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 .
This is in response to the Amendment dated May 12, 2026. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Response to Amendment
Election/Restrictions
This application contains claims 14-24 (product) drawn to an invention nonelected without traverse in the reply filed on December 4, 2025.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The disclosure has been objected to because of minor informalities.
The objection of the disclosure has been withdrawn in view of Applicant’s amendment.
Claim Objections
Claims 1-3, 6, 9 and 11 have been objected to because of minor informalities.
The objection of claims 1-3, 6, 9 and 11 has been withdrawn in view of Applicant’s amendment.
Claim Rejections - 35 USC § 112
Claims 1-13 have been 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.
The rejection of claims 1-13 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, has been withdrawn in view of Applicant’s amendment.
Claim Rejections - 35 USC § 103
I. Claim(s) 1-4, 6-7 and 10 have been rejected under 35 U.S.C. 103 as being unpatentable
over Lomasney (US Patent Application Publication No. 2012/0088118 A1) in view of CN
1854350 (‘350).
The rejection of claims 1-4, 6-7 and 10 under 35 U.S.C. 103 as being unpatentable
over Lomasney in view of CN 1854350 (‘350) has been withdrawn in view of Applicant’s
amendment.
II. Claim(s) 5 and 13 have been rejected under 35 U.S.C. 103 as being unpatentable over Lomasney (US Patent Application Publication No. 2012/0088118 A1) in view of CN 1854350
(‘350) as applied to claims 1-4, 6-7 and 10 above, and further in view of Mikami et al. (US Patent Application Publication No. 2023/0041195 A1).
The rejection of claims 5 and 13 under 35 U.S.C. 103 as being unpatentable over Lomasney in view of CN 1854350 (‘350) as applied to claims 1-4, 6-7 and 10 above, and further in view of Mikami et al. has been withdrawn in view of Applicant’s amendment.
III. Claim(s) 8 and 9 have been rejected under 35 U.S.C. 103 as being unpatentable over Lomasney (US Patent Application Publication No. 2012/0088118 A1) in view of CN 1854350 (‘350) as applied to claims 1-4, 6-7 and 10 above, and further in view of WO 2016/001317 (‘317).
The rejection of claims 8 and 9 under 35 U.S.C. 103 as being unpatentable over Lomasney in view of CN 1854350 (‘350) as applied to claims 1-4, 6-7 and 10 above, and further in view of WO 2016/001317 (‘317) has been withdrawn in view of Applicant’s amendment.
IV. Claim(s) 11 has been rejected under 35 U.S.C. 103 as being unpatentable over Lomasney (US Patent Application Publication No. 2012/0088118 A1) in view of CN 1854350 (‘350) as applied to claims 1-4, 6-7 and 10 above, and further in view of Mikami et al. (US Patent
Application Publication No. 2023/0041195 A1) and WO 2016/001317 (‘317).
The rejection of claim 11 under 35 U.S.C. 103 as being unpatentable over Lomasney in view of CN 1854350 (‘350) as applied to claims 1-4, 6-7 and 10 above, and further in view of Mikami et al. and WO 2016/001317 (‘317) has been withdrawn in view of Applicant’s
amendment.
V. Claim(s) 12 has been rejected under 35 U.S.C. 103 as being unpatentable over Lomasney (US Patent Application Publication No. 2012/0088118 A1) in view of CN 1854350 (‘350) as applied to claims 1-4, 6-7 and 10 above, and further in view of Klos et al. (US Patent Application
Publication No. 2005/0031894 A1).
The rejection of claim 12 under 35 U.S.C. 103 as being unpatentable over Lomasney in view of CN 1854350 (‘350) as applied to claims 1-4, 6-7 and 10 above, and further in view of Klos et al. has been withdrawn in view of Applicant’s amendment.
Continued Response
Claim Objections
Claims 1 and 25-27 are objected to because of the following informalities:
Claim 1
line 10, please insert the word -- a -- before the words “water-soluble”.
