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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/19/26 has been entered.
Claim Rejections - 35 USC § 103
Claims 1-2, 4, 6-8, 10-16, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Güttler (U.S. PG Pub. No. 2016/0265116) in view of Domes (U.S. PG Pub. No. 2010/0062200).
In the reference’s claim 16, Güttler discloses a method for the treatment of shaped bodies comprising contacting at least one shaped body with an aqueous acidic composition, where the aqueous acidic composition comprises oxalic acid and nitroguanidine, as recited in step (3)(a) and (3)(b) of claim 1 and components (a) and (b) of claim 11. In paragraphs 2, 37-38, and 85, Güttler discloses that the shaped bodies can be metallic, meeting the limitations of the metallic substrate of claim 1. In paragraph 51 Güttler discloses that the aqueous composition can also comprise polyvinylamine, meeting the limitations of the film former of step (3)(c) of claim 1 and component (c) of claim 11 as well as claims 2 and 16 for the case where the film former is a homopolymer of vinylamine. In paragraph 72 Güttler discloses that the pH of the composition is usually in the range of 0.2 to 2, within the range recited for the reactive lubricant in amended claims 1 and 11.
In paragraph 45 Güttler discloses that the surface of the substrate can be subjected to cleaning and/or pickling prior to coating with the aqueous composition, meeting the method limitations of claim 1 for the case where step (1) and/or (2) is performed. In paragraphs 39, 48, 83, and 85 Güttler discloses that the coated surface can optionally be dried, as recited in step (4) of claim 1.
In paragraph 51 Güttler further discloses that the aqueous composition can comprise an acid-stable surfactant, as recited in claim 7. In Tables 2-4 Güttler discloses that the aqueous composition can be at a temperature (“Bath temperature” in the tables) within the range recited in claim 10. In paragraphs 67 and 113 Güttler discloses that the aqueous composition can be formulated as a dilutable concentrate, meeting the limitations of claim 12. The metallic shaped body of Güttler meets the limitations of the pretreated metallic substrate of claim 13. It is noted that while Güttler discloses a separate lubricant layer, the aqueous composition of Güttler meets the compositional limitations of the claimed aqueous lubricant and is therefore also considered to perform as a lubricant layer. In paragraphs 41, 130, and the examples, Güttler discloses that the coating has a layer weight within the ranges recited in claim 14. In paragraph 14 and the reference’s claim 24, Güttler discloses cold forming the shaped body, meeting the limitations of claim 15.
The differences between Güttler and the currently presented claims are:
i) Güttler does not disclose the inclusion of the specific claimed waxes and wax mixtures.
ii) Güttler does not disclose the further inclusion of an antifoam agent or a corrosion inhibitor.
With respect to i), In paragraphs 15-21 Domes discloses a process for coating a metallic surface with an aqueous composition comprising a film former and a lubricant. In paragraphs 84-90 Domes discloses that the lubricant can be a wax, and in paragraphs 84 and 176 teaches that the wax can be cationically stabilized, as recited in claims 1, 11, and 18-19. In paragraphs 84 and 90 Domes discloses that the lubricant can comprise at least two different waxes having different melting points, where the at least two encompasses the ranges recited in claims 4 and 20. See MPEP 2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976);”
It would have been obvious to one of ordinary skill in the art to include the cationically stabilized waxes of Domes in the composition and method of Güttler, since Domes discloses that they are desirable waxes for use in aqueous coatings for metals, and because Domes teaches in paragraph 90 that the use of a mixture of waxes having different melting points imparts advantageous properties.
With respect to ii), Domes teaches in paragraphs 111 and 120 that the composition can further comprise a defoaming agent and an organic corrosion inhibitor, meeting the limitations of claims 6 and 8.
It would have been obvious to one of ordinary skill in the art to include the defoaming agent and corrosion inhibitor of Domes in the composition and method of Güttler, in order to reduce foaming of the aqueous composition and corrosion of the metal substrate.
In light of the above, claims 1-2, 4, 6-8, 10-16, and 18-20 are rendered obvious by Güttler in view of Domes.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Güttler in view of Domes as applied to claims 1-2, 4, 6-8, 10-16, and 18-20 above, and further in view of Oshita (EP 3290544 A1).
