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 .
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 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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office Action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on January 13, 2026 has been entered.
Response to Amendments/Arguments
The cancelation of claims 1-22 and amendments made to claims 23, 26-27 and 31, as filed on January 13, 2026, are acknowledged.
Applicant’s arguments with respect to amended claim 23 have been considered but are moot because the arguments do not apply to new ground(s) of rejection in this Office Action necessitated by the amendment.
Specification
The Specification is objected to because of the following informalities:
The unit “uS/cm” in paragraphs [0005], [0029], [0038] and [0039] should be “mS/cm”.
Appropriate correction is required.
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.
Claims 23-25, 27-33 and 39 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schultz et al. (US20040043158).
Regarding claim 23, Schultz discloses a continuous coil pretreatment process (paragraphs 0009-0010) comprising: (a) applying a cleaner to a surface of an aluminum sheet (alkaline surface cleaner, paragraph 0018); (b) after the applying step (a), removing at least some surface material from the surface of the aluminum sheet, wherein the surface material comprises at least one of an oxide, entrapped lubricant, and debris, and wherein the removing comprises applying an etchant to the surface of the aluminum sheet (desmutted in an aqueous solution containing nitric acid and ammonium hydrogen fluoride, paragraph 0018); then (c) rinsing the surface of the aluminum sheet with a solvent (rinsed with water, paragraph 0012); then (d) applying the pretreatment to the surface of the aluminum sheet, wherein the pretreatment comprises a vinylphosphonic acid-acrylic acid copolymer (VPA-AA, paragraph 0018); and wherein the applying step comprises: (i) forming a monolayer on the aluminum sheet from the vinylphosphonic acid-acrylic acid copolymer (a primer layer of VPA-AA, paragraph 0014); then (e) removing at least some excess vinylphosphonic acid-acrylic acid copolymer from the aluminum sheet (unreacted VPA-AA copolymer removed, paragraph 0015); wherein the removing comprises applying a solvent to the monolayer of the vinylphosphonic acid-acrylic acid copolymer (water reads on a solvent, paragraph 0015); and wherein the excess vinylphosponic acid-acrylic acid copolymer comprises unattached vinylphosponic acid-acrylic acid copolymer (the portion of VPA-AA unreacted with the oxide, paragraph 0015); and then (f) drying the surface of the aluminum sheet (paragraph 0023). Schultz is silent about the limitation in the thereby clause. However, it is noted that the instant claim is drawn to a method claim, and the recitation of “thereby creating a water break free surface” in the method claim simply expresses the intended result of the recited process; therefore, it is not accorded patentability weight. See MPEP 2111.04.
Regarding claim 24, Schultz discloses wherein the surface material comprises aluminum oxide (paragraph 0011).
Regarding claim 25, Schultz discloses wherein the rinsing step (c) immediately follows the removing step (b), and wherein the applying step (d) immediately follows the rinsing step (c) (paragraphs 0012-0013).
Regarding claim 27, Schultz discloses wherein the forming step (d) comprises reacting at least some of the vinylphosphonic acid-acrylic acid copolymer with the surface of the aluminum sheet, thereby forming the monolayer (paragraphs 0011 and 0014).
Regarding claims 28-29, Schultz discloses wherein the pretreatment comprises from about 0.1 wt. % to about 2 wt. % vinylphosphonic acid-acrylic acid copolymer (1-20 g/L, paragraph 0013).
Regarding claim 30, the limitation recited in the “wherein” clause in the method claim simply expresses the intended result of the recited process; therefore, it is not accorded patentability weight. See MPEP 2111.04.
Regarding claim 31, Schultz discloses wherein the water break free surface is a first water break free surface located on a first side of the aluminum sheet, wherein the monolayer is a first monolayer, and wherein the applying step (d) comprises forming, from the vinylphosphonic acid-acrylic acid copolymer, a second monolayer on a second side of the aluminum sheet (dipping into the primer composition indicates that both sides of the aluminum sheet is treated, paragraph 0014). It is noted that the instant claim is drawn to a method claim, and the limitation “wherein both the first and second monolayers realize a phosphorous coat weight of from 0.4 to 0.7 mg of P perm2” simply expresses the intended result of the recited process; therefore, it is not accorded patentability weight. See MPEP 2111.04.
Regarding claim 32, the limitation recited in the “wherein” clause in the method claim simply expresses the intended result of the recited process; therefore, it is not accorded patentability weight. See MPEP 2111.04.
