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 1-15 are amended in view of applicant’s preliminary amendment filed 4/25/2023. New claims 16-20 are added. Therefore, claims 1-20 are currently under examination.
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 4-7, 10-11 and 17-20 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 6 recites the limitation "the acidic medium of aqueous composition (A)” in lines 7-8. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 recites the limitation "the total amount of all monomeric units of polymer (P)" in line 9 and “the sum of all monomeric units present in polymer (P)” in line 10. There are insufficient antecedent bases for these limitations in the claim.
Claim 6 recites the limitation "the range of from 1000-50000g/mol” in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation "the range of from 20 top 1000 ppm” in lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
Claim 10 recites the limitation "the range of from 1 to 500ppm” in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites the limitation "the range of from 0.1 to 6.0” in lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
Claim 17 recites the limitation "the acidic medium of aqueous composition (A)” in lines 6-7. There is insufficient antecedent basis for this limitation in the claim.
Claim 18 recites the limitation "the total amount of all monomeric units of polymer (P)" in line 9 and “the sum of all monomeric units present in polymer (P)” in line 10. There are insufficient antecedent bases for these limitations in the claim.
Claim 19 recites the limitation "the total amount of all monomeric units of polymer (P)" in line 9 and “the sum of all monomeric units present in polymer (P)” in line 10. There are insufficient antecedent bases for these limitations in the claim.
Claim 20 recites the limitation "the total amount of all monomeric units of polymer (P)" in line 9 and “the sum of all monomeric units present in polymer (P)” in line 10. There are insufficient antecedent bases for these limitations in the claim.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-2, 6 and 8-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sebralla et al. WO 2019/053023 (Sebralla).
Sebralla teaches a method for treating a surface of an aluminum material by contacting the surface with an acidic aqueous composition(abstract, page 6 lines 5-12), comprising:
At least one metal ion selected from the group consisting of Ti, Zr and Hf, and
A polymer comprising a co-polymer of (meth)acrylic acid monomeric units and hydroxyethyl- or hydroxypropyl- methacrylate monomeric units.
Regarding claim 1, the (meth)acrylic acid monomeric units reads as taught by Sebralla reads on the claimed side chain (S1) comprising carboxylic acid groups. The hydroxypropyl methacrylate monomeric units as taught by Sebralla reads on the claimed side chain (S2) comprising at least two hydroxyl groups.
Regarding claim 2, the hydroxypropyl methacrylate monomeric units of Sebralla have higher number of hydroxyl groups than (meth)acrylic acid monomeric units of Sebralla as claimed.
Regarding claim 6, Sebralla further teaches that the polymer has an average molecular weight of 10,000-50,000 g/mol(page 8 lines 24-29), which reads on the claimed average molecular weight of 1,000-50,000 g/mol.
Regarding claim 8, Sebralla further teaches that the metal ions can be in the form of complex fluoride of Ti, Zr and/or Hf(page 7 lines 8-10 and 14-15).
Regarding claim 9, Sebralla further teaches that the concentration of metal ions such as Ti, Zr and/or Hf is in a range of 0.002-2g/l (20-2000ppm)(page 6 lines 16-27), which reads on the claimed metal ion concentration of 5-5000ppm.
Regarding claim 10, Sebralla further teaches that the acidic aqueous composition additionally comprises free fluoride in an amount of 1-250mg/l(1-250ppm)(page 17 lines 3-6), which reads on the claimed free fluoride concentration of 1-500ppm.
Regarding claim 11, Sebralla further teaches that the acidic aqueous composition has a pH value of 2.0-6.0(page 6 lines 13-15), which reads on the claimed pH range of 0.1-6.0.
Regarding claim 12, the acidic aqueous composition of Sebralla is compositionally the same as the claimed acidic aqueous composition (A).
Regarding claim 13, Sebralla further teaches that the acidic aqueous composition is produced by diluting a concentrate, which reads on the claimed master batch, with water and optionally adjusting the pH value as claimed(page 21 lines 1-24).
Regarding claim 14, Sebralla further teaches that the surface treatment method is applied to an aluminum surface(page 22 lines 1-9).
Regarding claim 15, the treated Al surface as taught by Sebralla reads on the claimed substrate.
Claim 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) 5, 7 and 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sebralla.
The teachings of Sebralla are discussed in section 6 above.
Regarding claims 5 and 18-20, Sebralla further teaches that the (meth)acrylic acid monomeric unit in the copolymer, which reads on the claimed side chain (S1), is present in a molar content of 25-85%, and the hydroxyethyl- or hydroxypropyl- methacrylate monomeric units in the copolymer, which reads on the claimed side chain (S2), is present in a molar content of 5-70%(page 7 lines 20-25). The molar contents of (meth)acrylic acid monomeric units and hydroxyethyl- or hydroxypropyl- methacrylate monomeric units in the copolymer of Sebralla overlap the claimed molar contents of side chains (S1) and (S2). Therefore, a prima facie case of obviousness exists. See MPEP 2144.05. Additionally, Sebralla further teaches that the sum of all monomeric units in the copolymer adds up to 100 mol%(page 26 line 11).
Regarding claim 7, Sebralla further teaches that the co-polymer has a preferred concentration of 0.015-0.75g/mol(15-750ppm)(page 6 lines 23-25), which significantly overlaps the claimed polymer concentration of 20-1000ppm. Therefore, a prima facie case of obviousness exists. See MPEP 2144.05.
Claim(s) 3-4 and 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sebralla, and further in view of WO 96/03534(WO534).
The teachings of Sebralla are discussed in sections 6 and 8 above. However, Sebralla does not explicit teach the claimed side chain (S2) are formed in situ within the acidic aqueous wherein the side chain (S1) comprises the claimed at least one epoxide group, which is transformed in the acidic aqueous composition to a moiety within side chain (S2) comprising at least 2 hydroxyl groups.
WO534 teaches a process for treating an Al surface by contacting the Al surface with an aqueous composition comprising a Zr compound and an acrylate copolymer comprising monomer units (A.1) such as glycidyl methacrylate and monomer units (A.2) comprising hydroxyethyl- or hydroxypropyl-acrylate(abstract, page 3 line 29, page 4 line 14).
Regarding claims 3-4 and 16-17, it would have been obvious to have incorporated the acrylate copolymer as taught by WO534 into the copolymer of Sebralla since WO534 teaches an aqueous composition comprising a Zr compound and the acrylate copolymer produces a protective coating layer that have excellent corrosion resistance and post-forming adherence as well as long pot life(abstract, page 10 lines 3-10).
Additionally, the hydroxyethyl- or hydroxypropyl-acrylate monomer units (A.2) as taught by Sebralla in view of WO534 reads on the claimed side chain(S1) as recited in claims 3 and 16.
The glycidyl methacrylate monomer units (A.1) as taught by Sebralla in view of WO534 reads on the claimed polymer precursor (PP) for side chain(S2) as recited in claims 4 and 17. The claimed in situ formation of at least two hydroxyl groups of side chain (S2) transformed in the acidic aqueous composition of Sebralla in view of WO534 would have inherently taken place in the acidic aqueous composition of Sebralla in view of WO534 due to the presence of glycidyl methacrylate monomer units.
Conclusion
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LOIS ZHENG
Primary Examiner
Art Unit 1733
/LOIS L ZHENG/ Primary Examiner, Art Unit 1733