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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 11, 13, 18 and 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. In this case, claim 11, 13, 18 and 20 respectively recite “heating residue of a coating film”, one of ordinary skill in the art is uncertain what a “heating residue of a coating film” exactly referring to, nor the instant specification gives a clear explanation what is a heating residue of a coating film, such as what specific heating residue of what specific coating film being treated under what conditions (e.g. temperature, time, pressure, atmosphere etc.). Next, such recited coating film appears to be associated with the instantly claimed coating material for intended use (see claim 8, 15), i.e., as a layer or base for the instantly claimed coating material being applied onto (see instant specification of the instantly published application US2024/0150613 para. [0007], [0009]). Hence, one of ordinary skill in the art is uncertain how can such recited coating material content being based on a layer where such coating material being applied onto. Therefore, such limitation of “heating residue of a coating film” renders confusion for one of ordinary skill in the art, thus renders claims indefiniteness.
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 8-10, 12 and 14-17, 19, 21 are rejected under 35 U.S.C. 103 as obvious over Kaji et al. (WO2017/085970) (for applicant’s convenience, human assisted machine translation has been used for citations hereof).
Kaji et al. teaches an anticorrosive two-liquid component coating composition comprising bisphenol A epoxy resin (such organic binder does not contain metallic zinc or a zinc alloy) (para. [0012], claim 1), scale-like pigment (para. [0029], claim 17), at least an extender pigments and a rust preventive pigment wherein the rust preventive pigment is hemihydrate gypsum (β gypsum) (i.e. calcium sulfate) (corresponding to instantly claimed a first inorganic material containing a sulfate) (para. [0110], examples 1-12, 27-48).
As for the recited “sulfate having a solubility of lower than 5g/100 ml with respect to water” in claim 8 and 15, Kaji et al. already teaches a same or substantially the same sulfate material (specifically see claim 12 and/or 19 recited sulfate material), therefore, same or substantially the same property, i.e. same or substantially the same solubility as that of instantly claimed is expected.
Regarding claim 8 and 15, as for the anticorrosive coating composition comprising “a second inorganic material being soluble in water, exhibits alkalinity if dissolved in water, and has a solubility of lower than 5g/100 ml with respect to water”, Kaji et al. further teaches calcium carbonate, magnesium carbonate or the like maybe used as the extender pigment (para. [0083], [0109], [0110]). Kaji et al. disclosed second inorganic material is same or substantially the same as that of instantly claimed (see following claim 10 and/or 17), therefore, same or substantially the same properties, i.e. same or substantially the same “second inorganic material being soluble in water, exhibits alkalinity if dissolved in water, and has a solubility of lower than 5g/100 ml with respect to water” as that of instantly claimed is expected.
It would have been obvious for one of ordinary skill in the art “obvious to try” calcium carbonate and/or magnesium carbonate as shown by Kaji as extender pigments because choosing calcium carbonate and/or magnesium carbonate from a finite number of identified, predictable solutions of extender pigment to help obtain a desired anticorrosive coating composition with a reasonable expectation of success (see MPEP §2143 KSR).
As for claim 8 recited a coating material “used for applying a coating film formed on a coating made of a zinc-containing material formed in contact with a surface of a metal material”, wherein such limitation is an intended use for the instantly claimed coating material but such limitation does not structurally limit the instantly coating material.
As for claim 15 recited a coating material “is configured to be used for applying a coating film in contact with a surface of a metal material, the coating film comprising of a zinc-containing material”, wherein such limitation “is configured to ….” is modified by a coating material with specific components, therefore 112 (f) is not invoked. Rather such limitation is an intended use for the instantly claimed coating material but such limitation does not structurally limit the instantly coating material.
Regarding claim 9 and 16, since Kaji et al already teaches a same or substantially the same second inorganic material, therefore, same or substantially the same property, i.e. same or substantially the same pH of 12 or less in a saturated aqueous solution as that of instantly claimed is expected.
Regarding claim 10, 12 and 17, 19, Kaji et al. already teaches such limitations as discussed above.
Regarding claim 14 and 21, Kaji et al. also teaches the anticorrosive coating composition can be applied to a zinc primer layers (para. [0155]). Furthermore, such claimed “coating film made of a zin-containing material is any of a coating material mad of……”, such limitation does not structurally limit instantly claimed coating material, therefore, such limitation cannot render the instantly claimed coating composition patentable distinct.
Claim 8-11, 13-18 and 20-21 are rejected under 35 U.S.C. 103 as obvious over Yamashita (US2020/0255952) in view of Fukuike (JP2008/144077) (for applicant’s convenience machine translation has been used for citations hereof).
