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 .
Claim Objections
Claims 2, 3, and 16 are objected to because of the following informalities:
The unit mg/m2 found in claims 2, 3, and 16 should read mg/m2.
There are two instances of repeated words in claim 16, “...at least at least 0.30 mm/kg...” [sic] and “...not more than more than 80 mg/m2...” [sic].
Appropriate correction is required.
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 3, 6, and 15 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 3, “... wherein the contacting with the conversion solution (III) in the second conversion stage in method step (iii) does not continue until there is an increase of more than 15 mg/m2 on the surfaces of steel and/or iron, but at least for such a period of time that the coating on said surfaces is increased by at least 2 mg/m2 [sic], in each case based on the elements Zr and/or Ti” renders the claim indefinite. It is unclear what is being continued, and what the conditions are for the recited continuation. It appears claim 3 is attempting to recite a surface density condition for the continuation of a second conversion stage. That is, the claim can be interpreted not letting the second conversion step to continue until there the surface density increases by 2-15 mg/m2. Even then, it is unclear what “continuing” the second conversion step means. If the second conversion step where to continue, the change in the conversion layer surface density would increase beyond the recited values. Overall, the wording of claim 3 makes it difficult to understand the metes and bounds of the invention. For the purpose of examination, it is determined that if the prior art teaches the limitations of claim 2, it also fulfills any limitations set forth by claim 3.
Claim 6, “...where F/mM and Me/mM are the free fluoride (F) or reduced zirconium and/or titanium concentration (Me) reduced by the unit of the concentration in mmol/kg”, in conjunction with Formula (1), renders the claim indefinite. It is unclear what exactly the terms “F/mM” and “Me/mM” correspond to. Based on the wording of the above quote, it appears that the “/mM” terms are indicators that signify that the concentration terms should have units of mmol/kg when conducting a calculation with Formula (1):
λ
=
F
/
m
M
M
e
/
m
M
However, the use of forward-slashes (/) suggest that that “F” and “Me” terms are being divided by an “mM” term. If this is the case, it is unclear what the “mM” terms entails. The above quote can also be interpreted as dividing the concentration terms (“F” and “Me”) by their units (e.g. mmol/kg). If this is the case, then the terms “F/mM” and “Me/mM” correspond to the magnitudes of the F and Me concentrations, and one must truncate their corresponding units before inputting them into Formula (1). For the purpose of examination, claim 6 will be interpreted as defining “F/mM” and “Me/mM” as the magnitudes of the F and Me concentrations in mmol/kg, and indicating that the mmol/kg units are not factored in when calculating the quotient λ defined by formula (1).
Claim 15, “... wherein the components of the series also have surfaces of zinc and/or aluminum in addition to the surfaces of steel and/or iron” renders the claim indefinite. It is unclear if the Zn and/or Al surfaces are placed on top of the pre-existing Fe/steel surface, or are placed adjacent to the pre-existing Fe/steel surfaces. For the purpose of examination, claim 15 will be interpreted as the components comprising Zn/Al surfaces adjacent to Fe/steel surfaces.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 7 and 18 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 7 (dependent of claim 1) claims that the metal (e.g. Zr/Ti) concentration in the aqueous solution used in the second conversion stage is less than 1.00 mmol/kg. However, claim 1 recites that the metal (e.g. Zr/Ti) concentration is at least 0.10 mmol/kg. Claim 7 includes a concentration range of less than 0.10 mmol/kg that is outside the claimed concentration range in claim 1. Therefore, claim 7 fails to further limit the claims on which it depends.
Claim 18 (dependent of claims 1 and 16) claims the following concentration ranges for the aqueous solution used in the second conversion stage:
A metal (Zr/Ti) concentration of less than 0.70 mmol/kg
A free fluoride concentration of at least 0.1 mmol/kg and less than 2.50 mmol/kg
However, claim 16 claims the following concentration ranges for the aqueous solution used in the second conversion stage:
A metal (Zr/Ti) concentration of less than 0.30 mmol/kg or more
A free fluoride concentration of at least 1.5 mmol/kg mmol/kg and less than 6.0 mmol/kg
Additionally, claim 1 claims the following concentration ranges for the aqueous solution used in the second conversion stage:
A metal (Zr/Ti) concentration of less than 0.10 mmol/kg or more
Claim 18 includes a metal (Zr/Ti) concentration range of less than 0.30 mmol/kg that is outside that claimed concentration range in claim 16 and a metal (Zr/Ti) concentration range of less than 0.10 mmol/kg that is outside the claimed metal (Zr/Ti) concentration range in claim 1. Additionally, claim 18 includes a free fluoride concentration range of 0.1-1.5 mmol/kg that is outside the claimed free fluoride concentration range in claim 16. Therefore, claim 18 fails to further limit the claims on which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-6, 9-10, 13-17, and 20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Harris (WO 2021/1071574 A1).