The discussion of Güttler and Domes in paragraph 5 above is incorporated here by reference. Güttler and Domes disclose a method meeting the limitations of claim 1, but does not disclose the further inclusion of an emulsified oil in the composition. Güttler further teaches in paragraph 85 that a lubricating layer can be applied on top of the layer formed by the aqueous composition.
In paragraph 1 Oshita discloses an aqueous lubricating coating agent for a metal material. In paragraph 9 Oshita discloses that the coating agent can comprise oxalic acid, as in the composition of Güttler, and has a pH of 2.0 to 6.5, overlapping the broader range of 0 to 3 taught in paragraph 72 of Güttler. In paragraphs 10-11 Oshita discloses that the composition further comprises a lipophilic lubricating component, which can be an oil. The inclusion of the oil of Oshita in the aqueous composition of Güttler and Domes will lead to an oil-in-water emulsion meeting the limitations of claim 5.
It would have been obvious to one of ordinary skill in the art to include the oil of Oshita in the composition and method of Güttler and Domes, since Oshita teaches that the resulting composition can form both conversion coating layer and a lubricating layer, achieving the objective of Güttler in an efficient manner.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Güttler in view of Domes as applied to claims 1-2, 4, 6-8, 10-16, and 18-20 above, and further in view of Sonoda (EP 0232929 A1).
The discussion of Güttler and Domes in paragraph 5 above is incorporated here by reference. Güttler and Domes disclose a method meeting the limitations of claim 1, but does not disclose the inclusion of a vinylpyrrolidone polymer as a film former. In claims 4 and 15 Güttler discloses that the metal substrates to which the coatings of the reference are applied can be stainless steel.
An English-language machine translation of Sonoda, which was attached to the office action mailed 12/13/23 in the parent application 17/428,939, has been used in setting forth this rejection, and the paragraph numbers referred to herein are those of the machine translation unless otherwise noted. In paragraphs 1 and 7-9, as well as the listing of ingredients on page 3 of the original reference. Sonoda discloses applying an oxalating solution to a stainless steel substrate, where the oxalating solution comprises a water-soluble polymer. In paragraph 9 Sonoda discloses that polyvinylpyrrolidone, as recited in claim 17 is a preferred water-soluble polymer. It is noted that the polyvinylamine disclosed in paragraph 39 of Güttler is disclosed as a thickening agent, and that other suitable thickening agents not recited in the current claims as film forming agents are also disclosed by Güttler. When the thickening agent of Güttler is not a polyvinylamine, and the polyvinylpyrrolidone of Sonoda is incorporated into the aqueous composition of Güttler, claim 17 is met.
It would have been obvious to one of ordinary skill in the art to include the polyvinylpyrrolidone of Sonoda in the composition and method of Güttler and Domes, since Sonoda discloses that they are suitable additives for an oxalating composition for stainless steel, and paragraphs 7, 27, and 32 of Sonoda teach that oxalating compositions of the reference have superior properties.
Claims 1-2, 7, 10-16, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Güttler (U.S. PG Pub. No. 2016/0265116) in view of Landler (U.S. Pat. No. 4,302,254).
In the reference’s claim 16, Güttler discloses a method for the treatment of shaped bodies comprising contacting at least one shaped body with an aqueous acidic composition, where the aqueous acidic composition comprises oxalic acid and nitroguanidine, as recited in step (3)(a) and (3)(b) of claim 1 and components (a) and (b) of claim 11. In paragraphs 2, 37-38, and 85, Güttler discloses that the shaped bodies can be metallic, meeting the limitations of the metallic substrate of claim 1. In paragraph 51 Güttler discloses that the aqueous composition can also comprise polyvinylamine, meeting the limitations of the film former of step (3)(c) of claim 1 and component (c) of claim 11 as well as claims 2 and 16 for the case where the film former is a homopolymer of vinylamine. In paragraph 72 Güttler discloses that the pH of the composition is usually in the range of 0.2 to 2, within the range recited for the reactive lubricant in amended claims 1 and 11.
In paragraph 45 Güttler discloses that the surface of the substrate can be subjected to cleaning and/or pickling prior to coating with the aqueous composition, meeting the method limitations of claim 1 for the case where step (1) and/or (2) is performed. In paragraphs 39, 48, 83, and 85 Güttler discloses that the coated surface can optionally be dried, as recited in step (4) of claim 1.
