DETAILED ACTION
This is in response to communication received on 10/14/25.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The text of those sections of AIA 35 U.S.C. code not present in this action can be found in previous office actions dated 1/13/25, and 6/12/25.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/14/25 has been entered.
Claim Rejections - 35 USC § 103
The claim rejection(s) under AIA 35 U.S.C. 103 as being obvious over Jennings et al. US Patent Number 9,435,036 hereinafter JENNINGS in view of Carey, II et al. US PGPub 2003/0079811 hereinafter CAREY and Alkhaldi et al. US PGpub 2018/0305825 hereinafter ALKHALDI on claims 34-35, 38-54, 57-59 are maintained. The rejection is updated below to meet the added claim limitations.
As for claim 34, JENNINGS teaches the following: "The present disclosure provides for a metal product comprising a metal surface, an oxide layer and a glass layer. The glass layer is provided by coating a stable aqueous silicate or borosilicate solution onto the metal surface and curing the aqueous solution to produce a glass layer" (abstract, lines 2-7). This is analogous to a process for preparing a coated metal or metal alloy product.
JENNINGS further teaches the following: "Preferably, the layered product still further includes a substrate, carrying the aluminum oxide layer, selected from the group consisting of aluminum, an aluminum alloy, and stainless steel" (column 4, lines 3- 6).This is analogous to providing a metal substrate selected from aluminum, an aluminum alloy, titanium, a titanium alloy, or stainless steel.
JENNINGS further teaches the following: "a coated-aluminum- oxide layer by applying an aqueous silicate solution to an aluminum oxide layer ... and thereafter, polymerizing and curing a silicate glass on the sealed, anodized-aluminum layer by (A) heating the coated, anodized- aluminum layer to a temperature of about 200° C. to about 500° C. or (B) exposing the coated, anodized-aluminum layer to an infrared source" (column 10, lines 5-19). This is analogous to applying a coating of an aqueous silicate solution to the metal substrate oxide layer; and curing the applied coating on the oxide layer to provide a silicate coating layer by: a) heating the coated, passive layer to a temperature range that overlaps with of at least 200 °C; or b) exposing the coated, passive layer to an infrared source. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d, 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
JENNINGS is silent on the formation of the aluminum oxide layer prior to the application of the silicate being performed by the following steps: removing an existing oxide layer from the metal substrate by pickling, mechanical cleaning, or a combination thereof; forming a new oxide layer on the surface of the metal substrate by contacting the metal substrate with a passivating solution comprising an acid selected from the group consisting of nitric acid, sulfuric acid, phosphoric acid, citric acid, hydrogen peroxide, sodium dichromate, or any combination thereof, and/or exposing the metal substrate to a gaseous oxidizing environment for a period of time of up to 48 hours.
JENNINGS further silent on wherein the existing oxide layer is removed from the metal substrate by pickling using an acidic pickling solution comprising 10% - 20% v/v (150 g/L - 300 g/L) of 70% nitric acid and from 1 % to 2% v/v (12 g/L - 24 g/L) of 60% hydrofluoric acid.
However JENNINGs does teach the substrate having an aluminum oxide layer onto which the silicate layer is applied, as quoted above, and that "the electrochemical formation of oxide layers on aluminum is well-known and widely used industrial procedure to produce protective and/or decorative coating on aluminum and/or aluminum alloys" ( column 1, lines 18-21 ).
JENNINGS also discusses that its aluminum oxide layer being formed is of a particular crystal orientation and grown with specific methods (see column 10, line 55 - column 11, line 7).
CAREY further teaches the following: "In accordance with a further aspect of the invention, the base metal is made of aluminum, aluminum alloys, nickel alloys, tin, titanium, or titanium alloys" (paragraph 45, lines 1-3).
CAREY further teaches “Metal strips, such as, but not limited to, carbon steel, stainless steel, copper, copper alloys, aluminum and aluminum alloys, oxidize when exposed to the atmosphere… Over a period of time, the oxidized metal strip begins to weaken and disintegrate.” (paragraph 145, lines 1-6), i.e. wherein oxidation happens naturally when exposed to atmosphere.
CAREY goes on to teach “The pickling process is designed to remove a very thin surface layer from the base metal. The removal of the thin layer from the base metal results in the partial or total removal of oxides and/or other foreign matter from the base metal surface. The removal of the thin surface layer from the base metal causes slight etching of the base metal surface which results in the formation of microscopic valleys on the base metal surface. These microscopic valleys increase the surface area to which the metal alloy and/or intermediate barrier metal layer can bond thereby facilitating in the formation of a stronger bond between the base metal and the metal alloy and/or intermetallic barrier metal layer" (paragraph 50, lines 1-12). This is analogous to removing an existing oxide layer from the metal substrate by pickling.
It would have been obvious to one of ordinary skill in the art prior to the effective
filing date to have removing an existing oxide layer from the metal substrate by pickling in the process of JENNINGS prior to the application of the aluminum oxide, because CAREY teaches that such a process does not only remove oxides generated by the atmosphere that are undesirable but also improves bonding to further layers by forming pitting and microscopic valleys on the surface.
CAREY further teaches that following: "pickling solution typically contains one or more acids. The acids include organic and/or inorganic acids. Such acids include, but are not limited to, perchloric acid, hydrofluoric acid, sulfuric acid, nitric acid, hydrochloric acid, phosphoric acid, and/or isobromic acid" (paragraph 150, lines 16-21). Where, in CAREY, there is an embodiment wherein there are two acids and those acids are nitric acid and hydrofluoric acid which are taught as a combination such that it teaches all combinations of the two acids, i.e. a range that overlaps with wherein the acidic pickling solution comprises 10% - 20% v/v (150 g/L-300 g/L) of 70% nitric acid and from 1% to 2% v/v (12 g/L - 24 g/L) of 60% hydrofluoric acid. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d, 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
CAREY further teaches the following: "Metal strip 12 is typically not exposed to the pickling solution for more than about 10 minutes so as to avoid pitting of the metal strip surface; however, longer pickling times can be used depending on the type of pickling solution, concentration and temperature of the pickling solution, type of metal strip, and/or condition of metal strip surface" (paragraph 150, lines 45-51 ). This establishes that the concentration of the pickling solution is a result effective variable.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have removing an existing oxide layer from the metal substrate by pickling wherein the pickling solution comprises nitric acid and/or hydrofluoric acid in a range that overlaps with wherein the acidic pickling solution comprises 10% - 20% v/v (150 g/L-300 g/L) of 70% nitric acid and from 1 % to 2% v/v (12 g/L - 24 g/L) of 60% hydrofluoric acid in the process of JENNINGS prior to the application of the aluminum oxide, because CAREY teaches that such a process does not only remove oxides but also improves bonding to further layers by forming pitting and microscopic valleys on the surface.
