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 4-7, 10-11 and 17-20 are amended in view of applicant’s response filed 5/6/2026. Therefore, claims 1-20 are currently under examination.
Status of Previous Rejections
The rejection of claims 4-7, 10-11 and 17-20 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, is withdrawn in view of applicant’s claim amendment in the response filed 5/6/2026.
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 5 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- and/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- and/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 5 and 7 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.
Response to Arguments
Applicant's arguments filed 5/6/2026 have been fully considered but they are not persuasive.
In the remarks, applicant argues that Sebralla teaches monomeric units derived from hydroxypropyl methacrylate contains only one hydroxyl group.
The examiner does not find applicant’s argument convincing because claim 1 recites a side chain (S2) comprising at least two hydroxyl groups, and does not recite
a monomeric unit comprising at least two hydroxyl groups. Additionally, Sebralla teaches that its polymer may comprise hydroxyethyl and/or hydroxypropyl (meth)acrylate monomeric units. Therefore, a polymer comprising both hydroxyethyl and hydroxypropyl groups or multiple hydroxyethyl or hydroxypropyl groups is well within the skills of Sebralla, which reads on the claimed side chain (S2) comprising at least two hydroxyl groups.
Applicant further argues incorporating acrylate copolymer of WO534 into Sebralla would be against the teaches of Sebralla since Sebralla teaches a terpolymer.
The examiner does not find applicant’s argument convincing because WO534 is incorporated into side chain S1 in the polymer of Sebralla for its teaching of glycidyl methacrylate monomer units in its side chain (A.1) to be copolymerized with monomer units (A.2) comprising hydroxyethyl- or hydroxypropyl-acrylate (A.2). WO534 is not incorporated to introduce additionally monometric units.
Applicant further argues advantages of the instant treatment method, as evidenced by Tables 4a-4c of the instant application, which shows excellent adhesion and anti-corrosion properties.
The examiner would like to remind the applicant that any objective evidence such as unexpected result must be factually supported by an appropriate affidavit or declaration to be of probative value. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984) and MPEP 716.01(c). Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) and MPEP § 716.02(d) - § 716.02(e). In the instant case, Table 4a-4c shows specific polymers with specific compositions, while the instant claims 3-4 and 17-20 do not recite any ingredient concentrations(for example, Zr or polymer or fluoride concentrations) in its acidic aqueous composition(A). Therefore, the data presented in Tables 4a-4c are not commensurate with the full scope of the instant claims. Since the proof of factual evidence is lacking in applicant’s assertion of unexpected results, the examiner does not find the argument persuasive.
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 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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LOIS ZHENG
Primary Examiner
Art Unit 1733
/LOIS L ZHENG/Primary Examiner, Art Unit 1733
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