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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 6, 2026 has been entered.
The amendment filed with the RCE submission of February 6, 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, 35-38 and new claims 39-42 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 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, 3-9, 11, 13, 15-19, 27 and 35-42 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 27 now have “collecting the treatment composition after it has been sprayed on the metal surface and recirculating the treatment composition back to the surface preparation system”. However, this is not supported by the disclosure as filed. 0026 of the specification as filed refers to providing nozzles 54 for dispensing water for cleaning the surface of the treated steel strip 1, where water, grit and surface deposits removed from the steel strip is collected in the sumps 52 and recirculated back through the system, and where the surface deposits may be iron oxide. However, 0026 does not specifically describe collecting “treatment composition”, where “surface deposits” are not indicated to be “treatment composition” or the anti-corrosion film formed by the treatment composition, but rather indicated as being iron oxide, contaminant described as being removed with descaling at 0030 of the specification as filed. Furthermore, as well, 0026 describes a specific removal process using nozzles 54 for dispensing water for cleaning and collection in a sump, not a general “collecting of treatment composition”. Therefore, the claims contain new matter.
The other dependent claims do not cure the defects of the claims from which they depend.
The rejection of claims 1-9, 11, 13, 15-23, 27 and 35-38 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 is withdrawn.
Claim Objections
Claims 6, 7 and 17 are objected to because of the following informalities: “tolytriazole” should be correctly spelled “tolyltriazole” (note specification as filed 0034, understood that this is what is intended as the spelling of the material as described in the disclosure as filed). Appropriate correction is required.
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, 3-6, 9, 11, 13, 19 and 36-40 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2014/044733 (hereinafter ‘733) in view of 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), Saunders et al (US 5413645), Rodabaugh et al (US 5702534) and Chelton et al (US 4102350)
Claims 1, 6, 36, 37, 39: ‘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).
(A) As to the ratio of the amount of amine borate to the corrosion inhibitor in the treatment composition,
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). As to the amount of organic corrosion inhibitor (non-pigment corrosion inhibitors), ‘733 indicates that this can be provided in amounts up to 5 wt% based on the liquid coating formulation, including 0-5.0 wt% (note page 7, line 23 to page 8, line 10). Therefore, the ratio of amine borate to inhibitor can be considered as 0.1-0.6 wt% borate to a range of 0-5 wt% inhibitor. It would have been obvious to optimize the amount of each material used, and from these optimized amounts a value in the claimed ratio range would be provided. 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)”. This would also suggest the ratio for claim 37. As well, for claim 39, with the aqueous treatment composition with 0.1 to 0.6 wt% amine borate, this would be about 1-6 g/l of borate, or about 1000-6000 ppm, which would overlap the claimed range and be optimized to be in the claimed range, and the ratio with the organic corrosion inhibitor would be optimized to be the claimed range as discussed above, from the range given for inhibitor.
(B) As to providing the treatment in a surface preparation system (as understood under 35 USC 112(f)) in which a mixture of water and grit are propelled to the metal surface to remove surface deposits form the metal, ‘733 notes metal in general can be coated (note claim 14), and gives examples of treating cold roll steel including that which has been rusted, where before coating there a cleaning and abrading (sanding and wire wool described, where the wire wool is described as removing rust (oxide) so descaling) process (note page 15, lines 15-25, page 18, lines 1-10).
Voges article indicates that additionally hot rolled steel also 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 describes using slurry blast technology to do so (note pages 1-2), 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. Further as to the slurry blasting, it 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).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify ‘733 to provide the coating treatment as part of the surface preparation system of Voges article with an expectation of providing desirable corrosion protection, because ‘733 notes how steel surfaces, including worked steel that has rusted (oxidized) can be cleaned and descaled/rust removed before coating with the corrosion protection material, and Voges article indicates another way of providing steel that oxidizes in working is by hot rolling the steel and removing scale (by propelling a mixture of water and grit the substrate surface to remove the scale/surface deposit from the metal) in a surface preparation system that has the features described by applicant for such a system (so meeting 35 USC 112(f) requirements) as described above, and further treatment units can be provided in the surface preparation system allowing additional action, and it would be suggested to provide a unit for the application of the coating of ‘733, as that coating is for preventing further corrosion of descaled steel, and by providing the treatment immediately after the descaling, for example, in the system, less time would be present for re-oxidizing the steel.
(C) As to providing a further finishing process (cold rolling as in claim 36) on the metal after forming the anti-corrosion film on the metal surface, Voges 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. ‘733 notes that the coating can have polymer binder material (note page 2, lines 5-15).