In the alternative, CAREY establishes that the concentration of the pickling solution effects the time required to form pits without overexposure as shown above. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date to design the concentrations of the acids in the pickling solution such that the desired pickling results is achieved. Discovery of optimum value of result effective variable in known process is ordinarily within the skill of the art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
CAREY further teaches the following: "Once the desired amount of metal alloy coating is removed, the exposed heat created intermetallic layer is typically passivated to enhance the corrosion-resistance of the intermetallic layer. The intermetallic layer is generally passivated by a passivating solution" (paragraph 175, lines 1-5).
ALKHALDI teaches the following: "A method for inhibiting corrosion on a steel surface" (abstract, line 1 ).
ALKHALDI further teaches the following: "Steel passivation involves the formation of a passive film on the steel surface to protect against corrosion. Passivation may occur naturally, where an oxide layer naturally forms on the surface of steel. In other cases, the formation of an oxide layer may be assisted by acid treatment, such as with a solution of nitric acid, nitric acid with sodium dichromate, or citric acid" (paragraph 90, lines 1-7), i.e. forming a new oxide layer on the surface of the metal substrate by contacting the metal substrate with a passivating solution comprising an acid selected from the group consisting of nitric acid, sulfuric acid, phosphoric acid, citric acid, hydrogen peroxide, sodium dichromate, or any combination thereof, and/or exposing the metal substrate to a gaseous oxidizing environment for a period of time of up to 48 hours.
It would have been obvious to one of ordinary skill in the art before the effective filing date to include a step of forming a new oxide layer on the surface of the metal substrate by contacting the metal substrate with a passivating solution comprising an acid selected from the group consisting of nitric acid, sulfuric acid, phosphoric acid, citric acid, hydrogen peroxide, sodium dichromate, or any combination thereof, and/or exposing the metal substrate to a gaseous oxidizing environment for a period of time of up to 48 hours in the process of JENNINGS because CAREY and ALKHALDI teach that such a process forms a corrosion resistant oxide layer onto the surface of the substrates taught by JENNINGS to thereby form an aluminum oxide layer as required by JENNINGS.
As for claim 35, JENNINGS teaches the following: "a composition that includes a ratio of SiO2 to M2O of about 3.5 to about 2, where Mis selected from Li, Na, K, and a mixture thereof, and a ratio of SiO2 to B2O3 of about 10: 1 to about 200: 1" ( column 10, lines 11-14), which is wherein the aqueous silicate solution comprises SiO2, M2O, and optionally B2Q3, wherein M is selected from Li, Na, K, and a mixture thereof.
As for claim 38, JENNINGS is silent on further comprising a step of washing the metal substrate prior to applying the coating of aqueous silicate solution. CAREY teaches the following: "In yet another embodiment of the invention, the oxidation solution and/or passivation solution is rinsed off the coated base metal after the formation of the passivation layer" (paragraph 76, lines 24-27).
ALKHALDI further teaches the following: "Steel passivation involves the formation of a passive film on the steel surface to protect against corrosion. Passivation may occur naturally, where an oxide layer naturally forms on the surface of steel. In other cases, the formation of an oxide layer may be assisted by acid treatment, such as with a solution of nitric acid, nitric acid with sodium dichromate, or citric acid" (paragraph 90, lines 1-7).
It would have been obvious to one of ordinary skill in the art before the effective filing date to include the step of further comprising a step of washing the metal substrate prior to applying the coating of aqueous silicate solution in the process of JENNINGS because CAREY teaches that such a step is a part of forming a passivation layer with acid and that such a process forms a corrosion resistant oxide layer onto the surface of the substrates taught by JENNINGS to thereby form an aluminum oxide layer as required by JENNINGS.
As for claim 41, JENNINGS is silent on wherein the existing oxide layer is removed from the metal substrate by pickling.
CAREY further teaches that following: "pickling solution typically contains one or more acids. The acids include organic and/or inorganic acids. Such acids include, but are not limited to, perchloric acid, hydrofluoric acid, sulfuric acid, nitric acid, hydrochloric acid, phosphoric acid, and/or isobromic acid" (paragraph 150, lines 16-21 ). Where, in CAREY, there is an embodiment wherein there are two acids and those acids are nitric acid and hydrofluoric acid which are taught as a combination such that it teaches all combinations of the two acids, i.e. a range that overlaps with wherein the acidic pickling solution comprises 15% v/v (225 g/L) of 70% nitric acid and 1.5% v/v (18 g/L) of 60% hydrofluoric acid. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d, 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
CAREY further teaches the following: "Metal strip 12 is typically not exposed to the pickling solution for more than about 10 minutes so as to avoid pitting of the metal strip surface; however, longer pickling times can be used depending on the type of pickling solution, concentration and temperature of the pickling solution, type of metal strip, and/or condition of metal strip surface" (paragraph 150, lines 45-51 ). This establishes that the concentration of the pickling solution is a result effective variable.
