DETAILED ACTION
Notice of Pre-AIA or AIA Status
Claim(s) 1-20 is/are pending.
Claim(s) 1, 5-15, 17-20 is/are rejected.
Claim(s) 2-4, 16 is/are cancelled by Applicant.
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 .
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 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.
Response to Election/Restrictions
Applicant’s election without traverse of Species (a)(iii) in the reply filed on 07/22/2026 is acknowledged.
Claim(s) 2-4, 16 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention or species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/22/2026.
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 applicant regards as his invention.
Claim(s) 15, 17 is/are 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.
Claim 15 is vague and indefinite because the phrase “any of claim” implies the presence of multiple dependency.
Claim 17 is vague and indefinite because the lower limit of 30 wt% is inconsistent with the lower limit of film forming resin (i.e., 35 wt%) in parent claim 1.
Claim 17 is vague and indefinite because it is unclear whether: (i) the recited “epoxy resin” is the same as the recited “film forming resin” of parent claim 1; or (ii) the epoxy resin is a separate component from the “film forming resin” of parent claim 1.
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(s) 15, 20 is/are 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 fails to further limit the amount of film-forming resin.
Claim 20 fails to further limit parent claim 13.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102 (AIA )
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.
Claim(s) 1, 5-7, 9-12, 14-15, 17, 19 is/are rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by:
• DURAND (US 5,334,631).
DURAND ‘631 discloses zinc-containing powder coating compositions comprising:
(a + b) 30-70 wt% combined weight of:
(a) epoxy resin; and
(b) curing agent (e.g., but not limited to, phenolic resins, etc.) (corresponding to the recited “crosslinking agent” in claim 6);
wherein the curing agent (b) is present in amounts of 5-30 wt% (based on the weight of epoxy resin);
(c1) 10-35 wt% lamellar metallic zinc (corresponding to the recited “zinc flakes” of claims 10-11);
(c2) 10-35 wt% metallic zinc dust (e.g., spherical in shape) (corresponding to the recited “zinc particles” of claim 10);
(d) optional additives (e.g., flow-promoting agents (corresponding to the recited “flow agent” of claim 9, etc.);
wherein the zinc-containing powder coating compositions can be applied to metallic or non-metallic substrates by known powder coating methods (e.g., flame spraying, electrostatic spraying, tribocharging methods; etc.), wherein the resulting zinc-containing coatings can have (but are not limited to) a typical thickness of 40-60 microns. An illustrative, non-limiting example of the zinc-containing powder coating comprises: 25 parts by weight (about 25 wt%) zinc dust; 25 parts by weight (about 25 wt%) lamellar zinc; 35 parts by weight (about 35 wt%) epoxy resin; and 15 parts by weight (about 15 wt%) curing agent. (entire document, e.g., line 29, col. 1 to line 27, col. 2; line 43, col. 2 to line 52, col. 3; lines 10-17, col. 4; etc.)
Claim Rejections - 35 USC § 103 (AIA )
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.
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, 5-15, 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
• DURAND (US 5,334,631).
Claims 1, 5-7, 9-12, 14-15, 17, 19 are rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by DURAND ‘631 as stated above. However, in the alternative, the claims are obvious for the following reasons:
DURAND ‘631 discloses zinc-containing powder coating compositions comprising:
(a + b) 30-70 wt% combined weight of:
(a) epoxy resin; and
(b) curing agent (e.g., but not limited to, phenolic resins, etc.) (corresponding to the recited “crosslinking agent” in claim 6);
wherein the curing agent (b) is present in amounts of 5-30 wt% (based on the weight of epoxy resin);
(c1) 10-35 wt% lamellar metallic zinc (corresponding to the recited “zinc flakes” of claims 10-11);
(c2) 10-35 wt% metallic zinc dust (e.g., spherical in shape) (corresponding to the recited “zinc particles” of claim 10);
(d) optional additives (e.g., flow-promoting agents (corresponding to the recited “flow agent” of claim 9, etc.).
wherein the zinc-containing powder coating compositions can be applied to metallic or non-metallic substrates by known powder coating methods (e.g., flame spraying, electrostatic spraying, tribocharging methods; etc.), wherein the resulting zinc-containing coatings can have (but are not limited to) a typical thickness of 40-60 microns. (entire document, e.g., line 29, col. 1 to line 27, col. 2; line 43, col. 2 to line 52, col. 3; etc.)
