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 .
DETAILED ACTION
Claims 1, 3, 4, 6-8, 11, 13, 15-17, and 19-25 are pending. Claims 2, 5, 9, 10, 12, 14, 18, and 26 have been canceled. Note that, Applicant’s response filed July 14, 2025, has been entered.
Claims 15-17 and 19-25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 June 12, 2024.
Objections/Rejections Withdrawn
The following objections/rejections as set forth in the 1/13/25 have been with withdrawn:
None.
Claim Rejections - 35 USC § 102
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 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.
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.
Claims 1, 6, 7, 11, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over WO01/46495 in view of EP 908,534.
‘495 teaches a metal substrate coated with a first pretreatment composition including a transition element containing material having one or more Group IIIB elements, Group IVB elements, lanthanide series elements or mixtures thereof; and a second pretreatment composition including a reaction product of at least one epoxy-functional material or derivative thereof and at least phosphorus-containing material, amine-containing material and/or sulfur-containing material deposited upon the first pretreatment composition. If desired, the first and second pretreatment compositions can be combined into a single pretreatment. See Abstract. Before depositing the coating compositions onto the surface of a metal substrate, it is preferred to remove dirt or foreign matter from the surface by cleaning and degreasing the metal surface. The surface may be cleaned a commercially available alkaline cleaning agent which are well-known to those skilled in the art and include alkaline cleaning agents such as CHEMKLEEN 163, CHEMKLEEN 177, etc. See page 6, lines 1- 35. Suitable phosphate-containing materials which are reacted with an epoxy-containing material include phosphinic acids, phosphonic acids, etc. See pages 12-16. The pretreatment compositions may contain one or more film-forming materials or resins. See page 9.
‘495 does not teach a cleaning composition having a pH of greater than 8.5 or a system containing a cleaning composition and a pretreatment composition containing an organophosphate compound and the other requisite components of the composition in the specific amounts as recited by the instant claims.
‘534 teaches an alkaline, aqueous metal-cleaning composition capable of effectively removing industrial-type soil contaminants from a metal surface. The composition contains an alkalinity-providing component and a surfactant mixture along with an aqueous portion. See Abstract. The aqueous cleaning composition is alkaline and preferably has a pH of more than about 7.5 up to about 11. See paras. 28-30.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use a cleaner having a pH of greater than 8.5 as a cleaner in the coating system taught by ‘495, with a reasonable expectation of success, because ’534 teaches the use of an alkaline cleaner having a pH greater than 8.5 can be used to clean metal surfaces from industrial soils and further, ‘495 teaches the use of alkaline metal cleaners in general.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate a system containing a cleaning composition and a pretreatment composition containing an organophosphate compound and the other requisite components of the composition in the specific amounts as recited by the instant claims, with a reasonable expectation of success and similar results with respect to other disclosed components, because the broad teachings of ‘495 in view of ‘534 suggest a system containing a cleaning composition and a pretreatment composition containing an organophosphate compound and the other requisite components of the composition in the specific amounts as recited by the instant claims.
Claims 3, 4, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over WO01/46495 in view of EP 908,534 as applied to claims 1, 6, 7, 11, and 13 above, and further in view of WO2016/196252.
‘495 is relied upon as set forth above. However, ‘495 does not teach the specific amounts of solids or phosphonate and a phosphatized epoxy in addition to the other requisite components of the composition as recited by the instant claims.
‘252 teaches a curable film-forming composition containing a curable, organic film-forming binder component; a corrosion inhibiting comprising a lithium silicate present in the curable film-forming composition. See Abstract. The composition may include an adhesion promoting agent such as organophosphates, metal phosphates, etc. The adhesion promoting agent may comprise a phosphatized epoxy resin wherein such resins may comprise the reaction product of one or more epoxy-functional materials and one or more phosphorus-containing materials. The adhesion promoting component is present in the coating composition in amounts ranging from about 0.05 to 20% by weight. See paras. 85-93.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use a phosphatized epoxy compound in the pretreatment composition taught by ‘495 in the specific amounts as recited by the instant claims, with a reasonable expectation of success, because ‘252 teaches that the use of a phosphatized epoxy compound in a similar composition taught in the specific amounts as recited by the instant claims provides enhanced adhesion to the substrate and further, ‘495 teaches the use of organophosphates reacted with epoxy compounds in general.
