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 .
Status of the claims
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/28/2026 has been entered.
The Examiner further acknowledges the following:
Claims 1, 3-6, 8-22 are pending.
Claim 17 has been amended to positively recite a marine body which is analogous to the invention of Group II invention in the restriction requirement mailed on 06/10/2025. Since the claim no longer recites a protective coating and actively recites a marine body having a substrate ( classification of 114/93), the claims are directed to the invention of Group II and are withdrawn as being directed to a nonelected invention in the response filed on 06/27/2025. Accordingly, claims 11-15 and 17-20 are currently withdrawn as being directed to a non-elected invention including to a marine body (i.e. vessel). The elected claims are drawn to a protective composition consisting of a layer. The intended use of claim 1 does not patentably limit the claimed invention to a marine body as this is merely reciting the intended use of the claimed invention (i.e. classified in 424). Examiner notes that upon allowance of generic claim 1, the withdrawn claims will be considered for rejoinder provided they require all the limitations of an allowable claim. At present, claim 17 would not be rejoined with claim 1 because claim 17 is a broader coating composition than presented in claim 1.
Claims 11-15 and 17-20 are withdrawn.
Claims 1, 3-6,8-10,16 and 21-22 are under current examination directed to the elected invention to a protective composition consisting of copper zinc alloy and alumina filler and an intermediary layer.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 10 and 21 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 1 recites a composition consisting of a layer of copper zinc alloy and reinforced ceramic filler particles in a range of from 0.1 wt. % to 20 wt. %. Claim 10 recites that the composition further comprises an intermediary layer which broadens the scope of the composition to the layer recited in claim 1. Consisting of a layer of copper and zinc alloy is narrower in scope than a composition comprising a further layer. Accordingly, claim 10 broadens the scope presented in claim 1.
Claim 21 recites that the layer is applied as a succession of layers each comprising copper zinc alloy, thus broadening the layer consisting of copper and zinc alloy that is recited in claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 3-6,16 and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Arif et al. (Effect of spraying parameters on surface roughness, deposition efficiency, and microstructure of electric arc sprayed brass coating-3/20202) in view of Igelegbai et al. (Evaluation of Evaluation of Mechanical and Microstructural Properties of α-Brass Alloy Produced from Scrap Copper and Zinc Metal through Sand Casting Process-12/2016), Krishnaswamy et al. (Publication- IN 184165B-see attached abstract, publication date of 6/2000) and Mesh size (Kramer industries).
Claim 1 is directed to a protective composition. The recitation of “for a marine body” is a recitation of the intended use which holds little patentable weight as the recitation of the intended use must result in a structural difference for the composition to patentably distinguish the claims.
Arif et al. teach brass coatings for steel, see introduction. Arif suggests that steel is used in a variety of fields including the marine industry, see introduction. Brass coating is deposited onto a steel substrate, see abstract. Brass is taught to offer antibacterial and corrosion resistance with good mechanical properties, see introduction.
Regarding the composition of brass, Igelegbai et al. teach that copper zinc alloys are also known as brass and have high corrosion resistance and can comprise a Cu-5%Zn, Cu-10%Zn, Cu-15%Zn, Cu-20%Zn or Cu-30%Zn, see abstract and introduction. The hardness of brass increases by increasing the zinc content, see abstract and conclusion. Thus, it would have been obvious to vary the content of the zinc in brass in relation to copper to achieve the desired hardness of the coating.
Arif et al. teach coating steel with brass and suggests that that brass has a protective (i.e. corrosion resistant) effect.
Neither Arif et al. nor Igelegbai et al. teach that the protective coating composition contains reinforced ceramic filler particles present at 0.1-20% by weight (instant claim 1) wherein these ceramic filler particles are selected from: silica, alumina, tungsten carbide, silicon carbide, silicon nitride, titanium oxide, boron carbide, zinc oxide or magnesium oxide (claim 6) or alumina (claim 22).
However, Krishnaswamy et al. teach the preparation of copper-zinc alloys in which particulates such as titanium dioxide, alumina, boron carbide, tungsten carbide or silicon carbide are added at 0.25-1.5% by weight at a mesh size of 600-800 (about 12-16 microns) in order to improve corrosion resistance properties of the copper-zinc alloy, see abstract. As evidenced by Mesh Size (Kramer Industries) an approximate micron size for a mess of 600-800 is from 12-16 microns in size.
It would have been prima facie obvious to incorporate the particulates of Krishnaswamy et al. which include alumina with the brass coatings of Arif et al.
One of ordinary skill in the art would have been motivated to do so in order to improve corrosion resistance of the cooper-zinc (brass) coating with a reasonable expectation of success because such particulates are suggested to be incorporated with copper zinc alloys per the teaching of Krishnaswamy to improve corrosion resistance.
