The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Applicants' arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn due to Applicant's amendments and/or arguments. The following rejections and/or objections are either reiterated or newly applied.
NEW REJECTIONS: NECESSITATED BY AMENDMENT
Claim Rejections - 35 USC § 103
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.
Claims 1-10, 14-19, and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019126527 A1 to Michael et al.
Re claims 1 and 19, Michael teaches a coated metal substrate essentially the same as applicant – see [140], coating of epoxy film [129, 139], aluminum oxide compound [162], Table 26, Exp. Ex. 55, iron [147], magnesium oxide [186], and aluminum particles [20, 134, 136]. The aluminum compound is inherently water-soluble and meets claim 5. Re claim 19, see [20]. Michael teaches overlapping resin of magnesium oxide and metal compound [186, 167] no more than 55:1 (overlapping 1:1 to 240:1).
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 reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
Michael doesn’t teach the exact range but teaches overlapping ranges of [149-1540] the film thickness of 2.5 to 500 microns, 2.5 to 100 microns, 2.5 to 75 microns, 5 to 50 microns, or 25 to 60 microns. When used as a fire protection coating, the dry film thickness can be 1,000-70,000 microns (overlapping at least 10 microns). The same overlapping ranges rationale as set forth above applies here.
Re claim 5, Michael doesn’t teach the exact size range of the magnesium oxide, but teaches particle sizes of no more than 200 nm ([34, [24-26], [28] ) overlapping applicant’s at least 20 nm. The same overlapping ranges rationale as set forth above applies here. The measurements are not germane to patentability.
Re claims 6-7, see [16], [123] [186], 10 to overlapping ranges of 5% to 70% MgO - as used herein,“magnesium alloy particles” refers to an alloy having magnesium as the predominant metal, such as an alloy comprising at least 51% by weight of magnesium, based on the total weight. The same overlapping ranges rationale as set forth above applies here. At least 10% MgO (10 parts / 100 parts binder) is also used in [243], overlapping claim 7 the amount aids in improving corrosion performance. The same overlapping ranges rationale as set forth above applies here.
Re claims 8-9, Michael doesn’t teach the exact percentage range claimed, but does teach [16] and [20] overlapping weight percentage of aluminum 20% by weight overlapping the claimed ranges of claims 8 and 9 aiding in corrosion improvements. The same overlapping ranges rationale as set forth above applies here.
Re claim 10, Michael teaches pigment [117-120] but not the exact percentages as claimed. However, as they are pigments, the percentage directly effects the color strength of the coating. Absent of the showing of the criticality for the percentage range it would have been obvious within the level of ordinary skill in the art to select a suitable pigment for Michael from commercially available pigments, known to directly effect the degree of color or hue.
Re claims 16 and 19, see [39].
Re claim 21, see [223] to the pH checked and thus given the same materials and amounts are taught, the property is inherent.
Re claim 22, the properties that occur when x… are conditional and process limitations in a product claim.Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. Patentability of an article depends on the article itself and not the method used to produce it (see MPEP 2113). Furthermore, the invention defined by a product-by-process invention is a product NOT a process. In re Bridgeford, 357 F. 2d 679. It is the patentability of the product claimed and NOT of the recited process steps which must be established. In re Brown, 459 F. 29 531. Both Applicant’s and prior art reference’s product are the same.
Claims 14-15 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019126527 A1 to Michael et al. in view of US 20170066927 A1 to Breon et al.
Michael is relied upon above.
Re claims 14 and 17, Michael discloses [169] iron substrate, and [147] iron in a metal compound of the coating but not if the iron compound is iron hydroxide or phosphate.
Breon teaches [38] iron compounds including at least iron hydroxide [31-32] and teaches iron oxide in the substrate [76].
It would have been obvious to one having ordinary skill in the art to have modified the metal compound of Michael and add, use, or substitute it with the iron one of similar alkaline metal hydroxides and for the substrate as well for further benefits of corrosion resistance.
Further Re claim 14-15, Michael doesn’t teach a ferrous substrate but again teaches an [169] iron substrate for rust reduction.
Example 22, Breon teaches ferrous substrate, Table 17, footnote 32.
It would have been obvious to one having ordinary skill in the art to have modified the metal compound of Michael and add, use, or substitute it with the ferrous substrate of Breon for reducing rust.
In view of the forgoing, the above claims have failed to be patently distinguishable over prior art.
Response to Applicant’s arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that the Examples of Michael contain a significant amount of zinc dust and that paragraph 0016 of Michael discloses that the composition requires at least 20 wt.% metal particles while the present claims do not explicitly include metal particles and is different in its inclusion of significant amounts of aluminum or iron.
However, “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967). Given that the present claims only broadly recite “aluminum compound”, the metal particles of Michael which include aluminum particles are considered to meet the claimed aluminum compound where the ratio of aluminum particles (compound) to magnesium oxide is disclosed in Michael as no more than 55:1 [186] which overlaps the ratio claimed. Michael also discloses that the composition comprises 0.5-50 wt.% alkaline earth metal compound which is magnesium oxide [23, 31] and 5-75 wt.% film-forming binder [89] such that it is calculated that is 0.67-1000 parts magnesium oxide per 100 parts film-forming binder ((0.5*100)/75 – (50*100)/5) which overlaps the amount claimed.
Applicant argues that Michael teaches a non-analogous metal particle containing formulation.
However, as set forth above, the metal particles of Michael are considered to meet the claimed aluminum compound and therefore, Michael is not non-analogous art.
Applicant argues that Breon does not cure the deficiencies of Michael.
However, note that while Breon does not disclose all the features of the present claimed invention, Breon is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Conclusion
The remaining references listed on form(s) 892 and/or 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon in the rejection above.
US 2012/0094130 A1 to Foscante teaches anticorrosive coating on a metallic substrate.
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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TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787