DETAILED ACTION
This is the Office action based on the 18100423 application filed January 23, 2023, and in response to applicant’s argument/remark filed on October 29, 2025. Claims 1-2, 4-6, 8, 10-13 are currently pending and have been considered below. Applicant’s cancellation of claims 3, 7 and 9 and withdrawal of claims 10-12 acknowledged.
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 .
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 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.
Claim Interpretations
Claim 1 recites “A chemical surface treatment method of a metal, the method comprising: performing an alkali treatment by immersing the metal in a base solution, so as to form first pores in a surface of the metal; and performing an acid treatment by immersing an alkali-treated result product in an acid solution, so as to form second pores locally in surfaces of the first pores, wherein the alkali treatment is performed in the base solution having a concentration in a range of 1-30 wt.% at a temperature in a range of 30-70°C for 20-240 seconds, and wherein the acid treatment is performed in the acid solution having a concentration in a range of 1-20 wt.% at a temperature in a range of 30-80°C for 30-300 seconds” (emphasis added). Since claim 1 fails to indicate which component in the base solution has the concentration in a range of 1-30 wt.%, for the purpose of examining the limitation “the base solution having a concentration in a range of 1-30 wt.%” will be interpreted as any component in the base solution has the concentration in a range of 1-30 wt.%. Similarly, for the purpose of examining the limitation “the acid solution having a concentration in a range of 1-20 wt.%” will be interpreted as any component in the acid solution has the concentration in a range of 1-20 wt.%.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103:
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-2, 4-6 and 8 rejected under 35 U.S.C. 103 as obvious over Wustman et al. (U.S. PGPub. No. 20050161439), hereinafter “Wustman”.
--Claims 1, 6, 8: Wustman teaches a method of treating a surface of a metal substrate ([0029-0032]), comprisingimmersing the metal substrate in a caustic material, such as KOH, NaOH,… ([0052-0055]) then immersing the metal substrate in a stripping acid solution, such as nitric acid, sulfuric acid,… ([0035-0038]). In an embodiment, Wustman teaches to immerse the metal substrate “in an aqueous bath comprising about 15% to 25% KOH (by weight) maintained at 160-180°F (about 71-82°C) for 2 hours with ultrasonic agitation”, then rinse with DI water, then immerse the metal substrate “in a solution comprising 30% (by weight) nitric acid and about 0.3% (by weight) Activol® 1658 wetting agent, maintained at 45-55°F (about 7-13°C), for 3.5 hours”, then rinse with DI water, then repeating the alternating KOH/nitric acid treatment for a plurality of times ([0078-0079]). Wustman further teaches that the treatment causes pitting or small corrosion, such as less than 2 microns, on the surface of the metal substrate ([0039]). Wustman further teaches that the total immersing time may be 2-20 hrs, and may be split into a plurality of short immersing steps; wherein the immersing time, the concentration and the temperature are selected to optimize the results for particular coating and metal substrate ([0043-0044]). Wustman further teaches that the stripping acid solution may comprise other additives, such as an organic solvent to reduce the activity and increase the wetting capability of the nitric acid relative to the substrate ([0037-0038]), and acetic acid to lower the activity of the acid in the composition and decreases the potential for pitting of the substrate surface ([0041]). Wustman further teaches that “the bath is typically maintained at a temperature below about 20°C while the substrate is immersed therein” and that “(t)emperatures much higher than 20°C typically result in more rapid removal of the aluminide coating and may cause excessive pitting of the base metal” ([0043], emphasis added). However, Wustman further disclose that “(i)t would be desirable if the processes remove substantially all of the aluminide coating, while not damaging the base metal” ([0009]) and that “(s)ome stripping compositions are used at elevated temperatures, e.g., above about 75°C to speed the reaction and removal of the coating. Operation at these temperatures can promote increased attack of the base metal and may require masking materials to protect selected portions of the metal part, e.g., airfoil internal surfaces” ([0007]). Therefore, one of skill in the art would recognize the need to strip at a high temperature to speed up the process and improve manufacturing efficiency while protecting the base substrate from excessive pitting. Since Wustman teaches that the immersing time, the concentration and the temperature are selected to optimize the results for particular coating and metal substrate, and that additives may be added to the stripping solution to reduce the pitting and masking material may be applied to the substrate to protect areas that do not require stripping, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to perform the stripping for a particular coating and metal substrate at an elevated temperature not much higher than 20°C, such as 30°C, to speed up the process while implementing measures, e.g. adding additives to reduce the pitting, applying masking materials, etc. since it’s been well established that "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)”. MPEP 2144.05(II)(A). Although Wustman fails to discloses the caustic material treatment forms a first pore and the acid treatment forms a second pore locally in the surface of the first pore, since the treatments and the metal substrate taught by Wustman are the same as Applicant’s, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, that the caustic material treatment would form a first pore and the acid treatment forms a second pore locally in the surface of the first pore, as taught by Applicant. It has been established that where an examiner has reason to believe that a characteristic or functional limitation in a claim may, in fact, be an inherent characteristic of the prior art, the examiner possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic the applicant is relying on for patentability. In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977) (quoting In re Swinehart, 439 F.2d 210 (CCPA 1971). An examiner’s belief is reasonable where starting materials and processing of the prior art are so similar to those disclosed by the applicant that it appears that the claimed function or property would naturally result when conducting the process as taught in the prior art. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986); Best, at 1255. Furthermore, according to MPEP 2112 “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.”, Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977)”. --Claim 2: Since Wustman teaches that the treatment selectively removes an aluminide coating from the surface of the metal substrate while removes only a small portion of the metal substrate, typically about 38 microns or less ([0013]), and that the aluminide coating only cover selected areas of the substrate ([0033]), it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, that the repeating, alternating KOH/nitric acid treatments are performed on an exposed metal substrate for a plurality of times, such as for 5 or more times --Claims 4, 5: Wustman further teaches that the metal may be stainless steel ([0029-0032]). Since aluminum is not selected, the limitation in claim 5 is not applicable.
Claims 1-2, 4-6, 8 and 13 rejected under 35 U.S.C. 103 as obvious over Inoue et al. (U.S. PGPub. No. 20150224742), hereinafter “Inoue”.--Claim 1, 4, 6, 8, 13: Inoue teaches a method of roughening a metal surface, comprisingproviding a substrate comprising a metal surface, such as stainless steel ([0158]);pre-cleaning the metal surface by using an alkaline solution, such as KOH ([0168-0169]);roughening the metal surface by treating with an alkaline etchant and treating with an acidic etchant, wherein the treatment using an acidic etchant be performed in a final step of the surface-roughening process ([0171-0173]), wherein the acidic etchant may comprise nitric acid ([0198]);ultrasonic rinsing and drying the substrate ([0179-0180]);bonding a resin member, such as polyolefin resin, to the substrate ([0203-0224]).
