuo which is combined with copper antifouling agents as alumina from 9-19% by weight as Suk teaches that alumina ceramic fillers improve durability and impact resistance of coatings and reduces adhesion of aquatic organisms. There would have been a reasonable expectation of sauces because the metal alloy coating of Etsuo further comprises fillers and is intended to be anticorrosive.
The amount of alumina ceramic in Suk et al. and copper alloy of Etsuo et al. overlaps the instantly claimed ranges and from MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Since the composition of Etsuo et al. in view of Suk et al. are antifouling and applied to ships the coating would necessarily provide for a protective coating for a marine boating since it is intended to provide antifouling properties.
The recitation in instant claim 21 “wherein the layer is applied to a surface of a marine body or as a succession of layers” is a recitation of an intended use of the composition which has little patentable weight. Nevertheless, the coatings of the modified Etsuo are applied to a metal surface including ships thus are capable of performing the intended use.
Claims 3 and 5 are is rejected under 35 U.S.C. 103 as being unpatentable over Etsuo et al. (JP2633649B2-english translation attached) in view of Suk et al. ( KR100545384B1) as applied to all claims 1, 4, 6, 9,16 and new claims 21-22 above and further in view of Oishi (United States Patent 7909946).
The teachings of Etsuo and Suk et al. are discussed above. The modified Etsuo does not expressly teach the amount of copper and zinc in the copper zinc alloy.
Oishi teaches Cu-Zn-Si alloys that have excellent castability, mechanical properties and corrosion resistance, see column 1, lines 11-15, column 2, lines 32-37. Such alloys comprise from 69-88% copper, 2-5% Zr, 0.0005-0.04% P and 0.01-0.25 P with the balance zinc, see claim 1. Thus zinc is suggested as comprising from about 6.71 to 30.99 mass percent which constitutes the balance. Zn serves to improve mechanical and tensile strength while copper must be from 69% mass or more in order to secure corrosion resistance and stress resistance, see column 7, lines 37-59 and column 7 lines 67 to column 8, lines 1-10. The copper alloy is useful with marine structural members.
It would have been prima facie obvious to substitute the copper-zinc alloy of Etsuo for the alloy having between 69-88% copper and the balance zinc from 6.71-30.99% by weight.
One of ordinary skill in the art would have been motivated to do so because the copper-zinc containing alloy of Oishi is taught to have excellent castability, strength and corrosion resistance.
There would have been a reasonable expectation of success because both Etsuo and Oishi suggest that the alloy can be used with marine materials.
Regarding claim 3, the copper alloy of the modified Etsuo would have a greater copper content than the zinc.
Regarding claim 5, the zinc is suggested present from 6.71-30.99% weight which is less than 55% weight.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Etsuo et al. (JP2633649B2-english translation attached) in view of Suk et al. ( KR100545384B1) as applied to all claims 1, 4, 6, 9,16 and new claims 21-22 above, and further in view of Agrawal et al. (United States Patent Publication 2011/0111147).
The teachings of Etsuo and Suk et al. are discussed above. The modified Etsuo et al. does not expressly teach the size of ceramic filler (alumina) particles such that the average longest dimension is from 0.1-50 microns.
However, Agrawal et al. teach coatings appliable to boats which comprise aluminum oxide fillers which comprise a longest dimension of less than 250 microns, see paragraph [0045]. Depending on the application the fillers can be coated and adapted in different ways to obtain the desired optical characteristics with high reflectivity, see paragraph [0045].
It would have been prima facie obvious to provide the alumina fillers of the modified Etsuo at less than 250 microns and to adjust the size of the filler particles with the motivation to obtain the desired optical characteristics as suggested by Agrawal.
There would have been a reasonable expectation of success because Etsuo teaches the use of metal oxide filler with a copper zinc alloys for use in marine environments.
Claims 10 is rejected under 35 U.S.C. 103 as being unpatentable over Etsuo et al. (JP2633649B2-english translation attached) in view of Suk ( KR100545384B1)as applied to claims 1, 4, 6, 9, 16 and new claims 21-22 above, and further in view of Mayo et al. (United States Patent 12319835).
The teachings of Etsuo et al. and Suk are discussed above.
The modified Etsuo does not teach the presence of an intermediary layer of aluminum present.