Claim 25
line 2, please amend the words “polysaccharides are” to the words -- polysaccharide is --.
This is an instance where the article should be changed to ensure proper antecedent basis for the claim terminology.
line 2, please insert the word -- consisting -- before the word “of”.
A Markush-type claim recites alternatives in a format such as “selected from the group consisting of A, B and C” (MPEP § 2173.05(h)).
Claim 26
line 2, please amend the words “polysaccharides comprise” to the words -- polysaccharide comprises --.
This is an instance where the article should be changed to ensure proper antecedent basis for the claim terminology.
Claim 27
line 2, please amend the words “water-soluble polysaccharides” to the words -- salts of alginic acid --.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 12 and 26-27 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 12
lines 3-5, the phrase “in particular as a through-feed method with a through-feed speed, wherein the through-feed speed is at least 2 m/min” is indefinite.
The words “in particular” render the claim indefinite because it is unclear whether the limitations following these words are part of the claimed invention. See MPEP § 2173.05(d).
Claim 26
line 3, it is unclear from the claim language which species the “salts of alginic acid” is further limiting in claim 25. Is it the amylose, methylcellulose or laminarin species?
Claim Rejections - 35 USC § 103
I. Claim(s) 1-4, 6-7, 9-10, 28 and 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lomasney (US Patent Application Publication No. 2012/0088118 A1) in view of CN 1854350 (‘350) and WO 2016/001317 (‘317).
Regarding claim 1, Lomasney teaches a method for the galvanic deposition (= an electrodeposited, corrosion-resistant multilayer coating or cladding) [page 1, [0010]] of a zinc coating (= the electrodeposited species may comprise Zn) [page 3, [0038]], having at least three zinc tiers (= repeating steps (a) through (d) until the desired thickness of the multilayer coating is achieved; wherein steps (a) through (d) are repeated at least two times) [page 4, [0055]] on a steel substrate in a form (= in one embodiment the substrates are particularly suited for coating
substrates made of materials that can corrode such as steel) [page 4, [0065]], wherein at least
one of the at least three zinc tiers (= in another embodiment may include three or more non-identical layers (e.g., layer 1, layer 2, layer 3, layer 1, layer 2, layer 3, etc.)) [page 2, [0031]] is a silicon-containing zinc tier (= the electrodeposited species may comprise Zn and SiO2) [page 3, [0038]] and wherein the method comprises at least the following steps:
• feeding the steel substrate (= in one embodiment the substrates are particularly suited for coating substrates made of materials that can corrode such as steel) [page 4, [0065]] into an electrolytic bath having an electrolyte (= (a) placing a substrate to be coated in a first
electrolyte containing one or more metal ions and ceramic particles) [page 4, [0051]] which
contains at least zinc (= the electrodeposited species may comprise Zn) [page 3, [0038]] ions (= metal ions) [page 4, [0051]], silicon compounds (= in other embodiments the electrodeposited species may comprise one or more ceramics selected from SiO2 and SiC) [page 3, [0040]] and a
brightener (= Enviralloy Brightener) [page 5, Table 1], and
• applying current to the bath in order to deposit the silicon-containing zinc tier (= (b) applying electric current in order to produce periodic layers of electrodeposited species) [page
4, [0052]].
Lomasney does not explicitly teach the following:
a. Wherein the steel substrate is in the form of a tube.
Lomasney teaches a Zn-Fe-SiO2 (page 3, [0038]) composite coating (= a periodic layer) [page 4, [0052]].
The multilayer coatings and claddings described herein are suitable for coating or cladding a variety of substrates that are susceptible to corrosion. In one embodiment the substrates are particularly suited for coating substrates made of materials that can corrode such as iron, steel, aluminum, nickel, cobalt, iron, manganese, copper, titanium, alloys thereof, reinforced composites and the
like (page 4, [0065]).
Like Lomasney, CN ‘350 teaches a composite deposition of solid particles and zinc-based alloy (ρ [0005]).
