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 .
Response to Arguments
Applicant argues that Felipe fails to teach increasing the surface roughness because the abrasive articles of Felipe may not necessarily increase the surface roughness of the panel. This is not persuasive. The test for obviousness is what the combined teachings of the references would have suggested to one of ordinary skill in the art. MPEP § 2143.01(II). In this case, Felipe teaches the use of an abrasive article to scuff a surface and that the panels have “a matte finish when this step is complete. (¶ 0147). One of ordinary skill in the art would have understood that scuffing a surface to produce a matte finish means increasing the surface roughness of the surface.
Applicant also argues that the office action did not identify any portion of Felipe which suggests a surface roughness between 1.15 Ra and 2.3 Ra and, therefore, relied upon impermissible hindsight. This is not persuasive. In this case, the office action has established that the surface roughness is a result effective variable In order to properly support a rejection on the basis that an invention is the result of "routine optimization", the examiner must make findings of relevant facts, and present the underpinning reasoning in sufficient detail. The articulated rationale must include an explanation of why it would have been routine optimization to arrive at the claimed invention and why a person of ordinary skill in the art would have had a reasonable expectation of success to formulate the claimed range. MPEP 2144.05(II)(B). Here, it is explained that one of ordinary skill in the art of sanding would have understood that the desired surface roughness can be achieved by selected a desired grit sandpaper and/or a duration of sanding. Thus, this rejection is not based on impermissible hindsight.
Applicant argues that Sheng only refers to the final surface roughness after manufacturing and is not relevant to the initial surface roughness. This is not persuasive. The discussion of surface roughness in, e.g., ¶ 0027 of Sheng broadly discusses various factors which affect surface roughness including many factors which would affect the initial surface roughness and specifically refers to predicting the surface roughness of a metal component before the manufacturing process. Thus, one of ordinary skill in the art would have understood the teachings of Sheng to apply to an initial surface roughness as well as a final one.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 24-27 and 29-34 are rejected under 35 U.S.C. 103 as being unpatentable over Uchikawa et al. (US 2014/0190592) in light of Rodzewich et al. (US 2004/0094235), Felipe et al. (US 2007/0066185) and Sheng et al. (US 2008/0255811).
Claims 1, 24-26 and 29-32: Uchikawa teaches a process of pre-treating a MgAl alloy substrate useful as an automotive component (Abst.; ¶¶ 0081, 0088, 0144), comprising the steps of: applying a pre-treatment to said MgAl alloy substrate (¶¶ 0076-0079) by first subjecting the substrate to an alkaline degreasing step (¶ 0100) and then applying the surface treatment finish which comprises a silane coupling agent (¶¶ 0030-0036), the surface treatment improving adhesion of a subsequently deposited powder coating (¶¶ 0093). Although Uchikawa does not disclose that the powder coat is clear, the courts have held that changes to aesthetic design changes absent criticality would be prima facie obvious. See MPEP 2144.04. Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a clear powder coat with the predictable expectation of success.
The examiner notes that the Uchikawa has a similar composition as claimed by applicant, (i.e. pretreatment with a silane containing composition, followed by application of a clear powder coat) which would result in the claimed property (retain the visual profile of the surface-finish).
Uchikawa does not disclose performing a deoxidizing step prior to the conversion coating. Like Uchikawa, Rodzewich teaches a process of treating aluminum alloys with an alkaline cleaning solution (¶ 0007) and further teaches that the alloys is treated with a deoxidizer then rinsed and dried in order to remove excess oxides from the metal surface (¶¶ 0008-0009). Thus, it would have been obvious to one of ordinary skill at the time of filing to have performed the deoxidizing step in Uchikawa in order to have removed excess oxides from the surface with the predictable expectation of success.
Uchikawa fails to teach a step of surface treatment using an orbital sander. Felipe teaches a method of improving the adhesion of an automotive panel with a subsequently applied coating and explains that the panel is scuffed (i.e. claimed increasing the surface roughness) via orbital sanding in order to improve the adhesion (¶¶ 0116, 0147). Thus, it would have been obvious to one of ordinary skill at the time of filing to have performed an orbital sanding treatment on the alloy in Uchikawa in order to have improved adhesion between the surface and the coating with the predictable expectation of success.
