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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant’s election with traverse of Group I, claims 1-3, in the reply filed on 02/26/2026 is acknowledged. The traversal is on the ground(s) that (i) the cited prior art differs from claim 1 in that the claimed treatment solution comprises polypropylene glycol as a humectant and sodium carboxymethyl cellulose as a thickener, and (ii) the inventions are not “independent” as defined in MPEP § 803 and the examination can be made without “serious burden”. This is not found persuasive because (i) the technical feature of the composition of claim 1 shared by Groups I and II is not a special technical feature as it does not make a contribution over the prior art. The use of propylene glycol and sodium carboxymethyl cellulose in a stabilization treatment liquid are known from Nixon, et al. (U.S. Pub. No. 2014/0120357-A1; see paragraphs [0026] and [0029]), and (ii) MPEP § 803 (and all of chapter 800) and the “independent and distinct” and search/examination burden requirements only pertain to restrictions of applications filed under 35 U.S.C. 111(a) and are irrelevant to 35 U.S.C. 371 Unity of Invention restrictions.
The requirement is still deemed proper and is therefore made FINAL.
Claim(s) 4-11 and 13-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 02/26/2026.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Objections
Claim 1 is objected to because of the following informality:
Claim 1 appears to contain a typo; “690MPa-grade” is missing a space and should read “690 MPa-grade” (see claim 1 at line 3).
Appropriate correction is required.
Claim Interpretation
The recitation of “for a 690 MPa-grade weather-resistant bridge steel member” as recited in claims 1-3 (see claim 1 at lines 1-4 and claims 2-3 each at lines 1-2) is merely a recitation of an intended use of the stabilization treatment liquid rather than being a limitation directed toward the liquid itself, and is therefore not treated as limiting the treatment liquid of claims 1-3. Any composition as claimed by claims 1-3 would be expected to be able to perform the intended use of being used on a 690 MPa-grade weather-resistant bridge steel member. MPEP § 2112.01 (I) states that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present.
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 1-3 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 the limitation "the corrodent consists of ferric chloride and sodium bisulfate", then later recites “3-7% ferric chloride; 1-2% sodium bisulfite” (see claim 1 at lines 5 and 9-10); this renders the metes and bounds of the claim indefinite as “sodium bisulfate” and “sodium bisulfite” are two different compounds, and it is not clear from the claim which one is actually required.
For purposes of examination, Examiner treated “sodium bisulfate” as actually meaning sodium bisulfite, as this would appear most in keeping with Applicant’s intent as “sodium bisulfite” is also recited in dependent claims 2-3. Clarification is requested.
Claims 2-3 are included herein as each depends from a claim which is indefinite for reasons set forth above.
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.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Gao, et al. (CN-106835092-A) (hereinafter, “GAO”) in view of Huang, et al. (CN-103924231-A) (hereinafter, “HUANG”), Ni, et al. (CN-86103534-A) (hereinafter, “NI”), Nixon, et al. (U.S. Pub. No. 2014/0120357-A1) (hereinafter, “NIXON”); and Guo, et al. (CN-113652680-A) (hereinafter, “GUO”) (citations to all CN references herein refer to the attached machine translations).
Regarding claim 1, GAO teaches a stabilization treatment liquid, (see GAO generally at Abstract), wherein the stabilization treatment liquid comprises a corrodent which consists of a metal chloride and sodium bisulfite (see GAO at paragraph 16) and a rust layer stabilizer which consists of chromium sulfate (see GAO at paragraphs 13 and 16); wherein the stabilization treatment liquid comprises by mass percentage:
metal chloride in an amount overlapping with and thereby rendering obvious the claimed range of 3-7% (see GAO at paragraph 13, teaching 0.1-3% of NaCl);
sodium bisulfite in an amount overlapping with and thereby rendering obvious the claimed range of 1-2% (see GAO at paragraph 13, teaching 0.1-3% of NaHSO3);
chromium sulfate in an amount overlapping with and thereby rendering obvious the claimed range of 3-6% (see GAO at paragraph 13, teaching 0.05-3% of Cr2(SO4)3);
and a balance of water (see GAO at paragraph 13).
