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
Claim 10 is amended in view of applicant’s response filed 12/23/2025. New claim 20 is added. Claim 15 is canceled. Therefore, claims 1-14 and 16-20 are currently under examination.
Status of Previous Rejections
The rejection of claim 10 under 35 U.S.C. 112(b) or 35 U.S.C. 112(pre-AIA ), second paragraph, has been withdrawn in view of applicant’s claim amendments in the response filed 12/23/2025.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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, 3, 6-12, 14, 17-18 and 20 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Dietsche et al. US 2006/0162820(Dietsche).
Dietsche teaches a method of forming a passivation layer on a metal surface, wherein the metal surface can be a galvanized iron or steel[0019]. The process comprises:
Providing a galvanized iron or steel surface[0019](i.e. Zn-Fe alloy);
Providing a passivation composition comprising additives such as sodium 3-(2-benzothiazolylthio)-1-propanesulfonate and sodium 3-[(dimethylamino)thioxomethyl]thio-1-propanesulfonate[0076], and a compound of Zr[0067].
Contacting the galvanized iron or steel surface with the passivation composition(abstract).
Regarding claims 1, 6-8 and 17-18, the propansulfonnate salts as taught by Dietsche have the same chemical structure as claimed blackening agent, therefore, read on the claimed blackening agent. The Zr ions from the Zr compound as taught by Dietsche, reads on the claimed metal ions.
Additionally, the Dietsche further teaches that the additives are in an amount of 0.1-50% by weight[0069], which overlaps the claimed amount of blackening agent, implying that the passivation composition of Dietsche is capable of forming a black passivation layer.
Alternatively, Dietsche further teaches that the passivation composition may additionally comprises carbon black[0068]. It would have been well within a skilled artisan to have achieved the claimed black passivation layer by adjusting the amount of pigments such as carbon black in the passivation composition of Dietsche via routine optimization in order to achieve desired black color in the passivation coating layer.
Regarding claim 3, Dietsche further teaches that the pH of the composition is 1-6 [0048], which reads on the claimed acidic pH.
Regarding claim 9, Dietsche further teaches that the Zr compound may be present in an amount of 1-20 g/l[0067], which reads on the claimed metal ion concentration.
Regarding claim 10, Dietsche does not teach mandatory presence of tungsten.
Regarding claim 11, Dietsche further teaches the addition of hydrofluoric acid[0062] comprises the claimed halogen ions, and the claimed carboxylic acids[0064].
Regarding claim 12, Dietsche further teaches that the passivation coating temperature is preferably 10-80°C[0098].
Regarding claim 14, the passivation coating composition of Dietsche does not require mandatory presence of Ni, Co and W ions as claimed.
Regarding claim 20, Dietsche further teaches that the passivation coating composition may contain additives such as titanium nitride[0068], which reads on the one species of Ti ions as claimed.
Claim(s) 4-5 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dietsche.
The teachings of Dietsche are discussed in section 6 above.
Regarding claim 4, Dietsche further teaches that the additives are in an amount of 0.1-50% by weight[0069], which overlaps the claimed amount of blackening agent. Therefore, a prima facie case of obviousness exists. See MPEP 2144.05.
Regarding claim 13, Dietsche further teaches that the passivation coating time is 2-20 sec[0096], which overlaps the claimed passivation coating time. Therefore, a prima facie case of obviousness exists. See MPEP 2144.05.
Regarding claim 19, the passivation composition of Dietsche overlap the passivation composition as claimed. Therefore, a prima facie case of obviousness exists. See MPEP 2144.05. The selection of claimed passivation composition from the passivation composition of Dietsche would have been obvious to one of ordinary skill in the art since Dietsche teach the same utilities in its disclosed passivation composition.
Claim(s) 2, 16 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dietsche, and further in view of CA 2535894 (CA894).
The teachings of Dietsche are discussed in sections 6 and 7 above. However, Dietsche does not explicitly teach the claimed Fe amount in its galvanizing layer.
