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 .
Election/Restrictions
Applicant’s election of Group V in the reply filed on August 11, 2026 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)).
Claims 1-8, 10, 12, 13 and 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on August 11, 2026.
Therefore, after the election and preliminary amendment of August 11, 2026, claims 9, 11 and 14 are canceled, claims 1-8, 10, 12, 13 and 15 are withdrawn, and claim 16 and new claims 17-23 are pending for examination.
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.
Claims 16-23 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 16, lines 3-4, “said polymer film is obtained by a film-forming composition . . .” is unclear and indefinite as worded as how the composition is performing an action. Does applicant mean the film is obtained “said polymer film is obtained by applying over the metal surface, a film-forming composition . . .” For the purpose of examination it is understood that this is what was intended, but applicant should clarify what is intended, without adding new matter.
Claim 17, line 1, “The use of a polymer film according to claim 17” is confusing an indefinite as worded. The claim depends from itself so it is unclear what is intended. Did applicant intend for the claim to depend from claim 16? Since the preamble uses the “The use of a polymer film” previously in claim 16, it is understood for the purpose of examination that the claim is supposed to depend from claim 16, but applicant should clarify what is intended, without adding new matter. If the claim is intended to depend from other than claim 16, the examination of the claim (and claims 18-23) could be removed as directed to a nonelected invention. Also as to “The use of a polymer film according to claim 16” (as understood) should apparently be changed to “A method according to claim 16”, since that is the language now used in claim 16, where otherwise “the use” would lack antecedent basis, and is examined under this position. Additionally, as to claims 18-23, “The use of a polymer film according to claim” should apparently be “The method according to claim” to correspond to the language used in claim 16, and what should be used in claim 17 for consistency, and is examined as to this position.
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.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Japan 2012-083108 (hereinafter ‘108) in view of WO 00/68330 (hereinafter ‘330), and as evidenced by Koyama et al (US 2010/0288531).
Claim 16: ‘108 teaches a method for protecting a metal surface against hydrogen embrittlement (note page 2, translation). The method comprises applying a polymer film over the metal surface, where the polymer film is obtained by applying a film forming composition comprising at least one vinyl copolymer (ethylene vinyl-alcohol (EVOH) copolymer) where a solvent including water is used, for example (so an aqueous solvent is used) (note page 2, translation, with option number 7, and page 4, translation, and page 6, Example 8, translation).
Furthermore, as to the composition further comprising solid particles of alumina dispersed in the aqueous solvent, and the EVOH copolymer as water soluble,
‘330 further teaches a coating/paint that can be applied to a metal substate, where the paint includes resin/polymer (such as acrylic resin, but not limited to this), superfine particles such as alumina particles, and solvent, which can be water based (note water based paints) and vinyl resin paints can be used (note page 3, translation, page 6, translation), which can function as anti-hydrogen embrittlement paint (note page 5, translation). The alumina/ceramic particles are added to the composition to act to give good adhesion strength for the paint/coating to the metal substrate (note page 3, translation).
Koyama would evidence that EVOH copolymers can be conventionally provided as water soluble (note 0056).
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 ‘108 to additionally provide alumina particles dispersed in the aqueous solvent/coating composition as suggested by ‘330 in order to provide a desirably well adhered coating, since ‘108 indicates providing a EVOH copolymer coating with aqueous solvent to provide a coating for protecting from hydrogen embrittlement, and ‘330 further indicates to add alumina particles to a coating with organic resin/polymer and solvent to help provide adhesion of the coating, where the coating can also protect from hydrogen embrittlement. Furthermore, the alumina particles would be suggested to be predictably acceptably in the form of solid particles, since the particles are in the liquid but remain to provide adhesion, so don’t dissolve. Furthermore, the EVOH copolymer as suggested to be used in the process of ‘108 in view of ‘330 would be predictably and acceptably provided as water soluble, since as evidenced by Koyama, it would be conventional for such an EVOH copolymer to be water soluble.
Claims 17-22 are rejected under 35 U.S.C. 103 as being unpatentable over ‘108 in view of ‘330, and as evidenced by Koyama as applied to claim 16 above, and further in view of Danjo (US 2017/0226345).
