DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
Claims 1-15 are currently pending.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 3 and 12-13 are 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.
Claim 3 recites “wherein an amount of an activating aid containing a particulate constituent (P) in water-dispersed form is added continuously or discontinuously to the acidic aqueous composition in process step (ii).” Claim 1 already recites adding a particulate constituent (P) in water-dispersed form to the acidic aqueous composition but does not provide antecedent basis for the term “activating aid.” Therefore, it is unclear if the limitations of claim 3 are drawn to adding additional constituent (P) or whether the claim intends to further narrow the step of Claim 1. The scope of the process step of claim 3, therefore, is rendered indefinite.
Claim 12 is drawn to negative limitations, in particular, negative limitations drawn to activation treatment/stage. The scope of the limitations is indefinite as it is unclear what step or steps are excluded (e.g. what would constitute an activation stage such that it must not be performed). Additionally, the term “sparingly” in claim 12 is a relative term which renders the claim indefinite. The term “sparingly” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 13 recites the broad recitation “wherein the components in the series are cleaned”, and the claim also recites “in particular by contact with an aqueous, alkaline cleaning agent” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-3, 5-9, and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Arnold (US 10227686) in view of Krause et al. (CA 2200893) and Nakamura (US 20040011428).
With respect to Claim 1, Arnold teaches a pretreating zinc-comprising surface(s) of a component prior to applying a corrosion-protection coating, the method comprising a wet chemical process for the deposition of iron the zinc surface wherein a coating layer of at least 20 mg/m2 or more of elemental iron is deposited on the zinc surfaces of the component (col. 7, ln. 5-28; col. 8, ln. 25-40). Thus, Arnold teaches a process for the anti-corrosion pretreatment of component(s) comprising a wet-chemical process step (i) meeting the instantly claimed limitations.
Arnold further teaches wherein the pretreated component having an elemental iron coating is subjected to a corrosion-protection step comprising forming a zinc phosphate layer, corresponding the process step (ii) of the instant claim. (col. 8, ln. 41-54). Specifically, Arnold teaches wherein the component is brought into contact with an acidic aqueous composition that has a pH of 2.5-3.6, 0.2-3.0 g/L zinc ions, 5.0-30 g/L phosphate irons calculated as P2O5. (col. 9, ln. 14-45). Arnold teaches examples wherein the zinc phosphating composition has free acid greater than zero, for example, free acid of 1.3 points. (col. 10, ln. 49 to col. 11, ln. 35). Arnold further teaches adding compounds or complexes that release free fluoride ions into the aqueous composition (col. 8, ln. 55 to col. 9, ln. 13). Therefore, Arnold is deemed to teach a step (ii) comprise ng an acidic aqueous composition with compositional ranges overlapping the claimed (A), (B), and (C). In particular, while Arnold teaches the phosphates of (A) and zinc ions of (B) in g/l rather than g/kg and calculating the phosphates based on a different compositional formula the ranges, when converted, overlap the instantly claimed ranges.
It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Arnold is silent, however, as to wherein the acidic aqueous composition of step (ii) comprises a water-dispersed particulate constituent meeting the claimed “(D).”
Krause teaches a phosphating treatment comprising forming a solution/dispersion comprising zinc ions, phosphates, free fluoride, a polymer stabilizing agent the solution having a free acid point of 0-100 points, preferably 40-100 points, and wherein the solution may further comprise at least one metal ion from the group consisting of Ni, Co, Ca, and Mg. (p. 4, ln. 3-33; claims 1-2).
Thus, Krause teaches a treatment step with a composition substantially overlapping that of that in claimed step ii) and in Arnold, comprising zinc ions, phosphates, free fluoride, and further teaches a polymeric stabilizing agent and additional metal ion, such as Ca, but does not specifically teach the addition of the metal ion in the forms recited in claim 1.
Nakaumura teaches treating the surface of metal components with an aqueous dispersion comprising phosphate particles of metals selected from Zn, Fe, Mn, Ni, Co, Ca, Ma, and Al, including hydrated compounds thereof, for example, scholzite, and also encompassing phosphophyllite, hopeite, and hureaulite. (para. 17-20, 67, 85). The reference further teaches the addition of a dispersing agent comprising an organic polymeric compound. (para. 28-33). Thus, Nakamura teaches forming an aqueous treatment composition comprising a water-dispersed constituent comprising a particulate inorganic compound composed of phosphates of polyvalent metal cations that may comprise one or more of scholzite, phosphophyllite, hopeite, and hureaulite and an organic polymeric dispersion agent.