Regarding claim 33, Schultz discloses wherein the etchant comprises nitric acid (paragraph 0018).
Regarding claim 39, Schultz discloses wherein the aluminum sheet is one of a 5XXX and 6XXX aluminum alloy (paragraphs 0010).
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 of this title, 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 26 is rejected under 35 U.S.C. 103 as being obvious over Schultz et al. (US20040043158) as applied to claim 23 above, in view of Czika et al. (US20110189401).
Regarding claim 26, Schultz is silent about wherein the rinsing step (c) comprises cascade rinsing, wherein the solvent comprises water, and wherein the rinsing comprises a last rinsing step, wherein the last rinsing step comprises applying deionized water having a conductivity of 25 mS/cm to the surface of the aluminum sheet. However, Schultz discloses that the rinsing step is performed using water (paragraph 0012). In addition, Czika teaches that a cascade rinsing process can be used for resource-conserving use of rinse water (abstract). Therefore, it would have been obvious to one of ordinary skill, in the art before the effective filing date of the claimed invention, to use a cascade rinsing as taught by Czika for the rinsing step in the method Schultz, in order to resource-conserve rinse water. Czika further teaches that the last rinsing step comprises applying deionized water having a conductivity of <50 mS/cm (Table 1), which encompasses the conductivity recited in the instant claim. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I).
Claims 34-38 are rejected under 35 U.S.C. 103 as being unpatentable over Schultz et al. (US20040043158) as applied to claim 33 above, in view of Mickelson et al. (US3448055).
Regarding claim 34, Schultz is silent about wherein the etchant comprises from 0.1 to 10 wt. % sulfuric acid. However, Schultz discloses that the etchant is used to desmutt the aluminum surface (paragraph 0018). In addition, Mickelson teaches an etchant comprising 10-70 wt.% sulfuric acid for desmutt aluminum surfaces (lines 18-29, column 2). Therefore, it would have been obvious to one of ordinary skill, in the art before the effective filing date of the claimed invention, to use a known etchant as taught by Mickelson to desmutt the aluminum surface in the method of Schultz, with a reasonable expectation of success. It has been held that substituting equivalents known for the same purpose is obvious. See MPEP 2144.06 II. The concentration range of the sulfuric acid disclosed by Mickelson overlaps with the range recited in the instant claim. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I).
Regarding claims 35-36, Schultz in view of Mickelson is silent about wherein the etchant comprises no more than 1000 ppm of aluminum ions or magnesium ions. However, neither Schultz nor Mickelson requires the etchant to comprise any metal ions (Schultz, paragraph 0018; Mickelson, lines 18-29, column 2). Therefore, it would have been obvious to one of ordinary skill, in the art before the effective filing date of the claimed invention, to use an etchant comprising no or minimum amount of metal ions, including aluminum and magnesium ions in the recited ranges, with a reasonable expectation of success.
Regarding claim 37, Schultz discloses wherein the removing step (e) occurs right after the applying step (d) (paragraphs 0014-0015). Schultz is silent about the time between the two steps. However, it would have been obvious to one of ordinary skill, in the art before the effective filing date of the claimed invention, to carry out step (e) as soon as possible after the step (d), in order to improve overall process time.
Regarding claim 38, Mickelson discloses wherein the etchant comprises a surfactant (line 27, column 2).
Claims 23, 27-32 and 39-42 are rejected under 35 U.S.C. 103 as being obvious over Guthrie et al. (US6020030) in view of Schultz et al. (US20040043158).
Regarding claim 23, Guthrie discloses a continuous coil pretreatment process (abstract; lines 15-16, column 3) comprising: (a) applying a cleaner to a surface of an aluminum sheet (lines 17-21, column 4); then (c) rinsing the surface of the aluminum sheet with a solvent (water reads on a solvent, lines 17-22, column 4); then (d) applying the pretreatment to the surface of the aluminum sheet, wherein the pretreatment comprises a vinylphosphonic acid-acrylic acid copolymer (VPA-AA, line 23-26, column 4); and wherein the applying step comprises: (i) forming a monolayer on the aluminum sheet from the vinylphosphonic acid-acrylic acid copolymer (a layer comprising a reaction product of the copolymer with aluminum oxide or hydroxide reads on a monolayer, lines 28-32, column 4); then (e) removing at least some excess vinylphosphonic acid-acrylic acid copolymer from the aluminum sheet (lines 33-34, column 4); wherein the removing comprises applying a solvent to the monolayer of the vinylphosphonic acid-acrylic acid copolymer (water reads on a solvent, lines 33-34, column 4); and wherein the excess vinylphosponic acid-acrylic acid copolymer comprises unattached vinylphosponic acid-acrylic acid copolymer (lines 28-34, column 4); and then (f) drying the surface of the aluminum sheet (lines 43-44, column 4).
