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
In view of the 03/19/2026 Pre-Appeal Conference, PROSECUTION IS HEREBY REOPENED. A new ground of rejection is set forth below.
The finality of the Office action mailed is hereby withdrawn in view of the new ground of rejection set forth below.
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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn due to Applicant's amendments and/or arguments.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.
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 1-2, 8, 15-16, 18 and 49-50 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019126527 A1 to Michael et al.
Re claims 1, 15-16, 18, and 49-50, Michael teaches a coated metal substrate [139, 140] coated with epoxy [129], iron compound [147], magnesium oxide [186], and aluminum particles [20, 134, 136, 162] separate by nature as they are particles. The metal substrate includes ferrous (steel) or aluminum alloy substrate [140].
In light of the overlap between the claimed coated metal substrate and that disclosed by Michael, it would have been obvious to one of ordinary skill in the art to use a coated metal substrate that is both disclosed by Michael and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Re claim 2, Michael discloses the thickness of the coating is 2.5-500 microns [149].
Re claim 8, 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. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05. The measurements are not germane to patentability.
Claims 3, 5, 7, 13, 17, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019126527 A1 to Michael et al. in view of US 2012/0094130 A1 to Foscante et al.
Re claims 3, 5, 7, 17, and 19, Michael is relied upon as above.
Michael does not disclose aluminum compound as claimed.
Foscante teaches water soluble aluminum phosphate in a binder for anti-corrosion benefits on metal substrate [12-18].
In light of the motivation for using aluminum phosphate disclosed by Foscante as described above, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to use the aluminum phosphate in the coating of Michael in order to produce a coated metal substrate that has the benefit of having an anti-corrosive metal.
Michael teaches using 0.5-50 wt.% magnesium oxide [31]. Foscante discloses using 1-25 wt.% aluminum phosphate (Abstract, 7]. Therefore, the ratio of magnesium oxide to aluminum phosphate is calculated as 0.02 (0.5/25) – 50 (50/1).
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 re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 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.
Re claim 13, Michael teaches the use of 0.5-50 wt.% magnesium oxide and at least 20 wt.% aluminum particles [20] while Foscante teaches using 1-25 wt.% aluminum phosphate.
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); In re Woodruff, 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.
Claims 5, 6, 16, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019126527 A1 to Michael et al. in view of in view of Walters (US 2008/0090069).
Re claims 5, 6, 16, and 18, Michael is relied upon as above.
Michael does not disclose iron compound as claimed.
Walters discloses ferrous (steel) or aluminum alloy substrate [106] coated with corrosion inhibiting composition [3] comprising epoxy resin and magnesium oxide particles [10] as well as iron phosphate [114]. The iron phosphate enhances adhesion of the composition to the metal substrate [110].
In light of the motivation for using iron phosphate disclosed by Walters as described above, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to use the iron phosphate in the coating of Michael in order to enhance adhesion of the coating to the metal substrate.
Response to Applicant
The arguments are moot in view of the new grounds of rejection. Applicant argues no aluminum compound is not water soluble; however, it is clearly taught by Foscante. Applicant argues the ratio; however, in combination the amounts are envisioned. See Office Action above.
Conclusion
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TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787
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