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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 22 January 2026 and 09 February 2026 has been entered.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Croutxe-Barghorn et al. (US 2015/0159039 A1, “Croutxe-Barghorn”) in view of Chung et al. (US 2003/0024432 A1, “Chung”).
With respect to claims 1, 3-4, 7-8, and 10-11, Croutxe-Barghorn discloses a hybrid sol-gel layer on a substrate ([0055]) where the hybrid sol-gel layer is made from a composition comprising a radiation curable material include an epoxy resin ([0056], [0113]), an organofunctional silane ([0056-0057]), and 1-20 wt% of a corrosion inhibitor ([0143]). The organofunctional silane is mixed with the other components ([0215], [0326]) and is therefore isolated and pre-formed since it is not formed within the sol-gel. The organofunctional silane (i.e., organosilane) includes 3-glycidyloxypropyltrimethoxysilane (GPTMS) and 2-(3,4-epoxycyclohexyl) ethyltrimethoxysilane (TRIMO) (i.e., an organosilane having at least one epoxide moiety) ([0062]). The hybrid sol-gel is used for aircraft parts and other vehicle parts ([0101], [0178]) and is applied to substrates including steel ([0204], [0207]). The composition has low solvent content ([0051]) where the solvent is an organic solvent ([0082]); the composition can be water-free ([0082]).
However, Croutxe-Barghorn does not disclose the use of a metal alkoxide nor an acid stabilizer.
Chung teaches a hybrid sol-gel comprising an alkoxy metallic compound including Zr (IV) n-propoxide (i.e., a metal alkoxide) that serves to minimize the diffusion of oxygen to the surface and to stabilize the metal-resin interface ([0018]), and an organic acid which functions as a reaction rate stabilizer (i.e., an acid stabilizer) and promotes the hydrolysis reaction ([0016], [0027]). The ratio of acid stabilizer to metal alkoxide is 0.67-6 (1/1.5 ≈ 0.67; 3/0.5 = 6) (claim 11).
Croutxe-Barghorn and Chung are analogous inventions in the field of anti-corrosion sol-gel compositions containing organosilanes.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the sol-gel of Croutxe-Barghorn to contain Zr (IV) n-propoxide (i.e., a metal alkoxide) and an organic acid in a ratio of 0.67-6 (including values presently claimed) as taught by Chung in order to provide a sol-gel with minimal oxygen diffusion to the surface, a stable metal-resin interface, a stable reaction rate, and promotes a hydrolysis reaction (Chung, [0016], [0018], [0027]).
With respect to claims 2 and 9, while Croutxe-Barghorn in view of Chung discloses the use of hybrid sol-gel layer in aircraft parts (Croutxe-Barghorn, [0101]), Croutxe-Barghorn in view of Chung does not disclose wherein the aircraft part is selected from the group consisting of a rotor blade, an APU, a nose of an aircraft, a fuel tank, a tail cone, a panel, a coated lap joint between two or more panels, a wing-to-fuselage assembly, a structural aircraft composite, a fuselage body-joint, and a wing rib-to-skin joint. However, Applicant’s attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use (i.e., a specific vehicle component) recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure, which is a vehicle component identical to that set forth in the present claims, is capable of performing the recited purpose or intended use.
With respect to claims 5-6 and 12-13, Croutxe-Barghorn discloses a coating made of two hybrid sol-gel layers ([0201]). Given the hybrid sol-gel layers include epoxy resin ([0056], [0113]), one layer would function as the presently claimed secondary epoxy coating layer.
Allowable Subject Matter
The following is an examiner’s statement for indicating allowable subject matter. Claims 14-20 are allowable over the “closest” prior art Croutxe-Barghorn et al. (US 2015/0159039 A1, “Croutxe-Barghorn), Chung et al. (US 2003/0024432 A1, “Chung”), and Schuette et al. (US 2018/0208777 A1, “Schuette”).
Croutxe-Barghorn discloses a hybrid sol-gel layer on a substrate ([0055]) where the hybrid sol-gel layer is made from a composition comprising a radiation curable material include an epoxy resin ([0056], [0113]), an organofunctional silane ([0056-0057]), and 1-20 wt% of a corrosion inhibitor ([0143]). The organofunctional silane is mixed with the other components ([0215], [0326]) and is therefore isolated and pre-formed since it is not formed within the sol-gel. The organofunctional silane (i.e., organosilane) includes 3-glycidyloxypropyltrimethoxysilane (GPTMS) and 2-(3,4-epoxycyclohexyl) ethyltrimethoxysilane (TRIMO) (i.e., an organosilane having at least one epoxide moiety) ([0062]). The hybrid sol-gel is used for aircraft parts and other vehicle parts ([0101], [0178]) and is applied to substrates including steel ([0204], [0207]). The composition has low solvent content ([0051]) where the solvent is an organic solvent ([0082]); the composition can be water-free ([0082]).
