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 .
Election/Restrictions
Claims 1-14 are allowable pending correction of the formal matters. The restriction requirement between Groups I-IV, as set forth in the Office action mailed on 5/8/2025, has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of 5/8/2025 is partially withdrawn. Claims 15-16, directed to a method is no longer withdrawn from consideration because the claims require all the limitations of an allowable claim. However, claims 17-25, directed to a chemical conversion coating are withdrawn from consideration because they do not require all the limitations of an allowable claim. See “Examiner’s Note” below for further clarification.
In view of the above noted withdrawal of the restriction requirement, applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Examiner’s Note
It is noted that claim 17 is currently withdrawn and cannot be rejoined to the allowable product claims as it is a “use” claim. MPEP 2173.05(q) states that attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b) and the claims do not purport to claim a process, machine, manufacture, or composition of matter fails to comply with 35 U.S.C. 101. Therefore, even if claim 17 could be rejoined, it would be rejected under both 35 U.S.C. 112(b) and 101 as a “use” claim.
It is suggested that claim 17 be canceled.
Moreover, claims 18-25 do not include the allowable subject matter of claim 1 and would require a different search for the composition of the coating rather than the composition of the solution as required in claim 1, therefore, claims 18-25 cannot be rejoined in this case.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitations "the content" with respect to the zirconium, aluminum, and silicon compound in lines 7, 9, and 11. There is insufficient antecedent basis for these limitations in the claim.
Regarding dependent claims 2-14, these claims do not remedy the deficiencies of parent claim 1 noted above, and are rejected for the same rationale.
Allowable Subject Matter
Claims 1-14 would be allowable if rewritten or amended to overcome the rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Specifically, the claims would be allowable for requiring the content of the zirconium ions, aluminum ions, and silicon in the chemical conversion treatment solution as Yamaguchi, the closest prior art, does not disclose or suggest values that fall within the claimed ranges.
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 DANIELLE CARDA whose telephone number is (571)270-1240. The examiner can normally be reached Monday-Friday 8:30-4:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIELLE M. CARDA/Primary Examiner, Art Unit 1738