Therefore, steel parts coated with Zn-Fe-SiO2 composite coating have advantages such as high
hardness, corrosion resistance, wear resistance, high temperature oxidation resistance, density, and comprehensive performance. The electroplating process and electrolyte have the advantages of high efficiency, low cost, low energy consumption, short process, and environmental friendliness (ρ [0013]).
A steel pipe with a Zn-Fe-SiO2 composite coating on its surface (ρ [0018]).
It would have been obvious to a person having ordinary skill in the art before the
effective filing date of the claimed invention to modify the steel substrate taught by Lomasney
with wherein the steel substrate is in the form of a tube. The person with ordinary skill in the art would have been motivated to make this modification because Lomasney teaches that the
substrates that are particularly suited for the multilayer coatings are made of materials that are susceptible to corrosion such as steel in [0065] where a steel pipe is susceptible to corrosion as taught by CN ‘350 in [0002], [0006] and [0018], and coating the steel pipe with a Zn-Fe-SiO2
composite coating has advantages such as high hardness, corrosion resistance, wear resistance, high temperature oxidation resistance, density, and comprehensive performance.
b. Wherein the brightener is an organic brightener on the basis of water-soluble polysaccharide.
Like Lomasney, WO ‘317 teaches a process for the electrolytic deposition of a zinc or zinc alloy coating on a metallic substrate (page 3, lines 10-11).
The aqueous alkaline plating bath further comprises a zinc plating bath additive. The zinc plating
bath additive is at least one compound of the general formula (I),
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(I)
wherein R is C4 -C10 -alkyl; G1 is selected from monosaccharides with 4 to 6 carbon atoms; x is in the
range of from 1 to 41 and refers to average values (page 8, lines 4-7).
Said zinc plating bath additive improves the process for the electrolytic deposition of a zinc or zinc alloy coating on a metallic substrate in that only a small amount of foam or no foam is formed and, if foam is formed, in that it can be easily rinsed off from the metallic substrate. This also severely reduces the amount of foam which is attached to the zinc or zinc alloy coating on the metallic substrate when it is taken out of the aqueous alkaline plating bath such that the formation of foam marks on the coated substrate surface is clearly reduced in the present process. Thus, it was surprisingly found that the addition of the instant zinc plating bath additive in a process for the electrolytic deposition of a zinc or zinc alloy coating on a metallic substrate results in a zinc or zinc alloy coated metallic substrate having improved optical appearances. Furthermore, said zinc plating bath additive has the advantage that it shows a good wetting behavior such that the release of gas bubbles is improved from the metallic substrate resulting in a coated substrate surface showing less or no stripes resulting from such bubbles. Also, the adhesion of the zinc or zinc alloy coating on the metallic substrate is excellent by using said zinc plating bath additive. Accordingly, the optical properties are improved, i.e. less or no foam marks and stripes, and the mechanical properties of the resulting zinc or zinc alloy coating formed on the metallic substrate are kept on a high level or are even improved by using said zinc plating bath additive (page 8, lines 9-25).
It would have been obvious to a person having ordinary skill in the art before the
effective filing date of the claimed invention to modify the electrolyte taught by Lomasney with the basis of a water-soluble polysaccharide. The person with ordinary skill in the art would have been motivated to make this modification because adding a zinc plating bath additive of at least one compound of the general formula (I),
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(I)
wherein R is C4 -C10 -alkyl; G1 is selected from monosaccharides with 4 to 6 carbon atoms; x is in the range of from 1 to 4 and refers to average values to the zinc or zinc alloy electrolyte disclosed by Lomasney in [0038] et seq. and [0051] would have formed only a small amount of foam or no foam; resulted in a zinc or zinc alloy coated metallic substrate having improved optical appearances; showed a good wetting behavior such that the release of gas bubbles is improved from the metallic substrate resulting in a coated substrate surface showing less or no stripes resulting from such bubbles; provided excellent adhesion of the zinc or zinc alloy coating on the metallic substrate; and kept the mechanical properties of the resulting zinc or zinc alloy coating formed on the metallic substrate on a high level or are even improved as taught by WO ‘317 on page 8, lines 4-25.
