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 .
Status of Claims
Claims 1-3 and 5-19 are amended in view of applicant’s preliminary amendment filed 11/9/2023. New claim 20 are added. Therefore, claims 1-20 are currently under examination.
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) 1-11 and 13-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shimakura et al. US 2004/0009300(Shimakura).
Shimakura teaches an aqueous Cr-free coating dispersion comprising(abstract):
0.1-50g/l of at least one silane(i.e. silicon containing compound)[0038];
0.1-100g/l of at least one organic film former such as polyurethane and polyacrylic resin[0032, 0042-0043];
Regarding claims 1-3 and 20, the coating composition concentrations as taught by Shimakura overlaps the claimed coating composition concentrations. Therefore, a prima facie case of obviousness exists. See MPEP 2144.05(I). The selection of the claimed coating composition concentrations from the coating composition concentrations as taught by Shimakura would have been obvious to one of ordinary skill in the art since Shimakura teaches the same utilities in its disclosed coating composition concentrations.
Regarding claim 4, the aqueous coating composition of Shimakura further comprises at least one inorganic compound such as SiO2 having an average particle diameter of 0.005-0.2µm(i.e. 5-200nm)[00106]. Inventive Example 1 of Shimakura further shows silica dispersion having an average particle diameter of about 20-50nm is used[0277].
Regarding claims 5, Shimakura further teaches that the at least one inorganic compound, such as SiO2, is present in an amount of 0.1-80g/l, which overlaps the claimed amount of silica dispersion. Therefore, a prima facie case of obviousness exists. See MPEP 2144.05(I). The selection of claimed silica concentration from the silica concentration as taught by Shimakura would have been obvious to one of ordinary skill in the art since Shimakura teach the same utilities in its disclosed silica concentration.
Regarding claim 6, the polyurethane resin as taught by Shimakura include those without an aromatic group as claimed.
Regarding claims 7-8, Shimakura further teaches the presence of at least one corrosion inhibitor, such as phosphate and/or phosphonate compounds, an amount of 5-40wt%[0107], which overlaps the claimed amount of corrosion inhibitor. Therefore, a prima facie case of obviousness exists. See MPEP 2144.05(I). The selection of claimed corrosion inhibitor concentration from the corrosion inhibitor concentration as taught by Shimakura would have been obvious to one of ordinary skill in the art since Shimakura teach the same utilities in its disclosed corrosion inhibitor concentration.
Regarding claim 9, Shimakura further teaches the presence of deformer and film forming additive[0063].
Regarding claims 10, Shimakura further teaches that the polyacrylic resin has a molecular weight of 20,000 to 200,000 u(i.e. 20,000 to 200,000 Dalton)[0118]. Example of Shimakura further shows a polyacrylic resin molecular weight of 100,000 u(i.e. 100,000 Dalton)[0273]. Note, instant claim 10 does not actually limits parent claim 1 since polyacrylic resin is merely an option for component (b) water-borne polymer, and its presence is not mandatory. The molecular weight in claim 10 is a limitation on an optional limitation in parent claim 1. The presence of polyurethane in the coating composition of Shimakura alone also meets the limitation of parent claim 1.
Regarding claim 11, although Shimakura does not explicit teach that the polyacrylic resin having the claimed average particle diameter, instant claim 11 is not distinguishable over the teachings of Shimakura because the instant claim 11 as well as the parent claim 1 do not positively recite the presence of polyacrylate resin in the passivation composition. Parent claim 1 only recites polyacrylate resin as a viable candidate for claimed component (b) water-borne polymer. The presence of polyurethane as taught by Shimakura alone would meet the limitation of claimed component (b) water-borne polymer as recited in parent claim 1. Since instant claim 11 only recites an option of component (b) water-borne polymer and its presence is not mandatory, the examiner maintains that the aqueous Cr-free coating composition of Shimakura still reads on the claimed passivating composition.
Regarding claim 13, the claimed synthesis method by emulsion polymerization is a process limitation to produce the polyacrylate resin. Therefore, the instant claim is a product-by-process claim. It is well settled that a product-by-process claim defines a product, and that when the prior art discloses a product substantially the same as that being claimed, the burden falls upon the applicant to show that any process steps associated therewith results in a product materially different from that disclosed in the prior art. See In re Thorpe, (227 USPQ 964), In re Brown, (173 USPQ 685), In re Fessman, (180 USPQ 524) and MPEP 2113. In this case, the burden falls upon the applicant to show that the claimed emulsion polymerization method results in polyacrylate resin that is materially different from the polyacrylate resin of Shimakura.
Regarding claims 14-18, Shimakura further teaches applying its aqueous conversion coating composition to a surface of metal such as zinc([0025], abstract). Therefore, the coated metal surface as taught by Shimakura would have comprises the claimed passivation layer, the claimed metal with a surface passivated by the aqueous Cr-free coating composition, the claimed zinc article with a passivation coating layer.
Regarding claims 20, Shimakura discloses a method for passivating a metal surface using an aqueous conversion coating composition as claimed(abstract).
Allowable Subject Matter
Claim 12 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The teachings of the closest prior art Shimakura are discussed in section 4 above. However, Shimakura does not teach or fairly suggest, either alone or in combination, that its polyacrylic acid resin has a particle size of 50-400nm as recited in instant claim 12.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Jung et al. US 2004/0062873 teaches an aqueous conversion coating composition comprising polyacrylate resin, polyurethane resin, colloidal silica and silane.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOIS L ZHENG whose telephone number is (571)272-1248. The examiner can normally be reached Mon-Fri 8:15-4:45.
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LOIS ZHENG
Primary Examiner
Art Unit 1733
/LOIS L ZHENG/Primary Examiner, Art Unit 1733
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