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 .
This is in response to the Amendment dated February 20, 2026. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Response to Amendment
Election/Restrictions
This application contains claims 1-15 (method) drawn to an invention nonelected with traverse in the reply filed on November 21, 2025.
Specification
The disclosure has been objected to because of minor informalities.
The objection to the disclosure has been withdrawn in view of Applicant’s amendment.
Claim Objections
Claim 16 has been objected to because of minor informalities.
The objection of claim 16 has been withdrawn in view of Applicant’s amendment.
Claim Rejections - 35 USC § 112
Claims 16-19 have been rejected 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.
The rejection of claims 16-19 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, has been withdrawn in view of Applicant’s amendment.
Claim Rejections - 35 USC § 103
Claim(s) 16-19 have been rejected under 35 U.S.C. 103 as being unpatentable over Dolan (US Patent Application Publication No. 2005/0061680 A1) in view of Powers (US Patent No. 5,186,790), Golru et al. (“Effects of Different Surface Cleaning Procedures on the Superficial Morphology and the Adhesive Strength of Epoxy Coating on Aluminium Alloy 1050,” Progress in Organic Coatings (2015 Oct 1), Vol. 87, pp. 52-60), Munisamy (US Patent Application Publication No. 2022/0178032 A1), WO 2016/022957 (‘957) and Griffin et al. (US Patent Application Publication No. 2009/0311534 A1).
The rejection of claims 16-19 under 35 U.S.C. 103 as being unpatentable over Dolan in view of Powers, Golru et al., Munisamy, WO 2016/022957 (‘957) and Griffin et al. has been withdrawn in view of Applicant’s amendment.
Continued Response
Election/Restrictions
Newly submitted claim 21 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
The method of claim 21 uses Bonderite brand process solutions which Claim 1 does not use.
The method of claim 21 does not use about 10 vol % to about 40 vol % of 50% sodium hydroxide in the etching step.
The method of claim 21 performs a second alkaline cleaning on the processed metal substrate by immersing the metal substrate in an aqueous alkaline cleaning agent comprising 38 to 60 g / L of Bonderite C- AK 4215 NC LT Aero and a range of 0 to 0.25% by volume of Bonderite C-AD 4215 Aero; and then performs alkaline etch cleaning with said alkaline etchant solution and deoxidizing solution comprising about 40 vol % to about 60 vol % of nitric acid in combination with iron based deoxidizing solutions or chromated deoxidizing solutions to remove oxides which the method of claim 1 does not require. Thus, the coating is deposited on a different kind of substrate surface.
The inventions as claimed can have different mode of operation, function, or effect; the inventions require a different field of search (e.g., searching different classes /subclasses or electronic resources, or employing different search strategies or search queries); and the prior art applicable to one invention would not likely be applicable to another invention;
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 21 is withdrawn from consideration as being
directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 103
Claim(s) 16-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dolan (US Patent Application Publication No. 2005/0061680 A1) in view of Withers et al. (US Patent No. 2,970,090), Powers (US Patent No. 5,186,790), Muller et al. (US Patent No, 5,271,804), Munisamy (US Patent Application Publication No. 2022/0178032 A1), WO 2016/022957 (‘957) and Griffin et al. (US Patent Application Publication No. 2009/0311534 A1).