However, Croutxe-Barghorn does not disclose the use of a metal alkoxide nor an acid stabilizer, nor does Croutxe-Barghorn disclose the pre-formed and isolated organosilane is represented by formula (II) as presently claimed.
Chung discloses a hybrid sol-gel comprising an alkoxy metallic compound including Zr (IV) n-propoxide (i.e., a metal alkoxide) that serves to minimize the diffusion of oxygen to the surface and to stabilize the metal-resin interface ([0018]), and an organic acid which functions as a reaction rate stabilizer (i.e., an acid stabilizer) and promotes the hydrolysis reaction ([0016], [0027]). The ratio of acid stabilizer to metal alkoxide is 0.67-6 (1/1.5 ≈ 0.67; 3/0.5 = 6) (claim 11).
However, Chung does not disclose the use of a pre-formed and isolated organosilane having the structure represented by formula (II) as presently claimed.
Schuette discloses a sol-gel that is the reaction product of an organosilane, a metal alkoxide, an acid stabilizer, and a corrosion inhibitor ([0006]). The molar ratio of the acid stabilizer to metal alkoxide is about 1:1 to about 40:1 ([0039]), overlapping the presently claimed range. The organosilane has the structure shown below where R is selected from alkyl, cycloalkyl, ether, and aryl ([0028]). Given the organosilane is added separately to the mixture ([0026]), it is pre-formed and isolated as presently claimed. The components are contained in a solvent before being added together, where the solvents include organic solvents ([0042]). The sol-gel is applied to substrates ([0043]), where the substrates include metal substrates which are parts of vehicle components ([0043-0044]). Thus, Schuette discloses a vehicle component comprising a sol-gel coating system, wherein the sol-gel system comprises a metal substrate and a sol-gel formulation comprising an organosilane, a metal alkoxide, a corrosion inhibitor, an acid stabilizer, and an organic solvent. The corrosion inhibitor is present in an amount of 0.1-50 wt% of the sol-gel ([0036]), overlapping the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “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). While Schuette discloses the solvents may include water, it is not required because organic solvents can be used ([0042]), and thus the sol-gel formulation has 0 wt% water content.
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Organosilane structure
However, Schuette does not qualify as prior art under 35 U.S.C. 102(a)(2) in light of Applicant’s statement of common ownership in the remarks filed 22 January 2026, which excludes the reference under the 35 U.S.C. 102(b)(2)(C) exception.
Thus, none of the references, either alone or in combination, disclose the invention of claims 14-20, and thus claims 14-20 are allowable.
Response to Arguments
Due to the filing of a common ownership statement in the remarks filed 22 January 2026, which establishes that, no later than the effective filing date of the claimed invention, the subject matter disclosed in Schuette and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person, the 35 U.S.C. 103 rejections of claims 1-6 and 14-20 over Schuette are withdrawn.
Applicant’s arguments filed 22 January 2026 have been fully considered, but they are not persuasive.
Regarding the 35 U.S.C. 103 rejections over Croutxe-Barghorn in view of Chung, Applicant argues Croutxe-Barghorn does not describe the organosilane is pre-formed and isolated prior to incorporation into the sol-gel, nor does Croutxe-Barghorn disclose any processing step in which an organosilane is isolated as a discrete compound before being combined with other sol-gel components. Applicant further argues Croutxe-Barghorn discloses the use of a mixture of two different silanes, whereas the presently claimed invention uses a single organosilane and does not require the use of multiple different silanes. Applicant additionally argues Chung does not remedy the alleged deficiencies of Croutxe-Barghorn. The examiner respectfully disagrees.
In response to Applicant’s arguments, this is not found persuasive. Croutxe-Barghorn discloses the organofunctional silane is mixed with the other components ([0215-0225], [0326]) and is therefore isolated and pre-formed since it is not formed within the sol-gel. Further, while Croutxe-Barghorn may use a mixture of two different silanes, nothing in the present claims prohibits this due to the open-ended language of the present claims (i.e., the use of the transitional phrase “comprising” does not exclude the use of an additional silane). Lastly, since Croutxe-Barghorn does not contain the alleged deficiencies, Chung is not required to address them, and thus the combination of Croutxe-Barghorn in view of Chung renders the invention of claims 1-13 obvious.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Steven A Rice whose telephone number is (571)272-4450. The examiner can normally be reached Monday-Friday 07:30-16:00 Eastern.
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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787