Regarding claim 1, Harris teaches a method for a treating and coating a metal substrate for increased corrosion resistance and paint adhesion. The metal surface may be steel [0045]. The taught method comprises:
A first pretreatment step, wherein the substrate is immersed in an aqueous solution comprising a fluorometallic acid comprising of a group IVA or IVB metal and free fluoride
A rinsing step, wherein the metal substrate is rinsed in tap water, deionized water, and/or an aqueous solution of rinsing agents for an elapsed time.
A second pretreatment step, wherein the substrate is immersed in an aqueous solution comprising a IVB metal and free fluoride.
Regarding the first treatment step, the aqueous solution has a pH range of 1.0-4.0 ([0060], Clm. 1) The constituent metals in the aqueous solution can comprise either Zr or Ti [0051-0052]. Furthermore, Harris teaches the ranges for the pH, free fluoride concentration, and Zr/Ti concentrations shown in Table 1 below (Clms. 1 & 3). Harris’ ranges and values are converted to mmol/kg for ease of comparison.
Table 1
1st Pretreatment/Conversion Step Solution Ranges
Harris (Clm1 & 3)
Instant Claim 1
pH
1.0-4.0
2.0-5.0
IVB Metal Concentration, mmol/kg
(if using only Ti)
4-100
0.10 or more
IVB Metal Concentration, mmol/kg
(if using only Zr)
2-54
0.10 or more
Free Fluoride concentration, mmol/kg
0.5-26
---
Furthermore, Harris teaches the aqueous solutions for the first pretreatment step shown in Table 2 below (Harris Table 2, PT-5 and PT-6):
Table 2
Solution Code
Acid
Component
pH
Free Fluoride Concentration
[mmol/kg]
Metal Concentration (Zr or Ti)
[mmol/kg]
PT-5
H2TiF6
2.3
0.8
45.93
PT-6
H2ZrF6
2.4
3.1
69.19
Overall, Harris’ first pretreatment step reads on the claimed first conversion stage. Additionally, Harris’ taught aqueous solutions read on the claimed pH, free fluoride concentration, and metal concentration ranges.
Regarding the rinsing step, selecting deionized water as taught by Harris fulfills all of the claimed limitations (e.g. pH=7, free fluoride concentration of zero and metal concentration of zero) [0063].
Regarding the second pretreatment step, Harris teaches the ranges for the pH, free fluoride concentration, and Zr/Ti concentrations shown in Table 3 below (Clms. 1 & 4, [0144]).
Table 3
2nd Pretreatment/Conversion Step Solution Ranges
Harris
Instant Claim 1
pH
2-6.5
2.0-5.0
IVB Metal Concentration, mmol/kg
(if using only Ti)
0.4-21
0.10 or more
IVB Metal Concentration, mmol/kg
(if using only Zr)
0.2-11
0.10 or more
Free Fluoride concentration, mmol/kg
0.8-10
---
Additionally, Harris teaches that an electropositive metal (e.g. Cu) may be present in the second pretreatment step solution in an amount between 30 and 1600 µmol/kg (Clm. 6), which reads on the claimed Cu range of 15 µmmol/kg or more. Harris also teaches an aqueous solution for the second pretreatment step with a composition shown in Table 4 below (Harris Table 3 PT-D):
Table 4
Zr Concentration
[mmol/kg]
Cu Concentration
[mmol/kg]
Free Fluoride Concentration
[mmol/kg]
pH
2.14
0.55
4.7
4.6
Overall, Harris’ second pretreatment step reads on the claimed second conversion stage. Additionally, Harris’ taught aqueous solutions read on the claimed pH, Zr concentration, and Cu concentration ranges.
