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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn due to Applicant's amendments and/or arguments.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 1-2, 5, 6, 8, 15-16, 18 and 49-50 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019126527 A1 to Michael Mayo et al. in view of Walters (US 2008/0090069).
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].
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.
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 Mayo et al. in view of Walters (US 2008/0090069) and further 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.
Response to Applicant
Applicant argues that Michael does not disclose an iron compound as claimed. It is agreed which is why Michael is now used in view of Walters to meet claim 1.
Applicant argues that there would be no motivation to combine Michael with Walters given that Michael already discloses the use of adhesion promoters.
However, it would have been obvious to one of ordinary skill in the art to further improve the adhesion properties in Michael.
Applicant argues that there would be no motivation to select iron phosphate from among the other adhesion promoters disclosed by Walters and that none of Walters examples use iron phosphate.
However, the fact remains that Walters does explicitly disclose the use of iron phosphate and therefore, it would have been obvious to select any adhesion promoter in Walters, including iron phosphate, absent evidence to the contrary. Additionally, “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).
Applicant argues that there is no reasonable expectation of success when combining Michael with Walters.
However, given that both Michael and Walters are drawn to metal substrates coated with compositions comprising epoxy and magnesium oxide, the examiner’s position remains that the combination is proper and there is a reasonable expectation of success when combining the references.
Applicant argues that there would be no motivation to combine Michael with Foscante given that Michael already discloses the use of corrosion inhibitors. Further, there are hundreds of corrosion inhibitors and no motivation to look to the teaching of Foscante.
However, it would have been obvious to one of ordinary skill in the art to further improve the corrosion inhibiting properties in Michael. Additionally, given that Foscante is also drawn to coatings on metal substates, the combination is proper.
Conclusion
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
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