DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. The Applicant’s amendment filed on August 28, 2026 was received. Claim 20 was newly added.
The text of those sections of Title pre-AIA 35, U.S.C. code not included in this action can be found in the prior Office Action issued on November 05, 2025.
Claim Interpretation
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: by means of a chromium-free conversion treatment in claim 1.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Rejections - 35 USC § 112
The claim rejections under 35 U.S.C. 112(d) or 35 U.S.C. 112 (pre-AIA ), 4th paragraph, on Claim 19 is withdrawn, because the claim has been cancelled.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 5-10 16 and 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. The newly added subject matter "wherein a weight ratio, calculated as Zr/Mo metal, of Zr : Mo is from 6.6:1 to 8.3:1, and wherein the solution includes from 200 to 500 mg/l of Zr and from 30 to 60 mg/l of Mo, calculated as Zr/Mo metal, and has a pH from 3.5 to 4.0; and d) drying the workpieces, wherein, after the drying, a layer weight is provided on each workpiece of from 4 to 15 mg/m2 of Zr and Mo." is not supported by the original presentation of specification.
Claim Rejections - 35 USC § 103
The claim rejections under 35 U.S.C. 103 as being unpatentable over Jueptner et al. (US 2006/0173099 A1) on Claims 1, 5-6, 10, and 20 are maintained.
Regarding claim 1, Jueptner teaches a method of pretreating a sheet of aluminum alloys by a chromium-free conversion treatment by surface coating (Abstract, [0277], the recitation “for noncutting forming and/or joining by welding or adhesive bonding to pretreated workpieces, precoated workpieces, or precoated parts composed of steel and/or galvanized steel and/or alloy-galvanized steel, and also for a subsequent permanent corrosion-protecting treatment by phosphating” has not been given patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).), wherein the process comprises: a) pickling the sheet of aluminum alloy using Deoxidizer®4902 (a commercial product of the applicant) 2%, at room temperature for 3 minutes by dipping ([0284]); b) rinsing the sheet of aluminum alloy with water ([0285]-[0286]); c) applying a aqueous, acidic, chromium-free treatment solution to the sheet of aluminum alloy by spraying for example ([0027], [0273], [0287]) comprising: a total of 4 to 4000 mg/l of hexafluorozirconate ions for example ([0028]); a total of 10 to 4000 mg/l of molybdate ions for example, calculated as dihydrate of the Na salt ([0029]), in one litter solution, the amount of hexafluorozirconate ions is 4-4000 mg (calculated amount of Zr is 91.22g/mol/207.23 g/mol=x/4 to 4000, x=1.76 to 1760 mg), and the molybdate ions is 10 to 4000 mg (calculated amount of Mo is 95.95g/mol/205.92 g/mol=x/ 10 to 4000, x=4.6 to 1863.83 mg); wherein the concentration of the hexafluorozirconate ions is preferably at least 100 mg/l and preferably at a maximum of 500 mg/l ([0032]), and wherein the concentration of molybdate ions, calculated as dihydrate of the Na salt is at least 50 mg/l, and at a maximum of 1000 mg/l ([0032]), wherein the pH of the aqueous treatment solution preferably should not lower than 2.5, and not higher than 4 ([0055]); d) drying the sheet of aluminum alloy ([0287]), the surface comprises particularly 3 to 30mg/m2 of zirconium and the molybdenum coating is generally in the range between 2 and 500 mg/m2 for example ([0276], in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) see MPEP 2144.05).
Jueptner does not explicitly teach the whole range of a weight ratio, calculated as Zr/Mo metal, of Zr : Mo is from 6.6:1 to 8.3:1, the solution includes from 200 to 500 mg/l of Zr and from 30 to 60 mg/l of Mo, calculated as Zr/Mo metal, and has a pH from 3.5 to 4.0, and a layer weight is provided on each workpiece of from 4 to 15 mg/m2 of Zr and Mo, but teaches a total of 4 to 4000 mg/l of hexafluorozirconate ions for example ([0028]); a total of 10 to 4000 mg/l of molybdate ions for example, calculated as dihydrate of the Na salt ([0029]), wherein the concentration of the hexafluorozirconate ions is preferably at least 100 mg/l and preferably at a maximum of 500 mg/l ([0032]), and wherein the concentration of molybdate ions, calculated as dihydrate of the Na salt is at least 50 mg/l, and at a maximum of 1000 mg/l ([0032]), and has a pH from 2.5 to 4.5 ([0055]), and comprises particularly 3 to 30mg/m2 of zirconium and the molybdenum coating is generally in the range between 2 and 500 mg/m2 for example ([0276], as discussed above. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range in Zr: Mo is from 6.6:1 to 8.3:1, from 200 to 500 mg/l of Zr and from 30 to 60 mg/l of Mo, and pH from 3.5 to 4.0, and from 4 to 15 mg/m2 of Zr and Mo, because the claimed ranges overlap or lie inside ranges disclosed by the prior art ranges, a prima facie case of obviousness exists and expect the same success when applying the same amount of Zr and Mo.