Claim 17, 19, 21: as to the film forming composition, as discussed for claim 16 above, it would be suggested for the coating composition to contain EVOH copolymer as the vinyl copolymer (as desired by claim 21), alumina particles and aqueous solvent. Furthermore as to the specific amount of each, in ‘108, Example 8, the composition can have 10 wt% of EVOH copolymer. ‘330 teaches varying, optimizing the amount of alumina particles (note page 4, translation, for example).
Danjo further describes how solutions can be provided for coating a metal surface with a vinyl alcohol/water soluble resin and also inorganic oxides (which can include solid alumina particles) (note 0015, 0016, 0040, 0060-0062), It is indicated to use water as the liquid medium of the solution, which is preferably greater than 90 wt% water, although alcohol can also be used with water, for example) (note 0102). Amounts of the resin and inorganic oxide are to be optimized (note 0093-0094). Danjo also indicates that the solution contains surfactant to prevent agglomeration of the particles (note 0078-0079), where the surfactant can be an amine salt (nitrogen containing salt, for example) (note 0082), which is understood to be a hydrogen adsorption/absorption/diffusion inhibitor as claimed, in claim 19, since meets the requirements described by applicant in the specification), and Examples are given, where by wt%, the amount of vinyl polymer is 6.176 %, the amount of aluminum oxide is 6.084 %, the amount of surfactant is 0.75 %, and the balance after listed materials would be water, 85 wt% in this case (note Tables 6, 7, Example 49, for instance, 0127). This describes how when providing coatings with the claimed materials, values can be in the claimed range for the composition.
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 ‘108 in view of ‘330 and as evidenced by Koyama to further provide a surfactant that is an amine salt (meeting the hydrogen adsorption/absorption/diffusion inhibiter requirement of claim 19) in order to help prevent agglomeration of the particles in the composition as suggested by Danjo which indicates desirable use of surfactant in a solution similar to that of ‘108 in view of ‘330 and as evidenced by Koyama to help prevent agglomeration. Danjo would further suggest how water can be used as a solvent in a similar solution of materials, and with ‘330 indicating to optimize amounts of materials, and Danjo also indicating this, it would have been obvious to optimize the amounts of the materials, giving values in the claimed ranges. Note "[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 gives the amounts of materials in solution as desired for claim 17.
Claim 18 and 20: as the polymer and alumina amounts, and also surfactant/hydrogen adsorption/absorption/diffusion inhibiter would be suggested to be optimized and the solvent would be removed with drying (note Example 8, ‘108), the values of the polymer, aluminum and surfactant/hydrogen adsorption/absorption/diffusion inhibiter in the resulting film would be in the claimed ranges. Note "[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 22: As to the film thickness, ‘108 suggests for example, 0.1-100 microns (note the abstract), and it would have been obvious to optimize from this range, giving a value in the claimed range. Note "[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 23 is rejected under 35 U.S.C. 103 as being unpatentable over ‘108 in view of ‘330 and Danjo, further as evidenced by Koyama as applied to claims 17-22 above, and further in view of Hashizume et al (US 2006/0150864).
Claim 23: As to the shape factor used, ‘330 notes how flake pigments can be present (page 4, translation), indicating that shapes of non-spherical particles can be present acceptably.
Hashizume describes how a composition of paint with resin and particles/pigment can be provided (note 001), where the pigment can have flake shape and a shape factor of between 15 and 1000 (note 0056, 0058), in the claimed range.
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 ‘108 in view of ‘330 and Danjo and as evidenced by Koyama to further provide that the alumina particles have a shape factor of 15-1000, in the claimed range as suggested by Hashizume with an expectation of predictably acceptable results, since ‘330 would indicate how paint type materials can be used with flake pigments, and Hashizume would indicate that flake pigments can be used in paint with shape factors of 15-1000, and it would be suggested to use such shape factor for the alumina as another particle material to use in paint.
Tanaka et al (US 2007/0178318) also notes EVOH copolymer as a water soluble resin (note 0049).
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.
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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.
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/KATHERINE A BAREFORD/ Primary Examiner, Art Unit 1718
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