Regarding claim 16, Dolan teaches a method comprising:
• degreasing (= for example, the article may be chemically degreased by exposure to an alkaline cleaner) [page 7, [0066] a metal substrate (= the aluminiferous metal article) [page 7, [0066] and [0068]]; then
• performing a first alkaline cleaning on the metal substrate (= the article was cleaned in an alkaline cleaner) [page 7, [0068]]; then
• etching the metal substrate with an alkaline etchant solution to form an etched metal substrate (= the article was cleaned in an alkaline etch cleaner) [page 7, [0068]]; then
• deoxidizing the etched metal substrate with a deoxidizing solution to form a processed metal substrate to remove oxides (= cleaning may then, if desired, be followed by etching with an acidic deoxidizer/desmutter) [page 7, [0066] and [0068]]; then
• depositing a coating onto the processed metal substrate to form a coated metal substrate, wherein depositing a coating onto the processed metal substrate comprises electrolytically depositing an inorganic finish thereon (= it is a further object to provide a method wherein the protective coating comprises predominantly oxides of Ti, Zr, Hf, Sn, Ge and/or B) [page 2, [0024]], the electrolytically depositing of an inorganic finish comprising:
۰ attaching the processed metal substrate to a counter electrode;
۰ electrically connecting the processed metal substrate to a power supply,
۰ immersing the processed metal substrate within an inorganic finishing solution,
۰ applying a current density to the processed metal substrate to form a coated metal substrate (= providing a cathode in contact with the anodizing solution; placing an
aluminum, aluminum alloy, titanium or titanium alloy article as an anode in the
anodizing solution; and passing a current between the anode and cathode through the anodizing solution for a time effective to form a protective oxide coating on at least one surface of the article) [page 2, [0024]].
Dolan does not explicitly teach the following:
a. Wherein the degreasing is with acetone.
Dolan teaches that before being subjected to anodic treatment, the aluminiferous metal article preferably is subjected to a cleaning and/or degreasing step (page 7, [0066]).
Withers teaches that the degreasing step removes oils and organic contamination on the surface of the aluminum (col. 3, lines 26-27). Degrease the aluminum with trichloroethylene vapors, acetone or any organic solution commonly used for this purpose (col. 4, lines 22-24).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the degreasing taught by Dolan with wherein the degreasing is with acetone. The person with ordinary skill in the art would have been motivated to make this modification because Dolan teaches that before being subjected to anodic treatment, the aluminiferous metal article preferably is subjected to a degreasing step in [0066] where acetone is commonly used for this purpose which would have removed oils and organic contamination on the surface of the aluminum.
b. Wherein the alkaline etchant solution comprises about 2 vol % to about 6 vol % of triethanolamine, about 2 vol % to about 30 vol % of a sodium sulfide additive, about 10 vol % to about 40 vol % of 50% sodium hydroxide, about 75 g/L or less of dissolved metal content, and
about 6 g/L or less of ethylenediaminetetraacidic acid (EDTA).
Dolan teaches that:
Before being subjected to anodic treatment in accordance with the invention, the aluminiferous metal article preferably is subjected to a cleaning and/or degreasing step. For example, the article may be chemically degreased by exposure to an alkaline cleaner such as, for example, a diluted solution of PARCO Cleaner 305 (a product of the Henkel Surface Technologies division of Henkel Corporation, Madison Heights, Mich.). After cleaning, the article preferably is rinsed with water. Cleaning may then, if desired, be followed by etching with an acidic deoxidizer/desmutter such as SC592, commercially available from Henkel Corporation, or other deoxidizing solution, followed by additional rinsing prior to anodization. Such pre-anodization treatments are well known in the art (page 7, [0066]).
An aluminum alloy substrate in the shape of a cookware pan was the test article for Example 1. The article was cleaned in a diluted solution of PARCO Cleaner 305, an alkaline cleaner and an alkaline etch cleaner, such as Aluminum Etchant 34, both commercially available from Henkel Corporation. The aluminum alloy article was then desmutted in SC592, an iron based acidic deoxidizer commercially available from Henkel Corporation (page 7, [0068]).
Powers teaches milling or etching aluminum alloys (col. 2, line 28).
The chemical milling bath can contain 30 to 110 gms/liter NaOH (= 3 to 11 vol%), 5 to 60 grams/liter Na2S (= 0.5 to 6 vol %) and 30 to 110 gms/liter triethanolamine (TEA) [= 3 to 11 vol %] and 10 to 150 gms/liter aluminum, based on a liter of bath comprised of said compounds in water (col. 2, lines 6-10).
