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 29 April 2026 is acknowledged. Currently, Claims 1, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, and 16 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, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Hosono et al. in view of Reinhard et al.
Hosono et al. (JP2017082260A) is directed toward a bath composition for conducting electrodeposition with excellent corrosion resistance (pg. 1: abstract). Reinhard et al. (US Pub. No. 2003/0031583 A1 et al.) is directed toward corrosion inhibitors for various metal (abstract).
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) and the deposition of a soluble bismuth onto the metal substrate. Both actions of the polyhydric phenol compound meets the claim limitation of “present as an anticorrosion agent” given the description in Hosono et al. The polyhydric phenol compounds of Hosono et al. are similar to the chemical formulas in Claim 1 as indicated on page 3 of the disclosure with a preference for polyhydric phenols with two hydroxyl groups preferred. In particular, Hosono et al. indicates that 3,4-dihydroxybenzoic acid is one specific example of a polyhydric phenol compound (page 3) which satisfies R1 = hydrogen, and R2 = CO2 and R3 = R4 = H; however, the limitations of Formula (I) require R3/R4 is an alkyl group of 1 to 6 carbons long.
Reinhard et al. is directed towards materials that prevent corrosion of metals such as iron, aluminum, and zinc using aliphatic esters of dihydroxybenzoic acid (abstract). In ¶48, Reinhard indicates that the aliphatic esters of dihydroxybenzoic acids supports the stability of the passive oxide layers, thus preventing corrosion. Reinhard et al. specifically teaches that the aliphatic esters of dihydroxybenzoic acid are 3,4-hydroxybenzoic acid methyl ester or ethyl esters and are provided in the corrosion inhibiting composition according to Claim 10 (of Reinhard et al.). In the case of the aforementioned aliphatic esters of Reinhard et al., the structure of formula (I) would have R1 = hydrogen, and R2 = CO2 and R3 = R4 = methyl (C1) or ethyl (C2), which would satisfy the limits of Claim 1.
A prima facie case of obviousness exists when compounds have close structural similarity as is the case with 3,4-dihydroxybenzoic acid in Hosono et al. and 3,4-dihydroxybenzoic acid (m)ethyl ester of Reinhard, and it is reasonable to expect these chemicals to have similar chemical and physical properties, Additionally, both Hosono et al. and Reinhard et al. indicate these benzoic acid derivatives are useful for corrosion prevention of coated metallic substrates. See MPEP 2144.09(I) - REJECTION BASED ON CLOSE STRUCTURAL SIMILARITY IS FOUNDED ON THE EXPECTATION THAT COMPOUNDS SIMILAR IN STRUCTURE WILL HAVE SIMILAR PROPERTIES.
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 corrosion preventing electrodepositable composition of Hosono et al. with the aliphatic esters of 3,4-dihydroxybenzoic acid of Reinhard with the reasonable expectation of yielding predictable results of maintaining the corrosion resistance of the electrodeposited coating.
Regarding Claim 3, Hosono et al. in view of Reinhard 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 Reinhard 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, Hosono et al. in view of Reinhard et al. discloses the electrodepositable coating material according to Claim 1, wherein the compound of formula (I) is protocatechuic acid esters, such as 3,4-dihydroxybenzoic acid methyl ester or ethyl ester (Claim 10 in Reinhard et al.).
Regarding Claim 6, Hosono et al. in view of Reinhard et al. discloses the electrodepositable coating material according to Claim 5, wherein the compound of formula (I) is 3,4-dihydroxybenzoic acid ethyl ester (Claim 10 in Reinhard et al.).
Regarding Claim 7, Hosono et al. in view of Reinhard 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 Reinhard et al. discloses the electrodepositable coating material according to Claim 1, wherein the compound 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.).
Regarding Claim 9, Hosono et al. in view of Reinhard 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 Reinhard 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 Reinhard 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 Reinhard 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 Reinhard 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; wherein the electrodepositable coating material is aqueous and has a pH value in a range from 4.0 to 6.5.
