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 .
Response to Amendments
This is a final office action in response to applicant's arguments and remarks filed on
07/16/2026.
Status of Rejections
The rejection of claim 17 is obviated by the Applicant’s cancellation.
All other previous rejections are maintained.
The rejection of claim 1 has been updated due to the Applicant’s amendment. No new art is cited.
Claims 1-16 and 18-19 are pending and under consideration for this Office Action.
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.
Claim(s) 1-4, 7, 8, 10, 12, 13, 15, 16, 18, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lasa et al (US 5714045 A).
Claim 1: Lasa discloses a method of cathodic protection of a steel reinforcement in a concrete structure located in an ionically conductive medium (see e.g. abstract) so that a first part of the concrete structure is in contact with the medium below a surface of the medium and a second part of the concrete structure, continuous with the first part, is above the surface of the medium (see e.g. #15 on Fig 2), the concrete structure having the steel reinforcement in both the first part and the second part (see e.g. #16 on Fig 2), the method comprising:
providing a covering layer arranged to cover at least part of at least one outer surface of the concrete structure so that an inside surface of the covering layer is located adjacent said at least one outer surface (see e.g. #50 on Fig 1 and Fig 2; col 6, lines 37-48);
providing an inner anode of a sacrificial material for generating a galvanic current to the steel reinforcement, the inner anode being arranged so as to be positioned between the inside surface of the covering material and said at least one outer surface of the concrete structure (see e.g. #66 on Fig 2; col 8, lines 34-41);
providing a bulk anode of a sacrificial material for generating a galvanic current to the steel reinforcement in the concrete structure, the bulk anode being arranged so as to be positioned outside the covering layer and below the surface of the medium (see e.g. #24 on Fig 1 and Fig 2; col 6, lines 24-27);
attaching the covering layer to the concrete structure (see e.g. col 9, lines 47-64); and
providing electrical connections between the inner anode and the steel reinforcement (see e.g. col 8, lines 34-41) and between the bulk anode and the steel reinforcement such that an ionic current flows between the inner and bulk anodes and the steel reinforcement tending to inhibit corrosion thereof (see e.g. col 6, lines 24-27).
Lasa teaches that wherein the bulk anode comprises an active material (see e.g. col 5, lines 65-67) and describes active materials as being zinc, magnesium, and aluminum (see e.g. col 7, lines 43-45). KSR rationale states that is obvious to choose “from a finite number of identified, predictable solutions, with a reasonable expectation of success” and MPEP § 2144.07 states “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to select aluminum as the material of the bulk anode.
Lasa discloses that the inner anode can comprise zinc (see e.g. col 7, lines 43-45). KSR rationale states that is obvious to choose “from a finite number of identified, predictable solutions, with a reasonable expectation of success” and MPEP § 2144.07 states “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to select zinc as the material of the inner anode.
Claim 2: Lasa discloses an activator is provided at or adjacent the inner anode to maintain the ionic current flow (see e.g. col 10, lines 9-35).
Claim 3: Lasa discloses the activator is provided by a layer of a water transport medium different from concrete which carries the ionically conductive medium to a position at or adjacent the inner anode (see e.g. col 10, lines 9-35).
Claim 4: Lasa discloses that the layer of water transport medium is located such that a bottom part of the layer of water transport medium contacts the ionically conductive medium and the layer of water transport medium extends to a position above the level of the ionically conductive medium (see e.g. col 10, lines 9-35).
Claim 7: Lasa discloses that the activator comprises a chemical activation material carried with the covering layer (see e.g. col 10, lines 9-35).
Claim 8: Lasa discloses that the covering layer defines a form spaced from the surface for receiving grout material which is cast between the covering layer and the surface and wherein the activator provided in the grout (see e.g. col 9, lines 56-67).
Claim 10: Lasa discloses that the covering layer comprises a plurality of separate panels and the method includes connecting the panels to form an assembly which engages at least two surfaces of the concrete structure (see e.g. col 6, lines 37-48).
Claim 12: Lasa discloses that the concrete structure comprises a column (see e.g. #15 on Fig 2) and the covering layer when attached forms a jacket surrounding the column (see e.g. #50 on Fig 2).
