S in claims 4, 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 without traverse of Group I (claims 1-15) in the reply filed on February 02, 2026 is acknowledged.
Claims 16-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on invention.
Applicant specifically notes “without traverse” in line 2 of their reply. However, they continue to argue. To expedite prosecution, the examiner reminds applicant that “comprising” is an open transition and as such does not preclude the first coating layer from having elements in the second layer, and vice versa. If applicant intends to limit elements in the first or second layer, they are welcome to do so by specific claim amendments in the future. The lack of disclosure that a layer includes elements in the specification is not imported to the claims. Further, Mayo explicitly teaches multiple layers ([0144]) (contrary to applicants argument Pg. 2 [3]).
Claims 1-15 are pending, claim 1 is independent.
Specification
The abstract of the disclosure does not commence on a separate sheet in accordance with 37 CFR 1.52(b)(4) and 1.72(b). A new abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text.
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided. Specifically, “The present disclosure is directed to” and “Also disclosed” is language that can be implied.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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(s) 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Mayo et al. (US 2021/0363358 A1), hereinafter Mayo (of record).
Regarding claim 1, Mayo teaches a metal substrate ([0141]), coating the substrate with a curable film-forming coating ([0007]); the curable film forming coating composition includes at least 30% by weight zinc particles based on total solids weight of the coating composition ([0018]), aluminum particles ([0020]), an alkaline earth metal compound ([0023]) and an organic film-forming binder ([0036]) that can include one or more of addition polymers, polyolefins or polysulfides ([0039]; i.e. a first and second organic film forming binders), the composition is cured on a substrate ([0139]; layer formed) and the coating composition may be applied as a primer (first) and second and third coating layers ([0144]). Examiner notes that there is no claim limitation that prevents the first coating layer from also having the elements of the second layer, nor the second layer from including the elements of the first layer. Further, assuming the same composition in each layer the weight of zinc particles overlaps that claimed.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Regarding claim 2, Mayo teaches each claim limitation of claim 1, as discussed above and further teaches at least 20% by weight aluminum particles ([0020]) and the coating composition may be applied as a primer (first) and second and third coating layers ([0144]). Examiner notes that there is no claim limitation that prevents the first coating layer from also having the elements of the second layer, nor the second layer from including the elements of the first layer. Further, assuming the same composition in each layer the weight of aluminum particles overlaps that claimed.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Regarding claims 3-6, Mayo teaches each claim limitation of claim 1, as discussed above and further teaches at least 6 weight % to no more than 50 weight % alkaline earth metal compound ([0031]), which may consist of magnesium oxide ([0023]) and the coating composition may be applied as a primer (first) and second and third coating layers ([0144]). Examiner notes that there is no claim limitation that prevents the first coating layer from also having the elements of the second layer, nor the second layer from including the elements of the first layer. Further, assuming the same composition in each layer the weight of alkaline earth metal compound overlaps that claimed.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Regarding claims 7-8, Mayo teaches each claim limitation of claim 1, as discussed above and further teaches organic film-forming binder comprises an organic film-forming resin; as used herein, the term “film-forming resin” refers to resins that can form a self-supporting continuous film on at least a horizontal surface of a substrate upon removal of any diluents or carriers present in the composition or upon curing at ambient or elevated temperature ([0036]) that may one or more of addition polymers, polyolefins or polysulfides and epoxy resins ([0039]; i.e. two different organic film forming binders including an epoxy resin). Further Mayo teaches the coating composition may be applied as a primer (first) and second and third coating layers ([0144]). Examiner notes that there is no claim limitation that prevents the first coating layer from also having the elements of the second layer, nor the second layer from including the elements of the first layer, i.e. in this case an epoxy resin may be noted as the film-forming resin of the first coating layer and a polyolefin or polysulfide may be noted as the film forming resin of the second coating layer.
Regarding claims 9-10, Mayo teaches each claim limitation of claim 1, as discussed above and further teaches organic film-forming binder comprises an organic film-forming resin; as used herein, the term “film-forming resin” refers to resins that can form a self-supporting continuous film on at least a horizontal surface of a substrate upon removal of any diluents or carriers present in the composition or upon curing at ambient or elevated temperature ([0036]) that may one or more of addition polymers, polyolefins or polysulfides and epoxy resins ([0039]; i.e. two different organic film forming binders including an epoxy resin). Further Mayo teaches the coating composition may be applied as a primer (first) and second and third coating layers ([0144]). Examiner notes that there is no claim limitation that prevents the first coating layer from also having the elements of the second layer, nor the second layer from including the elements of the first layer, i.e. in this case polyolefin or polysulfide may be noted as the film-forming resin of the first coating layer and an epoxy resin may be noted as the film forming resin of the second coating layer.
Regarding claims 11-12, Mayo teaches each claim limitation of claim 1, as discussed above and further teaches the coated substrate may also optionally further comprise an additional coating layer, such as a primer, basecoat, or topcoat, wherein the additional coating layer comprises a polyurethane resin or an epoxy resin ([0172]).
Regarding claims 13-15, Mayo teaches each claim limitation of claim 1, as discussed above and further teaches the coating composition may be applied as a primer (first) and second and third coating layers ([0144]) and the coatings formed have dry film thicknesses of 2.5-500 microns ([0150]). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE CHRISTY whose telephone number is (303)297-4363. The examiner can normally be reached Monday-Thursday, 7am-4pm MT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERINE A CHRISTY/Primary Examiner, Art Unit 1784
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