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 .
Election/Restrictions
Applicant’s election without traverse of Group I, Claims 1, 2, 4, 5, 8-11, and 14 in the reply filed on 11/24/2025 is acknowledged.
Claims 16-21, 23, 25, and 29-31 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/24/2025.
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.
Claim 5 is 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 5 recites, “The system of claim 1, wherein the first pretreatment composition comprises a fluoride source in addition to the fluorometallic acid and a hydroxide source” (emphasis added), however, given that claim 1 already recites “a fluoride source” and “a hydroxide source” on line 5, it is unclear whether “a fluoride source” and “ hydroxide source” on lines 2 and 3, respectively, of claim 5 are meant to refer to the/said fluoride source and hydroxide source already recited in claim 1, or to other or additional fluoride and hydroxide sources. Hence, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Claim Interpretation
Consistent with MPEP § 2111, claims are given their broadest reasonable interpretation wherein “the meaning given to a claim term must be consistent with the ordinary and customary meaning of the term (unless the term has been given a special definition in the specification), and must be consistent with the use of the claim term in the specification and drawings. Further, the broadest reasonable interpretation of the claims must be consistent with the interpretation that those skilled in the art would reach. In re Cortright, 165 F.3d 1353, 1359, 49 USPQ2d 1464, 1468 (Fed. Cir. 1999).” However, although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 f.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993.) It is also noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Further, it is noted that when reading a preamble in the context of an entire claim, if the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations, then the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
In light of the above, it is noted that the preamble recitation “for treating a magnesium or a magnesium alloy substrate” as recited in claim 1 appears to be merely directed to the intended end use of the claimed “system” and given that the body of the claim describes a complete invention, the above preamble recitation is not considered a limitation and is of no significance to claim construction. It is also noted that the claimed “first” and “second” limitations with respect to each “pretreatment composition” do not imply any specific order of treatment as discussed in Paragraph 0042 of the specification as filed, wherein it is additionally noted that the claims do not specifically require the “first” pretreatment composition to be different and/or separate from the “second” pretreatment composition, especially given the use of the open-transitional term “comprising” throughout the claim(s) and/or that both compositions may be mixed or utilized simultaneously in treating a substrate (see for example, Birkenheuer, US2019/0330745A1, Abstract). Further, with respect to the claimed metal amount of 10 ppm to 2,000 ppm as recited in claim 4, consistent with the specification at Paragraphs 0056-0061, each type of metal may be present in the above amount. Lastly, with respect to claim 5, the Examiner has assumed that “a fluoride source” and “a hydroxide source” refers to “the” fluoride source and “the” hydroxide source as already recited in claim 1.
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, 4, 5, 8-11, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kolcun (US2017/0121533A1, corresponds to WO2017/079421A1 referenced in the prior office action and in the related International Search Report). Kolcun discloses pretreatment compositions and a “system” for treating a metal substrate (Paragraph 0001) comprising a cleaner for cleaning the metal substrate (Paragraph 0072, as in instant claim 11); a pretreatment composition containing a Group IIIB metal and/or Group IVB metal (Abstract); a sealer composition comprising a lanthanide series element (Paragraphs 0022, 0083, and 0144) with an example sealer composition prepared from cerium nitrate (i.e., a lanthanide series compound), deionized water, and CHEMFIL BUFFER (i.e., an alkaline buffering solution from PPG that contains potassium hydroxide and sodium carbonate as evidenced by the attached PPG Safety Data Sheet) to adjust the pH, with a cerium level of approximately 500 ppm (as in instant claim 8) such that the example sealer composition is “substantially free of peroxide” (Examples, Paragraph 0180; reading upon the claimed “second pretreatment composition comprising a lanthanide series metal, the second pretreatment composition being substantially free, or essentially free, or completely free, of peroxide” as in instant claim 1, and “comprises the lanthanide series metal in an amount of 5 ppm to 25,000 ppm based on total weight of the second pretreatment composition” as in instant claim 8); and a coating composition comprising a film-forming resin to be deposited on at least a portion of a surface that has been contacted with the sealer composition (Paragraph 0143, as in instant claim 14).
