DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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 Amendment
2. The applicant’s amendment dated 15 June 2026 is acknowledged. No claim amendments have been added. Currently, Claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, and 18 are pending and under examination.
Claim Rejections - 35 USC § 103
3. 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.
4. 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.
5. Claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Hosono et al. in view of Shibao et al.
Hosono et al. (JP2017082260A – previously presented) is directed toward a bath composition for conducting electrodeposition with excellent corrosion resistance (pg. 1: abstract). Shibao et al. (US Pub. No. 2014/0023879 A1 – previously presented) is directed toward surface treated steel sheet (title).
Regarding Claim 1, Hosono et al. discloses an electrodepositable material comprising:
(i.) one of more cathodically electrodepositable resin (A) (i.e.: “cationic epoxy resin” in the abstract on page 1, “Cationic epoxy resin” section on pages 4-5, and examples on pages 8-10); and
(ii.) one or more crosslinking agents (B) (i.e.: “curing agent” in the abstract on page 1, “Curing agent” section on page 5, and examples on page 9).
Hosono et al. further describes the presence of polyhydric phenol compounds in the composition for treatment of metal substrates (page 1 in the abstract) at a level of 50 to 2000 ppm based on the total weight of the composition and a preferred pH range of 3.0 to 6.5 in the aqueous composition (page 8). The presence of the polyhydric phenol material improves corrosion resistance of the coated metal substrate by controlling the rate metal oxidation (i.e.: an anticorrosion agent) given the description in Hosono et al. In particular, Hosono et al. indicates that gallic acid (ex. 11) is one specific example of a polyhydric phenol compound with excellent corrosion performance. Hosono et al. describes compounds that are structurally related to the compounds that satisfy the limitations of formula(I) of Claim 1.
Shibao et al. is directed toward surface-treated steel sheet which has as part of the coating an organic resin (e.g.: polyester-based resin, a polyurethane resin, an acrylic resin, an epoxy-based resin, polyolefin, and modified resins in ¶144), a cross-linking agent (e.g.: blocked polyisocyanates in ¶169), and polyphenolic compounds (e.g.: gallic acid, tannic acid, catechin derived from tannic acid in ¶183) among other additives. The aforementioned composition disclosed by Shibao et al. and its use to treat metallic substrates makes Shibao et al. and Hosono et al. analogous art. Shibao et al. indicated that the polyphenolic compound provides improvements in corrosion resistance of the resin-based film and improved adhesion of any subsequent coating steps (¶182). Like Hosono et al., Shibao et al. indicates that gallic acid provides corrosion protection and Shibao et al. further indicates that catechin is a polyphenolic compound that is capable of improving corrosion (¶183 of Shibao et al.). Catechin satisfies the limitations of the compound of Claim 1 as defined by C(R1)(R2) = CH2; R3 = OH; R4 = H; R5 = OH; R6-R7 = HC-CH (see chemical structure below).
[AltContent: textbox ([img-media_image1.png][img-media_image2.png]
Chemical Structures of Gallic Acid (Left) and (+)-Catechin (Right))]
[AltContent: textbox ([img-media_image3.png]
Formula (I) chemical structure from the present application)]
It would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify electrodepositable composition of Hosono et al. by substituting catechin for gallic acid with the reasonable expectation of yielding predictable results of maintaining the corrosion resistance of the electrodeposited coating since Shibao et al. teaches both compounds are polyphenolic species known to improve corrosion performance.
Regarding Claim 2, Hosono et al. in view of Shibao et al. discloses the electrodepositable coating material according to Claim 1, wherein the electrodepositable coating material has a pH with a preferred pH range of 3.0 to 6.5 in the aqueous composition (Hosono et al. on page 8). As per MPEP 2144.05(I), a prima facie case of obviousness exists when the claimed range (i.e..: 4.0 < pH < 6.5) overlaps or is similar to a range disclosed in the prior art (i.e.: 3.0 < pH < 6.5).
Regarding Claim 3, Hosono et al. in view of Shibao et al. discloses the electrodepositable coating material according to Claim 1, wherein the cathodically electrodepositable resin is a cathodically electrodepositable epoxy-based resin (Hosono et al. in the abstract on page 1, “Cationic epoxy resin” section on pages 4-5, and examples on pages 8-10).
Regarding Claim 4, Hosono et al. in view of Shibao et al. discloses the electrodepositable coating material according to Claim 1, wherein the crosslinking agent are blocked polyisocyanates including diisocyanates (“curing agent” in Hosono et al. in the abstract on page 1, “Curing agent” section on page 5, and examples on page 9).
Regarding Claim 5 and Claim 6, Hosono et al. in view of Shibao et al. discloses the electrodepositable coating material according to Claim 1, wherein the compound of formula (I) is catechin derived from tannic acid (Shibao et al. in ¶183) and catechin is broadly characterized as a flavanol.
Regarding Claim 7, Hosono et al. in view of Shibao et al. discloses the electrodepositable coating material according to Claim 1, wherein the electrodepositable coating material further comprises at least one pigment as exemplified by the pigment dispersion paste in Ex. 11 by the use of purified clay, carbon black, and titanium dioxide (page 10 of Hosono et al.).