With regards to claims 1 and 4, the particulates being present at 0.25-1.5% by weight render obvious the range of 0.1-20% by weight ad 0.5-10% by weight. 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).
With regards to claim 5, it would have been obvious to adjust the concentration of zinc in the copper zinc alloy to achieve the desired hardness of the layer as Igelegbai teaches zinc as a result effective variable. Furthermore, Igelegbai suggests a 30% zinc and 70% copper alloys, see abstract.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Arif et al. (Effect of spraying parameters on surface roughness, deposition efficiency, and microstructure of electric arc sprayed brass coating-3/20202) in view of Igelegbai et al. (Evaluation of Evaluation of Mechanical and Microstructural Properties of α-Brass Alloy Produced from Scrap Copper and Zinc Metal through Sand Casting Process-12/2016) and Krishnaswamy et al. (Publication- IN 184165B-see attached abstract, publication date of 6/2000) and Mesh size (Kramer industries) as applied to claims 1, 3-6,16 and 21-22 above, and further in view of Agrawal et al. (United States Patent Publication 2011/0111147-of record).
The teachings of Arif, Igelegbai, Krishnaswamy and Mesh size are discussed above.
Krishnaswamy teaches a particle size being from 12-16 microns, however Krishnaswamy does not teach that the ceramic fillers have an average longest dimension of 0.1-30 microns. Neither Arif nor Krishnaswamy teach the average longest dimension of the ceramic filler particles being from 0.1-30 microns.
However, Agrawal et al. teach coatings applicable to boats which comprise aluminum oxide fillers having a longest dimension of less than 250 microns, see paragraph [0045]. Depending on the application of the fillers can be coated and adapted in different ways to obtain the desired optical characteristics with high reflectivity, see paragraph [0045].
Therefore, it would have been prima facie obvious to provide the alumina filler particles of the modified Arif 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 the alumina fillers of Krishnaswamy are less than 250 microns and are taught to be combinable with copper zinc alloys and per the teachings of Arif, steel is used in a variety of fields including the marine industry, see introduction.
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Arif et al. (Effect of spraying parameters on surface roughness, deposition efficiency, and microstructure of electric arc sprayed brass coating-3/20202) in view of Igelegbai et al. (Evaluation of Evaluation of Mechanical and Microstructural Properties of α-Brass Alloy Produced from Scrap Copper and Zinc Metal through Sand Casting Process-12/2016) and Krishnaswamy et al. (Publication- IN 184165B-see attached abstract, publication date of 6/2000) and Mesh Size (Kramer Industries-2019) as applied to claims 1, 3-6,16 and 21-22 above, and further in view of Etsuo (JP2633649-of record).
The teachings of the modified Arif are discussed above. The modified Arif does not teach a thickness of the layer or the presence of an intermediary layer (instant claims 9-10).
Etsuo teaches paint compositions having copper and zinc alloys and a coating thickness that can comprise 50-100 microns with thicker coatings providing better antifouling properties, see pages 3 and 6. Etsuo further teaches that an intermediate layer may be placed on a metal surface at pages 2-7. Etsuo teaches that undercoats of filler can be applied to the surface of the marine vessel to prevent corrosion and improve adhesion to a substrate surface.
It would have been prima facie obvious to adjust the coating thickness of Arif within 50-100 microns to obtain a thick coating with better antifouling properties as suggested by Etsuo as thicker coatings are able to maintain antifouling properties. Furthermore, it would have been obvious to provide for an intermediary layer comprising filler particles in order to improve adhesion of the protective coating to a substrate surface.
Response to remarks
Applicants argue that Etsuo fails to teach a composition consisting of: a layer of copper zinc alloy and reinforced ceramic filler particles present from 0.1-20% by weight.
Examiner notes that Etsuo’s layer does further contain a resin material whereas the claims consist of a copper zinc layer. However, the new rejections above provide for a steel surface which consists of a brass (i.e. copper zinc alloy) coating. The alumina filler particles are taught by Krishnaswamy as improving corrosion resistance thus one of ordinary skill in the art would have been motivated to incorporate such particles to achieve improved corrosion resistance of the substrate material (i.e. steel substrate). Thus, it is the combination of Arif with Igelegbai and Krishnaswamy that arrive at the structure of the instantly claimed composition which consists of copper zinc alloy protective layer. The instant claims do not exclude the surface material from being a steel body, notably claim 1 is to a protective coating with an intended use, thus does not require a marine body having a surface. Etsuo is merely supplied as the reference teaches that thicker coatings offer more protection from corrosion and that intermediary layers help with adhesion of other layers and with anti-corrosion properties. Applicants remarks with regards to the combination of references with Etsuo are considered moot in view of the new rejections presented above.
Conclusion
Currently, no claims are allowed and all examined claims are rejected.
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
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