Claim 13: Lasa discloses that the covering layer comprises a plurality of separate components which when attached together form a jacket (see e.g. col 6, lines 37-48) and wherein at least one of the components carries at least a part of the inner anode as a pre-assembled structure (see e.g. Fig 4).
Claim 15: Lasa discloses that the covering layer includes an electrical junction box (see e.g. col 6, lines 8-10) including connection terminals for electrical connection to the inner anode (see e.g. col 8, lines 27-30) and the bulk anode (see e.g. col 6, lines 1-5)
Claim 16: Lasa discloses that the inner anode can comprise aluminum (see e.g. col 7, lines 43-45). KSR rationale states that is obvious to choose “from a finite number of identified, predictable solutions, with a reasonable expectation of success” and MPEP § 2144.07 states “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to select aluminum as the material of the inner anode.
Claim 18: Lasa discloses that the covering layer defines a form spaced from the surface for receiving a grout material which is cast between the covering layer and the surface (see e.g. col 9, lines 56-59).
Claim 19: Lasa discloses that the covering layer is removed leaving the inner anode and the bulk anode in place after the grout material is cast so that the grout material is exposed (see e.g. col 10, lines 1-2).
Claims 1, 9, 11, and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3 and 6 of U.S. Patent No. US 12428736 B2 (referred to as 736 herein) in view of Lasa.
Claim 1: Claim 3 of 736 claims a method of cathodic protection of a steel reinforcement in a concrete structure located in an ionically conductive medium so that a first part of the concrete structure is in contact with the medium below a surface of the medium and a second part of the concrete structure, continuous with the first part, is above the surface of the medium, the concrete structure having the steel reinforcement in both the first part and the second part (1: “A method of cathodic protection of a steel reinforcement in a concrete structure located in an ionically conductive medium where a first part of the concrete structure is in contact with the medium below a surface of the medium and a second part of the concrete structure, continuous with the first part, is above the surface of the medium, the concrete structure having the steel reinforcement in both the first part and the second part”), the method comprising:
providing a covering layer arranged to cover at least part of at least one outer surface of the concrete structure so that an inside surface of the covering layer is located adjacent said at least one outer surface (1: “providing a covering layer arranged to cover at least part of at least one outer surface of the concrete structure so that an inside surface of the covering layer is located adjacent said at least one outer surface”);
providing an inner anode of a sacrificial material for generating a galvanic current to the steel reinforcement, the inner anode being arranged so as to be positioned between the inside surface of the covering material and said at least one outer surface of the concrete structure (2: “providing an inner anode of a sacrificial material for generating a galvanic current to the steel reinforcement, the inner anode being arranged so as to be positioned between the inside surface of the covering layer and said at least one outer surface of the concrete structure”);
providing a bulk anode of a sacrificial material for generating a galvanic current to the steel reinforcement in the concrete structure, the bulk anode being arranged so as to be positioned outside the covering layer and below the surface of the medium (1: “providing a bulk anode of a sacrificial material for generating a galvanic current to the steel reinforcement in the concrete structure, the bulk anode being arranged so as to be positioned outside the covering layer and below the surface of the medium”);
attaching the covering layer to the concrete structure (1: “attaching the covering layer to the concrete structure so as to attach the bulk anode carried thereby to the concrete structure”); and
providing electrical connections between the inner anode and the steel reinforcement and between the bulk anode and the steel reinforcement such that an ionic current flows between the inner and bulk anodes and the steel reinforcement tending to inhibit corrosion thereof (“providing electrical connections between the bulk anode and the steel reinforcement such that an ionic current flows between the bulk anode and the steel reinforcement tending to inhibit corrosion thereon”).
Claim 3 of 736 does not explicitly teach that the bulk anode comprises aluminum. Lasa teaches a method of cathodic protection of a steel reinforcement in a concrete structure located in an ionically conductive medium (see e.g. abstract) so that a first part of the concrete structure is in contact with the medium below a surface of the medium and a second part of the concrete structure, continuous with the first part, is above the surface of the medium (see e.g. #15 on Fig 2), the concrete structure having the steel reinforcement in both the first part and the second part (see e.g. #16 on Fig 2) wherein the anodes are made of active materials (see e.g. col 5, lines 65-67), such as aluminum (see e.g. col 7, lines 43-45). KSR rationale states that is obvious to choose “from a finite number of identified, predictable solutions, with a reasonable expectation of success” and MPEP § 2144.07 states “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to select aluminum as the material of the bulk anode.