Aluminum alloy parts, particularly aluminum-lithium alloy parts etched or milled in the subject bath, are characterized by having a very smooth surface. Aluminum-lithium alloy parts treated in the bath can have a roughness or roughness height rating (RHR) of 100 microinches or less, e.g., 60 or less microinches. RHR is an arithmetic average in microinches of the surface deviations from absolute smoothness. Standards in the aerospace industry indicate that the surface roughness height rating be either less than 125 microinches or less than 62 microinches, depending upon the use of the part. Thus, it can be seen that the present invention provides a rating which meets the most stringent requirements of the aerospace industry (col. 2, lines 55-68).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the alkaline etchant solution taught by Dolan with wherein the alkaline etchant solution comprises about 2 vol % to about 6 vol % of
triethanolamine, about 2 vol % to about 30 vol % of a sodium sulfide additive, about 10 vol % to about 40 vol % of 50% sodium hydroxide, about 75 g/L or less of dissolved metal content, and about 6 g/L or less of ethylenediaminetetraacidic acid (EDTA). The person with ordinary skill in the art would have been motivated to make this modification because Dolan teaches that before being subjected to anodic treatment, the aluminiferous metal article preferably is subjected to a cleaning step which treatment is well known in the art in [0066] and [0068] where a bath containing 30 to 110 gms/liter NaOH (= 3 to 11 vol%), 5 to 60 grams/liter Na2S (= 0.5 to 6 vol %) and 30 to 110 gms/liter triethanolamine (TEA) [= 3 to 11 vol %] and 10 to 150 gms/liter aluminum, based on a liter of bath comprised of said compounds in water is an alkaline etchant solution which would have etched aluminum alloys to have a very smooth surface of a roughness or roughness height rating (RHR) of 100 microinches or less.
As to wherein the NaOH is “50% sodium hydroxide”, it has been held that changes in temperature, concentration or both, is not a patentable modification; however, such changes may impart patentability to a process if the ranges claimed produce new and unexpected results which are different in kind and not merely in degree from results of the prior art, such ranges are termed “critical” ranges and Applicant has the burden of proving such criticality; even though Applicant’s modification results in great improvement and utility over the prior art, it may still not be patentable if the modification was within capabilities of one skilled in the
art; more particularly, where general conditions of the claim are disclosed in the prior art, it is not inventive to discover optimum or workable ranges by routine experimentation. In re Aller,
220 F2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) [MPEP § 2144.05].
c. Wherein the deoxidizing solution comprises about 40 vol % to about 60 vol % of nitric acid and iron based deoxidizing solutions or chromated deoxidizing solutions.
Dolan teaches that:
Before being subjected to anodic treatment in accordance with the invention, the aluminiferous metal article preferably is subjected to a cleaning and/or degreasing step. For example, the article may be chemically degreased by exposure to an alkaline cleaner such as, for example, a diluted solution of PARCO Cleaner 305 (a product of the Henkel Surface Technologies division of Henkel Corporation, Madison Heights, Mich.). After cleaning, the article preferably is rinsed with water. Cleaning may then, if desired, be followed by etching with an acidic deoxidizer/desmutter such as SC592, commercially available from Henkel Corporation, or other deoxidizing solution, followed by additional rinsing prior to anodization. Such pre-
anodization treatments are well known in the art (page 7, [0066]).
An aluminum alloy substrate in the shape of a cookware pan was the test article for Example 1. The article was cleaned in a diluted solution of PARCO Cleaner 305, an alkaline cleaner and an alkaline etch cleaner, such as Aluminum Etchant 34, both commercially available from Henkel Corporation. The aluminum alloy article was then desmutted in SC592, an iron based acidic deoxidizer commercially available from Henkel Corporation (page 7, [0068]).
Muller teaches an etchant/deoxidizer solution for aluminum (col. 1, line 43).
