DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicants’ submission filed on 9/3/2026 has been entered.
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 .
Drawings
New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because Figures 3, 4, and 5 are not compliant. With regards to Figure 3, The Office will only accept photographs in utility and design patent applications if photographs are the only practicable medium for illustrating the claimed invention (37 CFR 1.84(b)(1). With regards to Figures 4 and 5, said figures do not have satisfactory reproduction characteristic in accordance with 37 CFR 1.84 (l) . Applicant is advised to employ the services of a competent patent draftsperson outside the Office, as the U.S. Patent and Trademark Office no longer prepares new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 21-23 and 34 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. There is no support in the original disclosure “ a longest filiform track length of 1.17 mm or less, as measured by scribing a 1.5 inch line through the phosphonate functionalized layer to expose the metallic substrate and subjecting the vehicle wheel to ASTM B368-09 (2014).” Specifically, the specification does not state the line should be scribed through the phosphonate functionalized layer.
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 21-23 and 28- 34 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.
With regards to claims 21-23 and 34, said claims are held to be indefinite because it is unclear what is meant by “a longest filiform track length of 1.17 mm or less, as measured by scribing a 1.5 inch line through the phosphonate functionalized layer to expose the metallic substrate and subjecting the vehicle wheel to ASTM B368-09 (2014)” as the specifics of the test method to make such a determination are not specified with sufficient detail to allow one of ordinary skill in the art to duplicate the invention. Specifically, it is unclear how wide , how deep, and with how much force is utilized to scribe the substrate. It is also unclear how long after the ASTM standard is run the filiform track length is measured and what is meant by “a filament-like corrosion originating from the scribe.”
With regards to claims 28-33, said claims are held to be indefinite because the test for determining lightness is not set out with sufficient detail to allow one of ordinary skill in the art to duplicate the claimed invention. For example, said results are known to be heavily dependent upon illumination and detection angles, but neither is claimed or set forth in the specification.
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) 15, 18-20, 24-27 and 35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Karmaschek et al (US 5,584,946) in view of Marinelli et al (US 6,167,609) and Fish et al (US 2013/0282959), as evidenced by “Aqueous phosphonic acid treatments of aluminum: effect of oxide dissolution and re-oxidation on adsorbate formation”.
Karmaschek teaches a conversion coated aluminum substrates used to make automotive wheels (col 1, line 24+).
Karmaschek does not teach that the conversion coating should comprise the claimed phosphonate conversion coating. However, Marinelli teaches an article comprising a metallic substrate comprising an aluminum alloy (abstract); and a phosphonate (claim 6) functionalized layer (abstract) on at least a region of the metallic substrate. Said functionalized layer will inherently possess phosphonate groups bonded to the metallic substrate through P-O-AL bonds (See evidentiary reference). The phosphonate group of Marinelli is bonded directly to a metal atom of the metallic substrate and teaches the coating improves adhesion to the metal substrate (see Field of Invention). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to utilize the phosphonate conversion coating of Marinelli as the conversion coating of Karmaschek. The motivation for doing so would have been such coatings improve adhesion to the metal substrate.
Karmaschek also does not teach the conversion coated metal wheel should further comprise an optically clear coating. However, Fish teaches a clear siloxane rein that proves a hard, heat resistant, chemical resistant coating on substrate (0006) such as aluminum wheels (0044). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to apply the siloxane coating of Fish to the conversion coated aluminum wheel of Karmaschek. The motivation for doing so would have been to provide chemical, abrasion, and heat resistance to eh substrate.
With regard to claim 16, Marinelli the phosphonate functionalized layer comprises a phosphonate group bonded to the metallic substrate (claim 1)
With regards to claim 18, Fish renders obvious the application of a siloxane coating.
With regards to claim 19, Karmaschek teaches the article may be an automotive wheel, reading on the claimed automotive component and transportation component.
With regards to claim 20, Karmaschek teaches the article is a vehicle wheel.
With regards to claim 24, Fish teaches the coating comprises a siloxane.
