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
Responsive to the amendment filed 16 March 2026, claims 1 and 4-6 are amended and claims 3 and 15 are cancelled. Claims 1, 2, and 4-14 are currently under examination.
Status of Previous Rejections
Responsive to the amendment filed 16 March 2026 new grounds of rejection are presented.
Information Disclosure Statement
The information disclosure statement filed 16 March 2026 fails to comply with 37 CFR 1.97(c) because it lacks a timing statement as specified in 37 CFR 1.97(e). It has been placed in the application file, but the information referred to therein has not been considered.
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) 1, 2, and 4-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20060237098 A1 (hereinafter “Matzdorf”), in view of Donald Wetzel, Batch Hot Dip Galvanized Coatings, Surface Engineering, Vol 5, ASM Handbook, Edited By C.M. Cotell, J.A. Sprague, F.A. Smidt, Jr., ASM International, 1994, p 360–371, https://doi.org/10.31399/asm.hb.v05.a0001272 (hereinafter “Wetzel”).
Regarding claim 1, Matzdorf teaches a method of preparing a protective coating on a metal substrate (see title). Matzdorf teaches that the method is applicable to metal surfaces having a pre-existing metal coating thereon (see [0020] and claims 1 and 2). Matzdorf teaches that the composition for coating includes trivalent chromium and corrosion inhibitors (See [0007], [0020], or claim 1). Matzdorf teaches a carboxylic acid as a stabilizing compound ([0020] and [0036], or claims 1 and 8).
Matzdorf teaches examples of compositions which match the claimed values (EXAMPLES 1 thru 8). More specifically, Matzdorf teaches that a composition is made which includes 1 L of water, 3.0 g of chromium sulfate, 0.12 g of potassium tetrafluoroborate, and 0.25 g benzotriazole (EXAMPLE 1). Matzdorf teaches that the fluoroborate acts as a stabilizer in the solution (See [0037]). Matzdorf teaches that another stabilizer such as a citric acid is then added (see [0036] or claim 8). The composition of Matzdorf is then contacted with metal for the protection (See [0039]-[0040] and claim 1).
Matzdorf teaches that galvanized steel is usable for the invention ([0020]), thus clearly envisioning a steel having a zinc-comprising coating, with Fe contained therein. Matzdorf does not describe wherein the coating includes the relative amounts of Zn, Fe, Mn, and/or Sn as claimed. Matzdorf does not particularly limit the composition of the coatings.
Wetzel is an article from the ASM Handbook describing Hot dip galvanizing (See title, and page 360). Wetzel teaches that the galvanizing is commonly applied in many iron and steel products for applications such as structural steel, signs, bridges, bolts and more (see Applications, p. 360). Wetzel teaches that the typical coating includes several layers, in which iron is intermixed with the zinc (see p. 360 and Fig 1). Wetzel further describes several layers of the coating, such as the eta, zeta, delta, and gamma regions (Fig. 1). Wetzel teaches that the innermost layer of the coating includes about 25% Fe, while the topmost layer of coating includes almost all zinc (p. 360 and Fig 1). Wetzel further defines the different layers at Table 3. Specifically the zeta thru gamma layers include between 6 and 28% iron (Table 3). Compare this with Fig 1, where the zeta thru gamma layers compose approximately ½ to 2/3 of the coating in total, whereas the eta layer (no Fe) would be the rest. Thus taking 6% as an assumed minimum Fe content for the zeta thru gamma layers, the typical coating would include at least around 3% of Fe (the minimum Fe 6% x half the thickness). Taking 28% as a maximum, the typical coating would include at most around 19% of Fe (the maximum Fe 28% x 2/3 the thickness). The composition of a typical galvanized coating as described in Wetzel overlaps the claimed range for iron content, establishing a prima facie case of obviousness for the range. In the alternative, it is considered that the galvanized coating as described by Wetzel is close enough to the claimed range of iron (0.1 to 35%) that the skilled artisan would have expected the layer to have functioned similarly to the claimed coated substrate for the purposes as set forth in Wetzel and Matzdorf. It is not clear that there would have been a meaningful difference between the claimed substrate with coating having 0.1-35 % of iron and the steel with coating as described by Wetzel.
Wetzel does not describe the content of other elements in the coating. Wetzel teaches that the zinc used for the coating may be high purity such as 99.90% zinc (see pp. 361-362). Wetzel teaches that the galvanized steel is commonly applied with a post-treatment, and that this may include a phosphating treatment (see Post Treatments at pp. 369-370).
It would have been an obvious matter to one of ordinary skill in the art at time of filing to have practiced the method of Matzdorf, to have selected the galvanized steel as the substrate because Matzdorf teaches that this is suitable for the invention ([0007], [0020]), and further to have used the hot dip galvanized steel as taught by Wetzel, because Wetzel teaches that this is an effective and economical means of protecting steel (see p. 360).
Regarding claim 2, Matzdorf teaches that galvanized steel is usable for the invention ([0020]), thus clearly envisioning a steel having a zinc-comprising coating, with Fe contained therein. No nickel is mentioned.
Regarding claim 4-6, Matzdorf teaches that a composition is made which includes 1 L of water, 3.0 g of chromium sulfate, and 0.25 g benzotriazole (EXAMPLE 1).
Regarding claim 7, Matzdorf teaches to add a citric acid salt (claim 8 or [0036]). Alternatively, Matzdorf teaches examples in which a 2-mercaptobenzimidazole is added (see EXAMPELS 4-6).
Regarding claim 8, Matzdorf teaches that a composition is made which includes 1 L of water, 3.0 g of chromium sulfate, and 0.25 g benzotriazole (EXAMPLE 1).
Regarding claims 9-11, it is noted that there is no positive recitation that these elements are required. For example, claim 9 requires that some of the groups for selection therefrom are “independently selected” from other compounds, which is not a requirement that it be present. Each one of Claims 10-11 recites that the group for selection therefrom is what “comprises” the mercaptotriazole or the acid or salts. Thus the limitations introduced by each of these claims are considered optional by a broadest reasonable interpretation of the claims.
Regarding claims 12-14, Matzdorf teaches that a carboxylic acid may be added such as a glycolic acid or its salt (See [0036] and claim 9).
Response to Arguments
Applicant's arguments filed 16 March 2026 have been fully considered but they are moot in view of new grounds of rejection.
Applicant argues that the amendment remedies the issues of indefiniteness, In response, the rejections under 35 USC 112 are withdrawn.
Applicant argues that Bedrnik teaches 0.05% of iron in the composition, which would be lower than what is required in the claim. For completeness it is noted that the reference of iron concentration in Bedrnik refers to the phosphating solution itself. Thus the iron content would be that which is released from the substrate, rather than the content of iron which is present in the coating on the substrate.
Applicant argues that Matzdorf does not etch the method including the substrate having the coating including one or more of Mn, Sn, or Fe. This is moot in view of new grounds of rejection. Specifically, galvanized steel is understood to usually include a coating with reaction products of Fe and Zn, as clearly described by Wetzel. New grounds of rejection are presented.
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.
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CHRISTOPHER S. KESSLER
Primary Examiner
Art Unit 1734
/CHRISTOPHER S KESSLER/Examiner, Art Unit 1759
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