Kolcun discloses that the Group IIIB and/or Group IVB metal used in the pretreatment composition may be a compound of zirconium with suitable compounds including hexafluorozirconic acid (i.e., a fluorometallic acid as in instant claim 1) which is specifically utilized in the examples, or a compound of titanium such as fluorotitanic acid (Paragraph 0035, also reading upon the claimed “fluorometallic acid”); wherein the Group IIIB and/or Group IVB metal may be present in the pretreatment composition in a total amount of at least 20 ppm metal and not more than 1000 ppm, based on total weight of the pretreatment composition (Paragraph 0036, as in instant claims 2 and 4). Kolcun discloses that a source of fluoride may be present in the pretreatment composition to provide a desired total fluoride, i.e., total of bound and free fluoride, such as supplied by hydrofluoric acid, as well as alkali metal and ammonium fluorides or hydrogen fluorides (Paragraph 0048), and additionally, total fluoride in the pretreatment may be derived from Group IIIB and/or Group IVB metals present in the pretreatment composition, including for example, hexafluorozirconic acid or hexafluorotitanic acid (Paragraph 0048). Kolcun also discloses that the pretreatment composition may comprise an electropositive metal comprising copper provided by a water soluble copper compound such as copper hydroxide (Paragraph 0043) and/or that the pH of the pretreatment composition, which in some instances is 6.5 or less, such as 3.5 or less or 2.5 to 6.5 (Paragraph 0063, overlapping the claimed pH of 1.0 to 4.0), can be adjusted by inclusion of a basic material such as sodium hydroxide, potassium hydroxide, and ammonium hydroxide (Paragraph 0063).
Kolcun specifically discloses a working example (Example 7) comprising a pretreatment composition prepared from hexafluorozirconic acid (i.e., a fluorometallic acid containing a Group IVB metal as in instant claims 1-2), copper nitrate solution, phytic acid, water, and CHEMFIL BUFFER (i.e., an alkaline buffering solution from PPG that contains a hydroxide, thereby reading upon the claimed “a hydroxide source” as in instant claim 1) to adjust the pH to 4.0 (reading upon the pH of 1.0 to 4.0 as in instant claim 1), with a zirconium level of approximately 190 ppm falling within the claimed range of 10 ppm to 2,000 ppm as in instant claim 4, and a free fluoride content of 65 ppm falling within the claimed range of 10 ppm to 500 ppm as in instant claim 1, with respect to the total weight of the pretreatment composition, thereby reading upon the claimed “first pretreatment composition” of instant claim 1; in combination with the above noted example sealer composition comprising cerium nitrate as a lanthanide series metal compound and substantially free of peroxide reading upon the claimed “second pretreatment composition” of instant claim 1 (Table 2). Kolcun also discloses another example (Example 4) wherein the pretreatment composition is prepared from hexafluorozirconic acid (i.e., a fluorometallic acid containing a Group IVB metal as in instant claims 1-2), copper nitrate, phytic acid, CHEMFOS AFL commercially available from PPG (i.e., “a fluoride source in addition to the fluorometallic acid” as evidenced by the attached PPG Safety Data Sheet for CHEMFOS AFL, see also McMillen, US2009/0032144A1, Paragraph 0092), and CHEMFIL BUFFER (i.e., a hydroxide source) to adjust the pH to 4.0 (as in instant claim 1), with a zirconium level of approximately 190 ppm (as in instant claim 4) and a free fluoride content of 65 ppm (as in instant claim 1), such that the pretreatment composition of Example 4 reads upon the claimed first pretreatment composition of instant claims 1, 2, 4, and 5. Hence, given the working examples and the above disclosure of Kolcun, the Examiner takes the position that Kolcun discloses the claimed invention with sufficient specificity to anticipate instant claims 1, 2, 4, 5, 8, 11, and 14.
With respect to instant claims 9-10, Kolcun discloses that “the sealer composition preferably comprises a Group IIIB metal, a Group IVB metal, a lanthanide, silica, aluminum [i.e., a Group IIIA metal], silane, an organosilane, or a combination thereof” (emphasis added, Paragraph 0144), reading upon the instantly claimed “second pretreatment composition further comprises a Group IIIA metal” as in instant claim 9 given that the above preferred sealer components clearly include a combination of a lanthanide and aluminum, and more particularly given that with respect to instant claim 10, Kolcun discloses an example sealer comprising a lanthanide (i.e., cerium) as discussed in detail above, as well as another example sealer comprising aluminum present in the sealer composition in a content of approximately 500 ppm as in instant claim 10 (Example 8), such that a combination thereof would have been clearly envisaged by one skilled in the art based upon the above disclosure and working examples of Kolcun. Hence, the Examiner takes the position that Kolcun discloses the claimed invention with sufficient specificity to anticipate instant claims 9-10.