Felipe does not discuss a specific surface roughness. However, one of ordinary skill in the art of sanding would have understood that the desired surface roughness can be achieved by selected a desired grit sandpaper and/or a duration of sanding. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. MPEP § 2144.05(II)(A). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a post-sanding surface roughness of 1.45-1.65 or 1.15-1.55 Ra using, e.g., 40 or 180 grit sandpaper with the predictable expectation of success.
Uchikawa is silent regarding the initial roughness. Sheng explains that, when manufacturing an automotive part, a number of factors can be adjusted to achieve a desired surface roughness (Abst.; ¶ 0027). Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. MPEP § 2144.05(II)(A). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a surface roughness of the alloy substrate of 0.7-1.1 Ra depending on the desired surface roughness.
Claim 27: Uchikawa fails to discuss the surface roughness after powder coating. However, one of ordinary skill in the art would have understood that the surface roughness after powder coating would depend on the solids content of the powder coating composition as the powder will naturally smooth unevenness in the substrate. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. MPEP § 2144.05(II)(A). Thus, it would have been obvious to one of ordinary skill at the time of filing to have final surface roughness of 1.05-1.39 Ra depending on the desired smoothness in the final product.
Claim 33: It is implicit in Uchikawa that pretreatment will smooth the surface because Uchikawa teaches applying a silane coating to a surface having a roughness. The coating will necessarily fill some portion of the unevenness in the substrate.
Claim 34: Uchikawa also teaches washing the substrate after the treatment process and before the subsequent coating process (¶ 0086).
Claims 2-4 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Uchikawa, Rodzewich, Felipe and Sheng in light of Ohori et al. (US 2001/0023720)
Claims 2-4 and 21: Uchikawa teaches that the automotive part is a magnesium aluminum alloy, as discussed above, but fails to teach one of the claimed alloys. Ohori teaches that suitable magnesium aluminum alloys in the automotive art includes AM60B (which has 95 wt% Mg), AM50A and AZ91D (¶ 0003). The simple substitution of one known element for another to obtain predictable results is prima facie obvious. MPEP § 2143. Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected one of these alloys as the alloy in Uchikawa with the predictable expectation of success.
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Uchikawa, Rodzewich, Felipe and Sheng in light of Decker (US 6,737,467).
Claims 9 and 10: Uchikawa fails to teach that the coating is a low-gloss powder with a thickness of 50-200µm. Decker teaches coatings for automotive use (1:10-25) applied on metallic substrates (2:36-37) and explains that suitable coatings include low-gloss (1:10-11) powder coatings applied with a thickness of 50 µm (3:7-14). Combining prior art elements according to known methods to yield predictable results is prima facie obvious. MPEP § 2143. Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a low-gloss coating having the thickness of about 50 µm in Uchikawa with the predictable expectation of success.
Claims 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Uchikawa, Rodzewich, Felipe and Sheng in light of Song (US 2013/0029177).
Claims 21 and 22: Uchikawa fails to teach the claimed magnesium content. Song teaches magnesium alloys used in vehicles (¶ 0003) and explains that magnesium contents in excess of 80 wt% are suitable (¶ 0023). 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 simple substitution of one known element for another to obtain predictable results is prima facie obvious. MPEP § 2143. Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected alloys having at least 95 or 97 wt% Mg with the predictable expectation of success.
Claims 10 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Uchikawa, Rodzewich, Felipe and Sheng in light of Roelofs et al. (US 2005/0003082).
Claims 10 and 23: Uchikawa does not teaches a powder coating thickness of 100-200 µm. Roelofs teaches powder coatings on automotive parts (¶ 0002) and explains that thickness of 51-102 µm provide good chip resistance (¶ 0099). 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). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a thickness of 100-102 µm in order to have provided good chip resistance.
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Uchikawa, Rodzewich, Felipe and Sheng in light of Balin et al. (US 5,123,978).
Claim 28: Uchikawa teaches a conversion coating steps, but fails to teach degassing. Like Uchikawa, Balin teaches a conversion coating using an alkaline solution (3:58-65) and explains pitting can be avoided by degassing (3:58-4:2). Thus, it would have been obvious to one of ordinary skill at the time of filing to have included a degassing step in Uchikawa in order to have avoided pitting.
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 Robert A Vetere whose telephone number is (571)270-1864. The examiner can normally be reached M-F 7:30-4:00 EST.
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/ROBERT A VETERE/ Primary Examiner, Art Unit 1712