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 .
The amendment filed 11/7/2025 has been entered. Claims 2, 4, 16, and 19 have been canceled. Claims 1, 3, 5-15, 17-18, and 20 are pending in the application. Claims 13-15 have been withdrawn from consideration. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claims 1, 3, 5-12, 17-18, and 20 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 1 has been amended to delete “iii)” from the beginning of line 7 such that the claimed method now only includes steps i), ii), iv), v), and vi), with i), v) and vi) being optional, however, given that after step vi), the claim recites, “wherein no additional step is conducted between steps ii) and iii)” (emphasis added) wherein as noted above, step “iii)” has been deleted, the limitation that “no additional step is conducted between steps ii) and iii)” is indefinite due to the lack of antecedent basis with respect to “step iii)”. It is also noted that dependent claim 7 recites, “characterized in that in step iii)” on line 1, while dependent claim 10 recites, “characterized in that the solid surface is kept for at least 15 seconds to allow water dropping after step iii) and before step iv)” on lines 1-2, wherein given the deletion of “iii)” from claim 1 as noted above, the above limitations in claims 7 and 10 are indefinite given that “step iii)” lacks clear antecedent basis.
The remaining dependent claims do not remedy the above and hence are indefinite for the same reasons as discussed above with respect to independent claim 1.
Claim Rejections - 35 USC § 103
Claims 1, 3, 5-12, 17-18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Ichimura in view of Toi or Palanivel for the reasons recited in the prior office action (see Paragraphs 5-15 of the office action dated 9/10/2025) and incorporated herein by reference, wherein it is again noted, in summary, that Ichimura clearly teaches a method for applying a silane-based coating to a solid surface, such as a metal plate, characterized in that the solid surface is: i) (optionally) cleaned; ii) brought into contact with an unhydrolyzed silane, such as 3-mercaptopropyltrimethoxysilane and bis(triethoxysilylpropyl)tetrasulfide, such that an unhydrolyzed silane layer is formed on the solid surface; brought into contact with a cleaning solvent such as liquid water for 3 seconds or more and 10 minutes or less (fully encompassing the claimed range of 8 to 330 seconds), with most examples at 60 seconds (falling within the claimed range of 8 to 330 seconds), by preferably at least one means selected from shower coating, brushing, sponge coating, dip coating, and spin coating, to remove excess silane coupling agent that has not adsorbed onto the substrate; and iv) at least partially dried as in instantly claimed invention, such that with respect to the claimed invention as recited in instant claim 1 (as amended), Ichimura teaches a method as instantly claimed expect Ichimura does not specifically recite that the metal plate comprises at least one aluminum alloy and that the silane treatment liquid is provided as a mixture comprising benzotriazole and the unhydrolyzed silane and benzotriazole. However, each of Toi and Palanivel teaches a similar silane pretreatment for a metal surface providing excellent corrosion resistance as well as paint/coating adhesion, with Toi specifically directed to a silane pretreatment method for a metallic base to improve adhesiveness between a metal base and a coating film, e.g., as in Ichimura, wherein the metallic base may comprise an aluminum alloy (an obvious metal species in the art) and wherein benzotriazole, a known rustproof agent as noted by Toi, may be incorporated into the silane pretreatment composition to provide excellent coatability as discussed previously on the record; while Palanivel is specifically directed to the use of modified silane thin films as an alternative to chromates for corrosion protection of an aluminum alloy surface, particularly an AA2024-T3 alloy, wherein the modified silane thin films include corrosion inhibitors such as benzotriazole and/or nanoparticles incorporated into the silane coating composition, particularly one comprising a sulfur-containing silane as discussed previously on the record, providing corrosion protection comparable to chromates and enhancing paint adhesion on to metals as previously discussed (see particularly Paragraph 34 of the office action dated 5/6/2025; and more particularly, Paragraph 20 of the office action dated 1/4/2024, or Paragraph 11of the office action dated 7/1/2024 with respect to the teachings of Palanivel); and given that Ichimura clearly teaches that the inorganic substrate as a base material to be silane-coupling-agent-treated with the silane liquid may be a metal plate, wherein pretreatment of a metal substrate to provide corrosion resistance is conventional in the art as evidenced by Toi and/or Palanivel, the Examiner maintains her position that the claimed invention would have been obvious over the teachings of Ichimura in view of Toi or Palanivel for the reasons discussed in detail in the prior office action (and incorporated herein by reference).