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 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.” The polyhydric phenol compounds of Hosono et al. are similar to the chemical formulas in Claim 14 as indicated on page 3 of the disclosure with a preference for polyhydric phenols with two hydroxyl groups preferred. In particular, Hosono et al. indicates that 3,4-dihydroxybenzoic acid is one specific example of a polyhydric phenol compounds (page 3) which satisfies R1 = hydrogen, and R2 = CO2 and R3 = R4 = H; however, the limitations of Formula (I) require R3/R4 is an alkyl group of 1 to 6 carbons long.
Reinhard et al. is directed towards materials that prevent corrosion of metals such as iron, aluminum, and zinc using aliphatic esters of dihydroxybenzoic acid (abstract). In ¶48, Reinhard indicates that the aliphatic esters of dihydroxybenzoic acids supports the stability of the passive oxide layers by preventing further corrosion. Reinhard et al. specifically teaches that the aliphatic esters of dihydroxybenzoic acid are 3,4-hydroxybenzoic acid methyl ester or ethyl esters and are provided in the corrosion inhibiting composition according to Claim 10. In the case of the aforementioned aliphatic esters of Reinhard et al., the structure of formula (I) would have R1 = hydrogen, and R2 = CO2 and R3 = R4 = methyl (C1) or ethyl (C2), which would satisfy the limits of Claim 14.
A prima facie case of obviousness exists when compound have close structural similarity as is the case with 3,4-dihydroxybenzoic acid in Hosono et al. and 3,4-dihydroxybenzoic acid (m)ethyl ester of Reinhard, and it is reasonable to expect these chemicals have similar properties, Additionally, both Hosono et al. and Reinhard et al. indicates these chemical species (e.g.: benzoic acid-derivatives) are useful for corrosion prevention of coated metallic substrates. See MPEP 2144.09(I) - REJECTION BASED ON CLOSE STRUCTURAL SIMILARITY IS FOUNDED ON THE EXPECTATION THAT COMPOUNDS SIMILAR IN STRUCTURE WILL HAVE SIMILAR PROPERTIES.
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. with the aliphatic esters of 3,4-dihydroxybenzoic acid of Reinhard with the reasonable expectation of yielding predictable results of maintaining the method of providing corrosion resistance by the use of an electrodeposited coating.
Regarding Claim 15, Hosono et al. in view of Reinhard et al. discloses a coated metallic substrate obtained by the method according to Claim 9 as discussed in on page 12.
Regarding Claim 16, Hosono et al. in view of Reinhard 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).
6. Claims 1, 3, 4, 7, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Hosono et al. in view of Affrossman et al.
Hosono et al. (JP2017082260A) is directed toward a bath composition for conducting electrodeposition with excellent corrosion resistance (pg. 1: abstract). Affrossman et al. (“Molecular design for inhibition of titanium corrosion in resist cleaner systems,” Corrosion Sci. 2001, 43, 939-950) is directed toward catechol and pyrogallols as corrosion inhibitors (pg. 939: abstract).
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 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) and the deposition of a soluble bismuth onto the metal substrate. Both actions of the polyhydric phenol compound meets the claim limitation of “present as an anticorrosion agent.” The polyhydric phenol compounds of Hosono et al. are similar to the chemical formulas in Claim 1 as indicated on page 3 of the disclosure with a preference for polyhydric phenols with two hydroxyl groups preferred. In particular, Hosono et al. indicates that 4-ethylcatechol is one specific example of a polyhydric phenol compound (page 3) which satisfies R1 = hydrogen, and R2 = CH2CH2 and R3 = R4 = H; however, the limitations of Formula (I) require R3/R4 is an alkyl group of 1 to 6 carbons long.