CAREY further teaches that following: "The pickling process is designed to remove a very thin surface layer from the base metal. The removal of the thin layer from the base metal results in the partial or total removal of oxides and/or other foreign matter from the base metal surface. The removal of the thin surface layer from the base metal causes slight etching of the base metal surface which results in the formation of microscopic valleys on the base metal surface. These microscopic valleys increase the surface area to which the metal alloy and/or intermediate barrier metal layer can bond thereby facilitating in the formation of a stronger bond between the base metal and the metal alloy and/or intermetallic barrier metal layer" (paragraph 50, lines 1-12).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have wherein the acidic pickling solution comprises 15% v/v (225 g/L) of 70% nitric acid and 1.5% v Iv ( 18 g/L) of 60% hydrofluoric acid in the process of JENNINGS prior to the application of the aluminum oxide, because CAREY teaches that such a process does not only remove undesired oxides but also improves bonding to further layers by forming pitting and microscopic valleys on the surface.
In the alternative, CAREY establishes that the concentration of the pickling solution effects the time required to form pits without overexposure as shown above. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date to design the concentrations of the acids in the pickling solution such that the desired pickling results is achieved. Discovery of optimum value of result effective variable in known process is ordinarily within the skill of the art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
As for claim 42, JENNINGS is silent on wherein the existing oxide layer is removed from the metal substrate by pickling.
CAREY further teaches that following: "pickling solution typically contains one or more acids. The acids include organic and/or inorganic acids. Such acids include, but are not limited to, perchloric acid, hydrofluoric acid, sulfuric acid, nitric acid, hydrochloric acid, phosphoric acid, and/or isobromic acid" (paragraph 150, lines 16-21 ). Where, in CAREY, there is an embodiment wherein there are two acids and those acids are nitric acid and hydrofluoric acid which are taught as a combination such that it teaches all combinations of the two acids, i.e. a range that overlaps with wherein the acidic pickling solution has a nitric acid to hydrofluoric acid percentage ratio of 10: 1. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d, 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
CAREY further teaches the following: "Metal strip 12 is typically not exposed to the pickling solution for more than about 10 minutes so as to avoid pitting of the metal strip surface; however, longer pickling times can be used depending on the type of pickling solution, concentration and temperature of the pickling solution, type of metal strip, and/or condition of metal strip surface" (paragraph 150, lines 45-51 ). This establishes that the concentration of the pickling solution is a result effective variable.
CAREY further teaches that following: "The pickling process is designed to remove a very thin surface layer from the base metal. The removal of the thin layer from the base metal results in the partial or total removal of oxides and/or other foreign matter from the base metal surface. The removal of the thin surface layer from the base metal causes slight etching of the base metal surface which results in the formation of microscopic valleys on the base metal surface. These microscopic valleys increase the surface area to which the metal alloy and/or intermediate barrier metal layer can bond thereby facilitating in the formation of a stronger bond between the base metal and the metal alloy and/or intermetallic barrier metal layer" (paragraph 50, lines 1-12).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have removing an existing oxide layer from the metal substrate by pickling wherein the pickling solution comprises nitric acid and/or hydrofluoric acid in a range that overlaps with wherein the acidic pickling solution has a nitric acid to hydrofluoric acid percentage ratio of 10:1 in the process of JENNINGS prior to the application of the aluminum oxide, because CAREY teaches that such a process does not only remove undesired oxides but also improves bonding to further layers by forming pitting and microscopic valleys on the surface.
In the alternative, CAREY establishes that the concentration of the pickling solution effects the time required to form pits without overexposure as shown above. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date to design the concentrations of the acids in the pickling solution such that the desired pickling results is achieved. Discovery of optimum value of result effective variable in known process is ordinarily within the skill of the art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
As for claim 43, JENNINGS is silent on wherein the existing oxide layer is removed from the metal substrate by pickling.
CAREY teaches the following: "Typically, pickling solution 32 is maintained at a temperature of at least about 26° C., generally about 48-60° C., and typically about 53- 56° C" (paragraph 150, lines 34-37). This is a range that overlaps with wherein the pickling is carried out ... at a temperature of at least 15°C.
CAREY teaches the following: "Typically, the pickling time is less than about ten minutes, more typically less than about two minutes, still more typically less than about one minute, and yet more typically about 10-20 seconds. (paragraph 150, lines 53-56). This is a range that overlaps with wherein the pickling is carried out for at least 1 minute. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d, 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
CAREY further teaches that following: "The pickling process is designed to remove a very thin surface layer from the base metal. The removal of the thin layer from the base metal results in the partial or total removal of oxides and/or other foreign matter from the base metal surface. The removal of the thin surface layer from the base metal causes slight etching of the base metal surface which results in the formation of microscopic valleys on the base metal surface. These microscopic valleys increase the surface area to which the metal alloy and/or intermediate barrier metal layer can bond thereby facilitating in the formation of a stronger bond between the base metal and the metal alloy and/or intermetallic barrier metal layer" (paragraph 50, lines 1-12).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have removing an existing oxide layer from the metal substrate by pickling wherein the pickling solution comprises nitric acid and/or hydrofluoric acid in a range that overlaps wherein the pickling is carried out for at least 1 minute at a temperature of at least 15°C in the process of JENNINGS prior to the application of the aluminum oxide, because CAREY teaches that such a process does not only remove undesired oxides but also improves bonding to further layers by forming pitting and microscopic valleys on the surface.
As for claim 44, JENNINGS is silent on passivating.
CAREY further teaches the following: "Once the desired amount of metal alloy coating is removed, the exposed heat created intermetallic layer is typically passivated to enhance the corrosion-resistance of the intermetallic layer. The intermetallic layer is generally passivated by a passivating solution" (paragraph 175, lines 1-5).
ALKHALDI teaches the following: "A method for inhibiting corrosion on a steel surface" (abstract, line 1 ).
ALKHALDI further teaches the following: "Steel passivation involves the formation of a passive film on the steel surface to protect against corrosion. Passivation may occur naturally, where an oxide layer naturally forms on the surface of steel. In other cases, the formation of an oxide layer may be assisted by acid treatment, such as with a solution of nitric acid, nitric acid with sodium dichromate, or citric acid" (paragraph 90, lines 1-7).