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
Regarding claims 5 and 6, Jueptner teaches the aqueous treatment solution contains at least one polymer from polymers or copolymers of acrylic acid and/or methacrylic acid ([0040]).
Regarding claim 10, Jueptner teaches a) pickling the sheet of aluminum alloy using Deoxidizer®4902 (a commercial product of the applicant) 2%, at room temperature for 3 minutes by dipping ([0284]); b) rinsing the sheet of aluminum alloy with water ([0285]-[0286]); c) applying a aqueous, acidic, chromium-free treatment solution to the sheet of aluminum alloy by dipping for example ([0027], [0287]).
Regarding claim 20, Jueptner teaches wherein the pH of the aqueous treatment solution preferably should not lower than 2.5, and not higher than 4 ([0055], in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) see MPEP 2144.05).
The claim rejections under 35 U.S.C. 103 as being unpatentable over Jueptner et al. (US 2006/0173099 A1) as applied to claims 1, 5-6, 10, and 20, and further in view of Mickelson et al. (US 3448055) on Claims 7-8 are maintained.
Regarding claim 7, Jueptner teaches pickling the sheet of aluminum alloy using Deoxidizer®4902 (a commercial product of the applicant) 2%, at room temperature for 3 minutes ([0284]). Jueptner does not explicitly teach wherein the Deoxidizer®4902 pickling solution comprising surfactant, hydrofluoric acid, and sulfuric acid. However, Mickelson, an analogous art, teaches a method of treating an aluminum based alloys using a deoxidizing solution, wherein the deoxidizing solution composition comprising sulfuric acid, hydrofluoric acid and surfactant (Col. 1, lines 13-16). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the deoxidizing solution composition comprising sulfuric acid, hydrofluoric acid and surfactant to the method of pretreating a sheet of aluminum alloys in Jueptner, because Mickelson disclosed the use of solution to remove smut from aluminum based alloy, and leave the aluminum surface highly receptive to further treatment (Col. 2, lines 41-62).
Regarding claim 8, Jueptner teaches pickling the sheet of aluminum alloy using Deoxidizer®4902 (a commercial product of the applicant) 2%, at room temperature for 3 minutes ([0284]). Jueptner does not explicitly teach from 3 to 8 g/l of the sulfuric acid, from 50 to 150 mg/l of free fluoride, and from 1 to 3 g/l of a nonionic surfactant. However, Mickelson, an analogous art, teaches a method of treating an aluminum based alloys using a deoxidizing solution, wherein the deoxidizing solution composition comprising surfactant 0-3 %wt, hydrofluoric acid 0.5-5 % wt, and sulfuric acid 13-59 %wt for example (Col. 1, lines 13-16, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) see MPEP 2144.05). Jueptner does not explicitly teach the whole range of from 3 to 8 g/l of the sulfuric acid, from 50 to 150 mg/l of free fluoride, and from 1 to 3 g/l of a nonionic surfactant, but teaches comprising surfactant 0-3 %wt, hydrofluoric acid 0.5-5 % wt, and sulfuric acid 13-59 %wt for example (Col. 1, lines 13-16), as discussed above. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range from 3 to 8 g/l of the sulfuric acid, from 50 to 150 mg/l of free fluoride, and from 1 to 3 g/l of a nonionic surfactant, because the claimed ranges overlap or lie inside ranges disclosed by the prior art ranges, a prima facie case of obviousness exists and expect the same success when applying the same amount of surfactant, hydrofluoric acid, and sulfuric acid. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the deoxidizing solution composition comprising sulfuric acid, hydrofluoric acid and surfactant to the method of pretreating a sheet of aluminum alloys in Jueptner, because Mickelson disclosed the use of solution to remove smut from aluminum based alloy, and leave the aluminum surface highly receptive to further treatment (Col. 2, lines 41-62).
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
The claim rejections under 35 U.S.C. 103 as being unpatentable over Jueptner et al. (US 2006/0173099 A1) as applied to claims 1, 5-6, 10, and 20, and further in view of Wendel et al. (US 6562148 B1) on Claims 7-9 and 16 are maintained.