Regarding Claim 8, Hosono et al. in view of Shibao et al. discloses the electrodepositable coating material according to Claim 1, wherein the compounds of formula (I) are contained in the electrodepositable coating material in an amount ranging from 50 to 2000 ppm with most examples using a concentration of 1000 ppm based on the total weight of the composition (abstract in Hosono et al.). As per MPEP 2144.05(I), a prima facie case of obviousness exists when the claimed range (i.e.: 150 to 3000 ppm compound of formula (I)) contains examples disclosed in the prior art .
Regarding Claim 9, Hosono et al. in view of Shibao et al. discloses a method of coating a metallic substrate comprising the steps of: (a.) dipping a metallic substrate into an electrodeposition bath containing the electrodepositable coating material according to Claim 1; (b.) switching the substrate as the cathode; (c.) depositing the electrodepositable coating material onto the substrate to form a coating layer; and (d.) drying and curing the thus formed coating layer as supported on page 12 of Hosono et al. which indicates the substrate to be treated is immersed in the metal surface treatment agent without current followed by application of voltage via cathodic electrolysis to form the coated article, and curing the deposited film.
Regarding Claim 10, Hosono et al. in view of Shibao et al. discloses the method of Claim 9, wherein the metallic substrate is steel, galvanized steel, or aluminum (Hosono et al. on pages 6 and 8).
Regarding Claim 11, Hosono et al. in view of Shibao et al. discloses the method of Claim 9, wherein the multimetallic substrate is a multimetallic substrate comprising surface areas of different compositions as evidenced by Hosono et al on pages 6 and 8 by the electrodepositable treatment of metallic substrates used in automotive construction. In particular, Hosono et al. indicates that automotive assemblies (i.e.: auto bodies) are comprised of a mixture of substrates selected from steel, galvanized steel, and aluminum.
Regarding Claim 12, Hosono et al. in view of Shibao et al. discloses the metallic substrate is aluminum (Hosono et al. on pages 6 and 8).
Regarding Claim 13, Hosono et al. in view of Shibao et al. discloses the method of Claim 9, wherein the metallic substrate is not precoated since the metal surface treatment and electrodeposition process of the uncoated metallic substrate occur in the same composition (page 12). For an article to be precoated, Hosono et al. specifically indicates that step is a pretreatment step that is typically a separate zinc phosphate and the method of coating taught by Hosono et al. does not require said pretreatment/precoating step (page 1: abstract and “background art” section and Reference Example).
Claim 14 claims a method of using the compound represented by formula (I), with the method comprising using the one or more compounds as anticorrosion agents in electrodeposition coating materials
Pertaining to Claim 14, Hosono et al. discloses an aqueous electrodepositable composition at a pH of 3.0 to 6.5 (page 8) that comprises a cation epoxy resin (i.e.: “cationic epoxy resin” in the abstract on page 1, “Cationic epoxy resin” section on pages 4-5, and examples on pages 8-10), a curing agent (abstract on page 1, “Curing agent” section on page 5, and examples on page 9), and a polyhydric phenol. Hosono et al. further describes the presence of polyhydric phenol compounds in the composition for treatment of metal substrates (page 1 in the abstract) which improves corrosion resistance of the coated metal substrate by controlling the rate metal oxidation (i.e.: an anticorrosion agent) and the deposition of a soluble bismuth onto the metal substrate. Both actions of the polyhydric phenol compound meet the claim limitation of “present as an anticorrosion agent.” In particular, Hosono et al. indicates that gallic acid (ex. 11) is one specific example of a polyhydric phenol compound with excellent corrosion performance. Hosono et al. describes compounds that are structurally related to the compounds that satisfy the limitations of formula(I) of Claim 14.
Shibao et al. is directed toward surface-treated steel sheet which has as part of the coating an organic resin (e.g.: polyester-based resin, a polyurethane resin, an acrylic resin, an epoxy-based resin, polyolefin, and modified resins in ¶144), a cross-linking agent (e.g.: blocked polyisocyanates in ¶169), and polyphenolic compounds (e.g.: gallic acid, tannic acid, catechin derived from tannic acid in ¶183) among other additives. The aforementioned composition disclosed by Shibao et al. and its use to treat metallic substrates makes Shibao et al. and Hosono et al. analogous art. Shibao et al. indicated that the polyphenolic compound provides improvements in corrosion resistance of the resin-based film and improved adhesion of any subsequent coating steps (¶182). Like Hosono et al., Shibao et al. indicates that gallic acid provides corrosion protection and Shibao et al. further indicates that catechin is a polyphenolic compound that is capable of improving corrosion (¶183 of Shibao et al.). Catechin satisfies the limitations of the compound of Claim 14 as defined by C(R1)(R2) = CH2; R3 = OH; R4 = H; R5 = OH; R6-R7 = HC-CH (see chemical structure below).
