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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4 August 2026 has been entered.
Status of Amendment
The amendment filed on 4 August 2026 fails to place the application in condition for allowance.
Claims 1, 8-15, and 20-26 are currently pending.
Claims 1 and 20-26 are currently under examination.
Claims 8-15 are currently withdrawn.
Status of Rejections
All previous rejections are herein withdrawn due to Applicant’s Amendment filed 4 August 2026.
Amended rejections are provided over prior art cited with respect to now cancelled claim 7.
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.
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.
Claims 1 and 20-26 are rejected under 35 U.S.C. 103 as being unpatentable over Jiang et al (CN 105256355 A with citations drawn to the translation provided via espacenet) in view of Ikegaya et al (GB 1391808).
As to claims 1, 22, and 24, Jiang discloses an electrolyte composition for eloxation of a component wherein the electrolyte composition ([0016]-[0019],[0037] among others describing the generic composition of the anodizing solution with citations below drawn towards Example 8 at [0088] ) comprises an aqueous solution of the following components:
(A) potassium titanium oxide oxalate ([0088] “potassium titanium oxalate 50 g/L” thus falling within the instantly claimed range of instant claim 1);
(B) oxalic acid ([0088] oxalic acid 8 g/L falling within the range of instant claim 1); and
(C) at least one buffer ([0088] “citric acid 12 g/L” satisfying the specific buffer of instant claim 1 and concentration falling within the instantly claimed range of claim 22).
As to the pH, using the online pH calculator available at webqc.org, the calculated pH of the disclosed electrolyte of example 8 is 4.5 thus falling within the instantly claimed ranges.
Jiang fails to explicitly disclose wherein the aqueous solution further comprises aluminum oxalate as a component present in a concentration of 1 - 15 g/L in the aqueous solution.
Ikegaya discloses adding aluminum ions into an oxalic acid based anodization bath (pg. 2 lines 72-78) where the aluminum ions may be added in the form of aluminum oxalate (pg. 3 lines 1-2) in an amount of 0.05-6 g/L ( pg. 2 lines 115-118) which overlaps the instantly claimed range of instant claim 1 and 24 and thus prima facie obvious. See MPEP 2144.05.
Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used aluminum oxalate in an amount of 0.05-6 g/L as taught by Ikegaya in the anodization bath of Jiang because the aluminum ions promote the coloration reaction and enable anodic oxidation at lower current densities with short treatment times (Ikegaya pg. 2 lines 110-115).
As to claim 20, Jiang discloses using the oxalic acid in a generic range of 1-30 g/L ([0037]) which overlaps the instantly claimed range and thus prima facie obvious to use an oxalic amount within the disclosed range in order to provide a proper amount of oxalic acid. See MPEP 2144.05 I A.
As to claim 21, Jiang discloses using potassium titanium oxalate in an amount of 40 g/L in a different example ([0074] [0081]) and thus prima facie obvious to modify the amount of potassium titanium oxalate within the instantly claimed range. See MPEP 2144.05.
As to claim 23, Jiang discloses using boric acid for additive B ([0037]). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used boric acid in the cited example 8 in place of borax because it is a recognized chemical for its use as additive b to provide an expected result of acting as a buffer in the solution. See MPEP 2144.07.
As to claim 25, while the prior art Ikegaya cited for motivation to provide aluminum oxalate discloses a range up to 6 g/L, it has been held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). In the instant case, providing a value slightly greater than the disclosed range would have been prima facie obvious which provides a predictable result of providing aluminum ions into the anodization solution.
As to claim 26, the prior art discloses each component claimed in the amount claimed in different examples:
40 g/L potassium titanium oxide oxalate ([0074])
30 g/L additive a ([0046] in the form of additive A sodium oxalate); and
8 g/L boron oxide as the buffer ([0067] as the buffer).
Thus, the difference between the instant claims and the prior art is the particular composition of the electrolyte as claimed.
However, the prior at discloses each additive component in the specific amount claims and thus would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used a combined electrolyte of each amount per additive in order to provide an appropriate electrolyte for performing anodization and an expected result of the use of each additive for its intended purpose at an amount recognized by the prior art suitable for its purpose. See MPEP 2144.07, 2144.08.
Furthermore, it would have been obvious to one of ordinary skill in the art to use the specific additives of oxalic acid as additive a and boric acid in place of the boron oxide because it is a recognized chemical for its use as additive b to provide an expected result of acting as a buffer and additive b in the solution. See MPEP 2144.07.
As to the limitation “wherein the aqueous solution has a pH of 2.3.”, upon modification, the pH would be an inherent feature of the combined electrolyte. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 and 20-26 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
As to Applicant’s arguments towards new claim 25 on pg. 8 that Ikegaya discloses a “strict upper limit” of the aluminum oxalate, the disclosure of a preferred range without more is not a disclosure teaching away from modification of the range. MPEP 2144.05 also provides a basis for an obviousness rejection over approaching ranges that do not overlap and reflected in the rejection about for claim 25.
In response to Applicant’s argument from pg. 8-9 with respect to the different bath chemistries and disruption of the coordination equilibrium, An argument by the applicant is not evidence unless it is an admission, in which case, an examiner may use the admission in making a rejection. See MPEP § 2129 and § 2144.03 for a discussion of admissions as prior art. Arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) citing to MPEP 716.01(c).
This line of reasoning of Applicant’s arguments would render the current claims in being non-operative because the current claims contain both the titanium and aluminum alleged by Applicant to cause destruction of the electrolyte solution. Thus, either the use of aluminum oxalate destroys the bath as alleged by Applicant, or provide the benefits outlined in Ikegaya.
In response to Applicant’s arguments in on pg. 9 with respect to the unexpected results, the evidence presented is not in compliance with MPEP 716.02. Particularly, Applicant cites to Example 1 which does not have the aluminum oxalate within it.
No further arguments are presented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOUIS J RUFO whose telephone number is (571)270-7716. The examiner can normally be reached Monday to Friday, 9 am to 5 pm.
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/LOUIS J RUFO/ Primary Examiner, Art Unit 1795
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