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
The amendment filed May 26, 2026 has been received and entered. With the entry of the amendment, claims 2, 10, 12, 14, 20-26 and 28-34 are canceled, and claims 1, 3-9, 11, 13, 15-19, 27 and 35-42 are pending for examination.
Election/Restrictions
Applicant’s election of Group I, claims 1-27 in the reply filed on May 22, 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
It is noted that non-elected claims 28-34 were canceled in the amendment of September 8, 2025.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “the surface preparation system” in claims 1 and 27.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend 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 avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The rejection of claims 1, 3-9, 11, 13, 15-19, 27 and 35-42 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 is withdrawn due to the amendments of May 26, 2026 removing the indicated new matter.
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.
Claims 1, 3-5, 11, 13, 19 and 36-38 are rejected under 35 U.S.C. 103 as being unpatentable over Voges, et al “Eco-Pickled Surface: An Environmentally Advantageous Alternative to Conventional Acid Pickling” (hereinafter Voges article, used as provided with the IDS filed July 16, 2024) in view of Voges (US 2008/0182486, hereinafter Voges ‘486), Williams (US 4383937) and Saunders et al (US 5413645) and as evidenced by Marcus (US 5399274).
Claims 1, 3, 4: Voges article indicates a method for treating a metal surface of a metal (steel surface of steel) in a surface preparation system in which a mixture of water and grit are propelled to the metal surface to remove surface deposits from the metal (oxide layer/scale), where it is indicted that hot rolled steel forms an oxide layer/scale on the steel surface as it reacts to oxygen in the air during the hot rolling process, and this needs to be removed before further process such as coating, and Voges article describes using slurry blast technology to do so (note pages 1-2, where the slurry blasting includes providing a mixture of water and grit that are propelled to the metal surface to remove surface deposits (such as rust/scale) from the metal, note pages 2-4), where the surface preparation system for the blasting appears include the features as the surface preparation system in figure 1 of applicant (note figure 11 of Voges article, and page 10). It is further noted that there can be an additional SCS unit after blasting and before drying table to condition and polish (note page 10), thus indicating that further additional units can be put in the system as needed, and also indicating finishing processes provided on the metal surface. Voges article notes there can be further treatments after the scale removal such as cold rolling, galvanizing and coating (note page 2), which would allow for the possibility of more than one of these used.
(A) Further as to providing a treatment composition that is an aqueous solution comprising amine borate, an organic corrosion inhibitory, and at least one surfactant, where the amine borate is the component that is present in the highest amount other than water and spraying this treatment composition on the metal surface in the surface preparation system and forming a protective anti-corrosion film on the metal surface that includes the amine borate, and then performing a finishing process on the metal,
Voges ‘486 describes providing an oxide removing/descaling process on a steel surface of a steel using a projected mixture of water and grit (slurry) to impact the metal surface to remove surface deposits (note 0011, 0055). With the propelling of the slurry, this can be considered a spraying of the slurry. Voges ‘486 further indicates that corrosion inhibitors can be added to the slurry liquid to help protect the metal sheet (note 0055). Voges ‘486 also notes that after the grit/slurry there can be passing the metal through a coating device to apply a film of oil or other protective layer to prevent reoxidation (note 0016).
Williams further describes a corrosion inhibiting functional fluid that can be used for various working processes including grinding, etc. (note column 2, lines 40-55). This fluid includes activity leading to reduction or prevention of corrosion on metal surfaces, such as steel (note column 23, line 55 to column 24, line 60, column 26, lines 30-45). The liquid can include water, a corrosion inhibitor that can be an organic salt (that is, an organic corrosion inhibitor and surfactant) (note column 3, lines 40-60), and the liquid can also include amine borate (ethanolamine borate) in an amount where the amine borate is present in the highest amount other than the water (note column 18, lines 30-35, note Surfonic ® N-10 is a surfactant, see column 19, lines 50-55, column 25, lines 30-50, column 26, lines 25-60). Williams indicates that its treatment composition can contain additional corrosions inhibitors (other than those listed at column 3, lines 40-60, note column 15, lines 40-45). Marcus evidences that ethanolamine borate (that is monoethanolamine borate, for example), would act as a corrosion inhibitor (note column 5, lines 45-50 and 60-65).