In paragraph 51 Güttler further discloses that the aqueous composition can comprise an acid-stable surfactant, as recited in claim 7. In Tables 2-4 Güttler discloses that the aqueous composition can be at a temperature (“Bath temperature” in the tables) within the range recited in claim 10. In paragraphs 67 and 113 Güttler discloses that the aqueous composition can be formulated as a dilutable concentrate, meeting the limitations of claim 12. The metallic shaped body of Güttler meets the limitations of the pretreated metallic substrate of claim 13. It is noted that while Güttler discloses a separate lubricant layer, the aqueous composition of Güttler meets the compositional limitations of the claimed aqueous lubricant and is therefore also considered to perform as a lubricant layer. In paragraphs 41, 130, and the examples, Güttler discloses that the coating has a layer weight within the ranges recited in claim 14. In paragraph 14 and the reference’s claim 24, Güttler discloses cold forming the shaped body, meeting the limitations of claim 15.
In paragraph 53 Güttler discloses that the composition can comprise a pigment which can be based on wax, but does not disclose specific suitable waxes.
In column 1 lines 18-22 Landler discloses preparing easily dispersible pigments by treating pigments with wax in an aqueous medium. In column 1 lines 32-37 Landler discloses various suitable waxes, including waxes which have not been modified with ionic surfactants and are therefore nonionic waxes, as recited for the wax of claim 1. The inclusion of the wax-based pigment of Landler as the pigment in the composition of Güttler therefore meets the limitations of claims 1-2, 7, 10-16, and 18-20.
It would have been obvious to one of ordinary skill in the art to include the c wax-based pigment of Landler as the pigment in the composition of Güttler, since Landler discloses that the pigments are easily dispersible.
In light of the above, claims 1-2, 7, 10-16, and 18-20 are rendered obvious by Güttler in view of Landler.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Güttler in view of Landler as applied to claims 1-2, 7, 10-16, and 18-20 above, and further in view of Oshita (EP 3290544 A1).
The discussion of Güttler and Landler in paragraph 6 above is incorporated here by reference. Güttler and Landler disclose a method meeting the limitations of claim 1, but does not disclose the further inclusion of an emulsified oil in the composition. Güttler further teaches in paragraph 85 that a lubricating layer can be applied on top of the layer formed by the aqueous composition.
In paragraph 1 Oshita discloses an aqueous lubricating coating agent for a metal material. In paragraph 9 Oshita discloses that the coating agent can comprise oxalic acid, as in the composition of Güttler, and has a pH of 2.0 to 6.5, overlapping the broader range of 0 to 3 taught in paragraph 72 of Güttler. In paragraphs 10-11 Oshita discloses that the composition further comprises a lipophilic lubricating component, which can be an oil. The inclusion of the oil of Oshita in the aqueous composition of Güttler and Landler will lead to an oil-in-water emulsion meeting the limitations of claim 5.
It would have been obvious to one of ordinary skill in the art to include the oil of Oshita in the composition and method of Güttler and Landler, since Oshita teaches that the resulting composition can form both conversion coating layer and a lubricating layer, achieving the objective of Güttler in an efficient manner.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Güttler in view of Landler as applied to claims 1-2, 7, 10-16, and 18-20 above, and further in view of Sonoda (EP 0232929 A1).
The discussion of Güttler and Landler in paragraph 6 above is incorporated here by reference. Güttler and Landler disclose a method meeting the limitations of claim 1, but does not disclose the inclusion of a vinylpyrrolidone polymer as a film former. In claims 4 and 15 Güttler discloses that the metal substrates to which the coatings of the reference are applied can be stainless steel.
An English-language machine translation of Sonoda, which was attached to the office action mailed 12/13/23 in the parent application 17/428,939, has been used in setting forth this rejection, and the paragraph numbers referred to herein are those of the machine translation unless otherwise noted. In paragraphs 1 and 7-9, as well as the listing of ingredients on page 3 of the original reference. Sonoda discloses applying an oxalating solution to a stainless steel substrate, where the oxalating solution comprises a water-soluble polymer. In paragraph 9 Sonoda discloses that polyvinylpyrrolidone, as recited in claim 17 is a preferred water-soluble polymer. It is noted that the polyvinylamine disclosed in paragraph 39 of Güttler is disclosed as a thickening agent, and that other suitable thickening agents not recited in the current claims as film forming agents are also disclosed by Güttler. When the thickening agent of Güttler is not a polyvinylamine, and the polyvinylpyrrolidone of Sonoda is incorporated into the aqueous composition of Güttler and Landler, claim 17 is met.
