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 .
The amendments filed 6/18/26 overcome the rejections set forth over Güttler and Landler in the office action mailed 5/5/26, but fail to overcome the rejections set forth over Güttler and Domes, which are maintained below. The discussion of the rejection over Güttler and Domes has been updated as necessitated by the amendments.
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. Domes also discloses in paragraph 84 that the wax can be in an aqueous dispersion, as recited in claims 1 and 11. 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 amended claims 1, 4, and 18-20. 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);” Furthermore, while Domes does not specifically disclose that the at least two waxes comprise at least one cationically stabilized wax and at least one aqueous dispersion, case law holds that “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted).
It would have been obvious to one of ordinary skill in the art to include the wax mixture of Domes, including an aqueous dispersion and a cationically stabilized wax, of 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 3 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 3 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.
Response to Arguments
Applicant's arguments filed 6/18/26 have been fully considered but they are not persuasive. Applicant argues that the cited prior art does not teach a combination comprising at least three waxes, wherein at least one of the at least three waxes is in the form of an aqueous dispersion. However, as discussed in the rejection, Domes discloses a mixture of at least two waxes having different melting points, encompassing the recited range of at least three waxes, and that the waxes can be in the form of aqueous dispersions or cationically stabilized waxes, wherein combining these types of waxes would be prima facie obvious in accordance with Kerkhoven. Applicant’s arguments with respect to the prima facie case of obviousness are therefore not persuasive with respect to the rejection over Güttler and Domes. The rejections set forth over Güttler and Landler are overcome by the amendments filed 6/18/26 as Güttler and Landler do not teach the claimed mixture of waxes.
Applicant also argues that the claimed composition produces unexpectedly superior results, pointing to the data provided in the specification. It is not clear how many of the wax mixtures in examples A-F of Table 1 contain at least one wax in aqueous dispersion form. Even if all the examples A-F fall within the scope of the amended claims, the data is not sufficient to demonstrate unexpected results commensurate in scope with the claims. See MPEP 716.02(d). The claims allow for the use of a water-based, acidic, reactive lubricant comprising broad classes of components in broad concentration ranges as long as the pH of the reactive lubricant is less than 2.0. The inventive examples, however, comprise specific components in concentrations that are only varied in narrow ranges, and where the pH of all the inventive examples ranges from 0.9 to 1.1. One of ordinary skill in the art would not be able to conclude from the provided data that superior results would be maintained across the entire scope of the claims with respect to the components, their concentrations, and also the entire pH range of less than 2.0. Applicant therefore does not demonstrate evidence of unexpectedly superior results sufficient to overcome the prima facie case of obviousness.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/JAMES C GOLOBOY/ Primary Examiner, Art Unit 1771
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