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 .
DETAILED ACTION
Status of Claims
Responsive to the amendment filed 11 June 2026, claims 1 and 3-5 are amended and claims 14-20 are added. Claim 2 is cancelled. Claims 10-13 are withdrawn. Claims 1, 3-9, and 14-20 are currently under examination.
Status of Previous Rejections
Responsive to the amendment filed 11 June 2026, mew grounds of rejection are presented.
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 1, 3-9, and 14-20 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 1 recites the limitation "when phosphoric acid is (i) the phosphoric acid, phosphoric acid is present in an amount of 10 mg/L to 200 mg/L" in the amended portion. It is unclear what is meant.
Phosphoric acid is mentioned for the first instance as element (i) in the previously presented portion, and once as a newly added portion, which corresponds to cancelled claim 2. The new limitation requires that ”when the phosphoric acid is (i) the phosphoric acid,” that the phosphoric acid has a specific concentration. Element (i) is originally expressed as being phosphoric acid. It is not clear if “phosphoric acid is…” was actually intended to refer to element (i) (“the phosphoric acid”), or instead to refer to the phosphorous compound.
As written the claim seems to require that IF phosphoric acid be phosphoric acid, then it must be present, and thus phosphoric acid would always be required in the claimed lightfastness improver since phosphoric acid is always phosphoric acid. If so, then it is not clear whether the limitation is optional as the claim elements (i) thru (iii) seem to be options selectable from a Markush group. However it is also unclear whether applicant intended that “phosphoric acid” in this case would actually mean “phosphorous compound” instead.
The point of infringement of claim 1 cannot be determined and the claim is indefinite. Each of claims 3-9, and 14-20 are dependent on claim 1 and are also indefinite.
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, 3-9, and 14-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KR101907204B1 (machine translation attached; hereinafter “Byun”).
Regarding claim 1, Byun teaches an anodizing method for aluminum (see abstract or first three paragraphs of translation). Byun teaches that a dye is included (See second page of translation). Byun teaches that the object to be anodized is degreased in an acid which may be phosphoric (see claims or second page of translation or Example 1). Byun teaches that the material is then anodized (see third page of translation or claims). Byun teaches that the etching is then performed on the anodized aluminum in order to improve the black point phenomenon, using an etching composition with etching inhibitor (see third page of translation, claims, and Example 2). Byun teaches that the etching inhibitor includes an aminophosphonic acid compound (see third page of translation and claims) Byun teaches in the Example 2 that the etching includes nitrilomethylphosphonic acid.
The chemical included in the etching composition of Byun of nitrilomethylphosphonic acid is an organic containing phosphate inherently. Applicant is directed to MPEP 2112. It is also a chelating agent inherently, as being described by applicant as containing the same structures present in phosphate-including chelating agents. The composition is a lightfastness improving agent inherently as being used in an anodizing process of aluminum in order to avoid a black point phenomenon. The same composition with the chemical having the same structure as claimed used in the same processes as claimed would have had the same effect as claimed inherently.
Regarding claim 3, Byun teaches in the Example 2 that the etching includes nitrilomethylphosphonic acid, meeting the requirement of a phosphorous compound of type (iii).
Regarding claim 4, Byun teaches in the Example 2 that the etching includes nitrilomethylphosphonic acid.
Regarding claim 5, Byun teaches in the Example 2 that the etching includes nitrilomethylphosphonic acid in a solution at 0.2 g/L, falling in the range as claimed.
Regarding claim 6, Byun teaches that a dye is included (See second page of translation).
Regarding claims 7-8, the claims are written as statements of intended use. See MPEP 2111.03. In this case the use of the claimed composition is not considered to limit the composition itself further than what is already claimed elsewhere.
Regarding claim 9, Byun teaches dyes and pigments (see second page of translation), and thus envisions organic (dye) vs. inorganic (pigment).
Regarding claim 14, Byun teaches that a degreasing includes phosphoric acid (see Example 1 and claims).
Regarding claim 15, Byun teaches in the Example 2 that the etching includes nitrilomethylphosphonic acid, meeting the requirement of a phosphorous compound of type (iii).
Regarding claim 16, Byun teaches in the Example 2 that the etching includes nitrilomethylphosphonic acid.
Regarding claim 17, Byun teaches in the Example 2 that the etching includes nitrilomethylphosphonic acid in a solution at 0.2 g/L, falling in the range as claimed.
Regarding claim 18, Byun teaches that acids such as benzoic acid may be included (See translation at page 3), meeting the limitation of an antifungal.
Regarding claims 19-20, the claims are written as statements of intended use. See MPEP 2111.03. In this case the means used to measure a lightfastness of a part which is processed using the claimed composition is not considered to limit the composition itself further than what is already claimed elsewhere.
Response to Arguments
Applicant’s arguments with respect to claim 1 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
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 CHRISTOPHER S KESSLER whose telephone number is (571)272-6510. The examiner can normally be reached 9-5:30.
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CHRISTOPHER S. KESSLER
Primary Examiner
Art Unit 1734
/CHRISTOPHER S KESSLER/Examiner, Art Unit 1759
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