The solutions typically have a compositional makeup, in weight %, based on the total weight of the solution, of about 5-50% water (preferably 19-34%); about 6-50% ferric sulfate as a 49-50% solution (preferably 22-35%); about 10-60% nitric acid (at 68% strength), preferably 30-52%; and about 1.1 to 35% of the HF/phosphoric acid component (preferably 1.1 to 16%) [col. 2, lines 7-14].
It would have been obvious to a person having ordinary skill in the art before the
effective filing date of the claimed invention to modify the deoxidizing solution taught by Dolan
with wherein the deoxidizing solution comprises about 40 vol % to about 60 vol % of nitric acid and iron based deoxidizing solutions or chromated deoxidizing solutions. The person with ordinary skill in the art would have been motivated to make this modification because Dolan
teaches that cleaning may then, if desired, be followed by etching with an acidic
deoxidizer/desmutter which treatment is well known in the art in [0066] and [0068] where a
solution, of about 5-50% water; about 6-50% ferric sulfate as a 49-50% solution; about 10-60% nitric acid; and about 1.1 to 35% of the HF/phosphoric acid component is an etchant/deoxidizer solution for aluminum which solution would have reduced or eliminated the need for constantly removing crystals from the bottom and sides of tanks as taught by Muller in col. 1, lines 38-40 and 43; and col. 2, lines 7-14.
d. Performing a second alkaline cleaning on the processed metal substrate.
Munisamy teaches that:
With reference to FIG. 2, an alternate embodiment of the ALSC process 20A involves an additional high alkaline treatment (step 30) followed by a deoxidizer treatment (step 32) prior to the high alkaline treatment immersion (step 24). The high alkaline treatment (step 30) may be equivalent to the high alkaline treatment immersion (step 24). The additional high alkaline treatment (step 30) and deoxidizer treatment (step 32) are used to provide a fresh bulk-like composition on the surface before ALSC coating formation (page 3, [0040]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method taught by Dolan by performing a second alkaline cleaning on the processed metal substrate. The person with ordinary skill in the art would have been motivated to make this modification because performing an additional high alkaline treatment followed by a deoxidizer treatment prior to
the high alkaline treatment immersion would have provided a fresh bulk-like composition on the surface for a coating formation.
e. Wherein the counter electrode is two or more counter electrodes.
Dolan teaches:
An article of manufacture and a process for making the article by generating corrosion-, heat- and abrasion-resistant ceramic coatings comprising titanium and/or zirconium dioxide using direct and alternating current on anodes comprising aluminum and/or titanium. Optionally, the article is coated with additional layers, such as paint, after deposition of the ceramic coating (abstract).
WO ‘957 teaches an electroceramic coating 48 on an aluminum or aluminum alloy wire 40 (ρ [0025]).
In another embodiment, the emissivity of the coating is modified by changes in the identity of the electroceramic coating precursors in the electrolytic bath, e.g. precursor elements may include Ti, Zr, Zn, Hf, Sn, B, Al, Ge, Fe, Cu, Ce, Y, Bi, P, V, Nb, Mo, Mn, W and Co. In one embodiment, features of the coating are adjusted by changing aluminum and/or zirconium concentration of the aqueous solution. The inclusion of aluminum oxide and/or zirconium oxide advantageously allows the adjustment of coating features, e.g. the color and/or abrasion resistance of the high emissivity coating (ρ [0048]).
Coating system 210 also includes at least one electrical power supply 222 electrically connected to a cathode 224 located within coating bath container 218, and to an electrification device 226 (dry
anode) which electrifies uncoated wire 212 such that the wire 212 acts as an anode in the electrolyte composition E, during operation (ρ [0083]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the counter electrode taught by Dolan with wherein the counter electrode is two or more counter electrodes. The person with ordinary skill in the art would have been motivated to make this modification because an
apparatus where at least one electrical power supply 222 is electrically connected to two cathodes 224:
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would have continuously coated an electroceramic coating on an aluminum or aluminum alloy wire as taught by WO ‘957 in [0025], [0048, [0083] and Fig. 5.
e. Rinsing the coated metal substrate.
