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 and Status of Claims
Applicant’s election without traverse of Invention I, claims 1-11 and 16-18 in the reply filed on 2/5/26 is acknowledged.
Claims 12-15 and 19-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2/5/26.
As such, claims 1-11 and 16-18 are examined in this office action of which claims 2-11 were amended and claims 16-18 were new in the preliminary amendment dated 5/15/23.
Claim Objections
Claim 8 is objected to because of the following informalities: claim 8 recites the term "silicium" in line 3. This is a non-standard term for silicon and the claims should be corrected to recite silicon instead to improve clarity. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 2 and 5 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 2 recites the limitation “wherein the kit is a two-component system, one component being the powder mixture and the other component being the binder mixture”. However, as claim 1 already requires that the binder mixture comprises an aqueous solvent and a phosphate binder, thus having two components, it is not clear how the kit that also includes a powder mixture in addition to the two component binder mixture can be a two-component system.
Claim 5 recites the limitation “and/or in that the solvent content of the binder mixture, relative to its total weight, is from 40 to 80% by weight” in the last two lines of the claim. It is not clear whether this is creating an option between two choices (water and aqueous for solvent) followed by an optional condition of the solvent content of the binder mixture being from 40 to 80 wt%, whether it is creating an option between the three recited elements (water, aqueous, and solvent content of the binder mixture being from 40 to 80 wt%), or some other meaning.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 5-6, and 8-10 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by US 6224657 B1 of Myers.
As to claim 1, the claim preamble must be read in the context of the entire claim. The determination of whether preamble recitations are structural limitations or mere statements of purpose or use "can be resolved only on review of the entirety of the [record] to gain an understanding of what the inventors actually invented and intended to encompass by the claim" as drafted without importing "'extraneous' limitations from the specification." Corning Glass Works, 868 F.2d at 1257, 9 USPQ2d at 1966. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999), see MPEP § 2111.02(II). In the instant case, the preamble concerning “for preparing a chromium(VI)-free slurry suspension for the diffusion coating of metal surfaces” is merely a statement of intended use of the kit as the remainder of the claim fully sets out the structure of the kit containing a powder mixture and liquid binder mixture.
Meyers discloses a Cr-free composition obtained by mixing 200 ml of bonding solution, 50 ml of deionized water, 8 g of zinc aluminum phosphate, and 120 g of aluminum powder (Myers, col 11, lines 4-20), meeting the claim limitation of a kit comprising a powder mixture and liquid binder mixture as separate components which are configured to be combined as Meyers discloses they are mixed to obtain the finished composition. Myers by disclosing aluminum powder meets the limitation of a diffusion metal powder as aluminum is capable of diffusing. Also, Myers by disclosing 200 ml of bonding solution and 50 ml of deionized water meets the limitation of where the binder mixture comprises an aqueous solvent and Myers is disclosing where these are separate components, meeting the claim limitations. Also, by disclosing both the inclusion of ferric phosphate and zinc aluminum phosphate (Myers, col 11, lines 4-20), Myers meets the limitation of a phosphate binder. Finally, as Myers discloses that this is a Cr-free composition, it is necessarily free of chromium (VI) salts, meeting the claim limitations.
As to claim 2, it is not clear how there can be a two component system when the limitations of claim 1 require at least three components, see 112(b) rejection above. For the purposes of applying prior art, this will be interpreted as requiring a powder mixture and a binder mixture. Meyers discloses a Cr-free composition obtained by mixing 200 ml of bonding solution, 50 ml of deionized water, 8 g of zinc aluminum phosphate, and 120 g of aluminum powder (Myers, col 11, lines 4-20), meeting the claim limitation of a kit comprising a powder mixture and liquid binder mixture.
As to claim 3, Myers discloses 120 g of aluminum powder and where this is mixed with the bonding solution (Myers, col 11, lines 4-20). As powder is fine, dry particles, this meets the limitation of the powder mixture being a dry powder as there is no disclosure in Myers of this powder not being in a dry state.
As to claim 5, it is not clear what is meant by the options recited in claim 5, see 112(b) rejection above. For the purposes of applying prior art, this will be interpreted as allowing for the solvent of the binder mixture to be selected from water or aqueous solvent having a water content of at least 80% by volume or the solvent content of the binder mixture being from 40 to 80% by weight. Myers discloses 200 ml of bonding solution formulated from deionized water, phosphoric acid, zinc oxide, ferric phosphate, magnesium carbonate, and boric acid, 50 ml of deionized water, 8 g of zinc aluminum phosphate, and 120 g of aluminum powder (Myers, col 11, lines 4-20), meeting the claim limitation of where the solvent is water.
