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 .
Priority
This application is the 35 U.S.C. § 371 National Stage entry of PCT/EP2022/061910, filed 04 MAY 2022 and published as WO 2022/238190 A1 on 17 NOV 2022.
The report on patentability of the IPEA or ISA in this National Stage application has been considered by the Primary Examiner. MPEP § 1893.03(e).
This application also claims benefit of PCT/CN2021/092748, filed 10 MAY 2021.
Information Disclosure Statement
The Primary Examiner has considered the IDSs filed 20 OCT 2023 and 01 NOV 2023.
Specification
The abstract of the disclosure is objected to because it recites phrases that can be implied (“The present invention relates to”) and fails to recite any process steps. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Response to Amendment
Claims 1-20 are pending as presented in the preliminary amendment filed 20 OCT 2023.
Claim Objections
Claims 2, 7, 9, 12, and 20 objected to because of the following informalities:
Claim 2
The second line of claim 2 should read - - component (A) is in a form of an aqueous emulsion having a minimum film-forming temperature - -.
Claim 7
The third line of claim 7 should read - - of component (F): an additive - -.
Claim 9
The first line of claim 9 should read - - A metal having a surface treated with the aqueous composition - -.
Claim 12
The twelfth line of claim 12 should read - - from 100nm to 400nm[[-]]measured by dynamic light scattering according to ISO13321:2004, - -.
Claim 20
The second line of claim 20 should read - - to 7% by weight of component (F): an additive, the additive is at least one selected from the - -.
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 1-20 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 1
Claim 1 recites “wherein its weight is calculated from the chromium element.” It is unclear precisely what weight is being calculated here and, consequently, the metes and bounds of the claim are impossible to determine.
Claims 2-20 are similarly rejected by virtue of their incorporation of this subject matter.
Claim 12
Claim 12 recites “acrylic resin,” “a film-forming aid,” and “a lubricant.” Since claim 12 depends from independent claim 1, and independent claim 1 already recites these components, it is unclear whether their recitation here with indefinite articles means that this claim is referring back to the components recited in claim 1 or to some other components. Consequently, the metes and bounds of the claim are impossible to determine.
The Primary Examiner interprets this claim as referring back to claim 1 and these components are being read as “the acrylic resin,” “the film-forming aid,” and “the lubricant.”
Moreover, claim 12 recites “wherein its weight is calculated from the chromium element.” It is unclear precisely what weight is being calculated here and, consequently, the metes and bounds of the claim are impossible to determine.
Claims 17-19
In claims 17-19, the terms “the hydroxyl-donating compound” lack antecedent basis.
The Primary Examiner interprets these claims as depending from claim 16.
Claim Rejections - 35 USC § 103
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 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.
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(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP H06-146002 A in view of US 2014/0134368 A1.
Claim 1
JP 002 teaches an aqueous composition for metal surface treatment comprising:
(A) an acrylic resin without a hydroxyl group (see, e.g., monomer combination or acrylate-alkoxyalkyl (meth)acrylate-styrene) [0020];
(C) a lubricant (polyethylene wax dispersion) having an average particle size of 7 µm or less [0029], making the claimed range of 100 nm – 600 nm prima facie obvious, MPEP § 2144.05(I) (a prior art range inside a disclose range is prima facie obvious);
(D) an aqueous Cr compound containing Cr(VI) or Cr(III) and Cr(VI) [0024]-[0025].
JP 002 does not explicitly teach: (i) 0.1% to 4% by weight of a film-forming aid having a boiling point of no more than 300 °C under 1 atm; (ii) the relative concentrations of the acrylic resin (A), the lubricant (C), and the aqueous Cr compound; or (iii) that the acrylic resin has an average particle diameter of from 50 µm – 200 µm.
With respect to (i) US 368 teaches a metallic coating composition comprising an acrylic synthetic resin component, a lubricant, and a Cr(III) compound [0143] – [0151]. The composition additionally contains a film-forming aid having a boiling point at 1 atm of from 140 °C – 400 °C [0067], to promote film formation [0065]. It would have been obvious to one of ordinary skill in the art to modify the composition of JP 002 so as to add a film-forming aid, such as the film-forming aid of US 368. One of ordinary skill in the art would have been motivated to do so in order to promote film formation as is known in the art of metallic coating compositions.
With respect to (ii) – the specific amounts of acrylic resin component, film-forming aid, lubricant, and Cr compounds present – differences in concentration will not support the patentability of subject matter encompassed by the prior art absent criticality. MPEP § 2144.05(II)(A). Determination of the relative proportions can be made with respect to any particular reference point, such as the total weight of the aqueous composition.
