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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/20/2026 has been entered.
Status of Claims
Claim 1 is amended in view of applicant’s response filed 5/20/2026. Claim 12 is canceled. Therefore, claims 1-11 and 13-20 are currently under examination.
Status of Previous Rejection
All previous rejections have been withdrawn in view of applicant’s claim amendment in the response filed 5/20/2026.
D#EClaim 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) 1-11 and 13-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maurus et al. US 2018/0237919 (Maurus).
Maurus teaches a method for treating a metal surface comprising contacting the metal surface with an acidic aqueous composition having a pH of 2.5-4.5[0015], wherein the aqueous composition comprises:
Zr ions in an amount of 100-800mg/l[0018];
A polymer selected from poly(meth)acrylic acids and (meth)acrylic copolymers[0054-0055];
Mo ions in an amount of 30-100mg/l[0018], and
wherein the Zr/Mo ratio is 13:1 to 7:1, preferably 11:1-9:1[0020].
Regarding claims 1-4, 7, 13-14 and 17, Maurus does not require mandatory presence of phosphonic acid and/or phosphonate in the polymer. Additionally, the pH and the Zr/Mo ratio in the acidic aqueous composition of Maurus read on the claimed pH and Zr/Mo ratio. The Zr concentration as taught by Maurus overlaps the claimed Zr concentration. Additionally, Maurus further teaches that the Therefore, a prima facie case of obviousness exists. See MPEP 2144.05(I). The selection of claimed Zr concentration from the Zr concentration of Maurus would have been obvious to one of ordinary skill in the art since Maurus teaches the same utilities in its Zr concentration. Furthermore, Maurus further teaches that the aqueous composition can be diluted by a factor of 1:30-1:100[0034], which means that the Mo concentration can be diluted to up to 3.3mg/l, which overlaps the claimed Mo concentration. Therefore, a prima facie case of obviousness exists. See MPEP 2144.05(I). The selection of claimed Mo concentration from the Mo concentration of Maurus would have been obvious to one of ordinary skill in the art since Maurus teaches the same utilities in its Mo concentration.
Regarding claims 5 and 19, Maurus further teaches that the aqueous composition is applied at a temperature of 20-30°C[0023].
Regarding claims 6-7, Maurus further teaches that the polymer(i.e. poly(meth)acrylic acid has a molecular weight of 50,000-250,000g/mol[0056], which reads the claimed molecular weight.
Regarding claim 8, Maurus further teaches that the polymer is in the amount of 100-600mg/l[0059], which reads on the claimed polymer concentration.
Regarding claim 9, Maurus teaches that the Zr is present in the form of complex fluoride as claimed[0018]
Regarding claim 10, Maurus further teaches that the Mo is present in the form of molybdate(abstract, [0018]).
Regarding claim 11, Maurus further teaches the presence of free fluoride in an amount of 50-150mg/l which reads on the claimed amount of free fluoride[0050].
Regarding claim 16, the Zr:Mo ratio as taught by Maurus overlaps the claimed Zr:Mo ratio of 12:5 to 10:1. Therefore, a prima facie case of obviousness exists. See MPEP 2144.05(I). The selection of claimed Zr:Mo ratio from the Zr:Mo ratio as taught by Maurus would have been obvious to one of ordinary skill in the art since Maurus teach the same utilities in its disclosed Zr:Mo ratio.
Regarding claim 18, the pH as taught by Maurus overlaps the claimed pH of 3.2-3.8. Therefore, a prima facie case of obviousness exists. See MPEP 2144.05(I). The selection of claimed pH range from the pH range as taught by Maurus would have been obvious to one of ordinary skill in the art since Maurus teach the same utilities in its disclosed pH range.
Regarding claims 15 and 20, the treated metal substrate of MAURUS reads on the claimed metal substrate.
Response to Arguments
Applicant’s arguments in the response filed 5/20/206 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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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