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 9/2/26 do not overcome the rejections set forth in the office action mailed 3/20/26, which are maintained below. The discussion of the rejection over Rau has been updated as necessitated by the amendments, and also to cite a different paragraph regarding the content of silicate.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/2/26 has been entered.
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 25 that these are present in ranges such as 10 to 68% (1 to 27.2%), 20 to 62% (2 to 24.8%), or 40 to 52% (4 to 20.8%) by weight, encompassing or falling within the range recited for the inorganic binding agent of claim 1, and overlapping the range recited in claim 19. 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 24.8% by weight, leading to a ratio of organic binding agent to inorganic binding agent of 4:1 to about 1:16.3, encompassing the range recited in amended claim 1, or the TEOS can be present in an amount of 4 to 20.8% by weight, leading to a range of ratios of 2:1 to 1:13.9, more closely encompassing the range recited in claim 1. The total concentration of organic binding agent (styrene acrylate) and inorganic binding agent (silicate) in the aqueous composition can therefore range from 3.5 to 32.8%, or 5.5 to 28.8% by weight, overlapping the range recited in amended claim 1.
The range of weight ratios of the components in the coating, after drying, will be equivalent to the ratios in the aqueous composition and therefore also encompass the range recited in amended claim 19. The total concentration of the organic binding agent and inorganic binding agent in the coating will also overlap the range recited in claim 19. For example, Rau indicates that the TEOS can be present in an amount of 10 to 68% by weight and the styrene acrylate in an amount of 15 to 20% by weight, leading to a total amount of 25 to 88% by weight, overlapping the range recited in amended claim 19.
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 claims 1 and 19 , 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 4 above is 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 molybdenum disulfide 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 9/2/26 have been fully considered but they are not persuasive. Applicant argues that paragraph 25 of Rau teaches ratios of inorganic binding agent (oxides or silicates) to organic binding agent (ionomers and/or non-ionomers) outside the range recited in claims 1 and 19. However, Rau also discloses in paragraph 25 concentration ranges of inorganic binding agent which lead to weight ratios much higher than the preferred ranges of ratios cited by applicant. In the table following paragraph 112 on page 11 of the reference Rau discloses with compositions having a wide range of silicate (water glass) to ethylene acrylate ratios. One of ordinary skill in the art would therefore not interpret Rau’s teaching in paragraph 25 regarding ratios as a teaching away from compositions having ratios outside the disclosed preferred ranges.
Applicant argues that the disclosure of Rau is “highly broad and internally diverse” but nevertheless as discussed in the rejections, the ranges taught by Rau overlap or encompass the claimed ranges, rendering them obvious in accordance with Wertheim and Peterson. Applicant argues that Rau repeatedly expresses the contents as weight percentages of the solids and active substances, but the rejection uses overall concentration ranges calculated using Rau’s teachings regarding the amount of solids and active substances in the aqueous composition in order to address claim 1 and its dependent claims. Applicant notes that Rau teaches that solid lubricants are added only if necessary for more demanding cold-forming applications, but this is not a teaching away from the inclusion of solid lubricants; Rau explicitly teaches in paragraphs 59-63 that solid lubricants can be added.
Applicant also argues that the amended claims further limit the total concentration of organic and inorganic binder. As discussed in the rejection, Rau teaches total concentration ranges overlapping these ranges of Rau. Since Rau teaches in paragraph 77 that solids and active substances can make up 10 to 40% by weight of the aqueous composition, water can make up 60 to 90% of the composition; there is no inconsistency that would prevent all the limitations of claim 1 from being satisfied at once, noting again that all the ranges of Rau overlap, encompass, or fall within the claimed ranges. Furthermore, even when the composition is dried to form a coating, the ranges of Rau still overlap the claimed ranges, as discussed in the rejection, and it is noted that the compositions of Rau can also comprise a significant amount of a salt (paragraph 50 of Rau). There is therefore no inconsistency that would prevent all the limitations of claim 19 from being satisfied as once. It is noted that the concentration ranges recited in claim 19 diverge significantly from the preferred concentration ranges for the coating disclosed in paragraphs 153-156 of the current specification; the examiner recommends that applicant confirm whether claim 19 correctly recites the intended ranges.
Applicant could overcome the rejection over Rau by demonstrating the criticality of the claimed ranges through a showing of unexpected results meeting the standards set forth in MPEP 716.02, but applicant has not done so.
Regarding the rejection over Rau in view of Weaver, applicant further argues that claim 11 requires that the platelet-shaped particles be in addition to the components recited in claim 1. The examiner disagrees with this interpretation of the claim; claim 11 simply requires that the composition comprise platelet-shaped particles and gives no indication (e.g., “further comprises”) that the platelet-shaped particles cannot be one of the components recited in claim 1. Weaver provides motivation to use platelet-shaped molybdenum disulfide as the molybdenum disulfide of Rau.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
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/JAMES C GOLOBOY/Primary Examiner, Art Unit 1771
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