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 .
Information Disclosure Statement
The information disclosure statement filed 10 February 2025 fails to comply with the provisions of 37 CFR 1.98(a)(4) because it lacks the appropriate size fee assertion. It has been placed in the application file, but the information referred to therein has not been considered as to the merits.
A transmittal letter filed concurrently indicates that this IDS is a resubmission of the IDS dated 04 April 2024, to correct typographical errors with Foreign citations 9 and 10. Applicants submitted the correct foreign documents with the 2024 IDS, even though they were cited incorrectly. Accordingly, the Examiner has noted in the 2024 IDS the corrections indicated by Applicants in the 10 February 2025 Transmittal Letter, and these references have been considered as part of the 2024 IDS.
Specification
The disclosure is objected to because of the following informalities:
Paragraph 0036, line 10: one of the ratios only lists two components for a three-component system, “1:0.5 to 9:0.5:0.5”;
Paragraph 0109: “ammonium molybdenum” should read “ammonium molybdate” (compare to paragraph 0039);
Table 2: “Inventive Example 4” is listed twice with different data; the Examiner believes the second “Inventive Example 4” is meant to read “Comparative Example 4”.
Appropriate correction is required.
Claim Objections
Claim 5 is objected to because of the following informalities:
Claim 5 recites an “epoxide equivalent ratio of about 450 to about 550 g/eq”. The Examiner believes this is meant to recite an “epoxide equivalent weight”. Generally, the epoxide equivalent ratio is a dimensionless value that reflects the ratio of epoxide-bearing units to amine-bearing units, with 1:1 representing a stoichiometrically balanced reaction. Conversely, the epoxide equivalent weight is the molar mass per epoxide-bearing molecule (g/mol of epoxide equivalent, or g/eq). The Examiner will use this interpretation herein, but if Applicants did intend to claim an epoxide equivalent ratio and not weight, their clarification is respectfully requested;
Claim 19 recites the limitation, “wherein in the forming a surface treatment coating layer”. This should read “wherein, in forming a surface treatment coating layer,” (i.e., no “the”).
Appropriate correction is required.
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 1–19 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 1 recites “A surface treatment composition, comprising with respect to 100% by weight of a solid content of a composition”. The two subsequent recitations of “a composition” lead to indefiniteness because “a composition” was already introduced in the preamble, and so introducing “a composition” again creates ambiguous antecedence. The Examiner will herein interpret this limitation as reciting “A surface treatment composition […] of the composition”, to maintain proper antecedent basis.
Claim 1 further recites “high molecular weight” and “low molecular weight” resins. These are relative terms which lead to indefiniteness because they are not adequately defined in the claim or the specification. Paragraph 0028 of the specification states the resin “may have a weight average molecular weight (Mw) of 100,000 to 200,000”, but “may have” is not definite language, and invites broader interpretations. Similarly, paragraph 0031 states the resin “may have a weight average molecular weight of 30,000 to 70,000”, but this is similarly ambiguous. Both paragraphs recite consequences of using molecular weights outside the recited ranges, but even the consequences are written as hedging and uncertain, e.g., “When Mw is less than 30,000, it may be difficult to secure sufficient corrosion resistance” (emphasis added). Therefore, a person having ordinary skill in the art could not reasonably determine the scope of claim 1.
Claims 2–19, being dependent on claim 1, inherit its deficiencies, and are rejected on the same grounds.
Claim 5 recites an epoxide equivalent ratio of “about 450 to about 550 g/eq”. The term “about” implies some amount of acceptable deviation from the recited values, but the specification does not define how much variation is acceptable. The specification, at paragraph 0034, recites firm consequences for falling below 450 g/eq (“…are insufficient”), while the consequences for exceeding 550 g/eq are hedging and imply some amount of acceptable deviation (“…may be excessive”). Thus, “about 450” implies a tolerance of the lower bound that the specification does not support, which leads to indefiniteness because it is unclear how much deviation, if any, is actually encompassed by “about”. The upper bound of “about 550” has an unclear scope because while the specification does allow for some amount of acceptable deviation, it does not establish how much tolerance is encompassed by the claimed invention. For purposes of examination, “about 450” will be interpreted as broadly as the specification supports, which is to say, a firm minimum of 450 g/eq. The upper bound of “about 550” will be interpreted as encompassing 550±10%, i.e., up to 605 g/eq.