CAREY further teaches the following: "One type of passivating solution includes a nitrogen containing solution and/or a chromium solution such as, but not limited to, nitric acid and/or chromate acid" (paragraph 175, lines 5-8) and "By increasing the concentration and/or temperature of the passivation solution, the time needed to at least partially passivate the exposed heat created intermetallic layer is shortened. The amount of time to passivate the heat created intermetallic layer is generally less than about ten minutes, and typically about 0.02-1.5 minutes; however, longer times can be used" (paragraph 175, lines 35-41 ).
It would have been obvious to one of ordinary skill in the art before the effective filing date to design the concentration of the nitric acid such that the desired passivation is achieved during a specific period of time. Discovery of optimum value of result effective variable in known process is ordinarily within the skill of the art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
As for claim 45, JENNINGS is silent on the passivation.
CAREY teaches the following: "The temperature of the passivation solution is maintained at a temperature that provides sufficient activity of the passivation solution. Generally, the temperature of the passivation solution is maintained between about 15- 80° C., typically about 40-60° C" (paragraph 175, lines 31-35) and "The amount of time to passivate the heat created intermetallic layer is generally less than about ten minutes, and typically about 0.02-1 .5 minutes; however, longer times can be used" (paragraph 175, lines 38-41 ). These ranges overlap with wherein the passivation is conducted for at least 3 minutes at a temperature of between 15 °C and 80 °C. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d, 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have passivating in a range that overlaps wherein the passivation is conducted for at least 3 minutes at a temperature of between 15 °C and 80 °C in the process of JENNINGS prior to the application of the aluminum oxide, because CAREY teaches that such a step is a part of forming a passivation layer with acid and that such a process forms a corrosion resistant oxide layer onto the surface of the substrates taught by JENNINGS to thereby form an aluminum oxide layer as required by JENNINGS.
As for claim 46, JENNINGS is silent on passivating.
CAREY further teaches the following: "Once the desired amount of metal alloy coating is removed, the exposed heat created intermetallic layer is typically passivated to enhance the corrosion-resistance of the intermetallic layer. The intermetallic layer is generally passivated by a passivating solution" (paragraph 175, lines 1-5).
ALKHALDI teaches the following: "A method for inhibiting corrosion on a steel surface" (abstract, line 1 ).
ALKHALDI further teaches the following: "Steel passivation involves the formation of a passive film on the steel surface to protect against corrosion. Passivation may occur naturally, where an oxide layer naturally forms on the surface of steel. In other cases, the formation of an oxide layer may be assisted by acid treatment, such as with a solution of nitric acid, nitric acid with sodium dichromate, or citric acid" (paragraph 90, lines 1-7).
CAREY further teaches the following: "One type of passivating solution includes a nitrogen containing solution and/or a chromium solution such as, but not limited to, nitric acid and/or chromate acid" (paragraph 175, lines 5-8) and "By increasing the concentration and/or temperature of the passivation solution, the time needed to at least partially passivate the exposed heat created intermetallic layer is shortened. The amount of time to passivate the heat created intermetallic layer is generally less than about ten minutes, and typically about 0.02-1.5 minutes; however, longer times can be used" (paragraph 175, lines 35-41 ).
It would have been obvious to one of ordinary skill in the art before the effective filing date to design the concentration of the nitric acid such that the desired passivation is achieved during a specific period of time. Discovery of optimum value of result effective variable in known process is ordinarily within the skill of the art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
CAREY teaches the following: "The temperature of the passivation solution is maintained at a temperature that provides sufficient activity of the passivation solution. Generally, the temperature of the passivation solution is maintained between about 15- 80° C., typically about 40-60° C" (paragraph 175, lines 31-35) and "The amount of time to passivate the heat created intermetallic layer is generally less than about ten minutes, and typically about 0.02-1 .5 minutes; however, longer times can be used" (paragraph 175, lines 38-41 ). These ranges overlap with wherein the step of chemical passivation is conducted for at least 20 minutes at a temperature of from 15 °C to 60 °C. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F .3d 1465, 1469-71, 43 US PQ2d, 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have passivating in a range that overlaps wherein the step of chemical passivation is conducted for at least 20 minutes at a temperature of from 15 °C to 60 °C in the process of JENNINGS prior to the application of the aluminum oxide, because CAREY teaches that such a step is a part of forming a passivation layer with acid and that such a process forms a corrosion resistant oxide layer onto the surface of the substrates taught by JENNINGS to thereby form an aluminum oxide layer as required by JENNINGS.
As for claim 47, CAREY further teaches the following: "Once the desired amount of metal alloy coating is removed, the exposed heat created intermetallic layer is typically passivated to enhance the corrosion-resistance of the intermetallic layer. The intermetallic layer is generally passivated by a passivating solution" (paragraph 175, lines 1-5).
ALKHALDI teaches the following: "A method for inhibiting corrosion on a steel surface" (abstract, line 1 ).
ALKHALDI further teaches the following: "Steel passivation involves the formation of a passive film on the steel surface to protect against corrosion. Passivation may occur naturally, where an oxide layer naturally forms on the surface of steel. In other cases, the formation of an oxide layer may be assisted by acid treatment, such as with a solution of nitric acid, nitric acid with sodium dichromate, or citric acid" (paragraph 90, lines 1-7).
CAREY further teaches the following: "One type of passivating solution includes a nitrogen containing solution and/or a chromium solution such as, but not limited to, nitric acid and/or chromate acid" (paragraph 175, lines 5-8) and "By increasing the concentration and/or temperature of the passivation solution, the time needed to at least partially passivate the exposed heat created intermetallic layer is shortened. The amount of time to passivate the heat created intermetallic layer is generally less than about ten minutes, and typically about 0.02-1.5 minutes; however, longer times can be used" (paragraph 175, lines 35-41 ).