In an embodiment, Inoue discloses that the roughening the metal surface by using an alkaline etchant and an acidic etchant comprises dipping in an acidic etchant 1A (30°C) for 40 seconds while being shaken, then washing with flowing water (1 minute), then dipping in an aqueous solution (25°C) of 5 mass % of sodium hydroxide while being shaken for 30 seconds, then washing with water, then dipping in an aqueous solution (25°C) of 35 mass % of nitric acid while being shaken for 30 seconds. In another embodiment, Inoue discloses that the alkaline solution may be at 35°C ([0350]). Inoue further teaches that the type and concentration of etchant, temperature and duration of the roughening, and the timing of etching may be adjust to optimize the surface roughness ([0147, 0166]), wherein the acidic treatment temperature may be 20-40°C, the treatment time may be 5-350 seconds ([0175]), and the acid concentration may be 0.1-50 wt.% ([0199]), and that an average value of ten point average roughnesses (Rz) on the surface 110 of the metal member is preferably greater than 2 µm and less than or equal to 50 µm ([0150]), and that the surface of the metal substrate is roughened in a concavo-convex shape, wherein the etching amount in the thickness direction in the case of using the acidic etchant is preferably 0.1 µm to 500 µm ([0176]). Thus, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to treat the substrate with an alkaline solution having a concentration of 5 wt.% (during the pre-treatment), then an acidic etchant comprising acid at 0.1-50 wt.% for 5-350 seconds and the an alkaline solution having a concentration of 5 wt.% for the roughening, then an acidic solution of 0.1-50 wt.% for 5-350 seconds for the rinsing. It is noted that these overlap the ranges recited in claim 1. Although Inoue fails to discloses the caustic material treatment forms a first pore and the acid treatment forms a second pore locally in the surface of the first pore, since the treatments and the metal substrate taught by Inoue are the same as Applicant’s, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, that the caustic material treatment would form a first pore and the acid treatment forms a second pore locally in the surface of the first pore, as taught by Applicant. It has been established that where an examiner has reason to believe that a characteristic or functional limitation in a claim may, in fact, be an inherent characteristic of the prior art, the examiner possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic the applicant is relying on for patentability. In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977) (quoting In re Swinehart, 439 F.2d 210 (CCPA 1971). An examiner’s belief is reasonable where starting materials and processing of the prior art are so similar to those disclosed by the applicant that it appears that the claimed function or property would naturally result when conducting the process as taught in the prior art. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986); Best, at 1255. Furthermore, according to MPEP 2112 “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.”, Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977)”. --Claim 2: It is noted that the alkali treatment and the acidic treatment are repeated 2 times in the embodiment above. It is further noted that repeating an etching procedure on a substrate is routinely performed in the art, and it requires no more than a normal creativity for one of skill in the art to do so. Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to repeat the alkali treatment and the acid treatment on the substrate for a plurality of times, such as for 5 or more times.
Response to Arguments
Applicant's arguments filed October 29, 2025 have been fully considered as follows:--Regarding Applicant’s argument that Wustman dos not teach the claimed features because one of skill in the art would not use the treat the substrate with a base in the invention of Wustman because Wustman teaches that the base treatment is to remove impurity and such treatment may damage the substrate, this argument is not persuasive. Wustman clearly teaches a two-step stripping process comprising a first treatment using a caustic solution then a second treatment comprising an acidic solution in Claim 1. While Wustman acknowledge the treatment may generate pitting on the substrate, Wustman accepts that as a inevitable, albeit undesirable, outcome in the process of removing the aluminide coating, and teaches different measure to mitigate the pitting, as explained above. Likewise, Inoue clearly teaches a surface roughening process for a metal substrate comprising a first step of treating with an alkaline solution then a second step of treating with an acidic solution, as explained above. Although Wustman or Inoue fails to discloses the caustic material treatment forms a first pore and the acid treatment forms a second pore locally in the surface of the first pore, since the treatments and the metal substrate taught by Wustman are the same as Applicant’s, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, that the caustic material treatment would form a first pore and the acid treatment forms a second pore locally in the surface of the first pore, as taught by Applicant. It has been established that where an examiner has reason to believe that a characteristic or functional limitation in a claim may, in fact, be an inherent characteristic of the prior art, the examiner possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic the applicant is relying on for patentability. In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977) (quoting In re Swinehart, 439 F.2d 210 (CCPA 1971). An examiner’s belief is reasonable where starting materials and processing of the prior art are so similar to those disclosed by the applicant that it appears that the claimed function or property would naturally result when conducting the process as taught in the prior art. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986); Best, at 1255. Furthermore, according to MPEP 2112 “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.”, Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977)”.
Conclusion
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 extension fee 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 THOMAS PHAM whose telephone number is (571) 270-7670 and fax number is (571) 270-8670. The examiner can normally be reached on MTWThF9to6 PST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua Allen can be reached on (571) 270-3176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/THOMAS T PHAM/Primary Examiner, Art Unit 1713