As set forth in MPEP § 2144.05, 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
However, GAO fails to explicitly teach (i) that the metal chloride is ferric chloride; (ii) that the rust layer stabilizer includes potassium permanganate which is present in an amount of 1-4%; (iii) a humectant and a thickener, wherein the humectant is polypropylene glycol present in an amount of 1-2% and the thickener is sodium carboxymethyl cellulose present in an amount of 2-5%; or (iv) that the water is deionized water.
Regarding (i) above, HUANG teaches a stabilization treatment liquid comprising a corrodent comprising sodium bisulfite (NaHSO3) and 0.5-10% by weight of ferric chloride (FeCl3) (see HUANG at Abstract and paragraph [0010]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the treatment liquid of GAO by simply substituting the NaCl corrodent with 0.5-10% by weight of the FeCl3 corrodent as taught by HUANG. One of ordinary skill in the art could have made this substitution with a reasonable expectation of success, yielding the predictable result of providing a metal chloride compound which accelerates corrosion (see HUANG at paragraph [0010]; see GAO at paragraph 16). Further, as exemplified by HUANG, ferric chloride is a known corrodent in the art, and MPEP § 2144.07 states that “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”. The range of 0.5-10% overlaps with and thereby renders obvious the claimed range of 3-7%.
Regarding (ii) above, NI teaches a stabilization treatment liquid comprising more than one kind of metal salt including potassium permanganate as an accelerant, wherein the accelerants are used in amounts of 0.1-50% by weight, e.g. in an amount of 1% by weight, to stabilize the oxide film/rust layer (see NI at Abstract and paragraphs 7-15).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the treatment liquid of GAO by simply including potassium permanganate as an accelerant (i.e., rust layer stabilizer) in an amount of 0.1-50%, e.g., 1% by weight, as taught by NI. One of ordinary skill in the art could have included potassium permanganate as a rust layer stabilizer with the chromium sulfate of GAO with a reasonable expectation of success, yielding the predictable result of providing more than one kind of metal salt which will stabilize the rust layer (see NI at paragraphs 9-14; see GAO at paragraphs 13 and 16). Further, as exemplified by NI, potassium permanganate is a known rust layer stabilizer in the art, and MPEP § 2144.07 states that “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
Regarding (iii) above, NIXON teaches a stabilization treatment liquid comprising one or more thickeners, such as sodium carboxymethyl cellulose and polypropyleneglycol, in an amount of 0.5 to 5 wt% (see NIXON at Abstract and paragraphs [0002]-[0006], [0012], [0014]-[0015], [0026], [0028]-[0029] and [0058]). NIXON teaches that including these thickeners in the treatment liquid allows for the viscosity to be controlled and adjusted to a suitable range, which simplifies the application and control of the thickness and uniformity of the composition applied onto the metal substrate (see NIXON at paragraphs [0021]-[0022], [0024]-[0026] and [0061]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the treatment liquid of GAO by adding 0.5 to 5 wt% of polypropylene glycol and sodium carboxymethyl cellulose to the treatment liquid as taught by NIXON (see NIXON at paragraphs [0026] and [0028]-[0029]). One of ordinary skill in the art would have been motivated to make this modification for the benefit of being able to control and adjust the viscosity of the treatment liquid and simplifying the application and control of the thickness and uniformity of the composition applied onto the metal substrate as taught by NIXON (see NIXON at paragraphs [0021]-[0022], [0024]-[0026] and [0061]).