It would have been obvious to one of ordinary skill in the art before the effective filing date to design the concentration of the citric acid such that the desired passivation is achieved during a specific period of time. Discovery of optimum value of result effective variable in known process is ordinarily within the skill of the art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
CAREY teaches the following: "The temperature of the passivation solution is maintained at a temperature that provides sufficient activity of the passivation solution. Generally, the temperature of the passivation solution is maintained between about 15- 80° C., typically about 40-60° C" (paragraph 175, lines 31-35) and "The amount of time to passivate the heat created intermetallic layer is generally less than about ten minutes, and typically about 0.02-1 .5 minutes; however, longer times can be used" (paragraph 175, lines 38-41 ). These ranges overlap with wherein the step of chemical passivation is conducted for at least 4 minutes at a temperature of from 15 °C to 70 °C. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F .3d 1465, 1469-71, 43 US PQ2d, 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have passivating in a range that overlaps wherein the step of chemical passivation is conducted for at least 4 minutes at a temperature of from 15 °C to 70 °C in the process of JENNINGS prior to the application of the aluminum oxide, because CAREY teaches that such a step is a part of forming a passivation layer with acid and that such a process forms a corrosion resistant oxide layer onto the surface of the substrates taught by JENNINGS to thereby form an aluminum oxide layer as required by JENNINGS.
As for claim 48, JENNINGS is silent on the passivating.
CAREY further teaches the following: "Once the desired amount of metal alloy coating is removed, the exposed heat created intermetallic layer is typically passivated to enhance the corrosion-resistance of the intermetallic layer. The intermetallic layer is generally passivated by a passivating solution" (paragraph 175, lines 1-5).
ALKHALDI teaches the following: "A method for inhibiting corrosion on a steel surface" (abstract, line 1 ).
ALKHALDI further teaches the following: "Steel passivation involves the formation of a passive film on the steel surface to protect against corrosion. Passivation may occur naturally, where an oxide layer naturally forms on the surface of steel. In other cases, the formation of an oxide layer may be assisted by acid treatment, such as with a solution of nitric acid, nitric acid with sodium dichromate, or citric acid" (paragraph 90, lines 1-7).
CAREY further teaches the following: "One type of passivating solution includes a nitrogen containing solution and/or a chromium solution such as, but not limited to, nitric acid and/or chromate acid" (paragraph 175, lines 5-8) and "By increasing the concentration and/or temperature of the passivation solution, the time needed to at least partially passivate the exposed heat created intermetallic layer is shortened. The amount of time to passivate the heat created intermetallic layer is generally less than about ten minutes, and typically about 0.02-1.5 minutes; however, longer times can be used" (paragraph 175, lines 35-41 ).
It would have been obvious to one of ordinary skill in the art before the effective filing date to design the concentration of the citric acid such that the desired passivation is achieved during a specific period of time. Discovery of optimum value of result effective variable in known process is ordinarily within the skill of the art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
CAREY teaches the following: "The temperature of the passivation solution is maintained at a temperature that provides sufficient activity of the passivation solution. Generally, the temperature of the passivation solution is maintained between about 15- 80° C., typically about 40-60° C" (paragraph 175, lines 31-35) and "The amount of time to passivate the heat created intermetallic layer is generally less than about ten minutes, and typically about 0.02-1 .5 minutes; however, longer times can be used" (paragraph 175, lines 38-41 ). These ranges overlap with wherein the step of chemical passivation is carried out using: e) ... citric acid solution at temperature 60 °C - 70°C for a minimum of 4 minutes. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d1934 (Fed.Cir.1990); In re Geisler, 116F.3d 1465, 1469-71, 43USPQ2d, 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have passivating in a range that overlaps wherein the step of chemical passivation is carried out using: e) ... citric acid solution at temperature 60 °C - 70°C for a minimum of 4 minutes in the process of JENNINGS prior to the application of the aluminum oxide, because CAREY teaches that such a step is a part of forming a passivation layer with acid and that such a process forms a corrosion resistant oxide layer onto the surface of the substrates taught by JENNINGS to thereby form an aluminum oxide layer as required by JENNINGS.
As for claim 49, JENNINGS, and CAREY are silent on wherein the step of forming a new oxide layer on the surface of the metal substrate comprises exposing the metal substrate to a gaseous oxidizing environment for about 10 to about 120 minutes at a temperature of from about 15 °C to about 25 °C.
However, ALKHALDI does teach the following: "Steel passivation involves the formation of a passive film on the steel surface to protect against corrosion. Passivation may occur naturally, where an oxide layer naturally forms on the surface of steel. In other cases, the formation of an oxide layer may be assisted by acid treatment, such as with a solution of nitric acid, nitric acid with sodium dichromate, or citric acid" (paragraph 90, lines 1-7). Examiner notes here that the 'natural' appears to be referencing ambient conditions which a gaseous oxidizing environment at room temperature which falls within about 15°C to about 25°C.
ALKHALDI is silent on the time of exposure. However, Examiner notes that it would be well within the skill of the ordinary artisan to design the time exposure to the oxidizing environment to achieve the desired oxidized layer. Discovery of optimum value of result effective variable in known process is ordinarily within the skill of the art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have passivating in a range that overlaps wherein the step of forming a new oxide layer on the surface of the metal substrate comprises exposing the metal substrate to a gaseous oxidizing environment for about 10 to about 120 minutes at a temperature of from about 15 °C to about 25 °C in the process of JENNINGS prior to the application of the aluminum oxide, because ALKHALDI and CAREY teach that such a step is a part of forming a passivation layer with acid and that such a process forms a corrosion resistant oxide layer onto the surface of the substrates taught by JENNINGS to thereby form an aluminum oxide layer as required by JENNINGS.
As for claim 50, JENNINGS teaches the following: "the aqueous silicate solution having a pH of about 11 to about 13, a com position that includes a ratio of SiO2 to M 20 of about 3.5 to about 2, where Mis selected from Li, Na, K, and a mixture thereof, and a ratio of SiO2 to B2O3 of about 10:1 to about 200:1" (column 10, lines 10-14). These ranges overlap with wherein the aqueous silicate solution has a pH of from about 10 to about 13, comprises SiO2, M2O, and 8203, wherein Mis selected from Li, Na, K, or a mixture thereof, and has a ratio of SiO2 to M2O of from about 3.8 to about 2.0 and a ratio of SiO2 to 8203 of from about 10: 1 to about 200: 1.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d, 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
JENNINGS is silent on cleaning the surface of the metal substrate before removing the existing oxide layer;… wherein the oxide layer on the surface of the metal substrate comprises using a chemical passivating solution comprising nitric acid or citric acid and having a pH of about 1.