Griffin teaches:
A surface treatment method for aluminum parts to improve adhesion of organic finishes to be applied to the aluminum parts, said method comprising: cleaning the aluminum part; deoxidizing the aluminum part; applying a conversion coating to the part; and rinsing the part in hot de-ionized water (page 2, claim 1).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method taught by Dolan by rinsing the coated metal substrate. The person with ordinary skill in the art would have been motivated to make this modification because rinsing the part in hot de-ionized water in a surface treatment method for aluminum parts would have improved adhesion.
Regarding claim 17, the method of Dolan differs from the instant invention because
Dolan does not disclose wherein the current density applied to the processed metal substrate is about 0.2 mA/cm2 to about 0.5 mA/cm2.
Dolan teaches that direct current is preferably used, although alternating current may
also be utilized (under some conditions, however, the rate of coating formation may be lower using AC) [page 4, [0042]].
It would have been obvious to one having ordinary skill in the art before the effective
filing date of the claimed invention to have modified the current density described by Dolan
with wherein the current density applied to the processed metal substrate is about 0.2 mA/cm2 to about 0.5 mA/cm2 because:
(i) Dolan teaches the current density in general. Hence, it could vary in a wide range. It would have been obvious to one having ordinary skill in the art to have optimized the current density through routine experimentation for best results.
MPEP § 2144.05(II)(A)) states that "where 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 In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).”
(ii) Dolan teaches that in one embodiment, direct current (DC) is used at 10 Amps/square foot (= 10.76 mA/cm2) (page 4, [0042]]. This is close to the “about 0.5 mA/cm2” that is claimed.
MPEP § 2144.05 states that “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close that one skilled in the art would have expected them to have the same properties.”
Regarding claim 18, Dolan teaches wherein the current density is applied to the
processed metal substrate for about 2 minutes to about 5 minutes (= 3 minutes) [page 5,
[0053]].
Regarding claim 19, Dolan teaches wherein the current density is applied to the processed metal substrate as a constant current (= direct current (DC) is used) [page 4, [0042]].
Response to Arguments
Applicant’s arguments with respect to the prior art rejections of the claims have been considered but are moot because the new grounds of rejection do not rely on the combination of references applied in the prior rejections of record for any teaching or matter specifically challenged in the argument.
Citations
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Wittebrood et al. (US Patent Application Publication No. 2002/0012811 A1) is cited to
teach:
The pre-treatment comprises a preliminary cleaning step during which the surface is made free from grease, oil, or buffing compounds. This can be accomplished in many ways, and can be accomplished amongst others by vapor degreasing, solvent washing, or solvent emulsion cleaning. Also a mild etching may be employed. Following the preliminary cleaning, the surface should preferably be conditioned. Several methods can be applied successfully, such as, but not limited thereto (page 4, [0045]):
(a) acid desmutting in an solution comprising nitric acid (typically 25-50%), optionally in combination with a fluoride and/or chromic acid and/or sulphuric acid. Suitable sources for the fluoride can be, for example, hydrofluoric acid or ammonium bifluoride, see also e.g. “The surface treatment and finishing of aluminum and its alloys”, by S. Wernick et al., ASM international, 5th edition, 1987, Vol.1, pp.181-182 (page 4, [0046]).
(c) alkaline etching, see e.g. “The surface treatment and finishing of aluminum and its
alloys”, by S. Wernick et al., ASM international, 5th edition, 1987, Vol.1, pp.191-203 (page 4, [0048]).
(d) aqueous detergent cleaning (page 4, [0049]).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDNA WONG whose telephone number is (571) 272-1349. The examiner can normally be reached Monday-Friday, 7:00 AM- 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at (571) 272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EDNA WONG/Primary Examiner, Art Unit 1795