Regarding claims 2 and 3, Harris is silent on surface densities of deposited layers after each pretreatment step. However, there is sufficient overlap between Harris’ pretreatment step parameters and the claimed conversion stage parameters for a person skilled in the art to know that a metal substrate/surface treated with Harris’ pretreatment steps will inherently have the same surface layer densities as substrates/surfaces treated with the claimed conversion stages.
Harris teaches that during the first and second pretreatment steps, a metal surface is immersed in their taught aqueous solution for 120 seconds at a temperature of 26.7OC (Table 6, steps 4B and 6B). Similarly, the instant application teaches that both the first and second conversion stages are done between 10 and 300 seconds at a temperature of 10 – 60OC, preferably 25-55OC, and very preferably 30-50OC. Given that Harris’ taught aqueous solutions (see Tables 1-4 above), pretreatment step times, and pretreatment step temperatures fall within the ranges taught in the instant application, a person having ordinary skill in the art knows that Harris’ treated surfaces after each step will have the layer surface densities that are claimed in claims 2 and 3.
Regarding claim 4, Harris teaches Zr/Ti concentrations of 4-100 mmol/kg and 2-54 mmol/kg for aqueous solutions used in the first pretreatment step, which read on the claimed Zr/Ti concentration range of at least 0.15 mmol/kg (see Table 1 above). Additionally, Harris teaches aqueous solutions for the first pretreatment step with Zr/Ti concentrations of 45.93 and 69.19 mmol/kg (see Table 2 above).
Regarding claim 5, Harris teaches free fluoride concentrations of 0.5-26 mmol/kg for aqueous solutions used in the first pretreatment step, which reads on the claimed free fluoride concentration range of 0.5 – 8.0 mmol/kg. Additionally, Harris teaches aqueous solutions for the first pretreatment step with free fluoride concentrations of 0.8 and 3.1 mmol/kg (see Table 2 above).
Regarding claim 6, looking at Table 1 above and using the maximum values within Harris’ free fluoride, Zr concentration, and Ti concentration ranges, quotient λ values of 2.6 (for Ti) and 3.6 (for Zr) were calculated. These values read on the claimed quotient λ range of greater than 0.80.
Regarding claim 9, Harris teaches a copper concentration of 0.55 mmol/kg (see Table 4 above) for an aqueous solution used in the second pretreatment step, which falls within the claimed copper concentration range of more than 40 µmol/kg (Harris Table 3 PT-D).
Regarding claim 10, Harris teaches aqueous solutions that comprise either H2TiF6 or H2ZrF6 (Harris Table 2).
Regarding claim 13, Harris teaches that their rinsing step is carried out by spraying (Table 6, step 5B).
Regarding claim 14, Harris teaches a rinsing step that occurs after the second pretreatment step (Table 6, step 7B). Harris then goes on to electrocoat their metal substrates [0225].
Regarding claim 15, Harris teaches that the metal substrate may also be zinc or aluminum alloys [0045].
Regarding claim 16, Harris teaches Zr/Ti concentrations of 4-100 mmol/kg and 2-54 mmol/kg for aqueous solutions used in the first pretreatment step, which read on the claimed Zr/Ti concentration range of at least 0.30 mmol/kg (see Table 1 above). Harris also teaches free fluoride concentrations of 0.5-26 mmol/kg for aqueous solutions used in the first pretreatment step, which reads on the claimed free fluoride concentration range of 1.5 – 6.0 mmol/kg (see Table 1 above). Additionally, Harris teaches an aqueous solution for the first pretreatment step with a Zr concentration of 69.19 mmol/kg and a free fluoride concentration of 3.1 mmol/kg (see Table 2, solution code PT-6).
The reader is also directed towards discussion regarding claims 2 and 3 above. Given that Harris’ taught aqueous solutions, pretreatment step times, and pretreatment step temperatures fall within the ranges taught in the instant application, a person having ordinary skill in the art knows that Harris’ treated surfaces after the first conversion step will inherently have layer surface densities of not more than 80 mg/cm2.
Regarding claim 17, selecting deionized water as the rinsing agent as taught by Harris fulfills all of the claimed limitations (e.g. total concentration of Cu, Ni, and Co dissolved in water) [0063].
Regarding claim 20, the reader is directed towards Table 1 above. Using the maximum values within Harris’ free fluoride, Zr, concentration, and Ti concentration ranges, quotient λ values of 2.6 (for Ti) and 3.6 (for Zr) were calculated. These values read on the claimed quotient λ range of greater than 1.60.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 7, 8, 12, 18, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Harris (WO 2021/1071574 A1).
