Prosecution Insights
Last updated: April 19, 2026
Application No. 18/548,382

COATING COMPOSITIONS COMPRISING A POLYSULFIDE CORROSION INHIBITOR

Non-Final OA §102§103§112
Filed
Aug 30, 2023
Examiner
USELDING, JOHN E
Art Unit
1763
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Prc-Desoto International Inc.
OA Round
1 (Non-Final)
53%
Grant Probability
Moderate
1-2
OA Rounds
2y 9m
To Grant
71%
With Interview

Examiner Intelligence

Grants 53% of resolved cases
53%
Career Allow Rate
671 granted / 1262 resolved
-11.8% vs TC avg
Strong +18% interview lift
Without
With
+17.8%
Interview Lift
resolved cases with interview
Typical timeline
2y 9m
Avg Prosecution
69 currently pending
Career history
1331
Total Applications
across all art units

Statute-Specific Performance

§101
0.6%
-39.4% vs TC avg
§103
44.5%
+4.5% vs TC avg
§102
16.6%
-23.4% vs TC avg
§112
24.4%
-15.6% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1262 resolved cases

Office Action

§102 §103 §112
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. Election/Restriction REQUIREMENT FOR UNITY OF INVENTION As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art. The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e). When Claims Are Directed to Multiple Categories of Inventions: As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories: (1) A product and a process specially adapted for the manufacture of said product; or (2) A product and a process of use of said product; or (3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or (4) A process and an apparatus or means specifically designed for carrying out the said process; or (5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process. Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c). Restriction is required under 35 U.S.C. 121 and 372. This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1. In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted. Group I , claim(s) 1-11, 13, 22, 23, 25, 32, and 40 , drawn to a coating composition . Group II , claim(s) 52 , drawn to a metal substrate . Group III , claim(s) 59 , drawn to a multilayer coated metal substrate . Group IV , claim(s) 70 , drawn to a method for coating a substrate . Restriction for examination purposes as indicated is proper because there is a lack of unity among the claims. Groups I to IV lack unity of invention because even though the inventions of these groups require the technical feature of a coating composition as defined in claim 1, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Harrington et al. (2015/0037202) or Miyoshi et al. (2006/0141230). Applicant is advised that the reply to this requirement to be complete must include ( i ) an election of a invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention . The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention. Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention. During a telephone conversation with Robert Toth on 2/26/2026 a provisional election was made without traverse to prosecute the invention of Groups I, claims 1-11, 13, 22, 23, 25, 32, and 40 . Affirmation of this election must be made by applicant in replying to this Office action. Claims 52, 59 and 70 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention. Claim Objections Claim 10 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Claim Rejections - 35 USC § 112 The following is a quotation of 35 U.S.C. 112(b): (b ) CONCLUSION.— The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the appl icant regards as his invention. Claim 11 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Regarding claim 11, the phrase "particularly said" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Claim Rejections - 35 USC § 102 The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – (a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. Claim(s) 1-8, 11, 13, 22, 23 , 25, 32 and 40 is/are rejected under 35 U.S.C. 102 (a)(2) as being anticipated by Miyoshi et al. (20 06/0141230 ) . Regarding claims 1 -8, 11, 13, 22, 23 and 40 : Miyoshi et al. teach a coating composition comprising a film-forming binder and a corrosion inhibitor comprising Tetraethylthiuram disulfide [Examples 66, 72, 95, 106; Tables 18, 23, 36 and 41], which has the following structure: . Since the compound is the same as claimed it will possess the claimed properties. The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position t hat this would not be the case, evidence would need to be provided to support the applicant's position . Regarding claim 25: The composition of Miyoshi et al. is capable of functioning in the claimed capacity [0426, 0446, 0451; Examples] . Regarding claim 32: Miyoshi et al. teach that the binder comprises an epoxy polymer and a curing agent composition comprising a crosslinker comprising amino functional groups [Examples; 0184, 0244-0245, 0342 ; Table 7]. 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. The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or nonobviousness . Claim (s) 1-5, 9, 11, 13, 22, 23, 25, and 40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Harrington et al. (2015/0037202) . Regarding claims 1 -5 , 9 , 11, 13, 22 , 40 : Harrington et al. teach a coating composition comprising 2,2′-Dithiodipyridine [0020, 0088; Example 9]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a binder [0139] to the composition as an additional component. Harrington et al. teach that the composition forms a film on a surface [0003-0004]. The composition of Harrington et al. is capable of functioning in the claimed capacity. 2,2′-Dithiodipyridine has the following structure: . Since the compound 2,2′-Dithiodipyridine is the same as claimed it will possess the claimed properties. The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position t hat this would not be the case, evidence would need to be provided to support the applicant's position . Regarding claim 23: Harrington et al. teach dipropyl disulfide [Example 1]. Regarding claim 25: The composition of Harrington et al. is capable of functioning in the claimed capacity. Con tact Information Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463 . The examiner can normally be reached on M-F 8am to 6:30pm . If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272- 1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /JOHN E USELDING/ Primary Examiner, Art Unit 1763
Read full office action

Prosecution Timeline

Aug 30, 2023
Application Filed
Feb 26, 2026
Non-Final Rejection — §102, §103, §112
Apr 16, 2026
Examiner Interview Summary
Apr 16, 2026
Applicant Interview (Telephonic)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
53%
Grant Probability
71%
With Interview (+17.8%)
2y 9m
Median Time to Grant
Low
PTA Risk
Based on 1262 resolved cases by this examiner. Grant probability derived from career allow rate.

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