Response to Arguments
Applicant's arguments filed 11/7/2025, see Section III, have been fully considered but they are not persuasive with respect to the obviousness rejection over Ichimura in view of Toi or Palanivel. The Applicant first argues that the claimed invention allegedly provides “surprising results” and that although the Examiner withdrew the previous prior art rejections, the Examiner did not address these allegedly “surprising results” that based upon the claims as previously amended were allegedly commensurate in scope with the previously amended claims (e.g., in rebuttal to the Examiner’s previous position with respect to the data relied upon by the Applicant not being commensurate in scope with the claims, see Paragraph 37 of the office action dated 5/6/2025, which is incorporated herein by reference). However, the Examiner first notes that the prior rejections were withdrawn in light of Applicant’s claim amendments, and given that Applicant’s prior arguments were based upon the withdrawn rejections and not the new grounds of rejection based upon the combined teachings of Ichimura in view of Toi or Palanivel, Applicant’s arguments were considered moot. In terms of Applicant’s previous arguments that the “present claims have been amended to be commensurate in scope with the [alleged] surprising results of the present application” (page 7 of the Remarks filed 6/18/2025; see also page 6 of the Remarks filed 11/7/2025), the Examiner respectfully disagrees and again notes that, as recited in the office action dated 5/6/2025, “all of the examples relied upon by the Applicant utilize AA2024-T3 aluminum panels as the solid surface which is treated with a commercial silane available as OXSILAN® MG-0611 from Chemetall GmbH which is a proprietary ‘mixture of unhydrolyzed bi-silanes’, mixed with IRGAMET® BTZ – a commercial benzotriazole corrosion inhibitor available from BASF, such that one skilled in the art could not reasonably extend the probative value thereof to…any unhydrolyzed sulfur-containing silane…as recited in the claimed invention (see MPEP §§ 716.01-716.02, particularly 716.02(d)), especially given that the instant specification as filed specifically recites, ‘Said sulfur-containing silanes are especially advantageous in case of AA2024 alloys, as the sulfur surprisingly has a corrosion-inhibiting effect on these alloys’” (emphasis added). The Examiner also notes that aside from the data (still) not being commensurate in scope with the instant claims, the Examiner maintains her position that the data for batch nos. 1-9 do not appear to provide any clear showing of criticality and/or unexpected results with respect to the instantly claimed 8 to 330 seconds as previously discussed on the record (see page 24 of the office action dated 5/6/2025, incorporated herein by reference), given again that the shortest contact time is 10 seconds and the longest time is 300 seconds with no examples at the claimed endpoints nor any examples outside of the claimed endpoints to support any showing of criticality with respect to the claimed contact time of 8 to 330 seconds, particularly “given that the specification as filed more broadly recites, ‘Especially in case of immersion, the contact time in step iii) preferably lies in the range of 1 second to 10 minutes, more preferably of 5 seconds to 7 minutes, more preferably of 8 to 330 seconds, more preferably of 20 to 270 seconds, more preferably of 20 to 210 seconds, more preferably of 20 to 165 seconds, more preferably of 35 to 145 seconds, more preferably 45 to 135 seconds and especially preferably 55 to 125 seconds’ (emphasis added, see paragraph bridging pages 9-10) and that ‘[b]y choosing a contact time within these ranges, the blank corrosion resistance of the metal surface may clearly be enhanced – especially in the neutral salt spray test in accordance with ASTM B117 standard’ wherein ‘[s]urprisingly, a prolonged exposure to water seems to at least partially remove the silane / silanol layer’ (see page 10, lines 4-7 of the specification as filed), which the Examiner notes may also be affected by initial silane thickness, Applicant fails to provide any clear showing of criticality of the claimed 8 to 330 seconds for the contact time of step iii) which may be conducted by immersion or by spraying, rolling, or brushing with liquid water.” Hence, although the Applicant’s reply filed 6/18/2025 argued that the “present claims have been amended [allegedly] to be commensurate in scope with the [alleged] surprising results”, the Applicant did not address the Examiner’s position that the results were based upon a proprietary mixture of unhydrolyzed bi-silanes such that the results could not be extended to any unhydrolyzed sulfur-containing silane, and only on AA2024 alloys such that the results could not be extended to any aluminum alloy (or even any AA2XXX alloy), and even if the results were commensurate in scope with the claimed, the data failed to provide any clear showing of criticality and/or unexpected results with respect to the claimed contact time of 8 to 330 seconds.