Claim 5 further recites a weight average molecular weight of “about 450 to about 4000”, wherein paragraph 0035 of the specification again provides firm consequences for falling below 450, but hedging consequences for exceeding 4000. Thus, “about 450” implies tolerance that the specification does not support, which leads to indefiniteness because it is unclear how much deviation, if any, is actually encompassed by “about”. The upper bound of “about 4000” has an unclear scope because while the specification does allow for some amount of acceptable deviation, it does not establish how much tolerance is encompassed by the claimed invention. For purposes of examination, “about 450” will be interpreted as broadly as the specification supports, which is to say, a firm minimum of 450. The upper bound of “about 4000” will be interpreted as encompassing 4000±10%, i.e., up to 4400.
Claim 9 recites a plurality of inorganic pigments, including “titanium, lead, iron, copper and chromium”. The pigments are recited as metals, not metal salts (e.g., “copper” vs. “copper chloride”). Of the recited species, titanium, lead and copper are known to be pigments in their metallic form, but iron and chromium are not. This leads to indefiniteness because it is unclear if applicants’ invention encompasses purely metallic pigments, including species that are not known to function as pigments, or if the invention encompasses metallic salts, for which there are no examples in the specification. For purposes of examination, the Examiner will herein interpret this claim as encompassing any form of the recited pigments, e.g., metallic titanium and/or titanium dioxide and/or titanium silicate, as long as the species is identified as a pigment in the prior art.
Claim 15 recites a composition comprising specific proportions of aluminum and magnesium, then “Zn as a remainder and inevitable impurities”. This leads to indefiniteness because if zinc is the remainder of the composition, the composition must reach 100 wt.% with the inclusion of zinc. The subsequent inclusion of “inevitable impurities” would mean the composition comprises more than 100 wt.%. The Examiner believes this is intended to recite “Zn and inevitable impurities as a remainder”, which would mean the composition comprises the recited amounts of aluminum and magnesium, with the remainder comprising both Zn and impurities. For purposes of examination, the Examiner will herein use this interpretation of the claim.
Claim 19 recites the limitation “increasing the temperature by 70 to 250 °C”, but this is inherently relative because it isn’t clear what the initial or final temperatures are, just the difference in temperature. The specification, at paragraph 0062, recites “at a temperature of 70 to 250 °C” (emphasis added), which establishes an upper and lower temperature bound, rather than treating the range as a relative change. For purposes of examination, the Examiner will herein interpret claim 19 in accordance with the specification, i.e., “increasing the temperature to 70 to 250 °C”, not “by”.
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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 1–4, 7–11, and 13–19 are rejected under 35 U.S.C. 103 as being unpatentable over Iwao (US 2012/0196967 A1, hereinafter “Iwao”), ICL (“LOPON® PO” Technical Data Sheet, 2021, hereinafter “ICL”), Mueller (US 6,545,104 B1, hereinafter “Mueller”), Honda (US 6,465,114 B1, hereinafter “Honda”), and Cho (WO 2019/124990 A1, hereinafter “Cho”).
Regarding claim 1, Iwao teaches a urethane-based resin coating composition (see generally abstract), which is suitable for surface treatment coating of galvanized steel sheets (see paragraph 0149), comprising:
with respect to 100% by weight of a solid content of the composition,
70 to 90% by weight of a resin mixture including a high molecular weight polyurethane resin and a low molecular weight polyurethane resin (see paragraphs 0023 teaching resin [A] at 100 parts by mass, and inorganic particles [B] as 10 to 400 parts by mass with respect to [A]; this means the total solid content is from 110–500 mass parts, and resin [A] therefore ranges from 20–91 wt.% relative to the solid content of the composition, which overlaps with the claimed range; also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges; also see paragraph 0039 describing the urethane resin as being synthesized from a polycarbonate polyol and a silane-based coupling agent, which produces a silicon-functionalized polyurethane resin [not a polysilicon-modified resin, which will be further addressed below]; also see paragraphs 0083 and 0084 teaching molecular weights between 10,000 and 300,000 as achieving high solubility, high heat resistance, high chemical resistance, and high hardness, and suggesting the combination of different molecular-weight polyols to achieve these results simultaneously, which motivates a person having ordinary skill in the art to use a combination of high Mw and low Mw polysilicon-modified polyurethanes, wherein the molecular weights fall within the ranges that applicants consider “high” and “low” [see the above 112(b) rejection of claim 1]; also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges).