However, Mayo teaches providing a film forming coating on substrates such as ships that improve corrosion resistance of metal substrates including marine substrates, see column 1, lines 35-41, column 9, lines 45-51, column 30, lines 43-48, and column 35 lines 10-20 and lines 59-67. The film forming coating comprises metal particles including aluminum, see column 2, lines 39-67, column 35, lines 59-61, column 38, lines 8-33, column 61, lines 20-26. The coating can be applied to substrates as a first coating layer having multiple layers, see columns 35-36.
It would have been prima facie obvious to provide the aluminum film forming coating of Mayo et al. to the marine substrate of Etsuo in order to improve corrosion resistance.
There would have been a reasonable expectation of success because Etsuo teaches coatings for ship materials and Mayo teaches that substrates including ships can be treated with a first layer (i.e. intermediary layer) or multilayer of metal particles to improve corrosion resistance.
Claims 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Etsuo et al. (JP2633649B2-english translation attached) in view of
Suk (KR100545384B1) and Oishi (United States Patent 7909946).
Etsuo et al. teach paint compositions comprising a copper based antifouling agent that includes copper-zinc alloy present from 10-60% by weight, see abstract and page 3. The undercoat composition can comprise alumina powders from 5-40% by weight to help with adhesion to a substrate, see pages 2-3 and 6. Examples of substrates are ships ( marine body), see page 2 and entire document. The coating thickness can comprise 50-100 microns with thicker coatings providing better antifouling effect, see page 3 and 6. Etsuo teaches the presence of an intermediary (lower layer) on a metal surface, see pages 2-7. Etsuo et al. teach a cooper zinc alloy as a copper based antifouling agent (c) which can be combined with fillers, see pages 3 and 6. Fillers are inclusive of metal oxides, see second paragraph of page 3. Thus, Etsuo suggests that filler particles can be present with a layer of copper.
Etsuo et al. teach a cooper zinc alloy as a copper based antifouling agent (c) which can be combined with fillers, see pages 3 and 6. Fillers are inclusive of metal oxides, see second paragraph of page 3. Thus, Etsuo suggests that filler particles can be present with a layer of copper
Etsuo does not teach the amount of the filler with the copper zinc alloy layer or that the filler is ceramic alumina filler.
Suk teaches that ceramic fillers improve the durability and impact resistance of coatings and reduces adhesion of aquatic organisms, see abstract and page 7. Alumina is an example of a ceramic filler and is used from 9-19% by weight, see page 7. The particle size can be 0.02-5 microns to provide uniform dispersion, see page 7. The coating composition can further comprise metal alloys that include zinc, see pages 3 and 7. The coatings are intended to prevent underwater corrosion of marine structures, see pages 5-6.
It would have been prima facie obvious to provide the filler of Etsuo as alumina from 9-19% by weight as Suk teaches that alumina ceramic fillers improve durability and impact resistance of coatings and reduces adhesion of aquatic organisms. There would have been a reasonable expectation of sauces because the metal alloy coating of Etsuo further comprises fillers and is intended to be anticorrosive. The amount of alumina ceramic in Suk et al. and copper alloy of Etsuo et al. overlaps the instantly claimed ranges and from MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claims 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Etsuo et al. (JP2633649B2-english translation attached) in view of
Heusmann (United States Patent Publication 20150267061) and Oishi (United States Patent 7909946).
Etsuo et al. teach paint compositions comprising a copper based antifouling agent that includes copper-zinc alloy present from 10-60% by weight, see abstract and page 3. The undercoat composition can comprise alumina powders from 5-40% by weight to help with adhesion to a substrate, see pages 2-3 and 6. Examples of substrates are ships ( marine body), see page 2 and entire document. The coating thickness can comprise 50-100 microns with thicker coatings providing better antifouling effect, see page 3 and 6. Etsuo teaches the presence of an intermediary (lower layer) on a metal surface, see pages 2-7. Etsuo et al. teach a cooper zinc alloy as a copper based antifouling agent (c) which can be combined with fillers, see pages 3 and 6. Fillers are inclusive of metal oxides, see second paragraph of page 3. Thus, Etsuo suggests that filler particles can be present with a layer of copper.
Etsuo et al. teach a cooper zinc alloy as a copper based antifouling agent (c) which can be combined with fillers, see pages 3 and 6. Fillers are inclusive of metal oxides, see second paragraph of page 3. Thus, Etsuo suggests that filler particles can be present with a layer of copper
Etsuo does not teach the amount of the filler with the copper zinc alloy layer or that the filler is ceramic alumina filler.