With respect to (iii), resin particle size is a result-effective variable, affecting film appearance (e.g., smoothness), mechanical strength, and adhesion, as well as rheology and viscosity of the coating composition as it is applied and before drying. Consequently, it would have been obvious to one of ordinary skill in the art to optimize the acrylic resin particle size by routine experimentation, absent evidence of criticality. MPEP § 2144.05(II).
With respect to the standards recited, it is the Primary Examiner’s position that they are merely a means to obtaining the values taught by the prior art and one of ordinary skill in the art would have expected them to be the same or substantially similar regardless of the standard testing method used.
Claim 2
JP 002 teaches that curing of the composition (i.e., film formation) can occur at 80°C or higher at ambient (i.e., 1 atm) [0038]. This reference does not specify a minimum film-forming temperature of the acrylic resin component of 20 °C – 50 °C. Nevertheless, it is the Primary Examiner’s position that selection of monomers and film-forming aids can be used to optimize the film forming temperature by routine experimentation. For example, a lower film forming temperature is preferable because it requires less energy in heating. MPEP § 2144.05(II).
Claim 3
US 368 teaches that the film-forming aid can be selected from ethylene glycol butyl ether, diethylene glycol butyl ether, diproylene glycol butyl ether, tripropylene glycol butyl ether, propylene glycol phenyl ether, etc. [0067]. These compounds are disclosed by Applicant as satisfying the requirements of claim 3. See Spec. at 5:5-8.
Claim 4
JP 002 teaches a melting point of between 80 °C – 150 °C [0029]. Overlapping ranges are prima facie obvious. MPEP § 2144.05(I).
Claims 5-7
It would have been obvious to one of ordinary skill in the art to add any compounds common in the art to impart desired properties to the coating composition. For example, addition of an appropriate hydroxyl-donating compound would have been obvious to adjust the pH to a preferred range, as suggested by JP 002 [0028].
Moreover, additives such as dyes and pigments, conventional to paints, would have also been obvious in order to provide a desired decorative appearance to the coated metal.
Relative amounts of these compounds would have been obvious to one of ordinary skill in the art as differences in concentration will not support the patentability of subject matter encompassed by the prior art absent criticality. MPEP § 2144.05(II)(A).
Claim 8
JP 002 teaches the claimed process at [0050].
Claims 9-11
JP 002 teaches application of the composition to a galvanized steel sheet [0050], resulting in the claimed metal articles.
Claim 12
The teaching of JP 002 in view of US 368 is detailed above. As noted, differences in concentration will not support the patentability of subject matter encompassed by the prior art absent criticality. MPEP § 2144.05(II)(A). Moreover, resin particle size is a result-effective variable, affecting film appearance (e.g., smoothness), mechanical strength, and adhesion, as well as rheology and viscosity of the coating composition as it is applied and before drying. Consequently, it would have been obvious to one of ordinary skill in the art to optimize the acrylic resin particle size by routine experimentation, absent evidence of criticality. MPEP § 2144.05(II).
Claims 13-14
JP 002 teaches that curing of the composition (i.e., film formation) can occur at 80°C or higher at ambient (i.e., 1 atm) [0038]. This reference does not specify a minimum film-forming temperature of the acrylic resin component of 20 °C – 50 °C. Nevertheless, it is the Primary Examiner’s position that selection of monomers and film-forming aids can be used to optimize the film forming temperature by routine experimentation. For example, a lower film forming temperature is preferable because it requires less energy in heating. MPEP § 2144.05(II).
Claim 15
US 368 teaches that the film-forming aid can be selected from ethylene glycol butyl ether, diethylene glycol butyl ether, diproylene glycol butyl ether, tripropylene glycol butyl ether, propylene glycol phenyl ether, etc. [0067]. These compounds are disclosed by Applicant as satisfying the requirements of claim 3. See Spec. at 5:5-8.
Claims 16-20
It would have been obvious to one of ordinary skill in the art to add any compounds common in the art to impart desired properties to the coating composition. For example, addition of an appropriate hydroxyl-donating compound would have been obvious to adjust the pH to a preferred range, as suggested by JP 002 [0028].
Moreover, additives such as dyes and pigments, conventional to paints, would have also been obvious in order to provide a desired decorative appearance to the coated metal.
Relative amounts of these compounds would have been obvious to one of ordinary skill in the art as differences in concentration will not support the patentability of subject matter encompassed by the prior art absent criticality. MPEP § 2144.05(II)(A).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM P FLETCHER III whose telephone number is (571)272-1419. The examiner can normally be reached Monday-Friday, 9 AM - 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Duane Smith can be reached at (571) 272-1166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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WILLIAM PHILLIP FLETCHER III
Primary Examiner
Art Unit 1759
/WILLIAM P FLETCHER III/Primary Examiner, Art Unit 1759
16 March 2026