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 .
The amendment filed 11/24/2025 has been entered. Claims 4-5, 12-19, 22, 28, 31-33, and 35-40 have been canceled. Claims 1-3, 6-11, 20-21, 23-27, 29-30, 34, and 41-42 are pending in the application. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Election/Restrictions
Applicant's election with traverse of Group I, Claims 1-3, 6, and 7, in the reply filed on 11/24/2025 is acknowledged. The traversal is on the ground(s) that the “claims of Groups III-VI depend, directly or indirectly, from independent claim 1 of Group I”, and ‘[t]herefore, all of the claims of Groups I and III-VI are linked by the same or corresponding [alleged] special technical features recited in independent claim 1, as amended in [the] response,” arguing that International Patent Publication No. WO-2020/0167758 to Brown-Tseng cited in the Restriction fails to teach or suggest a pretreatment composition as amended wherein the total fluoride amount is 1,000 ppm to 5,000 ppm based on total weight of the pretreatment composition (see section II of the response, p. 7). This is not found persuasive because although Brown-Tseng, which was originally cited as an X reference in the related International Search Report (ISR) based upon the originally claimed pretreatment composition comprising a total fluoride amount of 1,000 ppm to 25,000 ppm, does not specifically disclose a pretreatment composition comprising a total fluoride amount of 1,000 ppm to 5,000 ppm as amended, the linking technical feature(s) as argued by the Applicant with respect to Groups I and III-VI as amended, i.e., the pretreatment composition of amended claim 1, is not a special technical feature as it (still) does not make a contribution over the prior art in view of Silvernail (WO2013/052195A2), also cited as an X reference in the related ISR, given that Silvernail discloses at least one working example comprising a pretreatment composition comprising zirconium (a Group IVB metal) present in an amount of 1000 ppm falling within the claimed 200 ppm to 5,000 ppm based on total weight of the pretreatment composition; a total fluoride content provided by hexafluorozirconic acid utilized as a source of zirconium falling within the claimed amount of 1,000 ppm to 5,000 ppm based on total weight of the pretreatment composition; and an electropositive metal comprising copper as in amended claim 1 (see working examples, particularly Pretreatment 5). Hence, the linking technical feature between Groups I and III-VI, i.e., the pretreatment composition of claim 1 as argued by the Applicant, is not a special technical feature in the art, and thus, Groups I and III-VI lack unity of invention.
The requirement is still deemed proper and is therefore made FINAL.
Claims 8-11, 20-21, 23-27, 29-30, 34, and 41-42 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/24/2025.
Claim Interpretation
With respect to the claimed “substantially free” limitation as recited in claims 2-3, per Paragraph 0033 of the specification as filed, “the term ‘substantially free’ means that a particular material is present in a mixture or a composition (or a coating, film, or layer formed therefrom) in an amount of less than 5 parts per million (ppm) based on total weight of the mixture or composition.”
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-2 and 6-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Silvernail (WO2013/052195A2, on IDS dated 2/1/2024). Silvernail discloses a rheology modified pretreatment composition comprising (a) a group IIIB metal, a group IVB metal and/or a group VB metal; and (b) a rheology modifier, for treating metal substrates (Abstract) such as steel substrates (Paragraph 00011); wherein as noted above, Silvernail discloses at least one working example comprising a pretreatment composition comprising zirconium (a Group IVB metal) present in an amount of 1,000 ppm, provided by hexafluorozirconic acid (H2ZrF6), falling within the claimed 200 ppm to 5,000 ppm based on a total weight of the pretreatment composition; a total fluoride content provided by the hexafluorozirconic acid (as a source for the 1,000 ppm Zr above) falling within the claimed amount of 1,000 ppm to 5,000 ppm based on a total weight of the pretreatment composition (calculated based upon the 1,000 ppm Zr provided by H2ZrF6 which is the sole source of fluoride in the composition); and an electropositive metal comprising copper as in amended claim 1, particularly in an amount of 40 ppm Cu falling within the claimed range of instant claim 6 (see working examples, particularly Pretreatment 5). Hence, Silvernail anticipates instant claims 1 and 6.