Response to Arguments
With respect to the rejection of the instant claims under 35 USC 103 using WO01/46495 (i.e., Hauser et al) in view of EP 908,534 (i.e., Vinci et al), Applicant states that it would not be obvious to combine Hauser et al and Vínci et al to produce the system recited in the pending claims because neither Hauser nor Vinci teach or suggest a system that is substantially free of a Group IVB metal and excludes any treatment compositions between treatment with the cleaning composition or the solvent and with the pretreatment composition.
In response, note that, the Examiner asserts that Hauser et al clearly teach a metal substrate coated with a first pretreatment composition including a transition element containing material having one or more Group IIIB elements, Group IVB elements, lanthanide series elements or mixtures thereof; and a second pretreatment composition including a reaction product of at least one epoxy-functional material or derivative thereof and at least phosphorus-containing material, amine-containing material and/or sulfur-containing material deposited upon the first pretreatment composition wherein the first and second pretreatment compositions can be combined into a single pretreatment (See Abstract of Hauser et al). Additionally, Hauser et al clearly teach that before depositing the coating compositions onto the surface of a metal substrate, it is preferred to remove dirt or foreign matter from the surface by cleaning and degreasing the metal surface (See page 6, lines 1-35 of Hauser et al), wherein these specific teachings by Hauser et al would clearly suggest embodiments in which a single pretreatment composition is applied to a surface after cleaning the surface, without any intermediate treatment steps/compositions, as recited by the instant claims. Additionally, Hauser et al do not require the use of a Group IVB metal and would clearly suggest embodiments in which “the pretreatment composition is free of a Group IVB metal” as recited by the instant claims.
Also, the Examiner asserts that Vinci et al is analogous prior art relative to the claimed invention and Hauser et al and that one of ordinary skill in the art clearly would have looked to the teachings of Vinci et al to cure the deficiencies of Hauser et al. Vinci et al is a secondary reference relied upon for its teaching of a cleaning composition having a pH of greater than 8.5. The Examiner asserts that one of ordinary skill in the art clearly would have been motivated to use a cleaner having a pH of greater than 8.5 as a cleaner in the coating system taught by ‘495, with a reasonable expectation of success, because ’534 teaches the use of an alkaline cleaner having a pH greater than 8.5 can be used to clean metal surfaces from industrial soils and further, ‘495 teaches the use of alkaline metal cleaners in general. Thus, the Examiner asserts that the teachings of Hauser et al in view of Vinci et al are sufficient to render the claimed invention obvious under 35 USC 103.
With respect to the rejection of instant claims 3, 4, and 8 under 35 USC 103 using Hauser et al in view of Vinci et al, further in view of WO2016/196252, Applicant states that the teachings of Hauser et al in view of Vinci et al are not sufficient to suggest the claimed invention and that the teachings of ‘252 are not sufficient to remedy the deficiencies of Hauser et al in view of Vinci et al. In response, note that, the Examiner asserts that the teachings of Hauser et al in view of Vinci et al are sufficient to suggest the claimed invention for the reasons set forth above. Additionally, the Examiner asserts that ‘252 is analogous prior art relative to the claimed invention and Hauser et al and that one of ordinary skill in the art clearly would have looked to the teachings of Vinci et al to cure the deficiencies of Hauser et al in view of Vinci et al with respect to instant claims 3, 4, and 8. ‘252 is a secondary reference relied upon for its teaching of the specific amounts of solids or phosphonate and a phosphatized epoxy. The Examiner asserts that one of ordinary skill in the art clearly would have been motivated to use a phosphatized epoxy compound in the pretreatment composition taught by ‘495 in the specific amounts as recited by the instant claims, with a reasonable expectation of success, because ‘252 teaches that the use of a phosphatized epoxy compound in a similar composition taught in the specific amounts as recited by the instant claims provides enhanced adhesion to the substrate and further, ‘495 teaches the use of organophosphates reacted with epoxy compounds in general. Thus, the Examiner asserts that the teachings of Hauser et al in view of Vinci et al, further in view of ‘252, are sufficient to render the claimed invention obvious under 35 USC 103.