Guthrie is silent about (b) after the applying step (a), removing at least some surface material from the surface of the aluminum sheet, wherein the surface material comprises at least one of an oxide, entrapped lubricant, and debris, and wherein the removing comprises applying an etchant to the surface of the aluminum sheet. However, Schultz discloses an aluminum sheet pretreatment process comprising: applying the pretreatment to the surface of the aluminum sheet, wherein the pretreatment comprises a vinylphosphonic acid-acrylic acid copolymer (VPA-AA, paragraph 0018), wherein a step of removing at least some surface material from the surface of the aluminum sheet, wherein the surface material comprises at least one of an oxide, entrapped lubricant, and debris, and wherein the removing comprises applying an etchant to the surface of the aluminum sheet (desmutted in an aqueous solution containing nitric acid and ammonium hydrogen fluoride, paragraph 0018), is performed after the alkaline cleaning step and before the pretreatment step with vinylphosphonic acid-acrylic acid copolymer (VPA-AA, paragraph 0018). Therefore, it would have been obvious to one of ordinary skill, in the art before the effective filing date of the claimed invention, to use known process steps performed to aluminum surface before the pretreatment step with vinylphosphonic acid-acrylic acid copolymer as taught by Schultz, in the method of Guthrie, with a reasonable expectation of success. It has been held that combining prior art elements according to known methods to yield predictable results is obvious. See MPEP 2143 I.(A).
Guthrie is silent about the limitation in the thereby clause. However, it is noted that the instant claim is drawn to a method claim, and the recitation of “thereby creating a water break free surface” in the method claim simply expresses the intended result of the recited process; therefore, it is not accorded patentability weight. See MPEP 2111.04.
Regarding claim 27, Guthrie discloses wherein the forming step (d) comprises reacting at least some of the vinylphosphonic acid-acrylic acid copolymer with the surface of the aluminum sheet, thereby forming the monolayer (lines 28-32, column 4).
Regarding claims 28-29, Guthrie discloses wherein the pretreatment comprises from 0.4 wt. % to 1 wt. % vinylphosphonic acid-acrylic acid copolymer (4-10g/L, lines 1-4, column 3).
Regarding claim 30, the limitation recited in the “wherein” clause in the method claim simply expresses the intended result of the recited process; therefore, it is not accorded patentability weight. See MPEP 2111.04.
Regarding claim 31, Guthrie discloses wherein the water break free surface is a first water break free surface located on a first side of the aluminum sheet, wherein the monolayer is a first monolayer, and wherein the applying step (d) comprises forming, from the vinylphosphonic acid-acrylic acid copolymer, a second monolayer on a second side of the aluminum sheet (lines 13-25, column 3; lines 28-32, column 4; aluminum sheet passing through the pretreatment solution indicates that both sides of the aluminum sheet is treated). It is noted that the instant claim is drawn to a method claim, and the limitation “wherein both the first and second monolayers realize a phosphorous coat weight of from 0.4 to 0.7 mg of P perm2” simply expresses the intended result of the recited process; therefore, it is not accorded patentability weight. See MPEP 2111.04.
Regarding claim 32, the limitation recited in the “wherein” clause in the method claim simply expresses the intended result of the recited process; therefore, it is not accorded patentability weight. See MPEP 2111.04.
Regarding claim 39, Guthrie discloses wherein the aluminum sheet is one of a 5XXX and 6XXX aluminum alloy (lines 22-25, column 2).
Regarding claim 40, Guthrie discloses wherein the aluminum sheet is AA5182 (lines 17-18, column 4).
Regarding claim 41, Guthrie discloses wherein the aluminum sheet is in coiled form prior to the applying step (a) (lines 17-19, column 4).
Regarding claim 42, Guthrie discloses after the drying step (f), recoiling the aluminum sheet (lines 43-44, column 4).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIONG-PING LU whose telephone number is (571) 270-1135. The examiner can normally be reached on M-F: 9:00am – 5:00pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua L Allen, can be reached at telephone number (571)270-3176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIONG-PING LU/
Primary Examiner, Art Unit 1713