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
Applicant’s election without traverse of claims 1, 2, 4-13, and 15-19 in the reply filed on 01/13/2026 is acknowledged.
The Primary Examiner acknowledges that claim 14 has been amended (01/13/2026) to recite “[a]n article . . . formed by the process of claim 1.” Nevertheless, the method of claim 1 does not, when considered as a whole, make a contribution over the prior art (see below) and unity is still lacking a posteriori. 37 C.F.R. § 1.475(a).
Priority
This application is the 35 U.S.C. § 371 National Stage entry of PCT/EP2023/061933, filed 05/05/2023 and published as WO 2023/217652 A1 on 11/16/2023. The report on patentability of the IPEA or ISA in this National Stage application has been considered by the Primary Examiner. MPEP § 1893.03(e).
This application also claims benefit of EP 22172274.7, filed 05/09/2022.
Information Disclosure Statement
The IDS filed 02/12/2025 has been considered by the Primary Examiner.
Drawings
The drawings filed 11/01/2024 are acceptable. See MPEP § 608.02(b)(I).
Specification
The abstract of the disclosure is objected to because: (1) it recites phrases that can be implied (“The present invention concerns”); (2) improperly capitalized words (“Providing,” “Contacting,” and “Oxidizing”); and (3) all instances of “preferred” should, apparently, read “preferably.” A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
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.
Claim Interpretation
Claims 6-9, 12-13
The Primary Examiner interprets the transitional phrase “characterized in that” as being equivalent to “comprising.” See MPEP § 211.03(I).
Claims 7 and 9
The phrases “the pH of the composition” and “the temperature in step (iii)” are definite even though pH and temperature are not explicitly recited in independent claim 1 because the composition inherently has a pH and step (iii) must inherently be carried out at some temperature.
Claim Objections
Claim 1 is objected to because of the following informalities:
(1) The claim recites improperly capitalized words (“Providing,” “Contacting,” and “Oxidizing”). A claim should be a single sentence, beginning with a capital letter and ending with a period. See MPEP § 608.01(m) (citing Fressola v. Manbeck, 36 USPQ2d 1211 (D.D.C. 1995)).
(2) In the preamble, “onto” should, apparently, read “on.”
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, 2, 4-13, and 15-19 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
In the last line of claim 1, “the composition of step (iii)” lacks antecedent basis. Claims 2, 4-13, and 15-19 are similarly rejected by virtue of their incorporation of this subject matter.
Claim 8
The phrase “the dwell time” lacks antecedent basis. Claim 8 depends from independent claim 1, which recites only “contacting” the metal surface with a plating bath. This does not require immersion, as specifically recited in claim 2, which would imply a dwell time.
Claims 10 and 11
The construction “carried out in the production” is indefinite because it is unclear how the recited production processes relate to the process of independent claim 1. Claim 17
Claim 17 uses the closed transitional phrase “consisting of,” but recites that steps (c) and (d) are optional. This creates a contradiction because “consisting of” excludes any step not specified in the claim (MPEP § 2111.03(II)) while “optionally” indicates that the step may or may not be included. In other words, is the claim limited to a scope that includes the optional steps or not? Consequently, the metes and bounds are impossible to determine.
Claim 17
This claim first recites an optional pH adjusting compound, but then specifies that the pH adjusting compound is selected from non-ionic compounds. Consequently, it is unclear whether the pH adjusting agent is optional or required and the metes and bounds of the claim are impossible to determine.
Claim 18 is similarly rejected by virtue of its inclusion of this indefinite subject matter. The Primary Examiner notes that claim 19 is NOT rejected for this reason, because it specifies that the pH adjusting compound is, in fact, present.
Primary Examiner’s Suggestions
The Primary Examiner suggests the following changes to claim 1 to improve readability:
Claim 1 (currently amended) A process for treating a tin or tin alloy layer on[[to]] metal surfaces, comprising the steps of:
(i) [[P]]poviding a metal surface[[,]];
(ii) [[C]]contacting the metal surface[[,]] with a tin or tin alloy plating bath; and
(iii) [[O]]oxidizing the tin or tin alloy layer obtained by step (ii),
wherein step (iii) is performed by contacting the tin or tin alloy layer obtained by step (ii) with a composition comprising at least one solvent and at least one oxidizing agent, and
wherein the composition
NOTE: The above suggestion will merely overcome the identified formal matters. The Primary Examiner makes NO representation that it will place the claim in condition for allowance.
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, 5-12, 15-17, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0033372 A1 in view of CN 105624681 A.
Claim 1
US 372 teaches a process for treating a tin alloy layer [0068-0073] deposited atop a metallic strike layer [0074-0102] on a stainless steel substrate [0064-0067]. The process comprises providing the strike layer-coated stainless steel surface; contacting the strike layer-coated stainless steel surface with a tin alloy plating bath [0073]; and oxidizing the tin alloy-plated layer to form a tin oxide-containing layer to improve corrosion resistance [0103-0111]. The tin oxide can be formed by immersion in a solution containing an oxidizing agent, specifically hydrogen peroxide [0108-0109].