Yamashita teaches a coating material including particles of at least one compound selected from the group consisting of calcium oxide, calcium hydroxide, strontium oxide, and strontium hydroxide, and particles of a metal sulfate wherein the coating has a soluble amount of the metal sulfate in 100 g of water is 0.5 g or more at 5°C (para. [0015], claim 1). Since water has a density of 1 g/cm3 (noted 1 cm3=1ml), therefore, such metal sulfate has a solubility in water being greater than 0.5g/100 ml. Yamashita further teaches such coating material can include metal powder (e.g. zinc) (para. [0063]-[0066]) and include an organic resin (i.e. binder) such as epoxy resins, modified epoxy resins, acrylic resins, urethane resins, phthalic acid resins, melamine resins, fluorine resins (para. [0037], [0073], [0074]). It is noted that Yamashita disclosed such organic resin reads onto the instantly claimed binder in light of the instant specification (see instant specification of the instantly published application US2024/0150613 para.[0035]), which does not contain metallic zinc or zinc alloy. Yamashita also teaches the coating material can contain other additives such as common coloring pigment, an extender pigment, and anti-rust pigment (para [0076], [0077]).
Regarding claim 8 and 15, Yamashita does not expressly teach the coating material comprising “a second inorganic material being soluble in water, exhibits alkalinity if dissolved in water, and has a solubility of lower than 5g/100 ml with respect to water”.
Fukuike teaches an anti-rust coating comprising a zinc-based anti-rust pigment which comprises at least one of magnesium and a magnesium compound (claim 1). Fukuike further teaches the magnesium compound used in the present invention includes magnesium carbonate, magnesium nitrate, magnesium chloride, magnesium sulfate, magnesium oxide, magnesium hydroxide, magnesium ethoxide, magnesium methoxide (para. [0016]). Fukuike disclosed second inorganic material is same or substantially the same as that of instantly claimed (see following claim 10 and/or 17), therefore, same or substantially the same properties, i.e. same or substantially the same “second inorganic material being soluble in water, exhibits alkalinity if dissolved in water, and has a solubility of lower than 5g/100 ml with respect to water” as that of instantly claimed is expected.
It would have been obvious for one of ordinary skill in the art “obvious to try” such magnesium carbonate, magnesium oxide, and/or magnesium hydroxide as anti-rust pigment as shown by Fukuike to modify the coating material of Yamashita because choosing magnesium carbonate, magnesium oxide, and/or magnesium hydroxide as anti-rust pigment from a finite number of identified, predictable solutions of anti-rust pigment to help obtain a desired anticorrosive coating composition with a reasonable expectation of success (see MPEP §2143 KSR).
As for claim 8 recited a coating material “used for applying a coating film formed on a coating made of a zinc-containing material formed in contact with a surface of a metal material”, wherein such limitation is an intended use for the instantly claimed coating material but such limitation does not structurally limit the instantly coating material.
As for claim 15 recited a coating material “is configured to be used for applying a coating film in contact with a surface of a metal material, the coating film comprising of a zinc-containing material”, wherein such limitation “is configured to ….” is modified by a coating material with specific components, therefore 112 (f) is not invoked. Rather such limitation is an intended use for the instantly claimed coating material but such limitation does not structurally limit the instantly coating material.
Regarding claim 9 and 16, since Fukuike already teaches a same or substantially the same second inorganic material, therefore, same or substantially the same property, i.e. same or substantially the same pH of 12 or less in a saturated aqueous solution as that of instantly claimed is expected.
Regarding claim 10 and 17, Fukuike already teaches such limitations as discussed above.
Regarding claim 11, 13 and 18, 20, Yamashita further teaches the content of the particles of the metal sulfate is 0.05 to 30.0% by mass with respect to the total solid content of the coating material, while metal powder content being 80% by mass or less with respect to the total solid content of the coating material, wherein such content of metal sulfate providing a coating material with high corrosion resistance and such content of zinc powder content providing a coating material with suppressed coating film release during early stage (para. [0015],[0020], [0066], claim 1).
Fukuike also teaches weight ratio of magnesium compound to zinc being 0.05% to 110.0% by mass, and such content range of magnesium compound can help obtain a coating film with inhibited white rust formation and durability of corrosion prevention (para. [0007],[0032], claim 3).
It would have been obvious for one of ordinary skill in the art to adopt a same mixing amount of the first inorganic material being 0.5 g or more with respect to 100 g of a heating residue, a same mixing amount of the second inorganic material, a same total mixing amount of the first inorganic material and the second inorganic material as those of instantly claimed via routine optimization (see MPEP §2144. 05 II) for help obtaining an anticorrosive coating material which can provide desired corrosion resistance, suppressed coating film release during early stage as suggested by Yamashita (para. [0020], [0066]) and obtaining anti-rust coating material with inhibited white rust formation and durability of corrosion prevention as suggested by Fukuike (para. [0032]).
Regarding claim 14 and 21, such claimed “coating film made of a zin-containing material is any of a coating material mad of……”, such limitation does not structurally limit instantly claimed coating material, therefore, such limitation cannot render the instantly claimed coating composition patentable distinct.
Conclusion
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/JUN LI/ Primary Examiner, Art Unit 1732