Claims 1, 2, 4, 8, 11, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoshida (US2007/0272900A1). Yoshida discloses a surface-treating composition which is a treating liquid containing no ingredients harmful to the environment, and enables a coating film (“film-forming composition” as in instant claim 14) having excellent corrosion resistance to be deposited through surface treatment on a surface of a metallic material, wherein the composition comprises: (A) a compound containing at least one element selected from the group consisting of titanium, zirconium, hafnium, and silicon, such as hexafluorotitanic acid (H2TiF6), hexafluoro-zirconic acid (H2ZrF6), hexafluorohafnic acid (H2HfF6), and hexafluorosilicic acid (H2SiF6) (reading upon the claimed “fluorometallic acid” as in instant claim 1, comprising a metal comprising a Group IVA and/or IVB metal as in instant claim 2); (B) a compound containing yttrium and/or a lanthanide element (“composition comprising a lanthanide series metal”) present in a content such that a ratio K1 (B/A) of the total mass concentration B of the yttrium and/or lanthanide series element in component (B) to the total mass concentration A of the element(s) in component (A) is 0.05 to 50; (C) nitric acid and/or a nitric acid compound; and desirably also (D) at least one fluorine-containing compound, such as hydrofluoric acid (reading upon the claimed “fluoride source in addition to the fluorometallic acid” as in instant claim 1 as well as claim 5), to adjust the free fluorine concentration of the composition to be 0.001 ppm to 300 ppm (substantially overlapping the claimed free fluoride range of 10 ppm to 500 ppm; Entire document, particularly Abstract, Paragraphs 0038-0039 and 0053-0054, and Examples). Yoshida discloses that the pH of the composition is below 6.0, preferably below 5.0 (fully encompassing the claimed pH range), and more preferably below 4.0 (substantially encompassing the claimed pH range of 1.0 to 4.0; Paragraph 0055). Yoshida specifically discloses an example (Actual Example 2) wherein the treatment “system” includes an alkaline degreaser (“cleaner composition” as in instant claim 11) utilized prior to film formation treatment of a metal substrate, an epoxy-based electrodeposition coating composition to be applied to the treated substrate to evaluate coating performance thereof (Examples, Paragraph 0107, Tables 1-4, reading upon the claimed “film-forming composition” as in instant claim 14), and a treatment solution comprising an aqueous hexafluoro zirconium solution (a fluorometallic acid of a Group IVB metal as in the claimed “first pretreatment composition”), samarium nitrate (a lanthanide series nitrate as in the claimed “second pretreatment composition”), and nitric acid, diluted with deionized water to adjust the mass concentration of zirconium (Zr) to 100 ppm with the ratio K1 of the samarium (Sm) content to the Zr content being 2.0 (thus 200 ppm Sm), to which hydrofluoric acid (HF) and ammonia (NH3) are added to provide a free fluorine concentration of 25 ppm (falling within the claimed fluoride content of instant claim 1) and a pH value 3.6 (falling within the claimed pH range of instant claim 1); and given that the treatment “system” of Actual Example 2 is free of peroxide and the 100 ppm Zr and 200 ppm Sm concentrations would not change considerably after addition of the HF and NH3 (i.e. would not drop below the claimed 10 ppm of instant claim 4 and the claimed 5 ppm of instant claim 8, respectively, based upon the amounts needed to be added to provide the 25 ppm free fluorine content and pH of 3.6), the Examiner takes the position that Yoshida discloses the claimed invention with sufficient specificity to anticipate instant claims 1, 2, 4, 8, 11, and 14, especially in light of the above discussion in the Claim Interpretation section with respect to a “system” including a mixed composition comprising both the first and the second compositions.
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, claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kolcun as applied above to claims 1, 2, 4, 5, 8-11, and 14, and further discussed below.
The teachings of Kolcun are discussed in detail above (and incorporated herein by reference) and although the Examiner is of the position that the reference is anticipatory with respect to instant claims 9-10 for the reasons discussed in detail above wherein Kolcun clearly recites that “the sealer composition preferably comprises a Group IIIB metal, a Group IVB metal, a lanthanide, silica, aluminum [i.e., a Group IIIA metal], silane, an organosilane, or a combination thereof” (emphasis added, Paragraph 0144) with working examples utilizing a cerium-containing sealer and an aluminum-containing sealer with about 500 ppm of aluminum as the claimed “second pretreatment composition” in conjunction with a hexafluorozirconic acid-based pretreatment reading upon the instantly claimed “first pretreatment composition” as discussed above, the Examiner alternatively takes the position that the claimed invention as recited in instant claims 9-10 would have been obvious over the teachings of Kolcun given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success and/or prima facie obviousness to combine prior art elements according to known methods (e.g., mixing two sealers) to yield predictable results.