Additionally, Saunders provides for processing of steel (note the abstract), where it is described to process steel sheets/backplate in a processing system (note figure 1, column 2,lines 25-30), where the processing includes cleaning the surface (note column 2, lines 60-65, figure 1), followed by applying a corrosion prevention coating, where the coating can be applied as a polymeric material from an aqueous suspension to help prevent oxidation (note column 3, lines 1-20 and 60-68, figure 2), and as well a further polymeric finish coating can be applied by spraying (note column 4, lines 1-25). Thereafter, the coated steel sheet can be further cold rolled, which can reduce substrate gauge (note column 4, line 60 to column 5, line 15, figure 1).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Voges article to provide a corrosion inhibiting treatment to the metal by providing a treatment composition with amine borate, organic corrosion inhibitor, and at least one surfactant, with the amine borate being in the highest amount other than water, spraying the treatment composition on the metal surface in the system, either at the same time as the water/grit propelling (claim 3) or after the water/grit propelling (claims 3, 4) so as to form a protective anticorrosion film of the metal surface that includes the amine borane, before applying a finishing process as suggested by Voges ‘486, Willams and Saunders, and evidenced by Marcus to provide a desirably protected metal surface, since Voges article is providing a desirable water/grit blasting technique to remove scale before further treatment of steel, and Voges article suggests how cleaned rolled steel can have further processing including coating and cold rolling, and Voges ‘486 indicates that in a similar such process corrosion inhibitors can be added to the grit/slurry being applied, thus spraying from the propelling of the slurry the corrosion inhibitor material on the surface, where it would be understood to provide an anti-corrosion coating on the metal film, since the purpose would be to reduce corrosion, and further protective coating can be applied after the grit/water treatment, Williams further teaches a treatment composition that would be usable to provide a corrosion inhibitor to the surface of a metal in a liquid form, where the treatment composition would be aqueous and include amine borate, organic corrosion inhibitor, and at least one surfactant, with the amine borate being in the highest amount other than water, with Marcus evidencing that the amine borate can act as a corrosion inhibitor and Saunders would further indicates specifically that is known that when steel is to be processed by cold rolling, to clean, then apply an anti-corrosion coating that helps prevent oxidation, and also polymeric finish coatings, and then further cold roll to provide further gauge reduction of the steel, and thus is would be suggested that after the cleaning/grit/water blasting steel as in Voges article, there would be suggested further providing a corrosion inhibit coating followed by finish treatments including further coating and cold rolling finishing processing. Therefore, Williams would indicate a treatment composition with the components claimed, which from Voges ‘486 would be suggested to be added to the grit/blast slurry that is sprayed to al apply to the metal surface (as in claim 3), which would leave an anti-corrosive film on the surface (when water removed with drying, leaving the other material) that contains amine borate in order to continue to provide desired protection, followed by finishing as described by Saunders, or alternatively since Saunders also notes that anti-corrosion coatings can be applied separately after cleaning Voges ‘486 notes further protective treatment coating, and before further finishing treatment, it would also be suggested to apply the grit/water slurry treatment, then the corrosion inhibiting treatment composition as in Williams (as in claims 3, 4) which can be applied by spraying given the indication that corrosion inhibitors can be applied by spraying with the grit/slurry by Voges ‘486, which would leave an anti-corrosive film on the surface (when water removed with drying, leaving the other material) that contains amine borate in order to continue to provide desired protection, followed by finishing as described by Saunders. Given the description of the system in Voges article and other additional stations that can be provided, it would be understood the surface preparation system would be system meeting the 35 USC 112(f) requirements.