With respect to instant claim 2, given that the Pretreatment 5 composition of Silvernail only contains the hexafluorozirconic acid in an amount to provide a Zr concentration of 1,000 ppm, copper nitrate to give a copper concentration of 40 ppm, LAPONITE OG (a lithium magnesium sodium silicate) as a rheology modifier, and H2O, and can be utilized to treat cold-rolled steel as in the examples (Paragraph 00011, Example 2) such that copper is the only “electropositive metal” in the composition as in instant claim 2, Silvernail anticipates instant claim 2.
With respect to instant claim 7, Silvernail discloses that in “certain embodiments, the pH of the pretreatment composition may be adjusted to a pH between 2 and 8, such as between 4 and 6, such as a pH of 5” (Paragraph 00033), and given that the Pretreatment 5 composition is adjusted to a pH of 5 before adding the hexafluorozirconic acid to give a zirconium concentration of 1000 ppm and the copper nitrate to give a copper concentration of 40 ppm, both of which would reduce the pH, Silvernail discloses the claimed invention with sufficient specificity to anticipate instant claim 7 (Paragraph 00086).
Claims 1, 6, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakayama (US2004/0244874A1). Nakayama discloses a surface treatment of a metal material containing iron and/or zinc, comprising (A) a compound containing at least one metal element selected from the group consisting of Ti, Zr, Hf and Si; (B) a compound containing fluorine as a supplying source of HF; and optionally (C) at least one compound containing at least one metal element selected from the group consisting of Ag, Al, Cu, Fe, Mn, Mg, Ni, Co and Zn; wherein when (C) is added, a molar ratio K=A/B between total mole weight A of metal elements of Ti, Zr, Hf and Si in the compound of (A) and mole weight B which when total fluorine atom in fluorine containing compound of component (B) is converted to HF is within the range of 0.03≤K≤0.167 (Abstract, Paragraphs 0017-0025 and 0040). Nakayama specifically discloses an example composition (Example 8) comprising an aqueous solution of hexafluorozirconate (IV) and hydrofluoric acid that is diluted by city water and to which NH4F is added to provide a solution whose K ratio of Zr and HF is 0.08 with a Zr mol concentration of 10 mmol/L (i.e., 912.2 ppm Zr and 2375 ppm total fluoride, calculated) and to which is further added 5 ppm Cu of Cu(NO3)2, 100 ppm of Mn of Mn(NO3)2, 1500 ppm of Zn of Zn(NO3)2 and aqueous ammonia to provide a treatment solution whose pH is 3.0 (as in instant claim 7) and free fluorine ion concentration is 200 ppm (Example 8, Paragraph 0085), thereby providing a “pretreatment composition” comprising Zr in an amount within the claimed range of 200 ppm to 5,000 ppm based on total weight of the pretreatment composition, total fluoride in an amount within the claimed range of 1,000 ppm to 5,000 ppm based on total weight of the pretreatment composition, and an electropositive metal comprising copper as in instant claim 1, particularly within the claimed range of 2 ppm to 200 ppm based on total weight of the pretreatment composition as in instant claim 6. Hence, Nakayama anticipates instant claims 1, 6 and 7.
Claims 1-2 and 6-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brouwer (USPN 8,815,021B2). Brouwer discloses a chromium-free aqueous agent for anti-corrosive treatment of metal surfaces (Abstract), such as iron, steel, galvanized and alloy-galvanized iron and steel as well as aluminum, zinc, and alloys thereof (Col. 9, lines 17-25), comprising: “(A) one or more water-soluble compounds containing at least one atom selected from elements titanium and/or zirconium, total concentration of said elements being no less than 2.5·10-4 mol/l, but no greater than 2.0·10-2 mol/l; (B) one or more water-soluble compounds, as a source of fluoride ions, containing at least one fluorine atom; the agent containing the elements of (A) and the fluorine of (B) in a molar ratio A:B of 1:z, z being a real number and greater than 6; (C) one or more water-soluble compounds, which release copper ions, containing at least one copper atom; and (D) one or more water-soluble and/or water-dispersible compounds, which release metal ions, but are not a source of fluoride ions, containing at least one metal atom selected from the group consisting of aluminum and iron; and optionally further containing calcium” (Claim 1). Brouwer specifically discloses a working example, B2, comprising 10.6 millimoles (mM) of Zr (~967 ppm Zr, i.e., a Group IVB metal present in an amount within the claimed range of 200 ppm to 5,000 ppm based on total weight of the composition), 65.8 mM of F (~1250 ppm F, i.e., total fluoride in an amount within the claimed range of 1,000 ppm to 5,000 ppm based on total weight of the composition), 1.6 mM of Cu (~102 ppm Cu, i.e., an electropositive metal comprising copper as in instant claim 1, particularly within the claimed range of 2 ppm to 200 ppm based on total weight of the composition as in instant claim 6), and 3.0 mM of Fe; as well as a working example, B5, comprising 8.2 mM Zr (~ 748 ppm Zr, i.e., a Group IVB metal present