However JENNINGS does teach the substrate having an aluminum oxide layer onto which the silicate layer is applied, as quoted above, and that "the electrochemical formation of oxide layers on aluminum is well-known and widely used industrial procedure to produce protective and/or decorative coating on aluminum and/or aluminum alloys" ( column 1, lines 18-21 ).
CAREY further teaches the following: "In accordance with a further aspect of the invention, the base metal is made of aluminum, aluminum alloys, nickel alloys, tin, titanium, or titanium alloys" (paragraph 45, lines 1-3).
CAREY further teaches that following "The abrasion process, absorbent process and/or solvent or cleaning process are designed to remove foreign materials and/or oxides from the base metal surface" (paragraph 47, lines 1-3), i.e. cleaning the surface of the metal substrate.
It would have been obvious to one of ordinary skill in the art before the effective filing date to include cleaning the surface of the metal substrate in the process of JENNINGS because CAREY teaches that such a process removes foreign material from the surface of the substrate prior to treatment.
CAREY further teaches “Metal strips, such as, but not limited to, carbon steel, stainless steel, copper, copper alloys, aluminum and aluminum alloys, oxidize when exposed to the atmosphere… Over a period of time, the oxidized metal strip begins to weaken and disintegrate.” (paragraph 145, lines 1-6).
CAREY further teaches “the exposed heat created intermetallic layer is typically passivated to enhance the corrosion-resistance of the intermetallic layer. The intermetallic layer is generally passivated by a passivating solution. One type of passivating solution includes a nitrogen containing solution and/or a chromium solution such as, but not limited to, nitric acid and/or chromate acid. The passivation solution can be the same as or different from the oxidizing solution” (paragraph 175, lines 2-9), and “The passivation layer facilitates in inhibiting or preventing oxidation (i.e. white rust) of the outer metal layer” (paragraph 176, lines 4-6) i.e. wherein forming an oxide layer deliberately as a passivation layer avoids the formation of atmospheric oxide and wherein forming the oxide layer on the surface of the metal substrate comprises using a chemical passivating solution.
CAREY further teaches “The oxidizing solution typically includes an acid such as, but not limited to, nitric acid. When nitric acid is included in the oxidation solution, the nitric acid concentration is generally about 5%-60% by volume and typically about 10-25% by volume, more typically about 25% by volume, and even more typically about 20% by volume” (paragraph 174, lines 20-26), i.e. a range that appears to overlap with the chemical passivating solution comprising nitric acid… and having a pH of about 1. Examiner notes that it is well within the skill of the ordinary artisan to convert the volume percentage to a pH value. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d, 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art before the effective filing date to include wherein forming the oxide layer on the surface of the metal substrate comprises using a chemical passivating solution comprising nitric acid… and having a range that overlaps with a pH of about 1 in the process of JENNINGS because CAREY teaches that such coatings protect strips from atmospheric degradation and also teaches how to remove oxide layers to prepare a surface for later application of desired layers.
As for claim 51, JENNINGS teaches the following: "a coated-aluminum- oxide layer by applying an aqueous silicate solution to an aluminum oxide layer ... and thereafter, polymerizing and curing a silicate glass on the sealed, anodized-aluminum layer by (A) heating the coated, anodized- aluminum layer to a temperature of about 200° C. to about 500° C. or (B) exposing the coated, anodized-aluminum layer to an infrared source" ( column 10, lines 5-19). This overlaps with wherein the method comprises heating the coated, passive layer to a temperature of at least 230 °C. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d, 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
As for claim 53, JENNINGS is silent on passivating.
CAREY further teaches “the exposed heat created intermetallic layer is typically passivated to enhance the corrosion-resistance of the intermetallic layer. The intermetallic layer is generally passivated by a passivating solution. One type of passivating solution includes a nitrogen containing solution and/or a chromium solution such as, but not limited to, nitric acid and/or chromate acid. The passivation solution can be the same as or different from the oxidizing solution” (paragraph 175, lines 2-9), and “The passivation layer facilitates in inhibiting or preventing oxidation (i.e. white rust) of the outer metal layer” (paragraph 176, lines 4-6).
CAREY further teaches “The oxidizing solution typically includes an acid such as, but not limited to, nitric acid. When nitric acid is included in the oxidation solution, the nitric acid concentration is generally about 5%-60% by volume and typically about 10-25% by volume, more typically about 25% by volume, and even more typically about 20% by volume” (paragraph 174, lines 20-26), and “Generally, the temperature of the passivation solution is maintained between about 15-80° C., typically about 40-60° C” (paragraph 175, lines 33-35), i.e. ranges that overlap with wherein the passivating solution comprises 15% to 30% v/v of 70% nitric acid, and passivation is conducted for at least about 20 minutes and at a temperature of from about 15°C to about 60°C. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d, 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art before the effective filing date to include to form a passivation layer with a process that overlaps with wherein the passivating solution comprises 15% to 30% v/v of 70% nitric acid, and passivation is conducted for at least about 20 minutes and at a temperature of from about 15°C to about 60°C in the process of JENNINGS because CAREY teaches that such coatings protect strips from atmospheric degradation and also teaches how to remove oxide layers to prepare a surface for later application of desired layers.
As for claim 54, JENNINGS is silent on passivating.
CAREY further teaches “the exposed heat created intermetallic layer is typically passivated to enhance the corrosion-resistance of the intermetallic layer. The intermetallic layer is generally passivated by a passivating solution. One type of passivating solution includes a nitrogen containing solution and/or a chromium solution such as, but not limited to, nitric acid and/or chromate acid. The passivation solution can be the same as or different from the oxidizing solution” (paragraph 175, lines 2-9), and “The passivation layer facilitates in inhibiting or preventing oxidation (i.e. white rust) of the outer metal layer” (paragraph 176, lines 4-6).