Affrossman et al. is directed towards materials that prevent corrosion of metals such as titanium by using catechol derivatives (pg. 939: abstract). Affrossman et al. synthesized a series of para-substituted alkyl catechols where the R group is propyl or hexyl among others (pg. 940-941: 2.1. Materials and 2.2 Synthesis). Affrossman et al. indicated that the 4-substitued catechols will adsorb to the surface of metals or metal oxides at elevated pH values, which are the conditions under cathodic electrodeposition. During cathodic electrodeposition, the pH at the surface of the cathode increases as protons are reduced to form H2 gas leaving an excess of hydroxide at the substrate solution interface, which would deprotonate 4-alkyl catechols allowing them to bind to the metallic substrate surface and provided corrosion resistance as indicated on pg. 944-945 of Affrossman et al. (3.3 Adsorption of catechols). Affrossman et al. further found that increasing the chain length of the alkyl group of the 4-substituted catechol generally improved the corrosion resistance (i.e.: hexyl > propyl) as per Fig. 7 (pg. 947). In the case of the aforementioned 4-substitued catechols derivatives of Affrossman et al., the structure of formula (I) would have R1 = hydrogen, and R2 = CH2CH2 and R3 = R4 = methyl (C1) or butyl (C4), which would satisfy the limits of Claim 1.
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 corrosion preventing electrodepositable composition of Hosono et al. by replacing 4-ethylcatechol with 4-propyl or 4-hexyl catechol of Affrossman et al. with the reasonable expectation improving the corrosion resistance of the electrodeposited coating layer since Affrossman et al. showed that increased carbon chain length at the 4-position of catechol improves corrosion protection (i.e.: ethyl < propyl < hexyl).
Regarding Claim 3, Hosono et al. in view of Affrossman 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 Affrossman 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 7, Hosono et al. in view of Affrossman 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 Affrossman et al. discloses the electrodepositable coating material according to Claim 1, wherein the compound 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.).
Response to Arguments
7. Applicant’s arguments with respect to Claims 1, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, and 16 have been considered, but are not persuasive. As a result, the previous rejection is maintained.
8. The rejection has been maintained for the following reasons explained below. Pertaining to the applicant’s argument on pg. 6-8 of their response pertaining to Hosono et al., the examiner does not find the arguments persuasive. The applicant has argued that Hosono et al. comprises bismuth and Claim 1 does not; however, the opened ended language of Claim 1 (i.e.: comprising) does not exclude the inclusion of materials listed in the prior art. Additionally, Hosono et al. describes multiple types of polyhydroxy compounds with both electron-donating (i.e.: methoxy) and electron-withdrawing groups (i.e.: nitro) that act as anticorrosion agents. As explained above, 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) and the deposition of a soluble bismuth onto the metal substrate. Both actions of the polyhydric phenol compound meets the claim limitation of “present as an anticorrosion agent” given the description in Hosono et al. Moreover, dihydroxy phenyl compounds are well-known corrosion inhibitors often used in the art of substrate or metal protection.
9. Pertaining to the arguments about combining Reinhard et al. with Hosono et al. on pg. 9 of the applicant’s response, the examiner does not find these convincing. Reinhard et al. describes multiple types of polyhydroxy phenyl compounds as corrosion inhibitors. Since these materials also have a range of electron-donating or electron-withdrawing groups and still function as corrosion inhibitors, one of ordinary skill in the art could reasonably combine Reinhard et al. and Hosono et al.
10. The applicant has argued that the teachings of Affrossman et al. are only relevant at a pH of 10 in an alkaline cleaner on ph. 9-10 of their response. However, the examiner does not find this argument persuasive since cationic electrodeposition generates a highly alkaline interfacial gradient near the substrate surface and the bulk electrocoat with a pH approaching an alkaline cleaner. In fact, this pH gradient is what drives the deposition of the electrocoat bath components including polyhydroxy phenol compound used in the instant application. Therefore, the examiner finds that Affrossman et al. is germane to the teachings of Hosono et al. in particular during the electrodeposition process.
Conclusion
11. 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.
12. 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
/JAMES LIN/Supervisory Patent Examiner, Art Unit 1794
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