in an amount within the claimed range of 200 ppm to 5,000 ppm based on total weight of the composition), 79.0 mM of F (~ 1501 ppm F, i.e., total fluoride in an amount within the claimed range of 1,000 ppm to 5,000 ppm based on total weight of the composition), 0.12 mM Cu (~ 7.6 ppm Cu, i.e., an electropositive metal comprising copper as in instant claim 1, particularly within the claimed range of 2 ppm to 200 ppm based on total weight of the composition as in instant claim 6), and 19.8 mM Al, for application on a steel surface (MBS 25 from Chemetall) such that the above exemplified composition(s) contain only Cu as an “electropositive metal” (i.e., the “composition is substantially free of a second electropositive metal” as in instant claim 2). Hence, Brouwer anticipates instant claims 1-2 and 6.
With respect to instant claim 7, Brouwer discloses that the pH of the agent according to the invention is preferably no less than 2.5 and no more than 5, particularly preferably no less than 3.5 and particularly preferably does not exceed 4.5 (Col. 7, lines 52-59), thereby anticipating instant claim 7.
Claims 1-3 and 6-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Grimes (WO85/05131A1). Grimes discloses an “acidic aqueous coating solution to be applied to galvanized metals to increase their resistance to corrosion which contains from 0.1 to 10 g/l, based on fluoride content, of a fluoride-containing compound, and from 0.015 to 6 g/l, based on metal content, of a salt of cobalt, copper, iron, manganese, nickel, strontium or zinc” (Abstract). More particularly, Grimes discloses an “aqueous coating solution for metals, such as galvanized iron and steel, aluminum, and ferrous metals such as steel, which contains: (a) from 0.1 to 10 g/l preferably from 0.1 to 2.0 g/l, based on fluoride content [i.e., 100 to 2000 ppm fluoride], of a fluoride containing compound which is either (i) a fluorometallic acid such as HBF4, H2SiF6, H2TiF6, and H2ZrF6 or an ammonium or alkali metal salt thereof; (ii) hydrofluoric acid or a salt thereof; or (iii) a mixture of (i) and (ii); (b) from 0.015 to 6 g/l [i.e., 15 to 6000 ppm], preferably from 0.1 to 1.0 g/l, [i.e., 100 to 1000 ppm] based on metal content, of a salt or a metal such as cobalt, copper [as in instant claim 1], iron, manganese, nickel, strontium, and zinc, or a mixture of two or more of the foregoing; and, optionally, (c) a sequestrant in an amount of from a 1:1 molar ratio to a 3:1 molar ratio of sequestrant to metal content of (b) ; and/or (d) from 0.1 to 3.0 g/l, preferably from 0.1 to 1 g/l, of a polymer of acrylic acid, methacrylic acid, or an ester thereof with a C1 to C8 alkanol” (page 3, line – page 4, line 6); wherein “[w]ith respect to component (a)(i) above, H2TiF6 is the preferred fluorometallic acid and is commonly used as a 60% aqueous solution in the preparation of the compositions…and is preferably used in a quantity equal to about 1.4 g/liter of fluoride,” i.e., 1400 ppm fluoride falling within the claimed total fluoride amount of 1,000 ppm to 5,000 ppm and also providing a content of Ti – a Group IVB metal – falling within the claimed amount of 200 ppm to 5,000 ppm (page 4, lines 7-11). Grimes discloses that it is preferred to utilize prior prepared concentrated aqueous solutions of the above ingredients, which are added to water in an amount to provide a coating solution of the desired composition and concentration, wherein the concentrated aqueous solutions contain component (a) in a concentration of at least about 1 g/l, preferably from about 1 to about 15 g/l based on fluoride content, so that dilution with water, preferably a ten-fold dilution by volume of the concentration, will provide an aqueous coating composition having the desired composition and concentration wherein preferably deionized water is used for dilution in order to avoid any possible interference from undesirable ions (page 5, lines 15-35). Grimes specifically discloses a working example wherein a concentrate is formed from 34.2 g of H2TiF6 (60% aqueous), 10.0 g of CuSO4·5H2O, and the remainder being water to provide a desired volume of 1 liter of concentrate (Example 9), and then 10 liters of this concentrate is diluted to 100 liters with deionized water and the pH adjusted to about 4.0 (as in instant claim 7) by the addition of ammonium hydroxide (Examples, particularly Examples 9 and 11-12), thereby providing a “pretreatment composition” as instantly claimed, comprising titanium as a Group IVB metal in an amount falling within the claimed 200 ppm to 5,000 ppm based on total weight of the composition; total fluoride in an amount falling within the claimed 1,000 ppm to 5,000 ppm based on total weight of the composition; and copper as the claimed “electropositive metal comprising copper” as in instant claim 1 and more particularly as the only “electropositive metal” and only additional metal aside from Ti present in the composition such that the composition “is substantially free of a second electropositive metal” as in instant claim 2 and “is substantially free of a third metal” as in instant claim 3. Hence, Grimes anticipates instant claims 1-3 and 7.