Claims 1, 2, 4, 5, 8, 11, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Lemon (WO2018/031996A1 on IDS dated 9/19/2023). Lemon teaches a “system” for treating a metal substrate (Paragraphs 0002 and 0006), such as a magnesium alloy substrate (Paragraph 0015), comprising a first composition comprising a lanthanide source (reading upon the claimed “second pretreatment composition comprising a lanthanide series metal” as in instant claim 1) and an oxidizing agent (Abstract); and a third composition comprising a Group IVB metal cation, such as a compound of titanium or zirconium with examples thereof including fluorotitanic acid and particularly hexafluorozirconic acid as utilized in the examples (reading upon the claimed “first pretreatment composition comprising: a fluorometallic acid” as in instant claim 1, that “comprises a metal comprising…a Group IVB metal” as in instant claim 2; Paragraphs 0006, 0012, 0063-0065, Examples). Lemon teaches that non-limiting examples of the oxidizing agent for use in the first composition include “peroxides, persulfates, perchlorates, hypochlorite, nitric acid, sparged oxygen, bromates, peroxi-benzoates, ozone, or combinations thereof” (Paragraph 0023), such that the exclusion of a peroxide oxidizing agent and/or selection of any of the non-peroxide oxidizing agent as taught by Lemon as the only oxidizing agent utilized in the first composition would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, and would read upon the claimed “second pretreatment composition being substantially free, or essentially free, or completely free, of peroxide” as in instant claim 1. Hence, Lemon clearly teaches a first composition reading upon the claimed “second pretreatment composition as recited in instant claim 1.
Lemon also teaches that the third composition may also comprise a Group IA metal cation such as a lithium cation, in the form of a salt with non-limiting examples thereof including lithium fluoride and lithium hydroxide (Paragraph 0067, reading upon the claimed “fluoride source in addition to the fluorometallic acid and/or a hydroxide source” as in instant claim 1), as well as an electropositive metal ion, particularly copper, with example compounds thereof including copper fluoride and copper hydroxide (Paragraphs 0073-0075, also reading upon the claimed “fluoride source in addition to the fluorometallic acid and/or a hydroxide source” as in instant claim 1). Lemon specifically teaches that a source of fluoride may be present in the third composition, such that the third composition has a free fluoride content of at least 15 ppm and no more than 2500 ppm, such as no more than 500 ppm, based on a total weight of the third composition, such as 100 ppm to 250 ppm free fluoride (reading upon the claimed free fluoride amount as recited in instant claim 1), and a total fluoride of the third composition can be supplied by hydrofluoric acid, as well as alkali metal and ammonium fluorides or hydrogen fluorides (Paragraphs 0079-0080); and that “[a]dditionally, total fluoride in the third composition may be derived from Group IVB metals present in the third composition, including, for example, hexafluorozirconic acid or hexafluorotitanic acid” and “[o]ther complex fluorides, such as H2SiF6 or HBF4, can be added to the third composition to supply total fluoride (Paragraph 0079, thereby teaching and/or suggesting “a fluoride source in addition to the fluorometallic acid” as in instant claim 1), wherein the levels of free fluoride will depend on the pH and the addition of chelators into the third bath (Paragraph 0079). Lemon teaches that the pH of the third composition may be 6.5 or less, and in some instances, 2.0 to 6.5, such as 3 to 4.5 (overlapping and hence rendering obvious the claimed pH of 1.0 to 4.0 with respect to the first pretreatment composition comprising the fluorometallic acid), and may be adjusted using, for example, any acid and/or base as is necessary, with example bases including sodium hydroxide, potassium hydroxide, and ammonium hydroxide (Paragraph 0089). Hence, Lemon clearly teaches a third composition comprising components reading upon the instantly claimed first pretreatment composition as recited in instant claims 1-2, and given the above discussion with respect to the first composition of Lemon reading upon the instantly claimed second pretreatment composition, the claimed invention as recited in instant claims 1 and 2 would have been obvious over the teachings of Lemon given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success.
