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Claims 1-2, 9-11, 16-17, and 21 are examined in this office action as claims 12-15 and 19-20 are withdrawn as directed to a nonelected invention, claims 3-8 and 18 are canceled, claim 21 is new and claim 1 was amended in the reply dated 6/19/26.
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.
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.
Claim 21 is 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.
Claim 21 recites the limitation “wherein both the powder mixture and the binder mixture are free of chromium(VI) salts and free of chromium ions” in the last two lines of the claim. Applicant points to the original claims and pages 8-12 of the specification as support for these amendments. While pages 8-12 of the specification list a number of examples within the scope of the invention including Examples 4, 5a and 5b which include Chromium powder, CrAl alloy, and CrCl3 in the powder mixture, none of the examples recite either where chromium and its ions are included in the binder mixture nor is there any mention of the binder mixture being free of chromium ions. Likewise in the rest of the specification, there is neither a disclosure of where the binder mixture includes chromium ions, nor is there a statement that the binder mixture excludes chromium ions. Therefore, the specification does not describe the claimed subject matter of “both the powder mixture and the binder mixture are free of chromium(VI) salts and free of chromium ions” in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor had possession of the claimed invention.
Claim 2 is 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 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.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over US 6224657 B1 of Myers.
As to claim 21, 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.
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), 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.
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.
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.
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%.
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 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).
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.
Claims 1-2, 9-11, and 16-17 are 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 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.
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), 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.
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.
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.
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 40%.
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 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).
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.
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)
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 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.
As to claim 11, Myers discloses using an inert pigment which is an insoluble material added for aesthetic or decorative purposes (Meyers, col 7, lines 5-9), meeting the claim limitation of where the powder mixture comprises a water-insoluble dye.
As to claim 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 range of 2.5 to 2.7. “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 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.
Response to Arguments
With respect to the objection of claim 8 with respect to silicium, applicant’s cancellation of claim 8 combined with the amendments to claim 1 cures the previous issue and therefore the objection is withdrawn.
With respect to 112(b) rejections of claims 5, it is agreed that the incorporation of claim 5 with the deletion of and/or phrasing cures the previous issues. However, with respect to claim 2, applicant argues that a single component such as the binder mixture can be a combination of components and therefore claim 2 is merely specifying that the kit has two separate components, a powder mixture and binder mixture (Applicant’s remarks, pg. 6, last paragraph).
However, the crux of the issue is how many components claim 2 is limiting to. While applicant’s interpretation is already a function of claim 1 which requires as separate components a powder mixture and a liquid binder mixture, it is not clear what is counted as a component in claim 2. While the “powder mixture” and “binder mixture” can be called components, the “aqueous solvent” and “phosphate binder” which the binder mixture comprises fit within the definition of components. As more than two components are already required by claim 1, it is not clear how claim 2, which depends from that claim can limit to a smaller number of components. Thus, applicant’s arguments are not persuasive and the rejection is maintained.
With respect to the 103 rejection over Meyers, applicant argues that Meyers bonding compositions include chromium(III) ions and as each of the embodiments and independent claims show the use of chromium(III) ions, Meyers requires the use of these ions (Applicant’s remarks, pg. 7, last two paragraphs).
However, the cited basecoat applied in Meyers which is used in the rejection above does not disclose any inclusion of chromium and specifically recites that it is “Cr-free” (Meyers, col 11, line 5). As such, Meyers meets this new limitation.
With respect to the 103 rejection over Meyers in view of Chung, applicant argues that Meyers and Chung are not related to the same problem as Chung lists chlorides and fluorides a suitable aluminum compounds that are dissolved in phosphoric acid to prepare the binder itself and as such are precursors providing aluminum ions not a separate halide component to add to a metal powder (Applicant’s remarks, pg. 8 last paragraph – pg. 9, 1st paragraph).
However, the instant claims merely relate to a kit for preparing a chromium(VI)-free slurry. This is not a method claim where things must be mixed together; what is merely required is the presence of all of these different components that can be combined together to form a slurry suspension. As Meyers teaches where aluminum powder is used and Chung teaches that chlorides and fluorides of aluminum are suitable for use with phosphate and phosphoric acid solutions, it is obvious to substitute these chlorides and fluorides into the instant kit. Thus applicant’s arguments are not persuasive and the rejection is maintained.
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 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
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