With respect to instant claim 6, as noted above, Grimes discloses that the composition comprises from 0.015 to 6 g/l (i.e., from 15 to 6,000 ppm, substantially overlapping almost the entire claimed range of 2 ppm to 200 ppm of instant claim 6), preferably from 0.1 to 1.0 g/l (i.e., 100 to 1000 ppm, overlapping slightly more than 50% of the instantly claimed range), based on metal content, of a salt of cobalt, copper, iron, manganese, nickel, strontium, or zinc; and given that Grimes specifically discloses a working example utilizing copper as the metal of component (b) in an amount of about 255 ppm based on the total weight of the composition (Examples, particularly Examples 9 and 11-12), the Examiner takes the position that Grimes discloses the claimed invention with sufficient specificity to anticipate instant claim 6.
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.
Alternatively, claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Grimes (WO85/05131A1), as applied above to claims 1-3 and 6-7 (and incorporated herein by reference), wherein although the Examiner is of the position that the reference is anticipatory with respect to instant claim 6 for the reasons discussed in detail above, the Examiner alternatively takes the position that the claimed invention as recited in instant claim 6 would have been obvious over the above teachings of Grimes given again that Grimes clearly teaches that the composition may comprise a copper salt as the above component (b) in a metal/copper content of 0.015 to 6 g/l, substantially overlapping almost the entire claimed range of 2 ppm to 200 ppm; preferably from 0.1 to 1.0 g/l, overlapping slightly more than 50% of the instantly claimed range, such that a prima facie case of obviousness exists with respect to the overlapping ranges, especially in the absence of any clear showing of criticality and/or unexpected results of the claimed invention over the teachings of Grimes, particularly the working examples of Grimes, and that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Citation of pertinent prior art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Milošev (Review—Conversion Coatings Based on Zirconium and/or Titanium) provides a literature review of conversion coatings based on zirconium and/or titanium, particularly those typically produced utilizing hexafluorozirconic acid H2ZrF6 and/or hexafluorotitanic acid H2TiF6, and effects of various parameters on the resulting coatings including concentration as well as additives such as copper. Matsukawa (US2008/0286470A1) discloses a chemical conversion coating agent that can be applied to all metals, wherein the coating agent comprises: i) at least one kind selected from the group consisting of Zr, Ti, and Hf, preferably in a content of 20-10,000 ppm, more preferably 50-2000 ppm; ii) fluorine; and iii) an adhesion and corrosion resistance imparting agent that is at least one kind selected from the group consisting of: a) 1 to 5000 ppm (metal ion concentration) of at least one kind of metal ion (A) selected from the group consisting of Zn, Mn, and Co; b) 1 to 5000 ppm (metal ion concentration) of alkaline earth metal ion (B); c) 1 to 5000 ppm (metal ion concentration) of metal ion (C) of Group III in the periodic table; d) 0.5 to 100 ppm (metal ion concentration) of Cu ion (D); and e) 1 to 5000 ppm (as a silicon component) of a silicon-containing compound (E).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787