US 372 does not teach that the solution containing an oxidizing agent comprises at least one solvent in addition to the at least one oxidizing agent and that the composition does not comprise ionic species.
CN 681 teaches it is known in the art of tin-based coatings that an aqueous solution of hydrogen peroxide is effective to oxidize the tin [0015-0024].
Consequently, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the process of US 372 so as to utilize, as the hydrogen peroxide solution, an aqueous hydrogen peroxide solution (i.e., a composition comprising H2O as the solvent and H2O2 as the oxidizing agent). One of ordinary skill in the art would have been motivated to do so by the desire and expectation of successfully oxidizing the tin alloy layer of US 372 so as to increase its resistance to corrosion.
With respect to the prohibition on ionic species in such a hydrogen peroxide solution, the instant specification juxtaposes aqueous solutions of copper and ferric ions with aqueous solutions of hydrogen peroxide and states that “ionic species have a negative impact on the conductivity [of the tin or tin alloy layer] and are less preferred.” Specifically, hydrogen peroxide is “most preferred.” Spec. at 8:10-20. Consequently, it is the Primary Examiner’s position that an aqueous solution of hydrogen peroxide, as would have been obvious from US 372 in view of CN 681 does not contain any ionic species.
Claim 2
US 372 teaches immersion of the strike layer-coated stainless steel surface in a tin alloy plating bath [0073].
Claims 5 & 16
Applicant discloses hydrogen peroxide, taught by US 372, as a decomposable oxidizing agent. Spec. at 8:18-20.
Claim 6
Neither US 372 nor CN 681 teach the concentration of the oxidizing agent.
Generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. MPEP § 2144.05(II)(A).
Moreover, it is the Primary Examiner’s position that the concentration of hydrogen peroxide in the method of US 372 in view of CN 681 is self-evidently a result-effective variable, with a higher concentration resulting in a greater degree of oxidation and/or a greater rate of oxidation than a lower concentration. Consequently, it would have been obvious to one of ordinary skill in the art to optimize the concentration of hydrogen peroxide by routine experimentation, absent evidence of criticality. In re Antoine, 559 F.2d 618, 620 (CCPA 1977); see In re Boesch, 617 F.2d 272, 276 (“[D]iscovery of an optimum value of a result effective variable . . . is ordinarily within the skill of the art.”). Currently, there is nothing of record indicating that the optimization was anything other than the exercise of ordinary skill in the art. In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012).
Claim 7
CN 681 suggests that an alkaline hydrogen peroxide oxidizing solution is less corrosive and causes less damage to the part being oxidized [0015]. Consequently, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the process of US 372 in view of CN 681 so as to utilize an aqueous hydrogen peroxide solution having a basic pH to prevent corrosion/damage to the underlying substrate during oxidation.
It is the Primary Examiner’s solution that any solution having a pH between 7 and 14 is considered basic and this range overlaps the pH range of about 3 to about 12. Overlapping ranges are prima facie obvious. MPEP § 2144.05(I).
Claim 8
Neither US 372 nor CN 681 teach the claimed dwell time in the oxidizing agent solution.
It is the Primary Examiner’s position that the dwell time in the method of US 372 in view of CN 681 is self-evidently a result-effective variable, with a longer dwell time resulting in a greater degree of oxidation than a shorter dwell time. Consequently, it would have been obvious to one of ordinary skill in the art to optimize the dwell time in the hydrogen peroxide oxidizing agent solution by routine experimentation, absent evidence of criticality. In re Antoine, 559 F.2d 618, 620 (CCPA 1977); see In re Boesch, 617 F.2d 272, 276 (“[D]iscovery of an optimum value of a result effective variable . . . is ordinarily within the skill of the art.”). Currently, there is nothing of record indicating that the optimization was anything other than the exercise of ordinary skill in the art. In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012).
Claim 9
Neither US 372 nor CN 681 teach the temperature during oxidation.
Generally, differences in temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such temperature is critical. MPEP § 2144.05(II)(A).
Moreover, it is the Primary Examiner’s position that the temperature during oxidation in the method of US 372 in view of CN 681 is self-evidently a result-effective variable, with a higher temperature resulting in a greater degree of oxidation and/or a greater rate of oxidation than a lower temperature. Consequently, it would have been obvious to one of ordinary skill in the art to optimize the temperature during oxidation by routine experimentation, absent evidence of criticality. In re Antoine, 559 F.2d 618, 620 (CCPA 1977); see In re Boesch, 617 F.2d 272, 276 (“[D]iscovery of an optimum value of a result effective variable . . . is ordinarily within the skill of the art.”). Currently, there is nothing of record indicating that the optimization was anything other than the exercise of ordinary skill in the art. In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012).
