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 .
Information Disclosure Statement
The information disclosure statements filed 3/19/2026 has been fully considered. An initialed IDS is enclosed herein.
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 § 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) 15-17 and 19 is/are rejected under 35 U.S.C. 102(a)(1)as being anticipated by Marinelli et al (US 6,167,609), as evidenced by “Aqueous phosphonic acid treatments of aluminum: effect of oxide dissolution and re-oxidation on adsorbate formation”.
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).
With regards to claim 16, the phosphonate functionalized layer comprises a phosphonate group bonded to the metallic substrate (claim 1)
With regards to claim 17, Marinelli teaches a coating may be deposited over at least a region of the phosphonate functionalized layer (col 4, lines 58+-wherein it is taught paint is applied to the treated substrate).
With regards to claim 19, Marinelli teaches the article is configured as an automotive component (abstract).
Claim(s) 15-18 is/are rejected under 35 U.S.C. 102(a)(1)as being anticipated by Wefers et al (US 5,132,181).
Wefers teaches an article comprising a phosphonic acid functionalized aluminum substrate (abstract). Said functionalized layer possess phosphonate groups bonded to the metallic substrate through P-O-AL bonds (See Figure 1).
With regards to claim 16, the phosphonate functionalized layer comprises a phosphonate group bonded to the metallic substrate (figures)
With regards to claims 17 and 18, a coating may be deposited over at least a region of the phosphonate functionalized layer. Wefers teaches suitable coatings for such substrates include (col 7, lines 25+) paints comprising acrylic resins, epoxies, , polyester resins, polyurethanes, silicone rubber, silicone resins, and, flurorocarbons. Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to apply acrylic resins, epoxies, , polyester resins, polyurethanes, silicone rubber, silicone resins, or flurorocarbons coatings to the substrate of Marinelli as Wefers teaches such coatings are commonly applied to functionalized aluminum substrates in order to improve the functionality thereof.
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) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Marinelli et al (US 6,167,609) evidenced by “Aqueous phosphonic acid treatments of aluminum: effect of oxide dissolution and re-oxidation on adsorbate formation”. , as applied to claims 15-17 and 19 above, and further in view of Wefers et al (US 5,132,181).
Marinelli is relied upon as above. Specifically, 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. The phosphonate functionalized layer comprises a phosphonate group bonded to the metallic substrate (claim 1) and may be further coated. Marinelli does not teach the coating may comprise at least one of a siloxane, a silazane, a fluoropolymer, an acrylic, an epoxy, a polyester, and a polyurethane. However, Wefers teaches an article comprising a phosphonic acid functionalized aluminum substrate (abstract). Wefers teaches suitable coatings for such substrates include (col 7, lines 25+) paints comprising acrylic resins, epoxies, , polyester resins, polyurethanes, silicone rubber, silicone resins, and, flurorocarbons. Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to apply acrylic resins, epoxies, , polyester resins, polyurethanes, silicone rubber, silicone resins, or flurorocarbons coatings to the substrate of Marinelli as Wefers teaches such coatings are commonly applied to functionalized aluminum substrates in order to improve the functionality thereof.
Claim(s) 20-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Marinelli et al (US 6,167,609) evidenced by “Aqueous phosphonic acid treatments of aluminum: effect of oxide dissolution and re-oxidation on adsorbate formation”, as applied to claims 15-17 and 19 above, and further in view of Karmaschek et al (US 5,584,946)
Marinelli is relied upon as above. Specifically, 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. The phosphonate functionalized layer comprises a phosphonate group bonded to the metallic substrate (claim 1) and the article is an automotive component. Marinelli does not teach the automotive component may comprise a vehicle wheel. However, Karmascheck teaches that conversion coated aluminum substrates are commonly used to make automotive wheels (col 1, line 24+). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to utilize Marnelli’s automotive component as an automotive wheel The motivation for doing so would have been wheels are a traditionally use of conversion coated aluminum articles.
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Marinelli et al (US 6,167,609) in view of Karmaschek et al (US 5,584,946), as applied to claims above, and further in view of Wefers et al (US 5,132,181), as evidenced by “Aqueous phosphonic acid treatments of aluminum: effect of oxide dissolution and re-oxidation on adsorbate formation”.
Marinelli in view of Karmaschek is relied upon as above. Specifically, 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. The phosphonate functionalized layer comprises a phosphonate group bonded to the metallic substrate (claim 1) and may be further coated. Marinelli does not teach the coating may comprise at least one of a siloxane, a silazane, a fluoropolymer, an acrylic, an epoxy, a polyester, and a polyurethane. However, Wefers teaches an article comprising a phosphonic acid functionalized aluminum substrate (abstract). Wefers teaches suitable coatings for such substrates include (col 7, lines 25+) paints comprising acrylic resins, epoxies, , polyester resins, polyurethanes, silicone rubber, silicone resins, and, flurorocarbons. Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to apply acrylic resins, epoxies, , polyester resins, polyurethanes, silicone rubber, silicone resins, or flurorocarbons coatings to the substrate of Marinelli as Wefers teaches such coatings are commonly applied to functionalized aluminum substrates in order to improve the functionality thereof.