It would have been obvious to one of ordinary skill in the art to include the polyvinylpyrrolidone of Sonoda in the composition and method of Güttler and Landler, since Sonoda discloses that they are suitable additives for an oxalating composition for stainless steel, and paragraphs 7, 27, and 32 of Sonoda teach that oxalating compositions of the reference have superior properties.
Double Patenting
Claims 1-2, 4-8, and 10-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,139,690. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 1 of the ‘690 patent recites a method corresponding to the method of claim 1 of the current application, differing only in that the emulsified lubricating oil of step (3)(c) is a required component of the recited water-based, acidic, reactive lubricant is a required component rather than an optional component, and the wax of step (3)(c) is an optional component rather than a required component. Since the recitation of the wax as an optional component is still sufficient to meet the limitations of a composition comprising the wax. Claim 1 of the current application is therefore anticipated by claim 1 of the ‘690 patent. Claim 5 of the current application is also anticipated by claim 1 of the ‘690 patent due to the recitation of the emulsified lubricating oil.
Claim 9 of the ‘690 patent, which is drawn to the reactive lubricant, anticipates claim 11 of the current application for the same reasons.
Claims 2 and 4-8 of the ‘690 patent are analogous to claims 2, 4, 6-8, and 10 of the current application. Claims 10-18 of the ‘690 patent are analogous to claims 12-20 of the current application.
In light of the above, claims 1-2, 4-8, and 10-20 of the current application are anticipated by claims 1-18 of the ‘690 patent.
Response to Arguments
Applicant's arguments filed 3/19/26 have been fully considered but they are not persuasive.
Regarding the rejection set forth over Güttler and Domes, applicant argues that Domes teaches a pH range of 6.5 to 11. Applicant alleges that the broader pH range of 1 to 12 taught by Domes is only for the film former in water without further compounds, and that the pH of the overall composition must be from 6.5 to 11.
As discussed in the rejection, Güttler teaches that the pH of the composition falls within the claimed range, and Domes is cited to provide motivation for the inclusion of the claimed cationically stabilized wax and wax mixture. The discussion in paragraph 57 of Domes regarding pH is focused on the organic film former component of Domes, but the rejection does not contemplate the incorporation of the organic film former of Domes in the composition of Güttler, and Domes is not cited to for its teachings regarding pH. Applicant has not provided any reasoning or evidence as to why one of ordinary skill in the art would not expect the cationically stabilized wax or wax mixture of Domes to be effective in the pH range taught by Güttler. Similarly, Domes does not provide any teaching, nor has applicant provided evidence, indicating that the function of the defoaming agent or corrosion inhibitor of Domes, cited regarding claims 6 and 8, would be contingent on the pH of the composition.
Additionally, the examiner maintains the positions previously taken regarding the teaching in paragraph 57 of Domes. Domes plainly states in paragraph 57 that the pH of the organic film former in an aqueous preparation, without addition of further compounds, is preferably ranges from 1 to 12. Domes also teaches at the start of paragraph 57 narrower ranges for the pH of the aqueous composition of the organic film former without addition of further compounds, which are not a teaching away from the broader preferred range of Domes. It is unclear whether the “aqueous composition” referred to later in the paragraph is that of the aqueous composition of the film former or an overall composition comprising additional additives along with the film former, but in any case, the thing that Domes specifically teaches away from is the addition of an acidic substance to the composition of Domes in order to maintain it at a pH of 6.5 to 11—a far different scenario than contemplated in the rejection, since the composition of Güttler does not comprise the film former of Domes and is maintained at a low pH. As discussed above, there is no indication that one of ordinary skill in the art would see the function of the waxes, defoaming agent, or corrosion inhibitor of Domes as contingent on the pH.
An alternative set of rejections for claim 1 and some of the dependent claims, over Güttler and Landler, has also been set forth in paragraphs 6-8 above. Güttler teaches in paragraph 53 that the composition can comprise a wax-based pigment, and Landler discloses pigments based on nonionic waxes.
Regarding the double patenting rejection, applicant states that a terminal disclaimer was filed with the most recent response, but no terminal disclaimer is present in the application file.
Conclusion
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/JAMES C GOLOBOY/Primary Examiner, Art Unit 1771
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