Regarding claim 7-8, Jueptner teaches a method of pretreating a sheet of aluminum alloys as disclosed above. Jueptner does not explicitly teach pickling solution comprising surfactant, hydrofluoric acid, and sulfuric acid. However, Wendel, an analogous art, teaches a method of pretreatment of work pieces having a surface made of aluminium or aluminium alloys (Abstract), comprising pickling the aluminum alloys with a pickling solution comprsing surfactant, hydrofluoric acid and sulphuric acid, with solutions which contain 3 to 8 g/l sulphuric acid, 50 to 150 mg/l non-complexed, free fluoride and 1 to 3 g/l non-ionogenic surfactant proving particularly suitable (Col. 4, lines 37-52). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the pickling solution and the amount to the method of pretreating a sheet of aluminum alloys in Jueptner, because Wendel disclosed in order to achieve the target pursued with invention, it is important that the aluminum alloys is pickling with the pickling solution (Col. 3, lines 35-45).
Regarding claim 9, Jueptner teaches a method of pretreating a sheet of aluminum alloys as disclosed above. Jueptner does not explicitly teach further comprising pretreating the aluminum alloy for noncutting forming, the pretreating comprising applying a lubricant before the noncutting forming. However, Wendel, an analogous art, teaches a method of pretreatment of work pieces having a surface made of aluminium or aluminium alloys, for non-cutting shaping and/or the connection by welding or gluing to work pieces as well as for a subsequent permanent corrosion-preventing treatment (Abstract), in the case of a subsequent treatment by non-cutting shaping, a further advantageous embodiment of the invention provides applying a lubricant to the work pieces (Col. 5, lines 22-27, Claim 4). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply a lubricant to the work pieces to the method of pretreating a sheet of aluminum alloys in Jueptner, because Wendel disclosed in the case of a subsequent treatment by non-cutting shaping, a further advantageous embodiment of the invention provides applying a lubricant to the work pieces (Col. 5, lines 22-27).
Regarding claim 16, Jueptner teaches a method of pretreating a sheet of aluminum alloys as disclosed above. Jueptner does not explicitly teach further comprising applying an activation treatment prior to said corrosion-protecting. However, Wendel, an analogous art, teaches a method of pretreatment of work pieces having a surface made of aluminium or aluminium alloys comprising cleaning, rinsing and, optionally activation treatments are performed before the permanent corrosion-preventing treatment (Abstract, claim 5). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply activation treatments are performed before the permanent corrosion-preventing treatment to the method of pretreating a sheet of aluminum alloys in Jueptner, because Wendel disclosed for the case of a subsequent phosphating treatment, which can also take place wet to wet, it is advantageous to provide an activating treatment (Col. 5, lines 28-40).
Response to Arguments
Applicant's arguments filed on August 28, 2026 have been fully considered but they are not persuasive.
Applicant’s principal arguments are
Jueptner is not a prima facie case of obviousness because the claim range is critical.
In response to Applicant’s arguments, please consider the following comments.
In response to Applicant’s arguments, the examiner respectfully disagrees. First of all, the newly amended ranges are new matters and are not supported the original presentation of specification. Jueptner is a prima facie case of obviousness. The rebuttal by the claimed range is critical for the claimed method on prima facie obviousness is not commensurate in regards to claims, in that claims are broader than evidence presented for results. Arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. In addition the claimed range is overlapping. Jueptner does not explicitly teach the whole range of a weight ratio, calculated as Zr/Mo metal, of Zr : Mo is from 15:1 to 3.5:1, the solution includes from 100 to 800 mg/1 of Zr and from 30 to 100 mg/1 of Mo, calculated as Zr/Mo metal and a layer weight is provided on each workpiece of from 2 to 15 mg/m2 of Zr and Mo, but teaches a total of 4 to 4000 mg/l of hexafluorozirconate ions for example ([0028]); a total of 10 to 4000 mg/l of molybdate ions for example, calculated as dihydrate of the Na salt ([0029]), wherein the concentration of the hexafluorozirconate ions is preferably at least 100 mg/l and preferably at a maximum of 500 mg/l ([0032]), and wherein the concentration of molybdate ions, calculated as dihydrate of the Na salt is at least 50 mg/l, and at a maximum of 1000 mg/l ([0032]), and comprises particularly 3 to 30mg/m2 of zirconium and the molybdenum coating is generally in the range between 2 and 500 mg/m2 for example ([0276], as discussed above. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range in Zr: Mo is from 15:1 to 3.5:1, from 100 to 800 mg/1 of Zr and from 30 to 100 mg/1 of Mo, and from 2 to 15 mg/m2 of Zr and Mo, because the claimed ranges overlap or lie inside ranges disclosed by the prior art ranges, a prima facie case of obviousness exists and expect the same success when applying the same amount of Zr and Mo.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HAI YAN ZHANG whose telephone number is (571)270-7181. The examiner can normally be reached on MTTHF.
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/HAI Y ZHANG/ Primary Examiner, Art Unit 1717
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