Regarding claim 7, as discussed in Table 3 above, Harris teaches Ti concentrations of 0.4-21 mmol/kg and Zr concentrations of 0.2-11 mmol/kg for aqueous solutions used in the second pretreatment step, which reads on the claimed Ti/Zr concentration range of less than 1.00 mmol/kg (Clms. 1 & 4, [0144]). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(1).
Regarding claim 8, as discussed in Table 3 above, Harris teaches free fluoride concentrations of 0.8-10 mmol/kg for aqueous solutions used in the second pretreatment step, which reads on the claimed free fluoride concentration range of 0.1-3.00 mmol/kg (Clms. 1 & 4, [0144]). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(1).
Regarding claim 12, Harris claims the pH of the first pretreatment step solution is 1.0-4.0, which reads on the claimed pH range of 3.0-4.5 for the first conversion stage. Additionally, Harris teaches that the pH of the second pretreatment step solution may be 2-6.5 ([0144]), which reads on the claimed pH range of 3.0-4.5 for the second conversion stage. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(1).
Regarding claim 18, as discussed in Table 3 above, Harris’ taught aqueous solution ranges for the second pretreatment step read on the claimed free fluoride concentration range (0.1-2.50 mmol/kg) and metal concentration range (less than 0.70 mmol/kg) (Clms. 1 & 4, [0144]). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(1).
Regarding claim 19, Harris claims that an electropositive metal may be present in the second pretreatment step solution in an amount between 30 and 1600 µmol/kg (Clm. 6), which reads on the claimed Cu concentration range of 50-300 µmol/kg. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(1).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Harris (WO 2021/1071574 A1) as applied to claim 1 above, and further in view of Brouwer (US 8801871 B2).
Regarding claim 11, Harris fails to teach a solution comprising depolarizers in the rinsing solution used in their rinsing step.
Brouwer teaches an anticorrosion conversion treatment for metallic surfaces (Abstract), wherein a metal surface is immersed an aqueous solution comprising Zr and free fluoride (Clm.1). This aqueous solution may also contain one or more accelerators selected from the following (Clm. 3):
0.3 to 4 g/l of chlorate ions;
0.01 to 0.2 g/l of nitrite ions;
0.05 to 4 g/l of nitroguanidine;
0.05 to 4 g/l of N-methylmorpholine N-oxide;
0.2 to 2 g/l of m-nitrobenzenesulfonate ions;
0.05 to 2 g/l of m-nitrobenzoate ions;
0.05 to 2 g/l of p-nitrophenol;
1 to 150 mg/l of hydrogen peroxide in free or bound form;
0.1 to 10 g/l of hydroxylamine in free or bound form;
and 0.1 to 10 g/l of a reducing sugar
Brouwer teaches that these accelerators function as “hydrogen scavengers” [sic] where they oxidize any hydrogen present on the metal surface while they themselves reduce. Due to this process, these accelerators ultimately facilitate a uniform conversion layer on the metal surface (Col. 7 Ln. 9-27).
Concentrations of selected accelerators listed above are converted to mmol/kg in Table 4 shown below:
Table 4
Accelerator Species
Concentration (mmol/kg)
Instantly Claimed Concentration (mmol/kg)
Nitrite Ions
0.2-4
0.1-10
Nitroguanidine
0.5-38
0.1-10
N-methylmorpholine N-oxide
0.4-34
0.1-10
Hydrogen Peroxide
0.03-4
0.1-10
Hydroxylamine
3-300
0.1-10
All of the presented accelerator concentrations in Table 4 read on the claimed depolarizer range of 0.1-10 mmol/kg. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(1).
Therefore, it would be obvious to a person having ordinary skill in the art before the effective filing date of the application to incorporate the accelerators and accelerator concentrations taught in Brouwer into Harris’ rinsing step because the addition of Brouwer’s accelerators in any of Harris’ three comprising treatment steps (e.g. first pretreatment step, rinsing step, and second pretreatment step) ultimately facilitate a uniform conversion layer on the metal surface by reacting with hydrogen present on the metal surface.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAVIER FLORES whose telephone number is 571-272-9130. The examiner can normally be reached Mon-Fri 7:30AM-5:00PM.
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/J.F./Examiner, Art Unit 1735
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735
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