Claim 5: It would be understood that the treatment composition can exclude phosphates (noting the example in Williams without phosphates (note colu8mn 18, lines 30-45).
Claim 11: Williams indicates that the organic corrosion inhibitor can be present in o.002 to 10 wt%, for example (note column 15, lines 40-50), which would overlap the claimed range (where 1000 ppm is about 1 g/l), and it would have been obvious to optimize from the claimed range, giving a value in the claimed range. Also note MPEP 2144.05(II)(A):” 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)”.
Claim 13: Williams indicates that surfactant can be present in 0.01-5 wt%, or about 0.1 to 60 g/l (note column 12, lines 35-40), which would overlap the claimed range (where 1000 pm is about 1 g/L), and it would have been obvious to optimize from the claimed range, giving a value in the claimed range. Also note MPEP 2144.05(II)(A):” 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)”.
Claim 19: From Voges article, the surface preparation system treat hot rolled steel (note page 2). Further, from Williams, the treatment composition can have no sulfate (note column 18, lines 30-45, and note from column 11, line 35 to column 12, line 25, surfactants without sulfates can be used).
Claim 36: cold rolling would be suggested by Voges article and Saunders as discussed for claim 1 above.
Claim 37: Williams provides that the weight ratio of borate to organic corrosion inhibitory can be 23:2, for example (or 11.5:1), in the claimed range (note column 18, lines 35-45), giving a suggested amount to use.
Claim 38: Williams provides that the weight ratio of the borate to the surfactant (Surfonic® N-10) can be 23:0.5 (or 46:1), in the claimed range (note column 18, lines 35-45), giving a suggested amount to use.
Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Voges article in view of Voges ‘486, Williams and Saunders, as evidenced by Marcus as applied to claims 1, 3-5, 9, 11, 13, 19 and 36-38 above, and further in view of Marcus (US 5399274).
Claims 6, 7: as to further using an organic corrosion inhibitor that is tolyltriazole, for example, Williams, along with the previously described materials in the treatment composition, also notes that other additives can be present in the composition, including other corrosion inhibitors (note column 13, lines 40-45), and that the solution can also be lubricating/contain lubricant materials (note column 3, lines 50-60).
Marcus teaches providing a lubricant material that can also be used to provide a corrosion inhibiting/rust inhibiting coating on metal (note column 7, lines 10-25, 40-50), where it is indicted that triazoles can be present (note column 3, lines 35-40), where it is indicated that triazoles would include tolyltriazole (note column 6, lines 24-30).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Voges article in view of Voges ‘486, Williams and Saunders, as evidenced by Marcus to use tolyltriazole (TTA) in the treatment composition used as suggested by Marcus with an expectation of predictably acceptable results, as Williams indicates using additional lubricant and/or corrosion inhibitors in the treatment composition, and Marcus teaches that including TTA would be conventionally provided in a treatment composition comprising lubricant and corrosion inhibitors.
Claims 8, 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Voges article in view of Voges ‘486, Williams and Saunders, as evidenced by Marcus as applied to claims 1, 3-5, 9, 11, 13, 19 and 36-38 above, and further in view of Trivett (US 5055325).
Claims 8, 17, 18: Willisms teaches that the composition can contain a surfactant (note column 50-55), but does not list specific surfactants of claims 8, 17 and 18.