As to claim 6, Myers discloses where the bonding solution is formulated from 800 g of deionized water, 388g of 85% phosphoric acid, 17.5g of zinc oxide, 10.3 g of ferric phosphate, 120 g of magnesium carbonate, and 31 g of boric acid (Myers, col 11, lines 4-20). As it is 388g of 85% phosphoric acid, this means that it would be 329.8 g of the phosphoric acid itself and therefore with 1366.8 g total, this means that the cumulative weight of the phosphoric acid is 24.1 wt%, meeting the claim limitation of being between 5 and 25%.
As to claim 8, Myers discloses 120 g of aluminum powder and where this is mixed with the bonding solution (Myers, col 11, lines 4-20), meeting the limitation of a diffusion metal including aluminum.
As to claim 9, Myers discloses 120 g of aluminum powder and where this is mixed with the bonding solution (Myers, col 11, lines 4-20), and as Myers does not disclose treatment of the powder, it is untreated meeting the claim limitation.
As to claim 10, Myers discloses 120 g of aluminum powder (Myers, col 11, lines 4-20) and as aluminum powder is insoluble in water and is catalytic, it meets the claim limitation of a water-insoluble catalyst.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 4, 7, 11, and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over US 6224657 B1 of Myers.
As to claims 4 and 16, Myers discloses where a coating composition, particularly used as a basecoat composition, is formed by mixing the above-described bonding composition with particulate metal to form a slurry (Myers, col 7, lines 28-31) and Myers discloses where the bonding composition has a pH in the range from about 1.0 to about 3.5 and is substantially free of hexavalent chromium ions (Myers, col 3, lines 15-17), overlapping the claimed pH ranges of 2.3-2.9 in claim 4 and 2.5 to 2.7 in claim 16. “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.”, see MPEP § 2144.05(I).
As to claim 7, Myers discloses where an acid salt such as magnesium dihydrogen phosphate is used to lower the pH of the bonding composition (Myers, col 5, lines 21-23), meeting the claim limitation of where the phosphate binder contains hydrogen or dihydrogen phosphate of at least one cation of the group aluminum, zinc, or magnesium.
As to claim 11, Myers discloses where insoluble chromium(III) compound(s) could function, for example, as a colorant/dye within the cured coating (Myers, col 22, lines 31-33), meeting the claim limitation of where the powder mixture comprises a water-insoluble dye.
As to claim 17, Myers discloses where the bonding solution is formulated from 800 g of deionized water, 388g of 85% phosphoric acid, 17.5g of zinc oxide, 10.3 g of ferric phosphate, 120 g of magnesium carbonate, and 31 g of boric acid (Myers, col 11, lines 4-20). As it is 388g of 85% phosphoric acid, this means that it would be 329.8 g of the phosphoric acid itself and therefore with 1366.8 g total, this means that the cumulative weight of the phosphoric acid is 24.1 wt%, which is close to the claimed weight fraction of between 10 and 20% and given the closeness of the disclosed phosphoric acid weight fraction to the claimed range, a person of ordinary skill would expect these processes to produce patentably indistinct results. Also, the MPEP notes that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997) (under the doctrine of equivalents, a purification process using a pH of 5.0 could infringe a patented purification process requiring a pH of 6.0-9.0); and In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%), see MPEP § 2144.05 I.
Further, as Myers also discloses an overlapping range for the pH of the binder, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the phosphoric acid weight fraction as the amount of acid in the solution affects the pH of the solution.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over US 6224657 B1 of Myers in view of US 5536686 A of Chung.
As to claim 18, Myers discloses a Cr-free composition obtained by mixing 200 ml of bonding solution, 50 ml of deionized water, 8 g of zinc aluminum phosphate, and 120 g of aluminum powder (Myers, col 11, lines 4-20), where the aluminum powder is a diffusion metal. However, Myers does not disclose where the powder mixture comprises a halide of a metal contained as the diffusion metal.
Chung relates to the same field of endeavor of binder for binding reinforcement materials is provided in which an aluminum and/or Group IIa-containing compound is combined, in a liquid, with a phosphorus-containing compound (Chung, abstract). Chung teaches that suitable aluminum- and Group IIa-containing compounds include hydroxides, phosphates, chlorides, sulphates, nitrates, silicates, propoxides, acetates, carbonates, carbides, fluorides, and the like (Chung, col 2, lines 65-67), meeting the limitation of a halide of a metal contained as a diffusion metal. Chung teaches that these binders result in materials having superior strength and other properties including improved compressive strength (Chung, col 1, lines 50-51 and col 7, lines 10-11).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add aluminum chlorides and fluorides as taught by Chung to the aluminum powder disclosed in Myers, thereby creating materials having superior strength and other properties including improved compressive strength (Chung, col 1, lines 50-51 and col 7, lines 10-11)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Joshua S Carpenter whose telephone number is (571)272-2724. The examiner can normally be reached Monday - Friday 8:00 am - 5:30 pm.
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/JOSHUA S CARPENTER/Examiner, Art Unit 1733
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733