Regarding claims 1, 5-7, 9-12, 14-15, 17, 19, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the zinc-containing powder coating compositions of DURAND ‘631 to form corrosion-resistant coated substrates.
Regarding claim 8, one of ordinary skill in the art would have incorporated effective amounts of known anti-corrosion and/or electrically conductive additives (e.g., carbon nanotubes, etc.) in the zinc-containing powder coating compositions of DURAND ‘631 in order to reduce static electricity build up and/or further improve corrosion resistance.
Regarding claim 13, 20, since it well known in the art that the corrosion resistance of coatings generally decrease with increasing conductivity, one of ordinary skill in the art would have selected the composition of the zinc-containing powder coatings of DURAND ‘631 in order to produce coatings with surface resistivity within ranges (e.g., as represented by surface resistivity of 102 to 107 Ω/sq) sufficient to maintain effective anti-corrosion properties.
Regarding claim 18, one of ordinary skill in the art would have applied the zinc-containing powder coatings of DURAND ‘631 in multiple (sub)layers to order to improve the uniformity and/or quality of the resulting coating.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
• DURAND (US 5,334,631),
as applied to claims 1, 5-15, 17-20 above,
and further in view of WEINELL ET AL (US 2010/0136359).
WEINELL ET AL ‘359 discloses that it is well known in the art to incorporate electrically conductive and/or corrosion-inhibiting additives (e.g. active pigments such as carbon black nanotubes, graphite, carbon black fibers, etc.) in typical amounts of up to 15 vol% (based on the total solids volume) in zinc-containing anti-corrosion coatings in order to improve anti-corrosion properties. (paragraph 0078, etc.)
Regarding claim 8, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate effective amounts of known anti-corrosion and/or electrically conductive additives (e.g., carbon nanotubes, etc., as suggested in WEINELL ET AL ‘359) in the zinc-containing powder coating compositions of DURAND ‘631 in order to reduce static electricity build up and/or further improve corrosion resistance.
Claim(s) 13, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
• DURAND (US 5,334,631),
as applied to claims 1, 5-15, 17-20 above,
and further in view of CN 102993847-A (SONG-CN ‘847A).
SONG-CN ‘847A discloses that it is well known in the art that the corrosion resistance of coatings generally decrease with increasing conductivity, and that corrosion-resistant coating for metal substrates should generally have a surface resistivity of 105 to 109 Ω. (paragraph 0145, etc.)
Regarding claim 13, 20, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select the composition of the zinc-containing powder coatings of DURAND ‘631 in order to produce coatings with surface resistivity within ranges (e.g., as represented by surface resistivity of 102 to 107 Ω/sq) sufficient to maintain effective anti-corrosion properties (as suggested in SONG-CN ‘847A).
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
• DURAND (US 5,334,631),
as applied to claims 1, 5-15, 17-20 above,
and further in view of PARTHASARATHY ET AL (US 4,104,416).
PARTHASARATHY ET AL ‘416 discloses that it is well known in the art to form protective coatings by forming multiple layers of same (or different) powder coating compositions in order to produce more uniform, higher quality coatings compared to coatings formed by a single layer application of powder material. (line 5-11, 35-49, col 1; line 15-18, 43-50, col. 2; line 33, col. 5 to line 10, col. 6; etc.)
Regarding claim 18, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the zinc-containing powder coatings of DURAND ‘631 in multiple (sub)layers (as suggested in PARTHASARATHY ET AL ‘416) to order to improve the uniformity and/or quality of the resulting coating.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
MICHAL ET AL (US 2018/0021807) and JACKSON ET AL (US 6,276,400) disclose coatings formed from multiple (sub)layers of one or more powder coating composition(s).
“Concepts of steel protection by coatings with a reduced content of zinc pigments” disclose zinc-containing coatings containing: (i) two or more forms of zinc; and/or (ii) carbon nanotubes.
SAVIN (US 5,413,638) and SAVIN (US 5,677,367) and SAVIN (US 5,677,367) disclose coatings containing metallic zinc
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Vivian Chen (Vivian.chen@uspto.gov) whose telephone number is (571) 272-1506. The examiner can normally be reached on Monday through Thursday from 8:30 AM to 6 PM. The examiner can also be reached on alternate Fridays.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached on (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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August 22, 2026
/Vivian Chen/
Primary Examiner, Art Unit 1787
Prosecution Insights