Iwao further teaches the optional inclusion of additives including pigments, and additional resin for blend (see paragraph 0138), stabilizers (see paragraph 0145; this is a genus that can reasonably include pigment stabilizers; antioxidants are recited as examples of stabilizers, which inherently function as tarnish inhibitors by inhibiting oxidation), and adhesion promoters (see paragraph 0145, “adhesiveness imparting agent”). Although Iwao teaches the optional inclusion of these additives (and thus, compatibility with them), Iwao fails to explicitly teach any compositional proportions of these additives.
Regarding Iwao’s disclosure of both pigments and stabilizers, but not explicitly “pigment stabilizers” as claimed, the use of pigment stabilizers is well-understood in the art. ICL teaches a polycarboxylate-based dispersing agent to enable good storage stability of paints. ICL further teaches a typical dosage as 0.5–1.0%, which falls within the range of 0.1–1% by weight as recited in claim 1. A person having ordinary skill in the art before the effective filing date of the claimed invention seeking to replicate Iwao’s invention would have understood to be obvious that different types of pigments have different properties, which may or may not be directly compatible with the resin of Iwao’s invention. Accordingly, if proper dispersion and storage stability are required for pigment, it would be prima facie obvious to include a pigment stabilizer. The motivation supporting the inclusion of a pigment stabilizer most closely aligns with KSR Rationale D, which states it is prima facie obvious to apply a known technique (the inclusion of a pigment stabilizer in an appropriate dosage, as taught by ICL) to a known device, method or product (Iwao’s coating composition containing generic pigments) ready for improvement (proper pigment dispersion and storage stability) to yield predictable results (Iwao teaches the inclusion of pigments and stabilizers, so it is reasonable for a person having ordinary skill in the art to expect that pigment stabilizers known in the art would be compatible with Iwao’s composition, so the results of the proposed modification are predictable).
Iwao, as modified by ICL, fails to explicitly teach the limitations regarding (i) the polyurethane resin being a polysilicon-modified polyurethane, (ii) the presence of an auxiliary epoxy resin, and (iii) the presence and/or proportions of tarnish inhibitor, adhesion promoter, anticorrosive agent, and pigment.
Regarding (i), Mueller teaches polysilicon-modified polyurethanes (see generally abstract), wherein a urethane prepolymer is reacted with a polysiloxane and a crosslinker having silicon-bonded hydrolysable groups (see col. 2, ll. 8–14). This reaction produces a polymer backbone comprising a matrix of both polysilicon and polyurethane, as well as silicon-containing crosslinkers. Conversely, the product of Iwao is a polyurethane backbone with silicon-containing crosslinkers. When polysilicon is directly incorporated into the polymer backbone, it fundamentally alters the physical properties of the polymer, whereas silicon-containing crosslinkers can improve adhesion to a substrate, but don’t fundamentally alter the properties of the polyurethane. Since Mueller’s polysilicon-modified polyurethane has a polysilicon-containing backbone and silicon-containing crosslinkers, it benefits from improved physical properties and adhesion: Mueller teaches steel as a suitable substrate for the composition (see col. 1, ll. 34–39), and further teaches the composition as having improved toolability properties, thixotropy, adhesion, and resistance to cracking (see col. 5, ll. 48–65). Furthermore, Mueller teaches the composition as being compatible with a variety of additives, including pigments and adhesion promoting compounds (see col. 6, ll. 38–44). A person having ordinary skill in the art before the effective filing date of the claimed invention would have understood to be obvious that the silicon-functionalized polyurethane taught by Iwao can be modified according to Mueller to achieve better overall physical properties. The motivation supporting this combination most closely aligns with KSR Rationale B, which states it is prima facie obvious to simply substitute one known element (Mueller’s polysilicon-modified, silicon-functionalized polyurethane) for another (Iwao’s silicon-functionalized polyurethane) to obtain predictable results (both compositions are taught to be compatible with steel sheets, and use hydrolysable silicon groups to boost adhesion, and there is nothing to suggest that a polysilicon-modified polyurethane would be incompatible with the rest of Iwao’s disclosure, so the results of the proposed modification are predictable).
