DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claims 1, 12, 14 are amended in view of applicant’s response filed 11/17/2025. Claims 3-5, 13 and 15-19 are canceled. New claims 21-30 are added. Therefore, claims 1-2, 6-12, 14 and 20-30 are currently under examination.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 22 and 30 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Instant claims 22 and 30 recite “wherein the conversion coating layer is essentially free of chromium”. However, the instant specification only states that:
[0055] The conversion coating composition may exclude hexavalent chromium or compounds that include hexavalent chromium. Non-limiting examples of such materials include chromic acid, chromium trioxide, chromic acid anhydride, dichromate salts, such as ammonium dichromate, sodium dichromate, potassium dichromate, and calcium, barium, magnesium, zinc, cadmium, and strontium dichromate. When a conversion coating composition and/or a coating or a layer, respectively, formed from the same is substantially free, essentially free, or completely free of hexavalent chromium, this includes hexavalent chromium in any form, such as, but not limited to, the hexavalent chromium-containing compounds listed above.
The scope of instant claims 22 and 30 is broader than the instant specification because the scope of instant claims 22 and 30 covers chromium with any type of valency while the instant specification only supports that the conversion coating composition is essentially free of hexavalent chromium. Therefore, claims 22 and 30 introduce new matter.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-2, 6-12, 14, 21, 23-27 and 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP 1992718 (EP718), and further in view of Shimizu et al. US 2020/0332419 A1(Shimizu), and as evidenced by JPH07310189(JP189).
EP718 teaches a surface treatment method for treating a surface of an aluminum alloy, which is used to make beverage cans(abstract,[0002]), comprising treating the surface of Al alloy with a conversion coating solution comprising Cr ions[0006,0008,0010], phosphate ions and/or phosphoric acid [0022], hexafluorozirconic acid[0009], free fluoride[008, 0022], and an electropositive metal [0011], followed by a layer of epoxy based paint[0025].
However, EP718 does not explicitly teach that the electropositive metal is Cu, Ni or a combination thereof as claimed.
Shimizu et al. teaches a surface treatment agent for aluminum alloys used in making cans(abstract), wherein the surface treatment agent comprises metal ions such as Ni, in addition to hexafluorozirconic acid as a source of Zr[0032,0041].
Furthermore, EP718 teaches that Cu containing Al alloys are suitable materials for its Al alloy. JP189 teaches that copper from the Al alloy would elute in the surface treatment solution which can be chelated by using organic acids[0021]. Therefore, the examiner concludes that at least some of Cu from the Al alloy of EP718 in view of Shimizu would have also be present in the surface treatment solution of EP718 in view of Shimizu as evidenced by JP189, which would implies some of the Cu in the surface treatment solution would have made it into the conversion coating formed.
Regarding claims 1-2, 6, 8, 10-12, 14, 21, 26 and 29, it would have been obvious to one of ordinary skill in the art to have incorporated the Ni ions as taught by Shimizu into the conversion coating solution of EP718 in order to improve the adhesion to the top resin film as taught by Shimizu[0041].
Therefore, the aluminum can manufactured by the method of EP718 in view of Shimizu comprises the claimed conversion coating and the epoxy based paint as taught by EP708 reads on the claimed film forming layer on top of the conversion coating layer. Additionally, EP718’s aluminum can is used for storing beverages, which encompasses common drinks such as soft drinks, juices and alcoholic beverages such as wine and beer, which reads on the claimed hydrogen sulfide producing liquid deposited inside the metal can as claimed. Alternatively, one of ordinary skill in the art would have found it obvious to have store drinks such as sodas, juices and alcoholic beverages such as wine and beer (i.e. hydrogen sulfide producing liquid) into the aluminum beverage cans of EP718 with expected success.
Regarding claim 7, EP718 further teaches a conversion coating thickness of 5-200mg/m2[0024](i.e. 0.0032-0.129 msi, a.k.a.mg/in2), which overlaps the claimed average thickness. Therefore, a prima facie case of obviousness exists. See MPEP 2144.05.
Regarding claim 9, EP718 further teaches that the paint coating layer having a thickness of 20µm[0025].
Regarding claim 20, since the aluminum beverage can as taught by EP718 in view of Shimizu has the same treated surface as claimed, one of ordinary skill in the art would have found it obvious that the hydrogen sulfide producing liquid stored within to maintain the same hydrogen sulfide concentration over time as claimed after the can is sealed with expected success.
Regarding claims 23-25 and 27-28, Shimizu further teaches applying a resin composition layer on top of the surface-treated coating layer, wherein the resin composition layer may comprises epoxy resin, acrylic resin and/or polyester resin[0077, 0079]. From the teaching of Shimizu, the Examiner concludes that the epoxy resin, acrylic resin and polyester resin to be used in a top resin layer of a conversion coated can are functionally equivalent. Therefore, it would have been obvious to one of ordinary skill in the art to have substituted the epoxy paint layer of EP718 with the acrylic resin which encompasses the claimed acrylic latex, and/or the polyester resin as taught by Shimizu with expected success.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-2, 6-12, 14 and 20-30 in the response filed 11/17/2025 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOIS L ZHENG whose telephone number is (571)272-1248. The examiner can normally be reached Mon-Fri 8:15-4:45.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached at 571-272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
LOIS ZHENG
Primary Examiner
Art Unit 1733
/LOIS L ZHENG/Primary Examiner, Art Unit 1733