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 .
Status of Claims
No claim amendments are made in view of applicant’s response filed 2/2/2026. Therefore, claims 1-2, 4-10 and 12-19 are currently under examination.
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.
Claim(s) 1-2, 4-10, 12-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brouwer et al. US 2013/0202797 A1(Brouwer), and further in view of Schubach et al. US 6,497,771 B1(Schubach), and further in view of Sebralla et al. US 2012/0070674(Sebralla).
Brouwer teaches a method of for selectively phosphating a composite metal construction(abstract), wherein the composite metal construction comprising metal surfaces of Al, Zn and optionally Fe(abstract). Brouwer’s method comprises [0009]:
First treating the composite metal with an aqueous zinc phosphate solution on the parts made from Zn and Fe, thereby forming a zinc phosphate layer with a 0.5-5g/m2 coating weight without forming a zinc phosphate layer with a coating weight of at least 0.5g/m2 on the Al part;
Rinsing the composite metal with water;
Applying an aqueous acidic treatment solution having pH of 3.5-5.5, wherein the acid treatment solution dissolves away no more than 50% of the zinc phosphate layer on the Zn and Fe parts of the composite metal, but forms a passive layer on the Al parts.
Brouwer further teaches that the zinc phosphate solution comprises Na and/K ions function to adjust the free acid content in the phosphate solution[0031] The zinc phosphate solution has a temperature of 20-65ºC and may further comprise fluoride in an amount of at least 0.005g/l(i.e. 5mg/l) to no more than quotient of 8/solution temperature in ºC, and the free acid point of the zinc phosphate solution is 0.4-3.0 points[0009]. Brouwer further teaches the presence of Ti, Zr and/or Hf in the acidic passivation solution in the second coating step[0033]
However, Brouwer does not explicitly teach the claimed 1.0 g/l of boron in a form of water-soluble inorganic compounds, calculated as BF4, in its zinc phosphate solution. Brouwer also does not explicitly teach that the aqueous acidic treatment solution additionally comprises the claimed at least one organosilanol, organosiloxane and/or polyorganosiloxan.
Schubach teaches a zinc phosphating method on metal surfaces such as Zn or Zn alloy, wherein the zinc phosphate coating solution additionally contains 0.05-2.5g/l complex fluorides such as BF4(col. 3 lines 1-7 and 21-23, claim 7).
Sebralla teaches a method of coating surfaces of an aluminum alloy comprising contacting an acidic aluminum alloy surface with an aqueous composition [0074] comprising at least one complex fluoride based on Ti and/or Zr[0024-0025, 0071] and silane/silanol/siloxane/polysiloxane(abstract). Sebralla further teaches the presence of two complex fluorides in a silane/silanol.siloxane/polysiloxane containing coating composition provides a conversion coating with exceptional quality[0025]. Additionally, the conversion coating containing complex fluorides and silane/silanol.siloxane/polysiloxane produce a coating with stronger bonding to the substrate[0024].
Regarding claims 1-2, 6, 9 and 16-19, it would have been obvious to one of ordinary skill in the art to have incorporated the complex fluorides such as BF4 as taught by Schubach into the zinc phosphating solution of Brouwer in order to improve the result of phosphatization on zinc surfaces as taught by Schubach(col. 3 lines 21-23). Furthermore, it would have been obvious to one of ordinary skill in the art to have incorporated the silane/silanol/siloxane/polysiloxane as taught by Sebralla into the acidic treatment solution in the second coating step of Brouwer in view of Shubach in order to achieve a conversion coating with exceptional quality as well as strong bonding as taught by Sebralla [0024-0025].
Additionally, the amounts of free fluoride and boron calculated as BF4 and the free acid point number of the zinc phosphate solution in the process of Brouwer in view of Schubach and Sebralla overlap or encompass the claimed amounts of free fluoride and boron, and the claimed free acid point number. Therefore, a prima facie case of obviousness exists. See MPEP 2144.05.
Regarding claim 4, Brouwer’s teaching of using Na and K ions to adjust the free acid content in the phosphate solution shows that claimed Na and K ions are result effective variables. Therefore, it would have been well within the skills of an ordinary artisan to have arrived at the claimed amounts of Na and Ki ions in the zinc phosphate solution of Brouwer in view of Schubach and Sebralla via routine optimization in order to achieve desired free acid content in the coating solution.