Regarding (ii), Honda teaches a ternary coated steel sheet (see generally abstract), comprising a mixture of resins including polyurethane and epoxy (see col. 13, ll. 4–8 teaching a mixture of two or more resins, including polyurethane and epoxy). Honda explicitly teaches these resins, in combination with silane coupling agents (see col. 5, ll. 60–67) like those taught by Iwao and Mueller, as imparting enhanced corrosion resistance (see col. 14, ll. 54–60). Honda further teaches the inclusion of coloring pigments (see col. 16, ll. 47–64), as well as tarnish inhibitors (see col. 16, ll. 43–46 teaching antioxidants, which inherently act as tarnish inhibitors by inhibiting oxidation), adhesion promoters (see col. 13, ll. 36–48 teaching tannic acid as adhering the steel sheet and the coating layer), and anti-corrosive agents (see col. 14, ll. 34–35, “rust inhibitor”). Regarding Honda’s use of coloring pigments, Honda explicitly states “the pigment concentration of the organic film layer is not particularly limited and it suffices to determine it with reference to the required color and/or concealing power” (see col. 16, ll. 61–64). In other words, Honda fails to explicitly teach a concentration of pigment, but instead indicates that it is an optimizable parameter to achieve desired aesthetic features, which is sufficient to establish a prima facie obviousness rejection (see MPEP 2144.05(II), which states differences in concentration will not support the patentability of subject matter encompassed by prior art unless there is evidence indicating such concentration is critical). A person having ordinary skill in the art before the effective filing date of the claimed invention would have understood to be obvious that the composition of Iwao, as modified by ICL and Mueller, can be further modified according to Honda to include epoxy resin, because it is taught to contribute to corrosion resistance. The motivation supporting this combination most closely aligns with KSR Rationale A, which states it is prima facie obvious to combine prior art elements (Iwao’s polyurethane-based coating and Honda’s polyurethane- and epoxy-based coating) according to known methods (method of using multiple types of resin in combination are well-understood in the art, including blending and layering techniques) to yield predictable results (Iwao teaches compatibility of polyurethane with other resins, and Honda teaches resinous coatings comprising both polyurethane and epoxy, so the results of the proposed modification are predictable).
Regarding (iii), Cho teaches a surface-treatment solution for a ternary hot-dip steel sheet (see generally abstract), comprising 60–85 wt.% of a resin mixture including a polyurethane main resin and an auxiliary acrylic emulsion resin, 0.3–2.0 wt.% of a zirconium-based compound, 1–2 wt.% of an adhesion promoter, 0.5–1.5 wt.% of a titanium-based compound, and 1–3 wt.% of a phosphate compound (see paragraph 0040). The zirconium-based compound is taught to function as a tarnish inhibitor (see paragraph 0063, “improving the resistance to blackening”), and 0.3–2.0 wt.% overlaps with the claimed range of 0.5–10 wt.%; the titanium-based compound is taught to be an anticorrosive agent (see paragraph 0060, “improving corrosion resistance”), and 1–2 wt.% overlaps with the claimed range of 0.5–10 wt.%; the phosphate compound is taught to function as both an anticorrosive and a tarnish inhibitor (see paragraph 0066, “impart corrosion resistance and blackening resistance”), and 1–3 wt.% overlaps with the claimed range of 0.5–10 wt.% for both components. Additionally, although Cho teaches polyurethane and acrylic resin in combination, the acrylic resin is explicitly taught to enhance corrosion resistance, which is the same function that Honda teaches resin as fulfilling. Thus, a person having ordinary skill in the art would be sufficiently motivated to utilize epoxy resin in the proportion that Cho teaches for acrylic resin, because both epoxy and acrylic resin are taught to serve the same function (see MPEP 2144.07, which states the selection of a known material based on its suitability for its intended use supports a prima facie obviousness rejection). Further supporting this proposed substitution, Honda also teaches acrylic resin in the same group of resins as polyurethane and epoxy (see col. 13, ll. 4–8). A person having ordinary skill in the art before the effective filing date of the claimed invention would have understood to be obvious that the composition of Iwao, as modified by ICL, Mueller, and Honda, can be further modified according to Cho to include the recited proportions of auxiliary resin and each additive. Because Iwao, as modified by Honda, already includes the recited additives without explicitly recited proportions, it is prima facie obvious for a person having ordinary skill in the art to look to the teachings of Cho for standard proportions of the recited components. The motivation supporting this combination most closely aligns with KSR Rationale A, which states it is prima facie obvious to combine prior art elements (Iwao and Honda’s disclosed use of tarnish inhibitors, adhesion promoters, and anticorrosive agents, with Cho’s disclosed use of specific proportions of components serving the same roles) according to known methods (no combination method required; simply incorporating Cho’s proportions into a composition that already includes the same components) to yield predictable results (all references teach substantially similar polyurethane-based coatings for steel sheets, which is sufficient reason for a person having ordinary skill in the art to believe the proportions of Cho are compatible with the modified composition of Iwao, so the results of the proposed modification are predictable).