However, Trivett teaches providing a blanking film that can also be used to provide a corrosion inhibiting coating (since corrosion inhibitors provided) on steel (note abstract), where the composition for coating includes surfactants (abstract, column 3, lines 1-15), where the surfactants can be those formed by reacting mixed ethylene oxide/propylene oxide with fatty alcohols giving ethylene oxide-propylene oxide adducts of alkoxylated C10-C20 fatty alcohols (so ethoxylated propoxylated alcohol, as for claim 8) (note column 3, lines 40-55, column 5, lines 10-20). This can also be considered an alkoxylated alcohol surfactant for claim 18, where such fatty alcohols can conventionally be provided as either saturated or unsaturated, so the use of a alkoxylated saturated alcohol as for claim 18 would be understood to be predictably acceptable. The surfactant can also be an ethylene oxide or propylene oxide adduct of alkoxylated C10-C20 fatty alcohol (so also an ethyoxylate or propoxylate of the fatty alcohol) (column 3, lines 40-55). Fatty alcohols do not have to be an alkyl phenol, and therefore the teaching is understood to include the surfactant of claim 17.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Voges article in view of Voges ‘486, Williams and Saunders, as evidenced by Marcus to use surfactants as in claims 8, 17 and 18 as the specific surfactant used as suggested by Trivett with an expectation of predictably acceptable results, as Williams indicates surfactants can be used in the composition for forming a protective anti corrosion film, and Trivett teaches that surfactants that can be used in similar such coatings are those that meet the requirements of claims 8, 17 and 18 as discussed above.
Claims 9, 39 and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Voges article in view of Voges ‘486, Williams and Saunders, as evidenced by Marcus as applied to claims 1, 3-5, 9, 11, 13, 19 and 36-38 above, and further in view of WO 2014/044733 (hereinafter ‘733).
Claims 9, 39, 40:as to the amount of the amine borate being 1-10,000 ppm (claim 9 or 3000 t0 10000 ppm (claim 39), and the ratio of amine borate to organic corrosion inhibitor being 10-100 (claim 39, 40), and the organic corrosion inhibitor present in an amount of 100-1000 ppm (claim 40), Williams indicates that the organic corrosion inhibitor can be present in o.002 to 10 wt%, for example (note column 15, lines 40-50), which would overlap the claimed range (where 1000 ppm is about 1 g/l), and it would have been obvious to optimize from the claimed range, giving a value in the claimed range. Also note MPEP 2144.05(II)(A):” 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)”. As to the amount of amine borate, Williams generally teaches that additional corrosion inhibitor can be present (note column 13, lines 40-45), and gives an example of the amine borate at 23 wt% (note column 18, lines 35-35), which would be more than 10000 ppm (about 10 g/l). As discussed for the organic corrosion inhibitor above the amount can be in the range of 100-1000 ppm, and the amount of the surfactant can also be 1-1000 ppm (as discussed for claim 13 above).
‘733 teaches a method for treating a metal surface of a metal (such as steel) (note page 1, lines 14-20), where treatment composition is provided that is an aqueous solution (note page 5, line 25 to page 6, line 5, and note Example 4 amounts, pages 14-15) comprising materials including amine borate (note page 8, lines 5-20, the “flash rust inhibitor”, claim 10), an organic corrosion inhibitor (note page 7, line 23 to page 9, line 16, the non-pigment corrosion inhibitors, which can imidazoles, for example, as desired for such material by claim 6, and understood to include organic material as listed), and at least one surfactant (note page 11, lines 5-10, which “wetting agents” would be “surfactants”). The treatment composition that includes the amine borate is applied on the metal surface, where the treatment composition forms a protective anti-corrosion film on the metal surface (note page 10, lines 5-15, page 15, lines 15-25, page 18, lines 5-10). As to applying the treatment composition by spraying on the metal surface, ‘733 indicates that the composition can be applied to the substrate (metal surface) by spraying (note page 11, lines 5-10). As to the amount of amine borate (flash rust inhibitors) in the treatment composition, ‘733 indicates that the amount can be 0.1 to 0.6 % by weight based on 100% liquid formulation (note page 8, lines 5-20), which would be about 1 to 6 g/l or about 1000-6000 pm.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Voges article in view of Voges ‘486, Williams and Saunders, as evidenced by Marcus to additionally add the amine borate in an amount of 1000-6000 ppm to the composition as suggested by ‘733 with an expectation of predictably acceptable results of additional corrosion inhibiting, as Williams indicates additional corrosion inhibitor can be present (with no specific range amount) and describes using amine borate (evidenced by Marcus as a corrosion inhibitor), and ‘733 indicates that it is also known to use amine borate as corrosion inhibitor in solution in an amount of about 1000-6000 ppm, where when the amount used optimized, would be in the claimed range of claims 9 and 39, and also the largest amount of material in the solution other than water (from the other amounts usable), and further would give ratio of amine borate to organic corrosion inhibitory of 10-100:1 as in claims 39, 40. Also note MPEP 2144.05(II)(A):” 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)”.