With respect to instant claim 4, Lemon teaches that the Group IVB metal cation, such as provided by a fluorometallic acid as in the examples, may be present in the third composition in a total amount of 20 ppm metal to 1000 ppm metal (calculated as metal cation), based on total weight of the third composition (Paragraphs 0006 and 0012), falling within the claimed range. Hence, instant claim 4 would have been obvious over the teachings of Lemon.
With respect to instant claim 5, given that Lemon clearly teaches that the third composition may comprise a fluoride source in addition to a fluorometallic acid, e.g., to adjust the free fluoride content, as well as a hydroxide source such as lithium hydroxide and/or copper hydroxide to provide said metal ions and/or to adjust the pH as discussed in detail above, the claimed invention as recited in instant claim 5 would have been obvious over the teachings of Lemon.
With respect to instant claim 8, Lemon teaches that the lanthanide series metal cation may be present in the first composition (reading upon the instantly claimed second pretreatment composition) in an amount of at least 5 ppm and no more than 25,000 ppm as in instant claim 8 (Paragraph 0017). Hence, instant claim 8 would have been obvious over the teachings of Lemon.
With respect to instant claims 11 and 14, Lemon teaches that the “system” for treatment of a may further comprise a cleaner composition (Paragraph 0098) as well as a film-forming resin coating composition (Paragraph 00112). Hence, instant claims 11 and 14 would have been obvious over the teachings of Lemon.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, 4, 5, 8, 11, and 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of copending Application No. 18/551,019 in view of Kolcun, Lemon, and/or Yoshida. Copending claim 14 is directed to a “system for treating a metal substrate” comprising a first composition comprising a lanthanide series metal and being substantially free of peroxide (as recited in copending claim 1 from which copending claim 14 depends), a second composition comprising a fluorometallic acid and free fluoride in an amount of 1 ppm to 500 ppm based on total weight of the second composition (fully encompassing the claimed 10 ppm to 500 ppm of instant claim 1), and a third composition comprising a Group IVB metal; wherein the second composition has a pH of 1.0 to 4.0, and hence the only difference between copending claim 14 and instant claim 1 is that copending claim 14 does not recite that the second treatment composition, which comprises the fluorometallic acid, also comprises a fluoride source in addition to the fluorometallic acid and/or a hydroxide source as instantly claimed. However, given that copending claim 14 recites a free fluoride content of 1 ppm to 500 ppm and a pH of 1.0 to 4.0 as in instant claim 1, wherein the use of an additional fluoride source and/or a hydroxide source to adjust the free fluoride content and/or pH of a fluorometallic acid composition is conventional in the art as evidenced by Kolcun, Lemon, and/or Yoshida, each of which is discussed in detail above and incorporated herein by reference, particularly with respect to the working examples, instant claim 1 as well as instant claim 5 which positively comprises both the additional fluoride source and the hydroxide source would have been obvious over copending claim 14 in view of Kolcun, Lemon, and/or Yoshida given that it is prima facie obviousness to combine prior art elements according to known methods to yield predictable results.
With respect to instant claims 2, 4, and 8, although copending claim 14 recites that the system includes a Group IVB metal as part of a “third” composition, copending claim 14 does not recite that the fluorometallic acid comprises a Group IVB metal or any element as recited in instant claim 2, particularly in an amount as in instant claim 4, nor an amount of the lanthanide series metal as recited in instant claim 8. However, given that hexafluorozirconic acid is an obvious species of fluorometallic acid in the art as evidenced by Kolcun, Lemon, and/or Yoshida, that comprises a Group IVB metal, and that ppm amounts of the metal elements as instantly claimed are typical in the art as evidenced by Kolcun, Lemon, and/or Yoshida, the Examiner takes the position that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 2, 4, and 8 would have been obvious over copending claim 14 in view of Kolcun, Lemon, and/or Yoshida (especially given that copending claims 15, 19, and 8, read upon the limitations of instant claims 2, 4, and 8, respectively).
With respect to instant claims 11 and 14, given that a metal substrate to be surface treated is typically cleaned with a cleaner composition prior to surface treatment and that surface treatment is typically performed to improve coating of a film-forming composition onto the substrate, as evidenced by Kolcun, Lemon, and/or Yoshida (discussed in detail above and incorporated herein by reference), it would have been obvious to one having ordinary skill in the art before the effective filing date of the clamed invention to include “a cleaner composition” and a ”film-forming composition” with the “system for treating a metal substrate” of copending claim 14. Hence, instant claims 11 and 14 would have been obvious over copending claim 14 in view of Kolcun, Lemon, and/or Yoshida.
This is a provisional nonstatutory double patenting rejection.
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