It would have been obvious to one of ordinary skill in the art to modify the method of Arnold to further include in the acidic aqueous composition an additional metal compound and polymer agent, as taught by Krause, in order to improve the surface treatment of the components. It would further have been obvious to one of ordinary skill in the art to add such metal ions/compounds in the form of one or more of scholzite, phosphophyllite, hopeite, and hureaulite in addition to an organic polymeric dispersion agent, as taught by Nakamura, in order to provide the desired metal particles into the composition.
Furthermore, with respect to the order of adding the components of D and A-C, it would have been prima facie obvious to one of ordinary skill in the art to combine the components as taught by Arnold in view of Krause and Nakamura in any order/sequence to obtain the composition for treating the metal components. See Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.). MPEP § 2144.04.
Finally, with respect to the preamble limitation “plurality of components in series,” Arnold teaches a method of treating “steel surfaces” and thus, is drawn to treating a plurality of components. (see, e.g., abstract; claim 1). Accordingly, it would have been obvious to one of ordinary skill in the art to apply the method of Arnold in view of Krause and Nakamura to a plurality of components in series in order to obtain a plurality of components having improved corrosion resistance.
With respect to Claim 2, Krause teaches wherein the particulate constituent is provided in an amount of 0.1-15 g/l, deemed to overlap the instantly claimed range. It would have been obvious to one of ordinary skill in the art to modify the method of Arnold in view of Krause and Nakamura to include the particulate component in an amount of 0.1-15 g/l, as taught by Krause, in order to obtain the improved phosphating treatment and corrosion resistance disclosed by Krause. (see, e.g., p. 1). Additionally, it would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claim overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claim 3, Arnold in view of Krause and Nakamura teach adding a particulate inorganic compound P1 and polymeric organic compound P2, as detailed with respect to Claim 1. Furthermore, Krause teaches the addition of such components to a phosphating composition. (see, e.g. claim 1). Accordingly, it would have been obvious to one of ordinary skill in the art to add the components P1 and P2 such that the phosphating parameters, including acidic composition is maintained and further, to continue the treatment until a zinc phosphate layer of 5.0 g/m2 is achieved. (see Arnold, col. 3, ln. 55-60).
With respect to Claim 5, Arnold teaches wherein the acidic aqueous composition for zinc phosphating has a pH value of 2.5-3.6, falling within the claimed range and teaches examples with free acid greater than 0.5 points, for example 1.3 points. (col. 9, ln. 34-41; col. 10, ln. 49 to col. 11, ln. 35).
With respect to Claim 6, Arnold teaches wherein the acidic aqueous composition has free fluoride and teaches examples having, for instance, 40 mg/L of free fluoride, deemed to fall within or overlap the instantly claimed range. (col. 9, ln. 34-41; col. 10, ln. 49 to col. 11, ln. 35). See also MPEP § 2144.05.
With respect to Claim 7, Arnold teaches in a step (i) forming a coating layer of at least 20 mg/m2 or more of elemental iron is deposited on the zinc surfaces of the component, overlapping the claimed range. (col. 7, ln. 5-28; col. 8, ln. 25-40). It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claim overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claim 8, Arnold teaches wherein the wet-chemical process step is carried out by contacting at least the zinc surfaces of the components with an aqueous composition containing iron (II) and/or iron (III) ions, wherein the proportion of iron ions dissolved in water is 0.1 g/L (100 mg/L) or more, preferably 3.0 g/l or more, falling within the claimed range. (col. 4, ln. 7-32). Arnold does not requires that this step comprise copper, nickel, cobalt, tin, manganese, molybdenum, chromium, or cerium and teaches specifically selecting components of the composition in order to obtain the highest possible proportion of iron ions. (col. 5, ln. 45-50). Additionally, Arnold teaches minimizing the presence of Ni, Co, Mo, Cr, Ce, V and Mn to 50 ppm or less, preferably, 1 ppm or less of these elements. (col. 6, ln. 50-60). Accordingly, it would have been obvious to one of ordinary skill in the art to minimize the content of non-iron elements, such as Ni, Co, Mo, Cr, Ce, V and Mn, to 1 ppm or less, and therefore, falling within or overlapping the claimed range, in order to maximize the iron ion content in the composition and avoid unwanted interactions. Overlapping ranges, in particular, where the ranges of a claim overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claim 12, the claim is drawn to negative limitations excluding, prior to step (ii), an additional activation stage treatment or treatment comprising a colloidal aqueous solution. Arnold does not teach such an additional treatment(s) prior to step (ii) and therefore, is deemed to meet the instant claim.
