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 .
The amendments filed 1/27/26 overcome the rejections set forth under 35 USC 112(d) in the office action mailed 10/29/25, but fail to overcome the rejections set forth under 35 USC 103, which are maintained below. The discussions of the rejections have been updated as necessitated by the claim amendments.
Claim Rejections - 35 USC § 103
Claims 1-5 and 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over Rau (U.S. PG Pub. No. 2011/0048090).
In paragraph 13 Rau discloses an aqueous lubricant composition comprising a water-soluble, water-containing, and/or water-binding oxide and/or silicate as well as a content of organic polymeric material. In paragraph 77 Rau discloses that the solids and active substance concentration of this composition is 2 to 95% by weight, and also discloses various suitable narrower ranges, such as 10 to 40%. Rau discloses the concentrations of each component of the composition relative to the solids and active substances; the numbers in parentheses below are the concentration ranges relative to the overall composition when the solids and active substance concentration is 10 to 40% by weight. The numbers in the parentheses define the ranges relied upon to render the claims to the aqueous composition obvious and the numbers outside the parentheses define the ranges relied upon to render the coating of claim 19 obvious.
In paragraphs 34-37 Rau discloses that the composition preferably comprises 0.1 to 18% (0.01 to 7.2%), especially 2 to 8% (0.2 to 3.2%), by weight of a polymer/copolymer based on styrene, acrylic acid, and/or methacrylic acid. A copolymer of styrene with acrylic acid and/or methacrylic acid meets the limitations of the organic binding agent of claim 1 where styrene is the unsaturated carbon and acrylic or methacrylic acid is an unsaturated carboxylic acid. In paragraphs 29-30 and 32 Rau discloses that the composition can comprise styrene acrylates, which also meet the limitations of the organic binding agent of claim 1, in accordance with the disclosure in paragraph 43 of the current specification that carboxylic acids in the context of the present invention include esters thereof. In paragraph 32 Rau discloses that the non-ionomers such as the styrene acrylate are present in amounts overlapping or encompassing the range recited for the organic binding agent of claim 1, such as 0.1 to 90% (0.01 to 36%) by weight or 15 to 20% (1.5 to 8%) by weight. Styrene further meets the limitations of the aromatic compounds having vinyl groups of claims 2-3. Acrylic and methacrylic acid are C3 and C4 alkenoic acids, meeting the limitations of claim 4. The Acrylic acid, methacrylic acid, and acrylate esters of Rau (esters of acrylic acid) are all recited in claim 5.
In paragraph 22 Rau discloses that the silicate can be a water glass, as recited for the inorganic binding agent of claim 1. Rau also discloses that the silicate can be ethyl silicate, which is a synonym for tetraethyl orthosilicate (TEOS), also as recited for the inorganic binding agent of claim 1. Rau discloses in paragraph 22 that these are present in ranges such as 10 to 75% (1 to 30%), 15 to 70% (1.5 to 28%), or 20 to 65% (2 to 26%) by weight, encompassing the range recited for the inorganic binding agent of claim 1. In paragraphs 66-68 Rau discloses that the composition can comprise silanes, also meeting the limitations of the inorganic binding agent of claim 1, in amounts overlapping the range recited for the inorganic binding agent of claim 1, such as 5 to 50% (0.5 to 20%) by weight.
The weight ratios of the organic binding agents discussed above to the inorganic binding agents discussed above overlap or encompass the range recited in amended claim 1. For example, as discussed above, Rau discloses that the styrene acrylate can particularly preferably be present in an amount of 1.5 to 8% by weight of the aqueous coating composition, and the TEOS can be present in an amount of 2 to 26% by weight, leading to a ratio of organic binding agent to inorganic binding agent of 4:1 to about 1:17.3, encompassing the range recited in amended claim 1.