Claims 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Voges article in view of Voges ‘486, Williams and Saunders, as evidenced by Marcus as applied to claims 1, 3-5, 9, 11, 13, 19 and 36-38 above, and further in view of Riggs, Jr. (US 5202058).
Claims 15, 16: As to further using an inorganic corrosion inhibitor of stannous salt in the composition, Williams indicates that additional corrosion inhibitors can be used in the composition (note column 13, lines 40-45), but does not specifically indicate the use of tin compounds.
However, Riggs teaches that a corrosion inhibiting composition that can be provided to treat ferrous metal can include a stannous salt (note abstract, column 1, lines 5-10), where the stannous salt is a corrosion inhibitor (note column 5, lines 40-50), and where the stannous salt can be inorganic, such as stannous chloride (note column 2, lines 50-60).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Voges article in view of Voges ‘486, Williams and Saunders, as evidenced by Marcus to additionally add inorganic stannous salt to the composition as suggested by Riggs with an expectation of predictably acceptable results of additional corrosion inhibiting, as Williams indicates additional corrosion inhibitor can be present, and Riggs teaches that inorganic stannous salt can be used to help provide additional corrosion inhibiting.
Claims 27 and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Voges article in view of Voges ‘486, Williams, Saunders and Trivett, as evidenced by Marcus as applied to claims 8, 17 and 18 above, and further in view of Marcus (US 5399274).
Claim 27: Voges article in view of Voges ‘486, Williams, Saunders and Trivett provides the features of claim 27 (including the use of a surface preparation system for treating hot rolled steel with water/grit, and providing a surface treatment composition with water, amine borate, organic corrosion inhibitor and surfactant, with amine borate in the largest amount other than water, spraying the treatment composition on the metal surface, forming a protective anti-corrosion film, performing a finishing process, with the treatment composition being without phosphates and the surfactant as claimed, note discussion for claims 1, 5, 9, 17, 26 above), except the specific use to tolyltriazole (TTA), for example. Williams, along with the previously described materials in the treatment composition, also notes that other additives can be present in the composition, including other corrosion inhibitors (note column 13, lines 40-45), and that the solution can also be lubricating/contain lubricant materials (note column 3, lines 50-60).
Marcus teaches providing a lubricant material that can also be used to provide a corrosion inhibiting/rust inhibiting coating on metal (note column 7, lines 10-25, 40-50), where it is indicted that triazoles can be present (note column 3, lines 35-40), where it is indicated that triazoles would include tolyltriazole (note column 6, lines 24-30).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify ‘Voges article in view of Voges ‘486, Williams, Saunders and Trivett, as evidenced by Marcus to use tolyltriazole (TTA) in the treatment composition used as suggested by Marcus with an expectation of predictably acceptable results, as Williams indicates using additional lubricant and/or corrosion inhibitors in the treatment composition, and Marcus teaches that including TTA would be conventionally provided in a treatment composition comprising lubricant and corrosion inhibitors.
Claim 35: cold rolling would be suggested as discussed for claim 36 above.
Claims 41-42 are rejected under 35 U.S.C. 103 as being unpatentable over Voges article in view of Voges ‘486, Williams, Saunders, Trivett and Marcus as evidenced by Marcus as applied to claims 27 and 35 above, and further in view of WO 2014/044733 (hereinafter ‘733).