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 ‘733 in view of Voges article to provide a further finishing process of cold rolling of the anti-corrosion film coated metal as suggested by Saunders with an expectation of providing desirable further gauge reduction of the steel, since ‘733 describes providing anti-corrosion coatings that can include polymers that can be coated on steel to protect from corrosion after the steel has been cleaned, Voges article suggests how cleaned rolled steel can have further processing including coating and cold rolling, and Saunders indicates specifically that is known that when steel is to be processed by cold rolling, to clean, then apply a polymer containing 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 applying the anti-corrosion coating of ‘733 to a cleaned steel as in Voges article, there would be suggested further cold rolling finishing processing.
(D) Furthermore, as to collecting the treatment composition after it has been sprayed on the metal surface and recirculating the treatment composition back into the surface preparation system, Voges article describes that treatment can be to a running steel (metal) strip (note pages 9-11, figure 11). Saunders also describes treatment to a running steel (metal) strip (note figure 1, column 2, lines 15-30), and application with spraying (note column 4, lines 15-20). ‘733 describes how the treatment composition can be considered a paint and have polymer type material (note Example 4, pages 14-15, page 2, lines 5-15). Saunders also describes coating with polymeric material with aqueous suspension (note column 3, lines 1-20, 60-68).
Rodabaugh describes providing an aqueous treatment solution/composition (here a hydrogen peroxide solution) to a running steel strip, where the coating is applied by spraying to both sides of the strip, and where it is indicated that with such spraying there can be solution dripping from the strip (so activity after sprayed to the surface), where the dripping solution is caught in a catch pan and flowed into a tank 28 (so collected) (note figure 1, column 4, lines 30-60). Furthermore, the recovered, collected solution can be recycled back into the overall surface preparation/treatment system provided by Rodabaugh (note recycled back to tanks 12 and 14 to use a makeup for liquid lost to evaporation, etc.) (note column 4, line 60 to column 5, line 15, figure 1).
Furthermore, Chelton describes treating moving metal articles/containers 11 with an aqueous resin dispersion/coating/treatment composition by spraying, where the spray is provided from a tank 26 with the coating liquid, and in the spraying process, excess coating material is allowed to drain from the article/container 11 back into the tank 12 (so the treatment composition is collected after it has been sprayed on the metal surface/article), where it would be recirculated back into the treatment preparation system for the coating, since the tank is part of the surface preparation system, and further since the spraying comes from the tank, the recirculated composition can be resprayed (note column 2, line 60 to column 3, line 30, figure 1). It is also shown that material sprayed from above also drips down into a collection tank (note figure 1, column 3, lines 30-45, column 4, lines 60-68).
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 ‘733 in view of Voges article and Saunders to provide collecting the treatment composition after it has been sprayed on the metal surface and recirculating the treatment composition back to the surface preparation system as suggested by Rodabaugh and Chelton with an expectation of providing desirable efficient reuse of material, since ‘733 describes spraying the treatment composition/coating which can be an aqueous material with polymeric material, Voges article indicates using a running metal strip, Saunders describes spraying treatment composition/coating which can be an aqueous material with polymeric material and with a running metal strip, and Rodabaugh indicates that when spraying a treatment composition on a running metal strip, excess treatment composition can be collected after it has been sprayed on the metal surface and recirculated back to a surface treatment/preparation system for reuse, and Chelton further indicates that when spray applying treatment composition that is aqueous with polymeric type material to a moving metal article it is similarly conventional to provide that excess composition runs off and is collected and can be collected after it has been sprayed on the metal surface and recirculated back to a surface treatment/preparation system for reuse, thus suggesting collection of the treatment composition material of ‘733 after it has been sprayed on the metal surface and recirculating the treatment composition back to the surface preparation system for efficient reuse of material.
Claims 3, 4: as to performing a descaling and cleaning process with the mixture of water and grit propelled to the metal surface before applying the treatment composition to the metal surface, this would be suggested by ‘733 and Voges article, where as discussed for claim 1 above, ‘733 indicates that there can be cleaning and sanding/abrading/wire wool rust (oxide) removal before the treatment composition (paint) applied (note page 18, lines 1-10, page 15, lines 19-20), and Voges article also describes how desirable to descale before further treatment such as coating (note pages 1-2) using the mixture of water and grit propelled to the metal surface, as discussed for claim 1 above, and for claim 1 it is discussed why it would be suggested to provide the coating as part of a surface preparation system which Voges article describes as including the descaling (note figure 11), and which can include other operations, and therefore it would also be suggested to provide the descaling and cleaning as part of the surface preparation system to occur before the application of the treatment composition to provide the desired surface preparation before the application of the treatment composition.
Claim 5: as to the treatment composition excluding phosphates, this would be predictably acceptable when providing the composition of ‘733, where the described amine borate, organic corrosion inhibitor are not listed as requiring phosphate material (note page 7, line 23 to page 8, line 20, note alkanolamine borane as the flash rust inhibitor), any surfactant (wetting agent) can be used, which would include without phosphates (page 11, lines 5-10), and also a binder polymer and substituted succinimide compound (claim 1), which do not require phosphates.