In paragraph 59 Rau discloses that the composition can comprise a solid lubricant. In paragraph 61 Rau discloses that the solid lubricant can be molybdenum disulfide, as recited in claim 1. In paragraph 63 Rau discloses that the solid lubricant can be present in various concentration ranges overlapping, encompassing, or falling within the range recited for the lubricant of claim 1, such as 0.5 to 50% (0.05 to 20%) or 12 to 25% (1.2 to 10%) by weight. In paragraph 51-58 Rau discloses that the composition can comprise waxes, also meeting the limitations of the lubricant of claim 1, and in paragraph 52 Rau discloses that the waxes are preferably present in amounts overlapping or within the range recited for the lubricant of claim 1, such as 0.5 to 30% (0.05 to 12%) or 1 to 25% (0.1 to 10%) by weight.
In paragraph 76 Rau discloses that the composition preferably has no content of fluorine-containing compounds, meeting the limitation of claim 1 requiring that the composition be free of fluorine-containing compounds.
In paragraphs 84-102 and the reference’s claim 26, Rau discloses applying the composition to a metallic workpiece, meeting the method limitations of claims 15, and forming a metallic workpiece meeting the limitations of the coated metallic substrate of claims 18-19. In paragraphs 90 and 92 Rau discloses that the metallic substrate can be galvanized or aluminized, in which case it has cathodic corrosion protection recited in the first step of claim 16. In paragraphs 94, 102, and 105 Rau indicates that the coating is applied and then dried, meeting the remainder of the method steps of claim 16.
The difference between Rau and the currently presented claims is that some of the ranges of Rau overlap or encompass the claimed ranges rather than falling within them. See MPEP 2144.05(I): “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);” "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). Claims 1-5, 15-16, and 18-19 are therefore rendered obvious by Rau. Additionally, since Rau meets the compositional and method limitations of the claims, the coated substrate produced by the method of Rau will have a friction coefficient meeting the limitations of claim 17.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Rau in view of Weaver (WO 2021/005370 A1)
The discussion of Rau in paragraph 3 above are incorporated here by reference. Rau discloses a coating composition meeting the limitations of claim 1, and comprising solid lubricants such as molybdenum disulfide, but does not disclose the inclusion of platelet-shaped particles.
On page 7 lines 22-24, Weaver discloses a waterborne protective coating system comprising water, at least one binder, and a dispersion of 2D material/graphitic nanoplatelets. On page 8 lines 18-24 Weaver discloses that the 2D material/graphitic nanoplatelets can be molybdenum disulfide, as disclosed in the composition of Rau. The use of the molybdenum disulfide nanoplatelets of Weaver as the molybdenum disulfide in the composition of Rau meets the limitations of claim 11.
It would have been obvious to one of ordinary skill in the art to use a nanoplatelet molybdenum disulfide as the graphite in the composition of Rau since Weaver teaches that it is a suitable type of molybdenum disulfide for an aqueous coating, including coatings used for corrosion improvement in metal (page 19 lines 24-25 of Weaver).
Response to Arguments
Applicant's arguments filed 1/27/26 have been fully considered but they are not persuasive. Applicant argues (page 9 of the response) that Rau “does not disclose any target coefficient of friction…nor does it address the controlled adjustment of a defined friction coefficient range after application of the coating to a metallic substrate”. Applicant later alleges, also on page 9 of the response, that the claimed subject matter requires a “definable, targeted set friction coefficient window” However, the only claim which recites a friction coefficient is claim 17, so this argument is not relevant to the remaining claims. As discussed in the rejections, Rau discloses both an aqueous coating composition and a coating comprising the claimed components in concentration ranges and ratios overlapping or encompassing the claimed ranges, rendering them obvious in accordance with Wertheim and Peterson. Additionally, as discussed in the rejection over Rau, since the composition of Rau meets the compositional and method limitations of the claims, the coated substrate produced by the method of Rau will have a friction coefficient meeting the limitations of claim 17. Applicant has not provided any evidence to the contrary. Applicant’s arguments on these points are therefore not persuasive. If applicant’s position is that the claimed compositions and methods produce unexpectedly superior results regarding the frictional properties, applicant should explicitly state that this is the case, and make a showing in accordance with the requirements set forth in MPEP 716.02.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. 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).
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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
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/JAMES C GOLOBOY/Primary Examiner, Art Unit 1771