With regards to claim 25, Marinelli teaches the phosphonate functionalized layer enhances adhesion of the coating to the metallic substrate (see Field of Invention).
With regards to claim 26, Karmaschek teaches the metallic substrate may comprise a 6000 series aluminum alloy (see examples).
With regards to claim 27, Karmaschek teaches the metallic substrate may comprise a 6000 series aluminum alloy (see examples).
With regards to claim 35, the phosphonate group of Marinelli is bonded directly to a metal
atom of the metallic substrate and teaches the coating improves adhesion to the metal substrate (see Field of Invention).
Claim(s) 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Karmaschek et al (US 5,584,946) in view of Marinelli et al (US 6,167,609) and Askin (US 2014/083861), as evidenced by “Aqueous phosphonic acid treatments of aluminum: effect of oxide dissolution and re-oxidation on adsorbate formation”.
Karmaschek teaches a conversion coated aluminum substrates used to make automotive wheels (col 1, line 24+).
Karmaschek does not teach that the conversion coating should comprise the claimed phosphonate conversion coating. However, Marinelli teaches an article comprising a metallic substrate comprising an aluminum alloy (abstract); and a phosphonate (claim 6) functionalized layer (abstract) on at least a region of the metallic substrate. Said functionalized layer will inherently possess phosphonate groups bonded to the metallic substrate through P-O-AL bonds (See evidentiary reference). The phosphonate group of Marinelli is bonded directly to a metal atom of the metallic substrate and teaches the coating improves adhesion to the metal substrate (see Field of Invention). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to utilize the phosphonate conversion coating of Marinelli as the conversion coating of Karmaschek. The motivation for doing so would have been such coatings improve adhesion to the metal substrate.
Said references are relied upon as above, but do not teach that the International Commission on Illumination LAB (CIELAB) lightness value (L*) of the vehicle wheel is no greater than 32, as measured with a BYK-Gardner Spectro Guide 45/0 Spectrophotometer. However, Askin teaches that facades for products such as aluminum wheels must be selected based upon desired visual appearance. Askin teaches selecting a preselected surface appearance based upon the CIELAB of L (0018) and ensuring the resulting product has an appearance within a preset L tolerance (0018). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to optimize the L value of the wheel disclosed in Karmaschek. The motivation for doing so would have been to obtain a product with the desired consumer aesthetic appeal. a polymer coating for application to substrates such as aluminum wheels (0087) wherein the coating preferably has a (CIELAB) lightness value (L*) of the vehicle wheel is no greater than 30 (0042),
Claim(s) 29-33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Karmaschek et al (US 5,584,946) in view of Marinelli et al (US 6,167,609) and Askin (US 2014/083861), as applied to claims above, and further in view of Fish et al (US 2013/0282959), as evidenced by “Aqueous phosphonic acid treatments of aluminum: effect of oxide dissolution and re-oxidation on adsorbate formation”.
With regard to claim 29, said references are relied upon as above, but does not teach the conversion coated metal wheel should further comprise an optically clear coating. However, Fish teaches a clear siloxane rein that proves a hard, heat resistant, chemical resistant coating on substrate (0006) such as aluminum wheels (0044). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to apply the siloxane coating of Fish to the conversion coated aluminum wheel of Karmaschek. The motivation for doing so would have been to provide chemical, abrasion, and heat resistance of the substrate.
With regards to claim 30, Fish teaches the coating comprises a siloxane.
With regards to claim 31, Marinelli teaches the phosphonate functionalized layer enhances
adhesion of the coating to the metallic substrate (see Field of Invention).
With regards to claim 32, Karmaschek teaches the metallic substrate may comprise a 6000 series aluminum alloy (see examples)..
Response to Arguments
Applicants’ arguments filed 9/3/2026 have been fully considered are moot in view of the new grounds of rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
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KEVIN R. KRUER
Examiner
Art Unit 1787
/KEVIN R KRUER/Primary Examiner, Art Unit 1787
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