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/Restrictions
Applicant's election with traverse of Group I in the reply filed on September 3, 2026 is acknowledged. The traversal is on the ground(s) that Groups II and III expressly incorporate the same DMCT/reactive silane/catalyst coating composition and there is no serious search and/or examination burden. This is not found persuasive because there would be a serious search and examination burden if restriction were not required because the inventions have different classifications and require a different field of search and the prior art applicable to one invention would not likely be applicable to another invention.
The requirement is still deemed proper and is therefore made FINAL.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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.
Claims 1, 3-7, 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schuette et al (US Patent Application 2019/0240635).
Regarding claims 1, 3-7, 9, Schuette et al teaches corrosion resistant composition comprising zirconium propoxide, acetic acid and 3-glycidyloxypropyl trimethoxysilane and 0.39wt% of a dimercapto-1,3,4-thiadiazole (Paragraphs 71-74, Tables 1-2). Schuette et al further teaches zirconium isopropoxide (Claim 15). Schuette et al further teaches further corrosion inhibitors including thiadiazoles and imidazoles (Table 1).
Schuette et al teaches the limitations of the instant claims; hence, Schuette anticipates the claims.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Schuette et al (US Patent Application 2019/0240635) as applied to claims 1, 3-7, 9 above, and in further view of Kinlen et al (US Patent Application 2016/0145443).
Regarding claim 2, Schuette et al discloses the invention substantially as claimed. Schuette et al teaches the features above. However, Schuette et al fails to specifically disclose tetraethoxysilane.
In the same field of endeavor, Kinlen et al teaches a corrosion inhibiting coating material comprising a sol-gel (Abstract). Kinlen et al further teaches the metal species in sol solutions that are configured to form sol-gels include organosilanes including tetraethoxysilane and 3-glycidyoxypropyltrimethoxysilane (Paragraph 23).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided/substituted tetraethoxysilane in Schuette et al in view of Kinlen et al in order to form the sol-gel anti-corrosive coating. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See MPEP 2144.07. Likewise, it is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Schuette et al (US Patent Application 2019/0240635) as applied to claims 1, 3-7, 9 above, and in further view of Bergman et al (US Patent Application 2023/0075785).
Regarding claim 8, Schuette et al discloses the invention substantially as claimed. Schuette et al teaches the features above. However, Schuette et al fails to specifically disclose a first and second silane and the weight ratio.
In the same field of endeavor, Bergman et al teaches an anticorrosion composition comprising a silane, acid and metal compound such as zirconium alkoxides (Abstract, Paragraphs 13-16, 50). Bergman et al further teaches two different silanes at a ratio of from 0.1 to 0.9 (which overlaps the claimed ratio) (Paragraphs 131).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided a first and second silane at a weight ratio as instantly claimed in Schuette et al in view of Bergman et al in order to provide a corrosion inhibiting coating composition. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See MPEP 2144.07. Likewise, it is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TANISHA DIGGS whose telephone number is (571)270-7730. The examiner can normally be reached Monday, Tuesday and Friday, 9:00AM-5:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at (571) 272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TANISHA DIGGS/Primary Examiner, Art Unit 1761 September 18, 2026
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