Further, Applicant states that comparative data has been provided in the instant specification and a Declaration has been filed under 37 CFR 1.132 submitted July 14, 2025, which are sufficient to show the unexpected and superior properties of the claimed invention in comparison to compositions falling outside the scope of the instant claims. Specifically, Applicant states that Tables 13, 15, and 16 of the instant specification provide data showing that the claimed invention provides unexpected and superior corrosion inhibition properties in comparison to systems falling outside the scope of the instant claims.
In response, note that, the Examiner asserts that the data provided in the instant specification and 132 Declaration are not sufficient to show the unexpected and superior properties of the claimed invention in comparison to compositions falling outside the scope of the instant claims. The data provided in the instant specification is not commensurate in scope with the instant claims. For example, the instant claims are open to any cleaning composition having a pH greater than 8.5 or any solvent and any organophosphate compound or any organophosphonate compound in any amount, while the instant specification and 132 Declaration provide data with respect to only several specific embodiments which is not commensurate in scope with the instant claims. Note that, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980); See MPEP 716.02(d)(I). Applicant has not provided on this record a sufficient basis for concluding that the generic scope of protection sought by claim 1 is reasonably commensurate with the showing of alleged unexpected results. See In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (obviousness rejection affirmed because evidence establishing that one (or a small number of) species gives unexpected results is inadequate proof); In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (Even assuming that the results were unexpected, Harris needed to show results covering the scope of the claimed range. Alternatively, Harris needed to narrow the claims). Note that, the evidence in the Specification is not commensurate in scope with the appealed claims. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983) (concluding that unexpected results “limited to sodium only” were not commensurate in scope with claims to a catalyst having an “alkali metal”. Appellants have not established that the results using the single embodiment in (Example 3) is representative of the results which would be obtained over the broad scope of compositions covered by the claims).
Additionally, the Examiner would like to point out that while Pretreamtent Conditions A-D in Table 15 appear to provide, on average, less corrosion than Pretreatment Conditions E-H, as detailed in paras. 14-16 of the 132 Declaration, all of Pretreatment Conditions A-H exclude a deoxidizing step and all of Pretreatment Conditions A-H appear to fall within the scope of the instant claims. Therefore, it appears that the data demonstrates that some systems falling within the scope of the instant claims (i.e., Pretreatment Conditions E-H) do not provide less corrosion than other systems falling within the scope of the instant claims (i.e., Pretreatment Conditions A-D), and that the enhanced corrosion protection is not provided across the entire scope of the instant claims. Also, as stated above, Hauser et al clearly suggest an embodiment wherein the substrate is cleaned and then treated with one pretreatment composition without any treatment of the substrate between the cleaning and the pretreatment step as recited by the instant claims. Thus, the Examiner asserts that the data provided in the instant specification and 132 Declaration are not sufficient to show the unexpected and superior properties of the claimed invention in comparison to compositions falling outside the scope of the instant claims.
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 GREGORY R DEL COTTO whose telephone number is (571)272-1312. The examiner can normally be reached M-F, 8:30am-6:00pm, EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached on (571) 272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GREGORY R DELCOTTO/Primary Examiner, Art Unit 1761
/G.R.D/October 13, 2025