Heusmann teaches the presence of anticorrosion coatings comprising filers from 0-4% by weight, see paragraph [0099]. Filler are inclusive of alumina, see paragraph [0100]. The fillers are chemically stable, s paragraph [0096]. Hard fillers which include alumina are resistant to scratching, see paragraph [0047]. Such fillers can be added to an anticorrosive coating to enhance the hardness of coatings, ese paragraph [0099]
It would have been prima facie obvious to provide the filler of Etsuo as alumina present from 0-4% by weight as Heusmann teaches that alumina fillers can be added to anticorrosive coatings to improve hardness of coatings.
There would have been a reasonable expectation of sauces because the metal alloy coating of Etsuo further comprises fillers and is intended to be anticorrosive.
The modified Etsuo does not expressly teach the amount of copper and zinc in the copper zinc alloy.
Oishi teaches Cu-Zn-Si alloys that have excellent castability, mechanical properties and corrosion resistance, see column 1, lines 11-15, column 2, lines 32-37. Such alloys comprise from 69-88% copper, 2-5% Zr, 0.0005-0.04% P and 0.01-0.25 P with the balance zinc, see claim 1. Thus zinc is suggested as comprising from about 6.71 to 30.99 mass percent which constitutes the balance. Zn serves to improve mechanical and tensile strength while copper must be from 69% mass or more in order to secure corrosion resistance and stress resistance, see column 7, lines 37-59 and column 7 lines 67 to column 8, lines 1-10. The copper alloy is useful with marine structural members.
It would have been prima facie obvious to substitute the copper-zinc alloy of the modified Etsuo for the alloy having between 69-88% copper and the balance zinc from 6.71-30.99% by weight.
One of ordinary skill in the art would have been motivated to do so because the copper-zinc containing alloy of Oishi is taught to have excellent castability, strength and corrosion resistance.
There would have been a reasonable expectation of success because both Etsuo and Oishi suggest that the alloy can be used with marine materials.
Regarding claim 17, the zinc is suggested present from 6.71-30.99% weight which is less than 55% weight. The zinc overlaps the claimed range of from 0.1-35 % and from 13-15% by weight, as the modified Etsuo teaches a range from 6.71-30.99% weight. The ceramic filler (alumina) as discussed above is taught from 0-4% by weight. From MPEP 2144.05 In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 18, the modified Etsuo teaches alumina as the filler present from 0-4% by weight. Etsuo in view of Oishi teaches that the zinc can comprise 6.71-30.99% by weight. From MPEP 2144.05 In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 19, the modified Etsuo is to copper in the amount from 69-88% weight with alumina (filler) present from 0-4% by weight. From MPEP 2144.05 In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 20, the modified Etsuo is to copper in the amount from 69-88% weight with alumina (filler) present from 0-4% by weight and zinc present from 6.79-30.99% by weight. From MPEP 2144.05 In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). According to the instant specification, copper being present at greater than 65% and zinc at less than 35% contributes to alpha phases (Table 1-page 2). Since the amount of the copper and zinc taught by the modified Etsuo et al. overlaps and renders obvious the instant claimed range of claim 20, the composition would necessarily have a first and second alpha phase.
Response to Remarks
Applicants argue that Etsuo discloses two distinct coatings , an undercoating/bottom layer and top coating. Applicants argue that Etsuo fails to disclose ceramic fillers in the same layer as the copper zinc alloy. Applicants argue that page 6 is mistranslated since the filler is not clearly correlated to the copper based coating. Applicants argue that Etsuo fails to disclose combining antifouling agent with any fillers.
Examiner respectfully disagrees that Etsuo does not teach fillers with their copper based antifouling coating layer (c).Etsuo teaches fillers such as metal oxides can be used with the copper based coating.
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While Etsuo teaches metal oxide fillers, they do not teach specifically aluminum oxide (alumina) present with the outer coating layer c) containing copper alloys in the amount of from 0.1-20% by weight. However, this deficiency is rectified y the teachings of Suk as discussed above which is newly applied in view of the claim amendment to a layer comprising CU and Zn, the layer further containing ceramic filler particles.
Conclusion
The amendment to the claims requiring a layer necessitated new grounds of rejections. 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).
Currently, all claims are rejected and no claims are allowed.
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 extension fee 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH ALAWADI whose telephone number is (571)270-7678. The examiner can normally be reached Monday-Friday 10:00am-6:30pm EST.
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/SARAH ALAWADI/Primary Examiner, Art Unit 1619