Claims 41-42:as to the amount of the amine borate being 3000 t0 10000 ppm (claim 41), and the ratio of amine borate to organic corrosion inhibitor being 10-100 (claim 41, 42), and the organic corrosion inhibitor present in an amount of 100-1000 ppm (claim 42), Williams indicates that the organic corrosion inhibitor can be present in o.002 to 10 wt%, for example (note column 15, lines 40-50), which would overlap the claimed range (where 1000 ppm is about 1 g/l), and it would have been obvious to optimize from the claimed range, giving a value in the claimed range. Also note MPEP 2144.05(II)(A):” 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)”. As to the amount of amine borate, Williams generally teaches that additional corrosion inhibitor can be present (note column 13, lines 40-45), and gives an example of the amine borate at 23 wt% (note column 18, lines 35-35), which would be more than 10000 ppm (about 10 g/l). As discussed for the organic corrosion inhibitor above the amount can be in the range of 100-1000 ppm, and the amount of the surfactant can also be 1-1000 ppm (as discussed for claim 13 above).
‘733 teaches a method for treating a metal surface of a metal (such as steel) (note page 1, lines 14-20), where treatment composition is provided that is an aqueous solution (note page 5, line 25 to page 6, line 5, and note Example 4 amounts, pages 14-15) comprising materials including amine borate (note page 8, lines 5-20, the “flash rust inhibitor”, claim 10), an organic corrosion inhibitor (note page 7, line 23 to page 9, line 16, the non-pigment corrosion inhibitors, which can imidazoles, for example, as desired for such material by claim 6, and understood to include organic material as listed), and at least one surfactant (note page 11, lines 5-10, which “wetting agents” would be “surfactants”). The treatment composition that includes the amine borate is applied on the metal surface, where the treatment composition forms a protective anti-corrosion film on the metal surface (note page 10, lines 5-15, page 15, lines 15-25, page 18, lines 5-10). As to applying the treatment composition by spraying on the metal surface, ‘733 indicates that the composition can be applied to the substrate (metal surface) by spraying (note page 11, lines 5-10). As to the amount of amine borate (flash rust inhibitors) in the treatment composition, ‘733 indicates that the amount can be 0.1 to 0.6 % by weight based on 100% liquid formulation (note page 8, lines 5-20), which would be about 1 to 6 g/l or about 1000-6000 pm.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Voges article in view of Voges ‘486, Williams, Saunders Trivett and Marcus, as evidenced by Marcus to additionally add the amine borate in an amount of 1000-6000 ppm to the composition as suggested by ‘733 with an expectation of predictably acceptable results of additional corrosion inhibiting, as Williams indicates additional corrosion inhibitor can be present (with no specific range amount) and describes using amine borate (evidenced by Marcus as a corrosion inhibitor), and ‘733 indicates that it is also known to use amine borate as corrosion inhibitor in solution in an amount of about 1000-6000 ppm, where when the amount used optimized, would be in the claimed range of claim 41, and also the largest amount of material in the solution other than water (from the other amounts usable), and further would give ratio of amine borate to organic corrosion inhibitory of 10-100:1 for claims 41, 42. Also note MPEP 2144.05(II)(A):” 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)”.
Ali, et al “Industrial perspective in ocular drug delivery” notes that wetting agents are surfactants (note page 1261, second column). Fricker et al (US 6527872) also notes wetting agents as surfactants (note column 10, lines 50-68).
Response to Arguments
Applicant's arguments filed May 26, 2026 have been fully considered.
(1) Note the adjustment to the rejections due to the amendments to the claims, including the use of the new references to Voges ‘486 and Williams.
(2) As to the 35 USC 103 rejections, it is argued that the cited references do not provide the claimed amount of amine borate being the highest amount other than water, where ‘733 uses a smaller amount of amine borate.
The Examiner notes these arguments and the new combination of references is provided as to the invention as now claimed, with the additional reference to Williams suggesting a composition with amine borate that is the largest amount other than water as discussed in the rejections above.
Therefore, the rejections above are maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/KATHERINE A BAREFORD/Primary Examiner, Art Unit 1718
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