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 .
Election/Restrictions
Claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 26, 2026.
Applicant’s election without traverse of Group I in the reply filed on June 26, 2026 is acknowledged.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided. Specifically, “are provided” is language that can be implied.
Claim Objections
Claim 5 is objected to because of the following informalities: “claim 1 wherein”, should read “claim 1, wherein”. Appropriate correction is required.
Claim 6 is objected to because of the following informalities: "5 l m" is not a unit of measure, and it should be "5 µm". Appropriate correction is required.
Examiner Note
Regarding “above”, it is of no moment what is “above” as they are relative terms and can be determined alternatively by the location of the observer. Further, there is motivation to reverse parts in MPEP 2144.04 VI B, “mere reversal…was held to be an obvious modification”.
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(s) 1, 2 and 4-10 are rejected under 35 U.S.C. 103 as being unpatentable over Miyashi et al. (US 2023/0235183 A1), hereinafter ‘183 as evidenced by Miyashi et al. (US 2022/0251699 A1), hereinafter ‘699.
Regarding claims 1 and 10, ‘183 teaches a member (substrate) including a base material containing aluminum alloy (second region) and a coating film containing AlF3-x(OH)x, where x is 0.05-1.00 (first region) ([0024]), Fig. 1 shows coating film is above and an outermost surface (formed on the surface) of the base material ([0024]; Fig. 1). One of ordinary skill in the art reasonably understands that there is more aluminum fluoride in a coating film of AlF3-x(OH)x then in an aluminum alloy (higher concentration of aluminum fluoride in the first region then the second). ‘699 provides evidence that aluminum fluoride may be aluminum fluoride containing a part of a hydroxyl group (AlF3-X(OH)X) ([0032]).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Regarding claims 2 and 6, ‘183 as evidenced by ‘699 teaches each limitation of claim 1 as discussed above, and ‘183 further teaches an aluminum alloy having a width of 20 mm, thickness of 2 mm ([0055]), the thickness of the coating film (first region) is 0.1-50 micron ([0038]; total thickness of 2.0001-2.05 mm) and Fig. 1 shows the coating film (20) is the same width as the base (10) and that the coating film extends from a surface of the substrate (Fig. 1; [0024]; the thickness of the film is a depth from a surface of the substrate). This calculates to an aspect ratio of width to thickness of 9.8-10 to 1.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Regarding claim 4, ‘183 as evidenced by ‘699 teaches each limitation of claim 1 as discussed above, and ‘183 further teaches there maybe a precursor coating film on the aluminum alloy formed by anodization (anodized aluminum) ([0044]).
Regarding claim 5, ‘183 as evidenced by ‘699 teaches each limitation of claim 1 as discussed above, and ‘183 further teaches the base material can be JIS standard A1080 not containing Mg ([0076]), and the coating film may contain AlF3-x(OH)x or a mixture of AlF3-x(OH)x and other materials ([0024]; i.e. may not contain other materials such as Mg), which meets the limitation of does not comprise Mg in the substrate. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Regarding claim 7, ‘183 as evidenced by ‘699 teaches each limitation of claim 1, as discussed above and further teaches a coating film containing AlF3-x(OH)x, where x is 0.05-1.00 (first region) ([0024]), Fig. 2 is an X-ray diffraction pattern shows coating film that shows the coating film includes AlF3-x(OH)x (overlaps with up to 100%) (Fig. 2; [0021]), and x-ray diffraction pattern is measured by X-ray photoelectron spectroscopy (XPS) ([0065]). ‘699 provides evidence that aluminum fluoride may be aluminum fluoride containing a part of a hydroxyl group (AlF3-X(OH)X) ([0032]).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Regarding claim 8, ‘183 as evidenced by ‘699 teaches each limitation of claim 1, as discussed above and ‘183 further teaches a coating film (first region) containing AlF3-x(OH)x, ([0024]), Fig. 2 is an X-ray diffraction pattern shows coating film that shows the coating film includes AlF3-x(OH)x of ~9 intensity, MgF2 of ~1.5 and ~0.5 (total ~2) intensity, and Al of ~2.5 intensity (Fig. 2; [0021]), and x-ray diffraction pattern is measured by X-ray photoelectron spectroscopy (XPS) ([0065]). The shown intensities calculate to a fluorine content of ~66% using molecular weights. ‘699 provides evidence that aluminum fluoride may be aluminum fluoride containing a part of a hydroxyl group (AlF3-X(OH)X) ([0032]).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Regarding claim 9, ‘183 as evidenced by ‘699 teaches each limitation of claims 1 and 5, as discussed above and ‘183 further teaches the coating film may contain AlF3-x(OH)x or a mixture of AlF3-x(OH)x and other materials ([0024]; i.e. may not contain other materials such as Mg), x-ray diffraction pattern is measured by X-ray photoelectron spectroscopy (XPS) including the half width of AlF3-x(OH)x (inclusive of fluorine; [0036]-[0037]) and x in the chemical formula is 0.05-1.00 ([0024]). ‘699 provides evidence that aluminum fluoride may be aluminum fluoride containing a part of a hydroxyl group (AlF3-X(OH)X) ([0032]).
‘183 does not specifically teach the first region (coating layer) has a fluorine content of 20-40%. It would have been obvious to one of ordinary skill in the art to modify ‘183 to this fluorine range as 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 (MPEP 2144.05 II). One of ordinary skill in the art reasonably understands that the amount of fluorine in the coating layer where the coating layer maybe exclusively AlF3-x(OH)x (and diffused Al from the base), changes as x is adjusted. ‘183 teaches that the likelihood of peeling is the result of the amount of x ([0034]). This means that the amount of fluorine is a result effective variable that will be adjusted dependent on how much peeling is desired by changing the x value. As adjusting x mathematically adjusts the amount of fluorine present, and the prior art teaches a rationale for adjusting x, there is an expectation of meeting the claimed range of fluorine as peelability is adjusted.
Claim(s) 3 is rejected under 35 U.S.C. 103 as being unpatentable over ‘183 as evidenced by‘699 and Galaxy Electric (“ASTM JIS En Standard A1080 Aluminum Plate/Sheet/Coil/Strip Factory Direct Sale).
Regarding claim 3, ‘183 as evidenced by ‘699 teaches each limitation of claim 1 as discussed above, and ‘183 further teaches the base material can be JIS standard A1080 not containing Mg ([0076]), an aluminum alloy having a thickness of 2 mm ([0055]), the thickness of the coating film is 0.1-50 micron ([0038]; total thickness of 2.0001-2.05 mm), and the coating film may contain AlF3-x(OH)x or a mixture of AlF3-x(OH)x and other materials ([0024]; i.e. may not contain other materials such as Mg), which meets the limitation of does not comprise Mg in the substrate. Galaxy Electric provides evidence that 1080 Aluminum includes 99.8% Al, 0.15% Fe (Table between Pgs. 4 and 5) and is JIS Standard A1080 Aluminum that is an alloy (Quick Details, Pg. 2). One of ordinary skill in the art reasonably understands metal alloy compositions are listed in mass/weight percentages unless specified otherwise; further that due to the thickness differences in the alloy and coating the Al and Fe overlap that claimed for the entire substrate. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE CHRISTY whose telephone number is (303)297-4363. The examiner can normally be reached Monday-Thursday, 7am-4pm MT.
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/KATHERINE A CHRISTY/Primary Examiner, Art Unit 1784
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