In summary, Iwao, as modified by ICL, Mueller, Honda and Cho, teaches the invention of claim 1, comprising an overlapping amount of resin blend (see Cho), wherein the resin includes high- and low-molecular weight polysilicon-modified polyurethanes (see Mueller teaching polysilicon-modified polyurethanes, and Iwao motivating the use of high- and low- molecular weight polyurethanes in combination to achieve desired properties), and an auxiliary epoxy resin (see Honda teaching the use of epoxy resin in combination with polyurethane), further comprising overlapping amounts of tarnish inhibitor, adhesion promoter, and anticorrosive agent (see Iwao, Honda, and Cho teaching the inclusion of each component, wherein Cho teaches the proportions). The inclusion of a coloring pigment is taught by Iwao and Honda, and the concentration of coloring pigment is routinely optimizable. The inclusion of a pigment stabilizer in an overlapping concentration is taught by ICL. Thus, the modified composition of Iwao arrives at the claimed invention, rendering claim 1 obvious.
Regarding claim 2, Iwao, as modified by ICL, Mueller, Honda and Cho, teaches the surface treatment composition of claim 1, but fails to explicitly teach the limitation wherein the high molecular weight polysilicon-modified polyurethane main resin, the low molecular weight polysilicon-modified polyurethane auxiliary resin, and the auxiliary epoxy resin are mixed in a weight ratio of 1:4.5:4.5 to 9:0.5:0.5. However, absent any evidence of criticality, a person having ordinary skill in the art could reasonably arrive at the claimed ratio range through routine optimization (see MPEP 2144.05(II)). Since the claimed combination of resins is only obvious over a combination of references, there is no explicit teaching in the prior art for the claimed ratio. However, a person having ordinary skill in the art, being motivated to combine resins as discussed in the above rejection of claim 1, would need to begin with some ratio of resins. Combining three resins in equal proportions (i.e., a ratio of 3.3:3.3:3.3) already arrives at the claimed invention, but it would also be obvious to try other proportions of resins to optimize the benefits disclosed by Iwao (e.g., see paragraphs 0083 and 0084 teaching molecular weights between 10,000 and 300,000 as achieving high solubility, high heat resistance, high chemical resistance, and high hardness, and suggesting the combination of different molecular-weight polyols to achieve these results simultaneously). KSR Rationale E states it is prima facie obvious to choose from a finite number of known, predictable solutions (optimizable ratios of resins) with a reasonable expectation of success (Iwao already suggests benefits of using multiple molecular weights of polyurethane in combination, and Honda teaches polyurethane in combination with epoxy, meaning a person having ordinary skill in the art can reasonably expect some ratio to succeed, and therefore could have pursued the known potential solutions with a reasonable expectation of success).
Regarding claims 3 and 4, Iwao further teaches the limitation of claim 3 wherein the high-molecular weight polysilicon-modified polyurethane main resin has a weight average molecular weight (Mw) of 100,000 to 200,000, and the limitation of claim 4 wherein the low-molecular weight polysilicon-modified polyurethane auxiliary resin has a Mw of 30,000 to 70,000 (see paragraphs 0083 and 0084 teaching molecular weights between 10,000 and 300,000, which overlap with the claimed Mw ranges). Iwao fails to explicitly teach the glass transition temperature (Tg) of -20 °C to -10 °C, as claimed in claim 3, or -30 °C to -20 °C, as claimed in claim 4. However, Tg is a result-effective variable tied to Mw and polymer structure. Iwao teaches overlapping Mw, and Mueller modifies Iwao using identical precursors to arrive at polysilicon-modified polyurethane resins, which is sufficient to establish a prima facie obviousness rejection based on inherency (see MPEP 2112.01, which states that where the claimed and prior art products are substantially identical in structure or composition, or are produced by substantially identical processes, a prima facie case of obviousness has been established). The burden now shifts to the applicants to disprove inherency by showing that the prior art products do not necessarily possess the characteristics of the claimed product.