Claim 9: 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). ‘733 also indicates that the treatment composition can be in an aqueous solution as the liquid composition (note page 5, line 25 to page 6, line 5, and note Example 4 amounts, pages 14-15). Therefore, for the liquid formulation, the amount in ppm (about 1000-6000 pm) would overlap the range of claim 9, or be considered within the range of claim 9. It is indicated that a specific amount can be selected, and therefore for claim 9, it would have been obvious to one of ordinary skill in the art to optimize the amount, giving values 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)”.
Claims 11, 40: As to the amount of organic corrosion inhibitor (non-pigment corrosion inhibitors), ‘733 indicates that this can be provided in amounts up to 5 wt% based on the liquid coating formulation, including 0-5.0 wt% (note page 7, line 23 to page 8, line 10). ‘733 also indicates that the treatment composition can be in an aqueous solution as the liquid composition (note page 5, line 25 to page 6, line 5, and note Example 4 amounts, pages 14-15). Therefore, for the liquid formulation, the amount in ppm would overlap the range of claim 11 and also claim 40. It is indicated that a specific amount can be selected, and therefore for claim 11 and also claim 40, it would have been obvious to one of ordinary skill in the art to optimize the amount, giving values 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)”. Furthermore, for claim 40, the ratio of borate to inhibitor can also be the claimed range, noting the discussion for claims 1 and 39 above, and the range of 100-1000 ppm would still allow for the desired ratio, where for example 3000 ppm borate and 300 ppm inhibitor would give a ratio of 10:1, in the claimed range.
Claims 13: ‘733 indicates surfactant (wetting agent) can be present (note page 11, lines 5-10), but does not give a specific amount. However, it would have been obvious to one of ordinary skill in the art to optimize the amount used to give a desirable treatment, giving values in the claimed ranges. 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: As to the surface preparation system a steel making system, and the metal surface is part of a hot rolled steel strip, ‘733 notes that steel can be treated (page 2, lines 20-25), and Voges would suggest the use in a steel making system to treat hot rolled steel strip as discussed for claim 1 above. The sulfate content of the treatment solution can be zero because a sulfate note required by ‘733 (note pages 2-10).
Claim 38: As to the weight ratio of the amine borate to the surfactant in the treatment composition, as discussed for claim 1 above, it would have been obvious to optimize the amount of amine borate, and as discussed for claim 13 above, it would have been obvious to optimize the amount of surfactant, and when providing such optimization the resulting ratio would also have been in the claimed range. 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 7 is rejected under 35 U.S.C. 103 as being unpatentable over ‘733 in view of Voges article, Saunders, Rodabaugh and Chelton as applied to claims 1, 3-6, 9, 11, 13, 19 and 36-40above, and further in view of Marcus (US 5399274).
Claim 7: ‘733 teaches that the organic corrosion inhibitor (non-pigment corrosion inhibitor) can be a triazole (note page 7, line 23-26), but does not specifically teach that the triazole is TTA (tolyltriazole).
However, 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 ‘733 in view of Voges article, Saunders, Rodabaugh and Chelton to use tolyltriazole (TTA) as the specific triazole used as suggested by Marcus with an expectation of predictably acceptable results, as ‘733 indicates triazoles can be used in the composition for forming a protective anti corrosion film as the organic corrosion inhibitor, and Marcus teaches that triazoles provided for compositions for a similar used would include TTA.
Claims 8, 17, 18, 27, 35 and 41-42, and optionally claim 5 are rejected under 35 U.S.C. 103 as being unpatentable over ‘733 in view of Voges article, Saunders, Rodabaugh and Chelton as applied to claims 1, 3-6, 9, 11, 13, 19 and 36-40 above, and further in view of Trivett (US 5055325).
Claims 8, 17, 18: ‘733 teaches that the composition can contain a wetting agent (surfactant) (note page 11, line 5-10), but does not list specific surfactants that can be used.
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 ‘733 in view of Voges article and Saunders 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 ‘733 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.
Optionally, as to claim 5, when using the surfactants of Trivett as discussed for claims 8, 17 and 18 above, Trivett would further suggest that the composition does not have to contain phosphates, chlorides or sulfates, as the described surfactant does not contain these materials.
Claims 27, 35: ‘733 in view of Voges article and Saunders would provide the features of claim 27 and 35 as discussed in the rejections of claims 1, 5 (no phosphates), 6 (imidazole organic corrosion inhibitor), 19 (use of hot rolled strip), 36 (finishing process with cold rolling), except for the specific surfactant used, and the details of the weight ratio of a total amount of the amine borate and inhibitor to the total amount of surfactant. However, when using Trivett in combination as discussed for claim 17 above, the specific surfactant used would be suggested. Optionally, Trivett would further suggest that no phosphates are used as discussed optionally for claim 5 above.