Regarding claim 5, Brouwer further teaches the presence of Si, calculated as SiF6 in an amount of less than 1g/l in its zinc phosphating solution(abstract,[0009]). The concentration of Si ions as taught by Brouwer overlaps the claimed Si concentration. Therefore, a prima facie case of obviousness exists. See MPEP 2144.05.
Regarding claim 7, since the zinc phosphate solution of Brouwer in view of Schubach and Sebralla is significantly similar compositionally to the claimed zinc phosphate solution, one of ordinary skill in the art would have found it obvious that the zinc phosphating solution of Brouwer in view of Schubach and Sebralla would have also has a dimensionless quotient that satisfy the claimed equation.
Regarding claim 8, Brouwer further teaches that its zinc phosphating solution additionally contain 0.001-4g/l of Mn(II) and 0.001-4g/l of Ni(II)([0029-0030,Table 2). The amounts of Mn(II) and Ni(II) as taught by Brouwer overlap the claimed amounts of Mn(II) and Ni(II). Therefore, a prima facie case of obviousness exists. See MPEP 2144.05.
Regarding claim 10, Brouwer further teaches the presence of Ti, Zr and/or Hf in the acidic passivation solution in the second coating step[0033].
Regarding claim 12, Brouwer further teaches that its zinc phosphating solution comprises 0.3-3g/l of Zn ions and 5-50g/l of phosphate ions[0037] as claimed.
Regarding claim 13. Brouwer further teaches a concentrate for the zinc phosphate solution, which is diluted with suitable solvent[0017].
Regarding claim 14, the composite metal of Brouwer in view of Schubach in view of Sebralla reads on the claimed composite metal construction.
Regarding claim 15, Brouwer further teaches that its surface treatment process can be used in manufacturing automobile bodies[0002].
Response to Arguments
Applicant’s arguments with respect to instant claims in the response filed 2/02/2026 have been considered but they are not persuasive.
In the remarks, applicant argues that paragraph [0025] of Sebralla teaches that the combination of at least two complex fluoride leads to exceptional rise in quality, not a combination of a complex fluoride and silane/silanol.siloxane/polysiloxane.
The examiner does not find applicant’s argument convincing because the silane/silanol.siloxane/polysiloxane is a mandatory ingredient in the conversion coating of Sebralla, so are the at least two complex fluorides. Although using at least two complex fluorides further improves the coating quality, the exceptional rise in the coating quality as taught by Sebralla would not have been realized without the presence of silane/silanol.siloxane/polysiloxane. The scope of Sebralla requires the presence of both at least two complex fluorides of Ti, Zr and/or Hf(i.e. at least two compounds of Ti, Zr and/or Hf) and silane/silanol.siloxane/polysiloxane in its coating solution. Brouwer in view of Shubach discloses a coating solution in the second coating step comprising compounds of Ti, Zr and/or Hf, one ordinary skill in the art would have found it obvious to have incorporated the at least two complex fluoride compounds and silane/silanol.siloxane/polysiloxane as taught by Sebralla into the coating solution of Brouwer in view of Shubach in order to achieve exceptional rise in quality.
Applicant further argues that that Sebralla is concerned with avoiding the washing away of the coating upon rising with water and not concerned with an aqueous acid passivation.
The examiner does not find applicant’s argument convincing because it is well settled that the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972). See MPEP 2144. In this case, the combined teaching of Brouwer in view of Shubach and Sebralla includes an aqueous passivation solution containing both complex fluorides and silane/silanol.siloxane/polysiloxane, which is materially the same as the claimed aqueous acidic passivation composition in the second treatment step, therefore, would have been capable of forming the same passivation coating as claimed.
Applicant further argues that Sebralla teaches applying a silane coating before applying a phosphonate coating, and Sebralla emphasizes the technical challenges of combining silane and phosphonate.
The examiner does not find applicant’s argument convincing because Sebralla is incorporated into the rejection based on Brouwer in view of Shubach for its teaching of a coating solution comprising silane/silanol.siloxane/polysiloxane in addition to complex fluorides. The subsequent phosphonate coating as taught by Sebralla is not incorporated into the rejection ground.
Additionally, all of applicant’s arguments are directed to the teachings of Sebralla alone, while the rejections are based on the combined teachings of Brouwer in view of Shubach and Sebralla. The applicant is reminded that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). See MPEP 2145 (IV).
Conclusion
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOIS L ZHENG whose telephone number is (571)272-1248. The examiner can normally be reached Mon-Fri 8:15-4:45.
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LOIS ZHENG
Primary Examiner
Art Unit 1733
/LOIS L ZHENG/Primary Examiner, Art Unit 1733
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