CAREY further teaches “The oxidizing solution typically includes an acid such as, but not limited to, nitric acid. When nitric acid is included in the oxidation solution, the nitric acid concentration is generally about 5%-60% by volume and typically about 10-25% by volume, more typically about 25% by volume, and even more typically about 20% by volume” (paragraph 174, lines 20-26), and “Generally, the temperature of the passivation solution is maintained between about 15-80° C., typically about 40-60° C” (paragraph 175, lines 33-35), i.e. ranges that overlap with wherein the passivating solution comprises 1 % to 15% w/v of… acid, and passivation is conducted for at least about 4 minutes and at a temperature of from about 21 °C to about 70°C. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d, 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
CAREY is silent on critic acid.
ALKHALDI teaches the following: "A method for inhibiting corrosion on a steel surface" (abstract, line 1 ).
ALKHALDI further teaches the following: "Steel passivation involves the formation of a passive film on the steel surface to protect against corrosion. Passivation may occur naturally, where an oxide layer naturally forms on the surface of steel. In other cases, the formation of an oxide layer may be assisted by acid treatment, such as with a solution of nitric acid, nitric acid with sodium dichromate, or citric acid" (paragraph 90, lines 1-7).
It would have been obvious to one of ordinary skill in the art before the effective filing date to include to form a passivation layer with a process that overlaps with ranges of wherein the passivating solution comprises 1 % to 15% w/v of citric acid, and passivation is conducted for at least about 4 minutes and at a temperature of from about 21 °C to about 70°C in the process of JENNINGS because CAREY teaches that such coatings protect strips from atmospheric degradation and also teaches how to remove oxide layers to prepare a surface for later application of desired layers and ALKHALDI teaches that citric acid was a known alternative to the nitric acid of CAREY.
As for claim 57, JENNINGS teaches the following: "The silicate solution layer can have a thickness of about 0.1 μm to about 5 μm, about 0.5 μm to about 4 μm, or about 1 μm to about 3 μm" (column 12, lines 22-25).
JENNINGS further teaches the following: "Specifically, the aluminum oxide layer can have a thickness of less than about 50 microns, 40 microns, 30 microns, 25 microns, 20 microns, 10 microns, 5 microns, 4 microns, 3 microns, 2 microns, 1 micron, or 500 nm. Preferably, the aluminum oxide thickness is within a range of about 1 to about 30 microns, about 2 to about 25 microns, about 3 to about 20 microns, or about 5 to about 25 microns. In one particular example, the aluminum oxide layer has a thickness less than about 10 microns" (column 11, lines 54-63).
These ranges overlap with wherein the cured silicate coating layer has a thickness of less than 5 μm and/or the coated oxide layer prepared by the passivation has a thickness of less than about 50 μm. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d, 1362, 1365-66 (Fed. Cir.1997). See MPEP2144.05.
As for claim 58, JENNINGS further teaches prior to any process steps and thereby prior to removing an existing oxide layer "The aluminum form was degreased (alkaline)" (column 16, lines 45-46), i.e. wherein the method comprises a step of cleaning the surface of the metal substrate prior to removing an existing oxide layer, and the step of cleaning comprises removing any grease from the surface of the metal substrate.
As for claim 59, JENNINGS is silent on wherein the method comprises a step of cleaning the surface of the metal substrate, and the step of cleaning comprises an abrasive treatment of the surface of the metal substrate.
CAREY further teaches that following "The abrasion process, absorbent process and/or solvent or cleaning process are designed to remove foreign materials and/or oxides from the base metal surface" (paragraph 47, lines 1-3), i.e. cleaning the surface of the metal substrate.
It would have been obvious to one of ordinary skill in the art before the effective filing date to include wherein the method comprises a step of cleaning the surface of the metal substrate, and the step of cleaning comprises an abrasive treatment of the surface of the metal substrate in the process of JENNINGS because CAREY teaches that such a process removes foreign material from the surface of the substrate prior to treatment.
The claim rejection(s) under AIA 35 U.S.C. 103 as being obvious over Jennings et al. US Patent Number 9,435,036 hereinafter JENNINGS in view of Carey, II et al. US PGPub 2003/0079811 hereinafter CAREY and Alkhaldi et al. US PGpub 2018/0305825 hereinafter ALKHALDI on claims 39, 40 and 52 are withdrawn because the claims have been cancelled.
The claim rejection(s) under AIA 35 U.S.C. 103 as being obvious over Jennings et al. US Patent Number 9,435,036 hereinafter JENNINGS in view of Carey, II et al. US PGPub 2003/0079811 hereinafter CAREY and Alkhaldi et al. US PGpub 2018/0305825 hereinafter ALKHALDI as applied to claim 34 above, and further in view of Ritzenhoff et al. US PGPub 2013/0099422 hereinafter RITZENHOFF on claims 36-37 are maintained. The rejection is repeated below for convenience.
As for claim 36, JENNINGS, CAREY and ALKHALDI are silent on wherein the existing oxide layer is removed by abrasive blasting.
However, CAREY does teach the following: "In another embodiment of the invention, the pretreatment process includes, but is not limited to, an abrasion process" (paragraph 46, lines 11-13) and "The abrasion process, absorbent process and/or solvent or cleaning process are designed to remove foreign materials and/or oxides from the base metal surface" (paragraph 47, lines 1-3).
RITZENHOFF teaches "A method of at least partially removing at least one of a coating and a masking layer from an area of at least one part" (abstract, lines 1-2) wherein that part is aluminum (paragraph 1 ).