As to the details of the weight ratio of a total amount of amine borate and inhibitor to the total amount of surfactant, as discussed for claim 1 (and also claims 9, 11) above, it would be suggested to optimize the amounts of amine borate and inhibitor, and from claim 13 to optimize the amount of surfactant, and from such optimization, the weight ratio of a total amount of amine borate and inhibitor to the total amount of surfactant would also be expected to be in the claimed weight ratio.
Claims 41, 42: the features of claims 41, 42 would be suggested for the same reasons as discussed with regard to claims 39 and 40, respectively, above.
Claims 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over ‘733 in view of Voges article, Saunders, Rodabaugh and Chelton as applied to claims 1, 3-6, 9, 11, 13, 19 and 36-40 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, ‘733 teaches that the composition can contain some metals such as iron, aluminum, bronze, and some oxides such as titanium dioxide and iron oxide (as pigments, note page 9, lines 4-8, but does not want various specific compounds such as listed zinc compounds, or specific oxides (zinc, aluminum, Mo) (note page 7, lines 10-21), but does not specifically indicate the use or not use of tin compounds. ‘733 also uses a substituted succinimide (note page 2, lines 5-15).
However, Riggs teaches that a corrosion inhibiting composition that can be provided to treat ferrous metal can include a substituted succinimide compound and a stannous salt (note abstract, column 1, lines 5-10), where the stannous salt is a corrosion inhibitor and can be used in concert with the succinimide to give good corrosion inhibiting (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 ‘733 in view of Voges article, Saunders, Rodabaugh and Chelton 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 ‘733 indicates various additional inorganic material can be present and also has a substituted succinimide, and Riggs teaches that inorganic stannous salt can be used with substituted succinimides to help provide additional corrosion inhibiting. 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).
Marcus (US 5399274), used for claim 7, also notes compositions for forming an anticorrosion film (column 7, lines 10-25), that can contain amine borate, organic corrosion inhibitor and surfactant (note column 3, lines 35-40, column 5, lines 55-65, column 6, lines 20-35, column 7, lines 5-10).
Response to Arguments
Applicant's arguments filed February 6, 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 Rodabaugh and Chelton, and the new 35 USC 112 rejections.
(2) As to the 35 USC 112 rejections, from applicant’s statements at page 8 of the amendment, it is understood that (a) the ratio described as from A to B is to be read as the range A-B:1, so for example, for claim 1, the ratio of 1-100 is 1-100 (borate):1 (inhibitor). (b) Additionally, from applicant’s statements at page 8 of the amendment, it is understood that the applied treatment composition forms the film (that is, the film contains the borate).
(3) As to the 35 USC 103 rejections, as to the new requirements of the claims with the collecting of the treatment composition after it has been sprayed on the metal surface and recirculating the treatment composition back to the surface preparation system, the Examiner has added the new references to Rodabaugh and Chelton as to the obviousness of this feature. Note that it is understood that removal and collecting of any of the treatment composition meets the requirements of collecting the treatment composition as claimed. As to the argument that the paint/composition in ‘733 is desired to be adhered after any surface finishing process, and Saunders provides corrosion prevention treatment as a primer applied by electrolytic plating, which does not suggest that the ‘733 paint can or should be sprayed onto the metal surface before a finishing process, the Examiner has reviewed this argument, but it does not overcome the above rejection. ‘733 provides a paint that also provides corrosion protection, where Voges article indicates the common use of further treatments after scale removal, including cold rolling, galvanizing and coating (note page 2), which would allow for the possibility of more than one of these. Further, Saunders describes a corrosion prevention coating of either electrolytic plating with metal (note column 3, lines 5-10) OR a primer coating of polymeric material (note column 3, lines 10-15), where a specific corrosion prevention with polymeric primer described at column 3, lines 60-65). Then it is described that further finish polymeric coating from a solvent solution can be applied including by spraying (column 4, lines 5-25). Thereafter, cold rolling occurs (note column 4, lines 60-68, note station 36, figure 1). Therefore, Saunders shows the conventionality of cold rolling after a polymeric corrosion prevention coating and also after polymeric finish coatings, so even if ‘733 is both a corrosion and finish coating, Saunders indicates the cold rolling after such coating.
Therefore, the rejections above are maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE A BAREFORD whose telephone number is (571)272-1413. The examiner can normally be reached M-Th 6:00 am -3:30 pm, 2nd F 6:00 am -2:30 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, GORDON BALDWIN can be reached at 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KATHERINE A BAREFORD/Primary Examiner, Art Unit 1718