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 .
This is in response to the Amendment dated September 15, 2025. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Response to Amendment
Claim Rejections - 35 USC § 102/103
Claim(s) 1-2, 5, 12-15 and 52-53 were rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over WO 2017/089687 (‘687).
With regard to claim 1-2, 5, 12-15 and 52-53, the rejection under 35 U.S.C. 102(a)(1) as anticipated by WO 2017/089687 (‘687) has been withdrawn in view of Applicant’s remarks.
With regard to claims 1-2, 5, 12-15 and 52-53, the rejection under 35 U.S.C. 103 as obvious over WO 2017/089687 (‘687) stands.
Regarding claim 1, WO ‘687 teaches a method for treating a substrate comprising:
• contacting a substrate (= to form conversion layers on all types of aluminum alloys) [ρ [0036]] with a pretreatment composition comprising a Group IVB metal and trivalent chromium and being substantially free of hexavalent chromium (= the treatment agent comprises at least one anionic compound containing at least one metallic element from the group consisting of zirconium, titanium, chromium (III), cerium, vanadium, molybdenum, manganese) [ρ [0019]]; and
• passing an electric current resulting in a cathodic current density of -0.1 mA/cm2 to -20 mA/cm2 (= the alternating current used has a current density of between 0.1 and 3 A/dm2) [ρ [0027]] between an anode (= the counter-electrode (21)) and the substrate serving as a cathode (= the electrical contact is made using a contact roller (23)) [ρ [0034]; and Fig. 2] to deposit a coating from the pretreatment composition on the substrate (= a step of forming a chemical conversion layer on the surface of the strip by a reaction with a chemical conversion treatment agent) [ρ [0010]].
The invention as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including non-preferred and alternative embodiments. Non-preferred and alternative embodiments constitute prior art (MPEP § 2123).
The disclosure of desirable alternatives does not necessarily negate a suggestion for modifying the prior art to arrive at the claimed invention (MPEP § 2143.01).
Regarding claim 2, WO ‘687 teaches wherein the Group IVB metal comprises zirconium (= the treatment agent comprises at least one anionic compound containing at least one metallic element from the group consisting of zirconium, titanium, chromium (III), cerium, vanadium, molybdenum, manganese) [ρ [0019]].
Regarding claim 5, WO ‘687 teaches wherein the pretreatment composition further comprises a fluoride ion (= advantageously, the anionic compound is a fluorinated and/or oxidized and/or phosphated compound) [ρ [0020]].
Regarding claim 12, WO ‘687 teaches wherein the substrate comprises aluminum (= to form conversion layers on all types of aluminum alloys) [ρ [0036]].
Regarding claim 13, WO ‘687 teaches wherein the substrate comprises a portion of a vehicle (= the aluminum alloy strips obtained by the process are used in particular in the box, automobile and decoration industries) [ρ [0037]].
Regarding claim 14, WO ‘687 teaches wherein the coating has a property that provides corrosion resistance to the substrate (= generally, the surface of a metal is provided with a surface treatment in order to enhance characteristics such as corrosion resistance and others) [ρ [0005]].
Regarding claim 15, the method of WO ‘687 differs from the instant invention because WO ‘687 does not disclose wherein the corrosion resistance is filiform corrosion resistance.
The invention as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention because the coating is the product made by the method. WO ‘687 teaches a method in a similar manner as presently claimed. Similar processes can reasonably be expected to yield products which inherently have the same properties. In re Spada 911 F.2d 705, 15 USPQ 2d 1655 (CAFC 1990); In re DeBlauwe 736 F.2d 699, 222 USPQ 191 (CAFC 1984); In re Wiegand 182 F.2d 633, 86 USPQ 155 (CCPA 1950).
Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable (MPEP § 2112.01).
Regarding claim 52, WO ‘687 teaches wherein the pretreatment composition comprises a pH of 3.0 to 7.0 (= a chemical conversion treatment agent whose pH is at most 5) [ρ [0010]].
Regarding claim 53, WO ‘687 teaches wherein the coating is substantially free of hexavalent chromium (= the treatment agent comprises at least one anionic compound containing at least one metallic element from the group consisting of zirconium, titanium, chromium (III), cerium, vanadium, molybdenum, manganese) [ρ [0019]].
Claim Rejections - 35 USC § 103
Claim(s) 6, 8 and 11 stand rejected under 35 U.S.C. 103 as being unpatentable over WO 2017/089687 (‘687) as applied to claims 1-2, 5, 12-15 and 52-53 above, and further in view of NL 2017768 (‘768).