Regarding (iv) above, GUO teaches a stabilization treatment liquid comprising deionized water (see GUO at Abstract).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the treatment liquid of GAO by using deionized water as the water, as taught by GUO. One of ordinary skill in the art could have used deionized water with a reasonable expectation of success, yielding the predictable result of providing water for the aqueous composition. Further, deionized water is a known type of water, and MPEP § 2144.07 states that “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
Regarding claim 2, as applied to claim 1 above, GAO in view of HUANG, NI, NIXON and GUO teaches a treatment liquid according to claim 1, wherein he stabilization treatment liquid comprises by mass percentage:
ferric chloride in an amount overlapping with and thereby rendering obvious the claimed range of 4-5% (see HUANG at Abstract, teaching 0.5-10% by weight of ferric chloride);
sodium bisulfite in an amount overlapping with and thereby rendering obvious the claimed range of 1-2% (see GAO at paragraph 13, teaching 0.1-3% of NaHSO3);
chromium sulfate (see GAO at paragraph 13);
potassium permanganate in an amount overlapping with and thereby rendering obvious the claimed range of 2-3% (see NI at paragraphs 7-15, teaching using the accelerants (including potassium permanganate) in amounts of 0.1-50% by weight, and providing examples wherein the accelerants are used in amounts of 1% by weight and 5% by weight; it is clear from this disclosure that the accelerant (potassium permanganate) can be used in an amount of 1-5% by weight);
polypropylene glycol in an amount overlapping with and thereby rendering obvious the claimed range of 1-2% (see NIXON at paragraphs [0026] and [0028]-[0029], teaching using the thickeners, including polypropylene glycol, in amounts of 0.5 to 5 wt%);
sodium carboxymethyl cellulose in an amount overlapping with and thereby rendering obvious the claimed range of 2-4% (see NIXON at paragraphs [0026] and [0028]-[0029], teaching using the thickeners, including sodium carboxymethyl cellulose, in amounts of 0.5 to 5 wt%);
and a balance of deionized water (see GAO at paragraph 13; see GUO at Abstract).
As set forth in MPEP § 2144.05, 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990))
GAO does not explicitly teach 4-5% of chromium sulfate, but teaches chromium sulfate in an amount of up to 3% (see GAO at paragraph 13), which is close to the range of 4-5%. As set forth in MPEP § 2144.05, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Additionally, GAO teaches that the chromium can displace α-Fe in α-FeOOH to make the rust layer uniform and dense, forming a stable rust layer (see GAO at paragraph 16); GAO therefore explicitly teaches that the amount of chromium sulfate is a result-effective variable which affects the uniformity, density and stability of the rust layer and which may be optimized by one of ordinary skill in the art. MPEP states that “[W]here 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.” (In re Aller, 220 F.2d 454, 456 (CCPA 1955)), and that "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II).
Regarding claim 3, as applied to claim 1 above, GAO in view of HUANG, NI, NIXON and GUO teaches a treatment liquid according to claim 1, wherein the stabilization treatment liquid comprises by mass percentage:
ferric chloride in an amount overlapping with and thereby rendering obvious the claimed range of 4-5% (see HUANG at Abstract, teaching 0.5-10% by weight of ferric chloride);
sodium bisulfite in an amount overlapping with and thereby rendering obvious the claimed range of 1-1.5% (see GAO at paragraph 13, teaching 0.1-3% of NaHSO3);
chromium sulfate (see GAO at paragraph 13);
potassium permanganate in an amount overlapping with and thereby rendering obvious the claimed range of 2-3% (see NI at paragraphs 7-15, teaching using the accelerants (including potassium permanganate) in amounts of 0.1-50% by weight, and providing examples wherein the accelerants are used in amounts of 1% by weight and 5% by weight; it is clear from this disclosure that the accelerant (potassium permanganate) can be used in an amount of 1-5% by weight);
1-1.5% polypropylene glycol in an amount overlapping with and thereby rendering obvious the claimed range of 1-1.5% (see NIXON at paragraphs [0026] and [0028]-[0029], teaching using the thickeners, including polypropylene glycol, in amounts of 0.5 to 5 wt%);
2-3% sodium carboxymethyl cellulose in an amount overlapping with and thereby rendering obvious the claimed range of 2-3% (see NIXON at paragraphs [0026] and [0028]-[0029], teaching using the thickeners, including sodium carboxymethyl cellulose, in amounts of 0.5 to 5 wt%);
and a balance of deionized water (see GAO at paragraph 13; see GUO at Abstract).
As set forth in MPEP § 2144.05, 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990))
GAO does not explicitly teach 4-5% of chromium sulfate, but teaches chromium sulfate in an amount of up to 3% (see GAO at paragraph 13), which is close to the range of 4-5%. As set forth in MPEP § 2144.05, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Additionally, GAO teaches that the chromium can displace α-Fe in α-FeOOH to make the rust layer uniform and dense, forming a stable rust layer (see GAO at paragraph 16); GAO therefore explicitly teaches that the amount of chromium sulfate is a result-effective variable which affects the uniformity, density and stability of the rust layer and which may be optimized by one of ordinary skill in the art. MPEP states that “[W]here 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.” (In re Aller, 220 F.2d 454, 456 (CCPA 1955)), and that "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II).
Conclusion
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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