With respect to Claim 13, Arnold teaches “wherein at least the zinc surfaces of the component i) optionally are firstly cleaned with an alkaline cleaner and degreased, ii) are brought into contact with an above-described alkaline composition according to the present invention, and iii) are then subjected to a passivating wet-chemical conversion treatment.” (col. 7, ln. 19-28). Thus, Arnold teaches a cleaning and optional degreasing step prior to step (i) and as the claim recites “with or without an intermediate rinsing step,” Arnold necessarily meets this limitation.
With respect to Claim 14, Arnold teaches wherein the components may additionally have surface(s) of aluminum and optionally iron. (col. 7, ln. 29-54).
With respect to Claim 15, Arnold teaches examples of zinc phosphate layers having a layer weight of 2.6 g/m2 or more, falling within the claimed range. (see, e.g. Table 2). Moreover, as Arnold is drawn to a zinc phosphate forming treatment, it would have been obvious to one of ordinary skill in the art to control the amount of formed zinc phosphate depending on the desired final properties of the components, including corrosion resistance. See MPEP 2144.
Claim(s) 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Arnold (US 10227686) in view of Krause et al. (CA 2200893) and Nakamura (US 20040011428), as applied to claim 1 above (with respect to claim 9), further in view of Brouwer (US 2014/0023882).
With respect to Claim 9, Arnold teaches wherein the wet-chemical process step is carried out by contact with an alkaline aqueous composition having a pH of 11.0 or less, overlapping the claimed range. (col. 6, ln. 19-22). Arnold further teaches more than 50 mg/L of iron ions (see rejection of claim 8) and the addition of a complexing agent encompassing the claimed limitation (b) (col. 5, ln. 50 to col. 6, ln. 12); however, the reference is silent as to whether the iron ions are specifically iron (III) ions and is silent as to the free alkalinity of the composition.
Brouwer teaches a method of treating zinc surfaces of components with an alkaline composition to form at least 20mg/m2 of iron, the alkaline composition having 0.05-2 g/L or ion (III) ions, at least 0.1 g/L of complexing agents having at least one functional group selected from COOX, OPO3X, and PO3X, where X is either an H atom or an alkali metal or alkaline earth metal atom and/or condensed phosphates, wherein the composition has a free alkalinity of at least 1 point, but less than 6 points, and the composition has a pH of at least 10.5. (para. 25, 43-52).
Thus, Arnold and Brouwer are drawn to substantially similar methods of treating zinc surfaces to form iron. It would have been obvious to one of ordinary skill in the art to modify the wet-chemical treatment composition of Arnold in view of Krause and Nakamura, to comprise an alkaline composition having 0.05-2 g/L or ion (III) ions, at least 0.1 g/L of complexing agents having at least one functional group selected from COOX, OPO3X, and PO3X, where X is either an H atom or an alkali metal or alkaline earth metal atom and/or condensed phosphates, wherein the composition has a free alkalinity of at least 1 point, but less than 6 points, and the composition has a pH of at least 10.5, as taught by Brouwer, in order to effectively form at least 20mg/m2 of iron on zinc surfaces of the components. The substitution of one composition for coating iron on zinc surfaces for another with the same purpose, function, and effect would have been prima facie obvious to one of ordinary skill in the art. Overlapping ranges, in particular, where the ranges of a claim overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claims 10-11, Brouwer teaches wherein the alkaline aqueous composition contains 0.1-4 g/L of phosphate ions, thus, teaching overlapping mass-based ratio of iron(III) ions to phosphate ions, and wherein the no more than 10 g/L of condensed phosphate are contained such that the molar ratio of the sum of phosphates to of iron (III) ions is greater than 1:1. (para. 45-52, 66). According, the meth od of Arnold in view of Krause, Nakamura, and Brouwer teaches a method comprising parameters deemed to overlap each limitation of claims 10 and 11. Overlapping ranges, in particular, where the ranges of a claim overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 20200032402, drawn to a zinc phosphating treatment method wherein before the zinc phosphating step, a step providing a composition substantially similar to “(D)” of claim 1 and having an alkaline pH is applied separately from the acidic zinc phosphating composition.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN A HEVEY whose telephone number is (571)270-0361. The examiner can normally be reached Monday-Friday 9:00-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN A HEVEY/ Primary Examiner, Art Unit 1735
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