WO ‘687 is as applied above and incorporated herein.
Regarding claim 6, the method of WO ‘687 differs from the instant invention because WO ‘687 does not disclose wherein the Group IVB metal is in the range of 4 to 40 times by weight an amount of the trivalent chromium.
NL ‘768 teaches that:
According to a first aspect the invention provides an acidic aqueous composition for preparing a corrosion resistant layer on substrates of aluminum, aluminum alloys, anodized aluminum, zinc or zinc alloy coated steel, aluminized steel, containing the composition comprises:
trivalent chromium (Cr3+): 0.04-6 g/l
zirconium (Zr4+): 0.08-8 g/l
total fluoride (F-): 0.1-9 g/l
stabilizing agent comprising a hydroxyl carboxylic acid or corresponding base(s)
(calculated as the acid): 0.2-9 g/l
wherein
the molar ratio Zr4+:Cr3+ is in the range of 0.8:1 to 2.0:1;
the molar ratio Zr4+:F- is in the range or 1:5.5 to 1.0:2.0; and
pH is in the range of 3.0 - 5.0 (page 5, lines 7-18).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the Group IVB metal described by WO ‘687 with wherein the Group IVB metal is in the range of 4 to 40 times by weight an amount of the trivalent chromium because 0.04 g/l of trivalent chromium (Cr3+) and 8 g/l of zirconium (Zr4+) are concentrations of trivalent chromium (Cr3+) and zirconium (Zr4+) in an acidic aqueous composition for preparing a corrosion resistant layer on substrates of aluminum alloys.
Known work in one field of endeavor may prompt variations of it for use in either the same field or a different field based on the function or property of the known material if the variations are predictable to one of ordinary skill in the art (MPEP § 2141 and § 2141.03).
The motivation to combine prior art references can arise from the expectation that the prior art elements will perform their expected functions to achieve their expected results when combined for their commonly known purpose (MPEP § 2141 and § 2144.07).
Regarding claim 8, the method of WO ‘687 differs from the instant invention because WO ‘687 does not disclose wherein the coating comprises a weight ratio of the Group IVB metal to the trivalent chromium greater than 4:1.
NL ‘768 teaches that the molar ratio Zr4+:Cr3+ is in the range of 0.8:1 to 2.0:1 (page 5, line 16).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the coating described by WO ‘687 with wherein the coating comprises a weight ratio of the Group IVB metal to the trivalent chromium greater than 4:1 because it has been held that changes in temperature, concentration or both,
is not a patentable modification; however, such changes may impart patentability to a process if the ranges claimed produce new and unexpected results which are different in kind and not merely in degree from results of the prior art, such ranges are termed “critical” ranges and Applicant has the burden of proving such criticality; even though Applicant’s modification results in great improvement and utility over the prior art, it may still not be patentable if the modification was within capabilities of one skilled in the art; more particularly, where general conditions of the claim are disclosed in the prior art, it is not inventive to discover optimum or workable ranges by routine experimentation. In re Aller, 220 F2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) [MPEP § 2144.05].
Regarding claim 11, the method of WO ‘687 differs from the instant invention because WO ‘687 does not disclose wherein the substrate comprises a steel.
NL ‘768 teaches that according to a first aspect is an acidic aqueous composition for preparing a corrosion resistant layer on substrates of aluminum, aluminum alloys, anodized aluminum, zinc or zinc alloy coated steel, aluminized steel.
It would have been obvious to one having ordinary skill in the art before the effective
filing date of the claimed invention to have modified the substrate described by WO ‘687 with wherein the substrate comprises a steel because zinc or zinc alloy coated steel and aluminized steel are alternatives to aluminum alloys for treatment with a treatment solution based on Cr(III) to deposit a layer that protects the substrate against corrosion.
Known work in one field of endeavor may prompt variations of it for use in either the
same field or a different field based on the function or property of the known material if the
variations are predictable to one of ordinary skill in the art (MPEP § 2141 and § 2141.03).
The motivation to combine prior art references can arise from the expectation that the prior art elements will perform their expected functions to achieve their expected results when combined for their commonly known purpose (MPEP § 2141 and § 2144.07).
Response to Arguments
Applicant’s arguments filed September 15, 2025 have been fully considered but they are not persuasive. The standing prior art rejections have been maintained for the following reasons:
• Applicant states that that Safrany describes a large number of permutations of compounds and provides no rationale to focus on anything other than a Ti/Zr combination, the subject matter claimed in the present application cannot be considered explicitly or inherently anticipated by the disclosure of Safrany.