Regarding claim 7, Cho further teaches the limitation wherein the adhesion promoter is at least one selected from the group consisting of phosphoric acid ester, ammonium phosphate, and ammonium zirconate carbonate (see paragraph 0020 teaching phosphate ester and ammonium phosphate [wherein phosphate ester is synonymous with phosphoric acid ester]; also see paragraph 0064 teaching ammonium zirconate carbonate, which inherently acts as an adhesion promoter, even if Cho does not explicitly teach it as serving that function).
Regarding claim 8, Cho further teaches the limitation wherein the anticorrosive agent is at least one selected from the group consisting of, inter alia, a phosphoric acid rust inhibitor (see paragraph 0066 teaching phosphate compounds as corrosion inhibitors [wherein corrosion inhibitors are synonymous with rust inhibitors, and phosphates are the conjugate base of phosphoric acid]).
Regarding claim 9, Honda further teaches the limitation wherein the coloring pigment includes at least one selected from the group consisting of, inter alia, titanium and iron (see col. 16, ll. 52–58 teaching titanium oxide and several iron oxides), and an azo organic pigment (see col. 16, ll. 52–58 teaching azoic pigments [azoic pigments typically refer to colorant combinations that react to produce azo pigments inside textile fibers, but since Honda does not teach textile fibers, “azoic pigments” is presumed to refer to “azo pigments”]).
Regarding claim 10, ICL further teaches the limitation wherein the pigment stabilizer is a carboxyl polymer (see “Nomenclature” identifying the product as a polycarboxylate, which is a carboxyl polymer).
Regarding claim 11, Cho further teaches the limitation wherein the surface treatment composition further comprises a solvent, and, based on the total weight of the surface treatment composition, the content of the solid is 20 to 40% by weight and the remainder is a solvent (see paragraph 0022 teaching 10–20 wt.% solids, with the remainder being solvent; also see MPEP 2144.05(I) regarding the obviousness of ranges that have an overlapping endpoint).
Regarding claim 13, Cho further teaches a surface-treated ternary hot dip galvanized steel sheet, comprising:
a steel sheet (see paragraph 0039 teaching a steel sheet);
a ternary hot dip galvanized layer formed on at least one surface of the steel sheet (see paragraph 0039 teaching the steel sheet as having a ternary hot dip layer, and as being galvanized);
a surface treatment coating layer formed on the ternary hot dip galvanized layer (see paragraph 0039 teaching a resinous coating used as a surface treatment on the ternary hot dip galvanized sheet);
wherein the surface treatment coating layer is formed from the surface treatment composition of claim 1 (see the above rejection of claim 1).
Regarding claim 14, Cho further teaches the limitation wherein the ternary hot dip galvanized layer includes an Al enrichment layer formed at an interface, and an area occupation ratio of the Al enrichment layer is 70% to 100% (see paragraph 0034 teaching an Al enrichment layer formed at the interface with the occupancy area ratio as 70% to 100%).
Regarding claim 15, Cho further teaches the limitation wherein the ternary hot dip galvanized layer includes 0.2 to 15% by weight Al, 0.5 to 3.5% by weight Mg, with Zn and inevitable impurities as the remainder (see paragraph 0035 teaching these same ranges; also see the above 112(b) rejection of claim 15).
Regarding claim 16, Cho further teaches the limitation wherein the surface treatment coating layer has a thickness of 1 µm to 10 µm (see paragraph 0089 teaching a dry film thickness of 0.3–3 µm; also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges).