Claim 3 of 736 does not explicitly teach that the inner anode comprises zinc. Lasa teaches a method of cathodic protection of a steel reinforcement in a concrete structure located in an ionically conductive medium (see e.g. abstract) so that a first part of the concrete structure is in contact with the medium below a surface of the medium and a second part of the concrete structure, continuous with the first part, is above the surface of the medium (see e.g. #15 on Fig 2), the concrete structure having the steel reinforcement in both the first part and the second part (see e.g. #16 on Fig 2) wherein the anodes are made of active materials (see e.g. col 5, lines 65-67). Lasa discloses that the inner anode can comprise zinc (see e.g. col 7, lines 43-45). KSR rationale states that is obvious to choose “from a finite number of identified, predictable solutions, with a reasonable expectation of success” and MPEP § 2144.07 states “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to select zinc as the material of the inner anode.
Claim 9: Claim 3 of 736 in view of Lasa claims that the covering layer, prior to application to said at least part of at least one outer surface of the structure for covering thereof, carries both the inner anode and the bulk anode and attaching the covering layer to the concrete structure so as to attach both the inner anode and the bulk anode carried thereby to the concrete structure. (3: “ wherein the covering layer, prior to application to said at least part of at least one outer surface of the structure for covering thereof, carries both the inner anode and the bulk anode and attaching the covering layer to the concrete structure so as to attach both the inner anode and the bulk anode carried thereby to the concrete structure”).
Claim 11: Claim 6 of 736 in view of Lasa claims that at least one panel carries at least a part of the inner anode on an inner surface and at least one panel carries the bulk anode on an outer surface (6: “wherein at least one panel of said plurality of separate panels carries at least a part of the inner anode on an inner surface and at least one panel of said plurality of separate panels carries the bulk anode on an outer surface”).
Claim 14: Claim 6 of 736 in view of Lasa claims that the covering layer comprises a plurality of separate components which when attached together form a jacket (4: “wherein the covering layer comprises a plurality of separate panels and the method includes connecting the plurality of separate panels to form an assembly which engages at least two surfaces of the concrete structure”) and wherein at least one of the components carries at least a part of the bulk anode as a pre-assembled structure (1: “the covering layer, prior to application to said at least part of at least one outer surface of the structure for covering thereof, carrying the bulk anode”).
Response to Arguments
Applicant's arguments filed 07/16/2026 have been fully considered but they are not persuasive.
On page(s) 1-4, the Applicant argues that Lasa does disclose that the bulk anode and the inner anode can be made from different active materials and that a person having ordinary skill in the art would not be motivated use different materials because aluminum and zinc have different electropotentials which would cause different driving voltages. The instant invention, according to the Applicant, found an unexpected result (“contrary to the clear expectation”) that the two different materials work together in combination. This is not considered persuasive. The Applicant is taking an overly narrow reading of Lasa. Nowhere in Lasa is it stated that the inner anode and bulk anode have to be the same material. Instead, Lasa discloses that the “Bulk anode 24 is constructed from a highly active metal” (see e.g. col 5, lines 65-67) and that “Sheets 65, 66 are formed of an active metal ranked high on the galvanic series so as to serve as efficient sacrificial anodes when installed and effectively circuited with the more cathodic steel reinforcement” (see e.g. col 7, lines 43-45). Thus, a person having ordinary skill in the art before the effective filing date of the instant invention would understand that the bulk anode and inner anode just need to be made of an active metal. Additionally, the Applicant’s arguments that a person having ordinary skill in the art before the effective filing date of the instant invention would not expect using two different materials to work is a matter of opinion. MPEP § 716.01(c) II states ‘Arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984)’. It is known in the art that two dissimilar metals can be used together in a cathodic protection system. For example, Lamborune (EP 2592175 A2) discloses the synergistic effect of using two different active metals (see e.g. abstract).
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER W KEELING whose telephone number is (571)272-9961. The examiner can normally be reached 7:30 AM - 4:00 PM. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER W KEELING/Primary Examiner, Art Unit 1795
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