RITZENHOFF further teaches that following "Alternatively suitable, with little concern for less quality in the result of the layer removal, are removal systems based on the mechanical energy of water-jets (with or without the addition of abrasive media) or abrasive blasting (e.g. employing silica sand or aluminum oxide as abrasive medium in a controlled stream of high-pressure air or other gases), provided the stability in part position and orientation can be maintained against the impact of the media, or the chemical energy of certain material removal processes, as long as the residue of the process can be adequately captured and disposed of" (paragraph 73, lines 6-16). This is analogous to wherein the existing oxide layer is removed by abrasive blasting. It would have been obvious to one of ordinary skill in the art to include wherein the existing oxide layer is removed by abrasive blasting in the process of JENNINGS because CAREY teaches that abrasion processes were known for removing unwanted oxide layers and RITZENHOFF teaches that such abrasive blasting processes are alternatively suitable for removal of oxide layers. It is a prima facie case of obviousness to substitute one known element for another to obtain predictable results.
JENNINGS, and CAREY are silent on the new oxide layer is formed by exposing the metal substrate to air for up to about 48 hours.
However, ALKHALDI does teach the following: "Steel passivation involves the formation of a passive film on the steel surface to protect against corrosion. Passivation may occur naturally, where an oxide layer naturally forms on the surface of steel. In other cases, the formation of an oxide layer may be assisted by acid treatment, such as with a solution of nitric acid, nitric acid with sodium dichromate, or citric acid" (paragraph 90, lines 1-7).
Examiner notes here that the 'natural' appears to be referencing ambient condition, i.e. air.
ALKHALDI is silent on the time of exposure. However, Examiner notes that it would be well within the skill of the ordinary artisan to design the time exposure to the oxidizing environment to achieve the desired oxidized layer. Discovery of optimum value of result effective variable in known process is ordinarily within the skill of the art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have passivating in a range that overlaps the new oxide layer is formed by exposing the metal substrate to air for up to about 48 hours in the process of JENNINGS prior to the application of the aluminum oxide, because ALKHALDI and CAREY teach that such a step is a part of forming a passivation layer with acid and that such a process forms a corrosion resistant oxide layer onto the surface of the substrates taught by JENNINGS to thereby form an aluminum oxide layer as required by JENNINGS.
As for claim 37, JENNINGS, and CAREY are silent on wherein the new oxide layer is formed by exposing the metal substrate to air for up to about 24 hours.
However, ALKHALDI does teach the following: "Steel passivation involves the formation of a passive film on the steel surface to protect against corrosion. Passivation may occur naturally, where an oxide layer naturally forms on the surface of steel. In other cases, the formation of an oxide layer may be assisted by acid treatment, such as with a solution of nitric acid, nitric acid with sodium dichromate, or citric acid" (paragraph 90, lines 1-7). Examiner notes here that the 'natural' appears to be referencing ambient condition, i.e. air.
ALKHALDI is silent on the time of exposure. However, Examiner notes that it would be well within the skill of the ordinary artisan to design the time exposure to the oxidizing environment to achieve the desired oxidized layer. Discovery of optimum value of result effective variable in known process is ordinarily within the skill of the art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have passivating in a range that overlaps wherein the new oxide layer is formed by exposing the metal substrate to air for up to about 24 hours in the process of JENNINGS prior to the application of the aluminum oxide, because ALKHALDI and CAREY teach that such a step is a part of forming a passivation layer with acid and that such a process forms a corrosion resistant oxide layer onto the surface of the substrates taught by JENNINGS to thereby form an aluminum oxide layer as required by JENNINGS.
The claim rejection(s) under AIA 35 U.S.C. 103 as being obvious over Jennings et al. US Patent Number 9,435,036 hereinafter JENNINGS in view of Carey, II et al. US PGPub 2003/0079811 hereinafter CAREY and Alkhaldi et al. US PGpub 2018/0305825 hereinafter ALKHALDI as applied to claim 34 above, and further in view of Ritzenhoff et al. US PGPub 2013/0099422 hereinafter RITZENHOFF on claims 55-56 are withdrawn because the claims have been withdrawn.
Response to Arguments
Applicant's arguments filed 10/14/25 have been fully considered but they are not persuasive.
Applicant’s principal argument(s) is/are summarized and addressed below:
(a) Applicant maintains that the applied combination of references fails to disclose or suggest the claimed invention in which an existing oxide layer is removed by a substrate by pickling and then a new oxide is formed on the metal substrate.
Examiner notes that Applicant's arguments do not address the fact that the primary reference of JENNINGS explicitly teaches placing an oxide layer on the surface of the aluminum prior to application of the silicate. In fact, their arguments rely on the secondary references' teachings to supersede JENNINGS' plain teaching of a metal surface, an oxide layer and a glass layer.
This ignores one simple fact-- not all aluminum oxides are created equal and this is well known in the art. CAREY and JENNINGS establishes that fact. Specifically, CAREY teaches that oxides are generated by atmospheric exposure: "Metal strips, such as, but not limited to, carbon steel, stainless steel, copper, copper alloys, aluminum and aluminum alloys, oxidize when exposed to the atmosphere and/or various types of chemicals or petroleum products" (paragraph 145, lines 1-4). CAREY also teaches that oxides can be passivation layers (paragraph 175, lines 8-11). JENNINGS teaches "while chemically similiar, the structure of the aluminum oxide layers provided by different methods are distinct" (column 10 lines 48-49) and discusses the specific orientations it needs to achieve its goals (column 10, line 55-column 11, line 7).
Applicant's entire argument hinges on the assumption that a person of ordinary skill in the art would be unable to tell the difference between the atmospheric oxidation removed in CAREY's pickling process and the deliberate aluminum oxide layer of JENNINGS. This is ridiculous on its face because even CAREY acknowledges that oxides can be useful when placed deliberately, specifically as passivation layers.
Based on all these teachings, it would be well within the skill of the ordinary artisan to remove an aluminum oxide layer without desired structure of JENNINGS from the surface of the aluminum strip using CAREY's method of oxide removal, so that aluminum oxide layer with the desired structure can be applied.
Secondly, art does not need to anticipate process to render it obvious. While CAREY may teach another order of steps but its teachings are still relevant and do render the claim obvious.
Simply put, Applicant entire argument relies on stripping teachings from their overall contexts in order to fabricate a teaching away from their invention. This argument cannot be considered persuasive.
Conclusion
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/KRISTEN A DAGENAIS/Examiner, Art Unit 1717