CA894 teaches a hot dip zinc plated steel sheet wherein the galvanizing layer comprising a ratio of Fe to Zr+Fe of 0.002-0.25(content in atm%)(abstract). CA894 further teaches such a galvanizing layer has excellent adhesiveness and chemical treatment characteristics(abstract).
Regarding claim 2, 16 and 19, it would have been obvious to one of ordinary skill in the art to have incorporated the galvanizing layer of CA894 into the galvanizing layer of Dietsche in order to achieve excellent adhesiveness and chemical treatment characteristics as taught by CA894.
Additionally, the amount of Fe in the galvanizing layer and the passivation composition as taught by Dietsche in view of CA894 overlap the passivation composition as claimed. Therefore, a prima facie case of obviousness exists. See MPEP 2144.05. The selection of claimed amount of Fe from the Fe amount as taught by Dietsche in view of CA894 would have been obvious to one of ordinary skill in the art since Dietsche in view of CA894 disclose the same utilities in their Fe amount.
Response to Arguments
Applicant's arguments filed 12/23/2025 have been fully considered but they are not persuasive.
In the remarks, applicant argues that Dietsche does not teach that sodium 3-(2-benzothiazolylthio)-1-propanesulfonate and sodium 3-[(dimethylamino)thioxomethyl] thio-1-propanesulfonate are blackening agents.
The examiner does not find applicant’s argument convincing because Dietsche’s passivation composition comprises sodium 3-(2-benzothiazolylthio)-1-propanesulfonate and sodium 3-[(dimethylamino)thioxomethyl] thio-1-propanesulfonate. They are structurally the same as the claimed blackening agent, therefore, would have had the same blackening effect as the claimed blackening agent during the formation of a passivation layer, absent persuasive evidence to the contrary.
Applicant further argues that sodium 3-(2-benzothiazolylthio)-1-propanesulfonate and sodium 3-[(dimethylamino)thioxomethyl] thio-1-propanesulfonate are copper brightener in electroplating applications. One of ordinary skill in the art would not have used them as blackening agent as a result.
The examiner does not find applicant’s argument convince because a material can be used for multiple purposes. For example, baking soda (i.e. sodium bicarbonate) can functions a cleaning agent for house hold cleaning purposes as well as a leavening agent that makes baked good rise and fluffy. Analogously, sodium 3-(2-benzothiazolylthio)-1-propanesulfonate and sodium 3-[(dimethylamino)thioxomethyl] thio-1-propanesulfonate may function as copper brighteners in electroplating applications, they may also be used in other applications for a different purpose or function, such as a blackening agent in a passivation composition. Since Dietsche teaches a passivation composition comprising the same chemical compound (i.e. sodium 3-(2-benzothiazolylthio)-1-propanesulfonate and sodium 3-[(dimethylamino)thioxomethyl] thio-1-propanesulfonate ) as the claimed blacking agent, the examiner maintains that sodium 3-(2-benzothiazolylthio)-1-propanesulfonate and sodium 3-[(dimethylamino)thioxomethyl] thio-1-propanesulfonate as taught by Dietsche is capable of functioning like a blackening agent, absent persuasive evidence to the contrary.
Applicant further argues, with respect to claim 4, that there is no concentration range given for the additives such as sodium 3-(2-benzothiazolylthio)-1-propanesulfonate and sodium 3-[(dimethylamino)thioxomethyl] thio-1-propanesulfonate.
The examiner does not find applicant’s argument convincing because Dietsche teaches that the additive may be present in an amount of 0.1-50wt%[0069], which encompasses the claimed amounts of blackening agent, which renders the claimed blackening agent prima facie obviousness.
Applicant’s further argument with respect to new claim 20 is moot for the same reasons set forth in the rejection of claim 20 in section 6 above.
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.
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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.
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LOIS ZHENG
Primary Examiner
Art Unit 1733
/LOIS L ZHENG/Primary Examiner, Art Unit 1733
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