In Applicant’s recent response filed 11/7/2025, the Applicant again argues that the present claims are commensurate in scope with the alleged “surprising results” of the present application, and again argues that “sulfur-containing silanes are especially advantageous in case of AA2024 alloys (i.e., aluminum alloys), as the sulfur surprisingly has a corrosion-inhibiting effect on these alloys” referring to Paragraph [0038] of the published application. However, in addition to the above discussion with respect to the data, the Examiner notes that such “advantageous” effect is not unexpected in light of the teachings of Palanivel which as discussed previously on the record and restated above is specifically directed to providing corrosion protection on AA2024 alloys, wherein Palanivel specifically utilizes sulfur-containing silanes, especially bis-sulfur silanes, and more particularly teaches that a prior study found that “silane mixtures of bis-sulfur and bis-amino silane showed better corrosion resistance than an individual silane system” (see page 3, last paragraph) and that “[i]t has also been demonstrated in the previous studies that bis-silanes such as bis-[3-(triethoxysilylpropyl)]ethane (BTSE, (C2H5O)3Si(CH2)2Si(OC2H5)3) and bis-[3-(triethoxysilyl)propyl]tetrasulfide (bis-sulfur silane, (C2H5O)3Si(CH2)3S4(CH2)3Si(OC2H5)3) performed much better in terms of corrosion protection as compared with mono-silanes,” with BTSE and bis-sulfur silanes exhibiting “outstanding corrosion protection performance on Al alloys such as AA2024-T3, AA6061-T6, AA5005 and AA7075-T6” (see page 19). Hence, Palanivel not only supports the Examiner’s position that Applicant’s “surprising results” are not unexpected with respect to utilizing a sulfur-containing silane with an aluminum alloy substrate but also supports the Examiner’s position above that the probative value of Applicant’s results utilizing a proprietary mixture of unhydrolyzed bi-silanes cannot be reasonably extended to any unhydrolyzed sulfur-containing silane(s) as in instant claim 1, or even to the claimed “at least one unhydrolyzed silane…selected from the group consisting of polysulfane silanes and mercapto silanes” as in instant claim 18. Therefore, Applicant’s arguments under the “Surprising Results” portion of Section III are not persuasive.
The Applicant further argues in the “Cited References” portion of Section III (see page 7 of the response filed 11/7/2025) that “Ichimura does not teach or suggest the combination of claim elements, including the use of benzotriazole as precisely claimed” and that “Toi [allegedly] does not cure the deficiencies of Ichimura,” wherein “Toi teaches benzotriazole as one potential selection in the group of triazole system compounds, which in turn is a selection in the group of electrophilic reactive group-containing compounds (C),” further arguing that “Toi does not teach or suggest all the elements of the present claims or that these selections could be combined with the disparate method of Ichimura.” The Applicant then argues that “Palanivel also [allegedly] does not cure the deficiencies of Ichimura,” wherein “Palanivel teaches benzotriazole as one potential selection in the group of corrosion inhibitors” but however, “does not teach or suggest all elements of the present claims or that this selection could be combined with the disparate method of Ichimura.” In the paragraph bridging pages 7-8 of the response, the Applicant argues that allegedly “it would not have been obvious to a person having ordinary skill in the art to selectively combine Ichimura, Toi, and Palanivel, without guidance, in order to arrive at the present claims” and that allegedly “[t]here is no teaching, suggestion, motivation, or other reason in Ichimura, Toi, and Palanivel to make such a combination,” arguing that “[i]mpermissible hindsight would have been required.” However, the Examiner respectfully disagrees and first notes that with respect to Applicant’s arguments that the secondary references to Toi and Palanivel do not teach or suggest all elements of the present claims, the Applicant appears to be arguing the references separately and not as presented in the obviousness rejection utilizing Ichimura as the primary reference, wherein if Toi and/or Palanivel taught all of the elements of the present claims, the rejection would have been an anticipation rejection over Toi or Palanivel taken alone. In response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Hence, given again that Ichimura teaches all of the claim limitations except the use of an aluminum alloy, an obvious species of metal substrate in the art, as the metal plate to be silane treated, and incorporation of benzotriazole, an obvious species of corrosion inhibitor in the art that may be added to a silane-treatment composition to be applied to a metal surface such as an aluminum alloy surface to provide corrosion protection thereto as taught by Toi and/or Palanivel, Applicant’s arguments that the secondary references do not teach or suggest all elements of the present claims are not persuasive. In response to Applicant's argument that the Examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Hence, given that it is prima facie obviousness to use a known technique to improve similar devices in the same way as discussed in detail in the prior office action, e.g., by incorporation of a known corrosion inhibitor, aka benzotriazole as in Toi or Palanivel, into the silane layer in the invention taught by Ichimura when applied to a metal plate, such as an aluminum alloy plate, Applicant’s arguments are not persuasive and the Examiner maintains her position that the claimed invention would have been obvious over the combined teachings of Ichimura in view of Toi or Palanivel.
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 MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787
Prosecution Insights