[AltContent: textbox ([img-media_image1.png][img-media_image2.png]
Chemical Structures of Gallic Acid (Left) and (+)-Catechin (Right))]
[AltContent: textbox ([img-media_image1.png][img-media_image2.png]
Chemical Structures of Gallic Acid (Left) and (+)-Catechin (Right))]
It would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the method of corrosion prevention by using the electrodepositable composition of Hosono et al. by substituting catechin for gallic acid with the reasonable expectation of yielding predictable results of maintaining the corrosion resistance of the electrodeposited coating since Shibao et al. teaches both compounds are polyphenolic species known to improve corrosion performance.
Regarding Claim 15, Hosono et al. in view of Shibao et al. discloses a coated metallic substrate obtained by the method according to Claim 9 as discussed on page 12 of Hosono et al.
Regarding Claim 16, Hosono et al. in view of Shibao et al. discloses the method of Claim 9, wherein the metallic substrate is selected from the group consisting of cold-rolled steel (i.e.: ferrous), electrogalvanized steel (i.e.: coated ferrous), or aluminum (Hosono et al. on pages 6 and 8).
Regarding Claim 17, Hosono et al. in view of Shibao et al. discloses the method of Claim 9, wherein the metallic substrate is steel, galvanized steel, or aluminum (Hosono et al. on pages 6 and 8).
Regarding Claim 18, Hosono et al. in view of Shibao et al. discloses the electrodepositable coating material according to Claim 1, wherein the compound of formula (I) is employed in the form of a paste. The limitation “employed in the form of a paste” indicates that the compound of formula (I) is capable of being used in the form of a paste. Hosono et al. indicates that the ingredients of the metal treatment composition are combined including the epoxy-amine dispersion, the pigment paste, the polyhydric phenol, and other additives (on the bottom of page 7). The addition of these ingredients would result in an electrodepositable composition that is a dispersion or has the capability of being a paste depending upon the final solids content and/or viscosity.
Response to Arguments
6. Applicant’s arguments with respect to Claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, and 18 have been fully considered but are not persuasive. As a result, the rejection under 103 in view of Hosono et al. in view of Shibao et al. is maintained.
7. The applicant has argued on pg. 6 of their response that Hosono et al. requires the presence of bismuth given Claim 1 of Hosono et al. However, the applicant is reminded that the entire disclosure is relevant when considering the teachings of a reference. Moreover, the use of a bismuth salt or bismuth material is not restricted from being present in the electrodepositable compositions of independent Claim 1 and Claim 14 since both claims used opened-ended language is used (i.e.: comprising).
8. The applicant has further argued that the deposition of bismuth is what improves corrosion protection of the electrodeposited coating. This assertion is at best partially true. Hosono et al. expressly indicates that the presence of the polyhydric phenol material improves corrosion resistance of the coated metal substrate by controlling the rate metal oxidation (i.e.: an anticorrosion agent). Particularly, Hosono et al. indicates that gallic acid (ex. 11) is one specific example of a polyhydric phenol compound with excellent corrosion performance. Hosono et al. describes compounds that are structurally related to the compounds that satisfy the limitations of formula(I) of Claim 1/14. The poly-hydroxyl group are the chemical moieties that interact with either the soluble bismuth cations or the substrate surface both interactions result in the improvement of corrosion performance. While the specific compounds described by the instant application are not disclosed by Hosono et al., this deficiency has been cured by combination with Shibao et al.
Shibao is teaches a composition for the surface-treatment of steel sheet comprising an organic resin, a cross-linking agent (e.g.: blocked polyisocyanates in ¶169), and polyphenolic compounds (e.g.: gallic acid, tannic acid, catechin derived from tannic acid in ¶183) among other additives. The aforementioned composition disclosed by Shibao et al. and its use to treat metallic substrates makes Shibao et al. and Hosono et al. analogous art. Shibao et al. indicated that the polyphenolic compound provides improvements in corrosion resistance of the resin-based film and improved adhesion of any subsequent coating steps (¶182). Like Hosono et al., Shibao et al. indicates that gallic acid provides corrosion protection and Shibao et al. further indicates that catechin is a polyphenolic compound that is capable of improving corrosion (¶183 of Shibao et al.).
9. The applicant has argued on pg. 8 of their response that Hosono et al. discloses a two-step process which does not map onto the method of Claim 9. However, the examiner does not find this argument persuasive as the method teachings of Hosono et al. disclose the four-step process of Claim 9 as explained above. The applicant has argued that step 9a does not result in the deposition of any material, but this assertion is not a limitation of the claim. Therefore, the fact that the first step (i.e.: the dipping of the metallic substrate in the coating composition [without the application of current/voltage]) results in the coating deposition does not change the fact the specific method steps are described by Hosono et al.
Conclusion
10. 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.
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN SYLVESTER whose telephone number is 703-756-5536. The examiner can normally be reached Mon - Fri 8:15 AM to 4:30 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached at 571-272-8902. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN SYLVESTER/Examiner, Art Unit 1794
/CIEL P CONTRERAS/Primary Examiner, Art Unit 1794
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