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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/24/2026 has been entered.
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, 3-10, 14-19, and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019126527 A1 to Michael et al. as evidenced by US 20120094130 to Foscante 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 phosphate treated compound [172], Table 26, Exp. Ex. 55, iron [147], magnesium oxide [186], and aluminum particles [20, 134, 136]. The aluminum compound aluminum phosphate is inherently water-soluble as evidenced by [12-18] Foscante and meets claim 5. Re claim 19, see [20]. Michael teaches overlapping resin of magnesium oxide and aluminum metal compound [186, 172, 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 and 22, 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 and 22 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.
Further Re claim 1, the conditions and 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. as evidenced by US 20120094130 to Foscante et al. and further 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 Arguments
Applicant’s amendments in part are previous claim 22 now incorporated into claim 1. Further all other arguments are moot in view of the new ground of rejection using a new reference. In applicant’s argument of product by process language that alleges the recitations are not such, language such as “stirred for 24 hours, centrifuged” etc. may be an assay but are still process derived and as such are considered product by process language indeed. See MPEP 2113. Further should applicant desire process claims, applicant is welcomed to file a divisional. See Office Action above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAMRA L. DICUS whose telephone number is (571)272-2022. The examiner can normally be reached M-F 8:00 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, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787
Prosecution Insights