Claims 10 & 11
Neither US 372 nor CN 681 teach the limitations of these claims. Rather, US 372 teaches the manufacture of a metallic separator for a polymer electrolyte fuel cell [0035].
Nevertheless, as noted above, the relation of the limitations of claims 10 and 11 to the method of claim 1 from which they depend is unclear.
Insofar as fuel cells include electric circuit carriers in vertical and/or horizontal lines, and/or have electrical contacts, or fuel cells are used in conjunction with an assembly containing these things, it would have been obvious to one of ordinary skill in the art that the process be carried out “in production” of these things.
Claim 12
Neither US 372 nor CN 681 teach rinsing with DI water either before or after oxidizing in the oxidizing solution.
Nevertheless, it is well known in the coating art where surfaces are immersed in coating baths and treatment baths to rinse the surfaces with DI water at some point in the process so as to clean the surface, for example by removing debris or excess coating/treatment solution, before proceeding to the next coating/treatment step. Consequently, it would have been obvious to one of ordinary skill in the art to do so.
Claim 15
US 372 teaches that the strike layer coated with the tin alloy can be copper [0093].
Claims 17 & 19
US 372 in view of CN 681 teaches all of the limitations of this claim, when interpreted as the pH adjusting compound’s being optional.
In the alternative, as noted above, according to CN 681 a basic pH protects the substrate from corrosion and damage during oxidation. CN 681 further teaches sodium or potassium hydroxide, ionic compounds, not non-ionic compounds as claimed. Nevertheless, CN 681 does not appear to be limited to just those two compounds for adjusting pH and it would have been obvious to one of ordinary skill in the art to utilize any known basic compound, including non-ionic compounds to achieve the basic pH.
Claim(s) 4 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0033372 A1 in view of CN 105624681 A, as applied to claims 1 and 17, respectively, above, further in view of USP Technologies, “What are H2O2 stabilizers and will they affect my application,” https://web.archive.org/web/20210411030200/https://usptechnologies.com/what-are-h2o2-stabilizers-and-will-they-affect-my-application/ (Apr. 11, 2021).
The teaching of US 372 in view of CN 681 is detailed above with respect to claims 1 and 17.
Neither US 372 nor CN 681 explicitly teach that the composition additionally comprises at least one stabilizing agent.
USP Technologies teaches that commercial grades of H2O2 contain stabilizers which minimize its decomposition under normal storage and handling conditions. Common stabilizers include stannates and phosphoric acid (i.e., an inorganic acid), which are disclosed by applicant as suitable stabilizers for the instantly claimed invention. Spec. at 6:10-16.
Consequently, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to purchase or include in the hydrogen peroxide oxidizing agent used in the oxidizing composition, a stabilizing agent such as a stannate or an inorganic acid. One of ordinary skill in the art would have been motivated to do so by the desire and expectation of extending the shelf-life of the hydrogen peroxide, as well as the oxidizing composition.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0033372 A1 in view of CN 105624681 A, as applied to claim 1 above, further in view of US 2008/0200360 A1.
Neither US 372 nor CN 681 explicitly teach treating the tin alloy with the claimed composition before oxidation.
US 360 teaches removing ionic contaminants from the surface of a metallic workpiece [0027] using a composition containing at least one ethanolamine compound or a salt thereof, at least one alcohol solvent, and, optionally, a guanidine compound or a salt thereof [0028-0031].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the process of US 372 in view of CN 681 to apply the composition of US 360 to the tin alloy surface so as to remove ionic contaminants before oxidation of the layer. It is the Primary Examiner’s position that, in general, cleaning of surfaces before immersion in a coating or treatment bath is well known and conventional in the art. Using a known solution that facilitates the removal of a known contaminant would have been readily obvious as a result.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2003/0052157 A1, US 2006/0035105 A1, US 2006/0189141 A1, US 2009/0081370 A1, US 2013/0220677 A1, and US 2015/0010773 A1 are representative of the state of the prior art. US 773, in particular, teaches electrolytically depositing a tin layer on steel, followed subsequent anodic oxidation of the tin layer to SnO2, which is superior to SnO in corrosion resistance [0013]. WO 2020/017524 A1, cited in the Written Opinion, teaches oxidation of Sn/Sn alloy-coated Cu, followed by oxidation of the Sn by heat treatment or air oxidation [0008].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM P FLETCHER III whose telephone number is (571)272-1419. The examiner can normally be reached Monday-Friday, 9 AM - 5 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Duane Smith can be reached at (571) 272-1166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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WILLIAM PHILLIP FLETCHER III
Primary Examiner
Art Unit 1759
/WILLIAM P FLETCHER III/Primary Examiner, Art Unit 1759
5 February 2026