Regarding claim 17, Cho further teaches a preparation method of a surface-treated ternary hot dip galvanized steel sheet, comprising:
coating the surface treatment composition of claim 1 on a ternary hot dip galvanized steel sheet on which a ternary hot dip galvanized layer is formed (see paragraph 0089 teaching a step of coating the surface treatment composition onto the surface of the plating layer of a ternary hot dip galvanized steel sheet; also see the above rejection of claim 1); and
forming a surface treatment coating layer by drying the surface treatment composition (see paragraph 0092 teaching the process of drying the composition).
Regarding claim 18, Cho further teaches the limitation wherein the surface treatment composition is coated to a thickness of 2.5 µm to 50 µm (see paragraph 0089 teaching a wet coating thickness of 1.5–30 µm; also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges).
Regarding claim 19, Cho further teaches the limitation wherein, in forming a surface treatment coating layer, the surface treatment composition is dried by increasing a temperature to 70 °C to 250 °C (see paragraph 0092 teaching the drying temperature as 70–150 °C; also see the above 112(b) rejection of claim 19).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Iwao, ICL, Mueller, Honda and Cho, as applied to claim 1 above, and further in view of Clope (US 4,105,613 A, hereinafter “Clope”).
Regarding claim 5, Iwao, as modified by ICL, Mueller, Honda and Cho, teaches the surface treatment composition of claim 1, but fails to explicitly teach the limitation wherein the auxiliary epoxy resin has an epoxide equivalent weight (see the above objection to claim 5) of 450 to about 550 g/eq, and a weight average molecular weight of 450 to about 4000 (see the above 112(b) rejection of claim 5).
Clope teaches a resinous coating for use as a corrosion resistant primer for steel substrates (see generally abstract). Clope teaches an epoxy resin having an epoxide equivalent weight of about 450 to 4000 and a weight average molecular weight of about 900–8000 (see col. 1, ll. 48–66; also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges). Clope further teaches the coating composition as having excellent adhesion to hot dip galvanized steel (see col. 4, ll. 9–12). Honda already discloses the use of an epoxy resin coating in combination with polyurethane resin (see the above rejection of claim 1), but fails to explicitly teach any properties of said epoxy resin. A person having ordinary skill in the art seeking to practice the proposed modification of Iwao would need to use some epoxide equivalent weight and weight average molecular weight of epoxy resin, and since epoxide equivalent weight directly correlates to the crosslink density (and therefore the flexibility and impact resistance) of the epoxy resin, a person having ordinary skill in the art would be sufficiently motivated to look to Clope’s disclosure for these parameters, since Clope explicitly teaches the epoxy resin coating as suitable for hot dip galvanized steel, which is the same field of endeavor as Iwao and Honda. The motivation supporting this combination most closely aligns with KSR Rationale A, which states it is prima facie obvious to combine prior art elements (Honda’s epoxy resin with undisclosed parameters, and Clope’s epoxy resin with the above-cited epoxide equivalent weight and weight average molecular weight) according to known methods (no method required; simply using Clope to supply parameters omitted by Honda) to yield predictable results (both epoxy resins are used in the same application, and there is nothing that would suggest Honda’s composition is incompatible with the specific parameters taught by Clope, so the results of the proposed modification are predictable).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Iwao, ICL, Mueller, Honda and Cho, as applied to claim 1 above, and further in view of Matsuno (JP 2005/146340 A, hereinafter “Matsuno”).