Response to Arguments
Applicant's arguments filed 3/19/2026 have been fully considered but they are not persuasive.
Claim Rejections Under 35 U.S.C. § 102
Amended claim 15 recites an article comprising a metallic substrate comprising aluminum or an aluminum alloy, and a phosphonate functionalized layer on at least a region of the metallic substrate, wherein the phosphonate functionalized layer comprises a phosphonate group bonded to the metallic substrate through a P-O-A1 bond. The Office cites to Marinelli as allegedly anticipating the features of claim 15. Applicant respectfully disagrees with the Office. Specifically, applicant submits that one of ordinary skill in the art would conclude that the method of Marinelli does not result in the formation of a P-O-AI bond.
In support of said argument, Applicant submits herewith a declaration under 37 C.F.R. 1.132 of Doug Mason (hereinafter the "Declaration") wherein Mr. Mason explains that the formation of a P-O-A1 bond would not occur if the phosphonate containing acid is at a pH significantly less than the second pKa of the acid. Specifically, Mr. Mason states “If, however, the pH of the phosphonate-containing acid is significantly less than 5.5, it is not capable of forming the P-O-A1 bond because the H₂O₃P⁻ derivative is absent.” Mr. Mason explains that he, and any other persons having ordinary skill in the art would conclude that "the pH of the particularly preferred vinyl phosphonic acid in Marinelli was significantly lower than 5.5 as the only pH taught by Marinelli is in the range of 0-4. Marinelli does not teach or suggest a pH outside of this 0-4 range." Therefore, one of ordinary skill in the art would believe that Marinelli would not inherently result in the formation of a P-O-Al bond as required by independent claim 15, as amended. Said argument is noted but is not persuasive. Applicant’s attention is directed to the disclosure of “Aqueous phosphonic acid treatments of aluminum: effect of oxide dissolution and re-oxidation on adsorbate formation”. Said reference demonstrates a P-O-Al bond would form even at a pH of 2 (see Figure 1a). Furthermore, it is not clear on what basis declarant determines the phosphonic acid will not deprotonate at pHs less than 5.5 as the prior art (and the Table on page 4 of the declaration) seems to suggest the first deprotonation will occur at pHs as low as 1.5. Thus, applicant is requested to further clarify the argument relied upon in the declaration, and to provide evidence in support of said argument.
Furthermore, applicant points to Samples A & B, which were treated with a phosphonate-containing solution at pH of 1.5, exhibited loss of adhesion due to the lack of a strong bond between the metallic substrate and the phosphonate functionalized layer. In contrast, metallic substrate samples C and D, which were treated with a phosphonate-containing solution at a pH 6.5, exhibited no loss of adhesion. That is, increasing the pH of a phosphonic acid to be within the range of 5.5 to 8.5 unexpectedly resulted in the formation of a phosphonate functionalized layer via P-O-A1 bonding, as required by pending claim 15 of the Subject Application. Said argument is noted but is not persuasive as the claim does not require the pH of the phosphonic acid to be within the range of 5.5 to 8.5. Furthermore, applicant has not shown the formation of P-O-Al bonds (as claimed) is exclusive to or synonymous with a coating applied a pH range of 5.5-8.5. Thus, applicant’s argument is not commensurate in scope with the pending claims.
Applicant respectfully submits that Marinelli does not teach a pH for the step of interacting aluminum oxide in the surface layer with a phosphorus-containing organic acid, and a person having ordinary skill in the art would believe that the pH of the preferred vinyl phosphonic acid, as described by Marinelli, is significantly less than the second pKa of the acid. Applicant respectfully asserts that pending claim 15, as amended, is novel over Marinelli. Said argument is noted but is not persuasive as said argument is not commensurate in scope with the pending claims. Specifically, the claims do not require the pH of the claimed phosphonic acid is significantly more or less than the second pKa of the acid.
With regards to Wefers, applicant argues FIG. 1 of Wefers clearly shows the bond is not formed directly between the phosphorous-containing acid and the metallic substrate as recited in independent claim 15, as amended. Said argument is noted but is not persuasive as the argument is not commensurate in scope with the claims; the claims do not require that the bond is formed directly between the phosphorous-containing acid and the metallic substrate. As demonstrated by the evidentiary reference, the presence of a hydroxide layer on the surface of the substrate aids in the formation of a P-O-Al bond as claimed.
Thus, applicant’s arguments are not persuasive and the claims remain rejected for reasons of record.
Claim Rejections Under 35 U.S.C. § 103
Claim 21 stands rejected under 35 U.S.C. § 103 as allegedly being unpatentable over Marinelli in view of Karmaschek. As discussed above in section III, Marinelli does not teach or suggest a pH for the step of treating the surface layer with a phosphorus-containing organic acid. As such, one of ordinary skill in the art would not utilize Marinelli or Karmaschek, alone or in combination, to result in a phosphonate functionalized layer comprising a phosphonate group bonded to the metallic substrate through a P-O-Al bond, as recited in pending claim 15. The argument in favor of claim 15 applies with similar or equal force to claim 21. Said argument is not persuasive for the reasons given above.
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 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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