In response, the rejection under 35 U.S.C. 102(a)(1) as anticipated by WO 2017/089687 (‘687) has been withdrawn.
• Applicant states that even assuming that there is overlap of the range of compositions described in Safrany with the subject matter of the present claims, a point that Applicant does not hereby admit, the results depicted in the present application could not be predicted or attributed in particular to the claimed subject matter based on the disclosure of Safrany and are therefore nonobvious (see, e.g., MPEP 2144.08 (4)(a)).
In response, the Applicant has a different reason for, or advantage, resulting from doing what the prior art relied upon has suggested, it is noted that it is well settled that this is not demonstrative of nonobviousness. The prior art motivation or advantage may be different than that of Applicant’s while still supporting a conclusion of obviousness (MPEP § 2144).
Furthermore, the testing of the method described for their ability to provide corrosion resistance to the substrate is not commensurate in scope with the present claims. The present claims are more generic than what was tested and what was tested was not representative of the overall broadness of what is presently claimed, i.e., the ability to provide corrosion resistance to the substrate only works for what was specifically tested.
• Applicant states that further, the identification of an “advantageous” Ti/Zr combination in Safrany teaches away from the subject matter of the pending claims in the present application.
In response, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
WO 687 teaches that:
The treatment agent comprises at least one anionic compound containing at least one metallic element from the group consisting of zirconium, titanium, chromium (III), cerium, vanadium, molybdenum, manganese (ρ [0019]).
The invention as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention because a reference may be relied upon
for all that it would have reasonably suggested to one having ordinary skill the art, including non-preferred and alternative embodiments. Non-preferred and alternative embodiments constitute prior art (MPEP § 2123).
The disclosure of desirable alternatives does not necessarily negate a suggestion for modifying the prior art to arrive at the claimed invention (MPEP § 2143.01).
• Applicant states that it is unclear if the composition of Van Der Net would be amenable to electrodeposition, as it is not described as being useful in electrodeposition (See, e.g., Van Der Net, p. 7, lines 20-27).
In response, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
As evidenced by Dong et al. (“Structure and Composition of Trivalent Chromium Process (TCP) Films on Al Alloy,” Langmuir (2010 Jul 6), Vol. 26, No. 13, pp. 10833-10841), Dong et al. teach that they developed two methods to deposit the TCP film: (1) immersion and (2) electroassisted (EA) deposition (page 10833, right column, lines 31-32).
Inoperativeness of a reference is not established by merely showing that a particular disclosed embodiment is lacking in perfection does not establish nonobviousness. Ex parte Allen 2 USPQ 2d 1425 (BPAI 19870; Decca Ltd. V. United States 191 USPQ 439 (Ct. Cl. 1976); Bennett
v. Halahan 128 USPQ 398, 401 (CCPA 1961).
Citations
The prior art made of record and not relied upon is considered pertinent to applicant's
disclosure.
Yasuda et al. (US Patent Application Publication No. 2004/0244875 A1) is cited to teach a method for treating a substrate comprising:
۰ contacting a substrate (= an aluminum-based substrate) [page 2, [0014]] with a pretreatment composition comprising a Group IVB metal (= a chemical conversion treatment agent containing a zirconium-containing compound) [page 1, [0010]] and trivalent chromium (= in addition to the above-mentioned ingredients, the above-mentioned chemical conversion treatment agent may contain metal ions such as titanium, manganese, silicon, zinc, cerium, iron, molybdenum, vanadium, trivalent chromium, magnesium and the like) [page 3, [0029]] and being substantially free of hexavalent chromium (= does not contain hexavalent chromium) [pages 4-5, [0046]]; and
۰ passing an electric current resulting in a cathodic current density of -0.1 mA/cm2 to -20 mA/cm2 between an anode and the substrate serving as a cathode (= preferably, the cathodic electrolysis treatment is conducted in conditions of voltage of 0.1 to 40 V and current density of 0.1 to 30 A/dm2) [page 2, [0013]] to deposit a coating from the pretreatment composition on the substrate (= it is possible to attain a corrosion resistant chemical conversion coat having extremely excellent corrosion resistance) [page 2, [0018]],
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 EDNA WONG whose telephone number is (571) 272-1349. The examiner can normally be reached Monday-Friday, 7:00 AM- 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at (571) 272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EDNA WONG/Primary Examiner, Art Unit 1795 September 29, 2025