Regarding claim 6, Iwao, as modified by ICL, Mueller, Honda and Cho, teaches the surface treatment composition of claim 1, but fails to explicitly teach the limitation wherein the tarnish inhibitor is at least one selected from the group consisting of ammonium molybdate and sodium molybdate. Matsuno teaches a coating composition for galvanized steel sheets (see paragraph 0001), wherein the composition comprises molybdenum oxysates (believed to be a mistranslation of “oxoacid”) blended with polyurethane and/or epoxy resins (see paragraph 0015). Specifically, Matsuno teaches ammonium molybdate and hexavalent molybdenum oxysodium (see paragraph 0006; “hexavalent molybdenum oxysodium” refers to sodium molybdate, which is hexavalent molybdenum oxide with a sodium counterion). The molybdenum salts function as tarnish inhibitors and anticorrosive agents (see paragraph 0016). In particular, molybdenum-based tarnish inhibitors are shown to perform better than zirconium-based tarnish inhibitors (see Table 2, Sample 6, which contains a zirconium oxyacid tarnish inhibitor with no molybdenum oxyacid and fails to inhibit blackening; compare to Sample 1, which contains molybdenum oxyacid and a titanium oxyacid and successfully inhibits blackening; these results are also discussed in paragraph 0027). A person having ordinary skill in the art seeking to practice the invention of Iwao, as modified above, would be motivated to substitute or augment the zirconium-based tarnish inhibitor disclosed by Cho with the molybdenum-based tarnish inhibitor disclosed by Matsuno. The motivation supporting this combination most closely aligns with KSR Rationale G, which states it is prima facie obvious for some teaching, suggestion or motivation in the prior art (Matsuno’s teaching of enhanced tarnish inhibition by ammonium molybdate and/or sodium molybdate over zirconium-based tarnish inhibitors) to lead a person having ordinary skill in the art to modify the prior art reference or to combine prior art reference teachings (further modifying the composition of Iwao to substitute or augment the tarnish inhibitor with molybdate-based inhibitors) to arrive at the claimed invention, if there is a reasonable expectation of success (Matsuno’s composition is taught to be urethane and/or epoxy based, and applied towards the same substrate, so one of ordinary skill in the art could have arrived at the claimed invention with a reasonable expectation of success).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Iwao, ICL, Mueller, Honda and Cho, as applied to claim 1 above, and further in view of Lyondell-Basell (“N-methyl-2-Pyrrolidone” Technical Data Sheet, 2011, hereinafter “Lyondell”).
Regarding claim 12, Iwao, as modified by ICL, Mueller, Honda and Cho, teaches the surface treatment composition according to claim 11, but fails to explicitly teach the limitation wherein the solvent includes 20% to 40% by weight of N-ethyl-2-pyrrolidone (NEP) and water as the remainder based on the total weight of the solvent. Cho does teach a solvent comprising water with 3–5 wt.% alcohol, which suggests a binary solvent system, but NEP is not an alcohol, so Cho does not reasonably suggest the use of NEP in a binary solvent system. Lyondell teaches N-methyl-2-pyrrolidone (NMP) as a powerful solvent, completely miscible with water (see “Description”), wherein NMP is the preferred solvent for urethane dispersions and most commercial resins, improving the mechanical properties and rheological control (see “Coatings Solvent” section). Although NMP is different from the claimed NEP (methyl vs. ethyl), MPEP 2144.09 states that a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. NMP is simply a pyrrolidone with a methyl group (–CH3) bound to the pyrrolidone nitrogen. The claimed NEP is a pyrrolidone with an ethyl group (–CH2CH3) bound to the pyrrolidone nitrogen. NEP and NMP have very comparable miscibility, and are expected to function comparably as solvents. Lyondell teaches NMP as a preferred solvent for resins, including polyurethane, which would sufficiently motivate a person having ordinary skill in the art to use NMP or NEP as a solvent. Cho teaches alcohol as an auxiliary solvent to ensure solution stability (see paragraph 0076), and a person having ordinary skill in the art would understand that a binary solvent system is preferred when working with a complicated mixture like that of Iwao, as modified above, because some components might be sparingly soluble in water, while others might be sparingly soluble in an organic solvent. Therefore, although Lyondell teaches NMP as a preferred solvent for resins, a person having ordinary skill in the art seeking to practice the invention of Iwao, as modified above, would understand to be obvious that NMP (or NEP) should only be used as a co-solvent for a composition that comprises more than just resin. The motivation supporting this combination most closely aligns with KSR Rationale B, which states it is prima facie obvious to simply substitute one known element (Lyondell’s NMP) for another (Cho’s alcohol co-solvent) to obtain predictable results (NMP is known to function as a solvent for urethane-based resins, and Cho already teaches a binary solvent in combination with urethane-based resin, so there is nothing to suggest that NMP couldn’t replace the alcohol of Cho; the results of the proposed modification are therefore predictable). Although Cho only teaches 3–5 wt.% of alcohol as a co-solvent, this is a result-effective variable; to maximize solubility, the ratio of water to co-solvent should be tuned, ensuring there is sufficient water to dissolve the water-soluble components, and sufficient organic solvent to dissolve the components with lower water solubility (see MPEP 2144.05(II)).
Conclusion
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/R.P.L./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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