DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The amendment of claims 1, 11 are supported by the specification. The new claim 15 is supported by the specification.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The new grounds of rejection set forth below are necessitated by applicant's amendment filed on 6/1/2026. Thus, the following action is properly made final.
Claim Objections
Claim 1 objected to because of the following informalities: “alkalki” should be “alkali”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), first paragraph:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 16 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
For claim 16, the specification does not support a genus of nitrite.
Claims 1-13, 15-16 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 pre-AIA the applicant regards as the invention.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “a phosphorous acid” in claim 1 is used by the claim to mean “phosphoric acid,” while the accepted meaning is “a phosphorous acid.” The term is indefinite because the specification does not clearly redefine the term. For purposes of expediting prosecution, the term is interpreted as phosphoric acid.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 15 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 15 broadens the scope of claim 1 because not all compounds are a monoacid, an alkali or a salt thereof.
Claim Rejections - 35 USC § 103
Claims 1-10, 12-13, 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ambrose et al (US 2011/0177352) in view of in view of Ibano (JP2012188481).
In setting forth this rejection a machine translation of JP2012188481 has been relied upon and all citations to paragraph numbers in the discussion below are with respect to the machine translation.
Claims 1-6, 9, 15-16: Ambrose teaches a coating composition for metal substrate comprising an emulsion polymer [0021, 0017]. The polymer comprises at least 80wt% of a hydrophobic acrylic monomers and 1-10 wt% of an acrylic monomer comprising an aldehyde and/or ketone functional group such as diacetone acrylamide, the hydrophobic acrylic monomers comprises at least 70wt% of styrenic monomers and no more than 30wt% of alkyl(meth)acrylate such as butyl acrylate, based on the total weight of hydrophobic acrylic monomers [0023-0028, 0083]. The polymer further comprises 0.5-2 wt% of a phosphonic acid monomer based on the total weight of the acrylic monomer, such as phosphoethyl (meth)acrylate [0029-0031], and no more than 2wt% of additional monomers such as acrylic acid [0032-0033]. The coating composition further teaches a flash rust inhibitor sodium nitrite Halox Falsh X-150 (table 3).
Ambrose does not teach a dicarboxylic acid salt.
However, Ibano teaches a mixture of a nitrite and a water-soluble organic acid rust inhibitor can further improve the rust prevention performance [0005, 0018, 0028, 0032-0035, 0043-0044]. The water-soluble organic acid or salt thereof includes sebacic acid. The content of nitrite is 5-15 parts by mass per 100 parts by mass of the resin, the content of organic acid is 2-6 parts by mass. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to utilize a mixture of a nitrite and organic acid in Ambrose to not only further improve rust prevention performance but also improve safety because organic acid is low in toxicity. The content of nitrite is 1-3wt%, and the content of the -COO-R-COO- section from acid is 0.4-1.2 wt% based on the weight of the aqueous coating composition considering the resin content in Ambrose is 20.28wt% (example 10 of Ambrose). Detailed calculation is available upon request. Case law holds that 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).
Claim 7: the polymer has a calculated Tg of at least 40°C [0035].
Claim 8: the polymer does not comprises cycloalkyl acrylate units.
Claim 10: Ambrose teaches the Mw of the polymer is 50,000 to 200,000 [0034].
Ambrose does not teach the Mn of the polymer.
However, weight average molecular weight is more heavily influenced by the small fraction of very large molecules in the distribution. While many important polymer properties are especially sensitive to the number of polymer chain ends and the average chain length, which Mn directly reflects. In other words, Mn better reflects average chain length. Mn is a result effective variable, it affects mechanical strength and toughness, viscosity and processability; in coating sufficient Mn is important for good film integrity, cohesion and crack resistance. Higher Mn provides better toughness, cohesion, chemical resistance and improved crack resistance, but it also provides higher viscosity leading to poorer flow and leveling, difficult processing. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to adjust Mn through routine experimentation to balance between the advantage and disadvantage introduced by high Mn. Case law holds that "discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Claim 12-13: the composition further comprises adipic acid dihydrazide (table 1).
Allowable Subject Matter
Claim 11 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Response to Arguments
Applicant's arguments filed 6/1/2026 have been fully considered but they are not persuasive.
In response to applicant's argument regarding 112(b) rejection, It is noted that instant specification does not define the term phosphorous acid monomer, it merely exemplifies the monomers “the phosphorous acid monomers can be dihydrogen phosphate esters”. Phosphorous acid is
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, phosphate is
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. The claimed phosphorous acid monomer in claim 4 has a structure such as
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, phosphoric acid is
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.
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 extension fee 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 date of this final action.
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/WENWEN CAI/
Primary Examiner, Art Unit 1763
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