As to wherein the zinc plating bath additive of WO ‘317 is a water-soluble polysaccharide, the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by the Applicant. See MPEP § 2144.
MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known
methods with no change in their respective functions, and the combination would yield nothing more than predictable results. Furthermore, 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 US 327, 65 USPQ 297 (1945).”
Regarding claim 2, Lomasney teaches wherein the silicon-containing zinc tier deposited by the method steps of claim 1 constitutes a first, second and/or further zinc tier of the zinc
coating (= layer 1, layer 2 or layer 3) [page 2, [0031]].
Regarding claim 3, Lomasney teaches wherein the silicon-containing zinc tier deposited by the method steps of claim 1 constitutes a first zinc tier (= layer 1) [page 2, [0031]] and the method further comprises at least the following method steps:
۰ subsequently feeding the steel substrate into a second electrolytic bath having an electrolyte (= placing said substrate to be coated in a second electrolyte containing one or more
metal ions that is different from said first electrolyte, said second electrolyte containing metal ions and ceramic particles) [page 4, [0054]] which contains at least zinc (= the electrodeposited species may comprise Zn) [page 3, [0038]] ions (= metal ions) [page 4, [0051]], silicon compounds (= in other embodiments the electrodeposited species may comprise one or more
ceramics selected from SiO2 and SiC) [page 3, [0040]] and a brightener (= Enviralloy Brightener)
[page 5, Table 1], and applying current to the second electrolytic bath in order to deposit a second silicon-containing zinc tier (= serial electrodeposition in two or more baths) [page 3, [0050]], and
۰ subsequently feeding the steel substrate into a third electrolytic bath having an
electrolyte which contains at least zinc ions, silicon compounds and a brightener, and applying current to the third electrolytic bath in order to deposit a third silicon-containing zinc tier (= (e) repeating steps (a) through (d) until the desired thickness of the multilayer coating is achieved;
wherein steps (a) through (d) are repeated at least two times) [page 4, [[0055]].
Regarding claim 4, Lomasney teaches wherein the silicon compounds comprise inorganic silicates and/or organic silane compounds (= in other embodiments the
electrodeposited species may comprise one or more ceramics selected from SiO2 and SiC) [page 3, [0040]].
Regarding claim 6, Lomasney teaches wherein the electrolyte has the inorganic silicates in a range of 3-5 g/l and/or the organic silane compounds in a range of 1-100 g/l (= in such embodiments the percentage of each ceramic may independently selected about 0.001, 0.005, 0.01, 0.05, 0.1, 0.5 percent of the electrodeposited species)2 [page 3, [0040]].
Regarding claim 7, Lomasney teaches wherein the electrolyte is free of nitrogen compounds, nickel and/or ammonium (= a first electrolyte containing one or more metal ions,
ceramic particles, polymer particles, or a combination thereof) [page 4, [0051]].
Regarding claim 9, WO ‘317 teaches wherein the electrolyte further comprises at least one non-ionic surfactant (= in one embodiment, the at least one zinc plating bath additive(s) of general formula (I) is selected from alkyl glucoside) [page 16, lines 15-16].
Regarding claim 10, Lomasney teaches wherein the deposition takes place at a
temperature in the range of 25 to 80 oC (= non-varying electrolyte temperature = implicit at
room temperature) [page 4, [0052]], and at a current density of up to 200 A/dm2 (= in some embodiments current density may be continuously or discretely varied with the range between 0.5 and 2000 mA/cm2)3 [page 4, [0064]].
Regarding claim 28, WO ‘317 teaches wherein the at least one non-ionic surfactant is selected from the group consisting of octylphenolethoxylates and alkylglucosides (= in one
embodiment, the at least one zinc plating bath additive(s) of general formula (I) is selected from alkyl glucosid) [page 16, lines 15-16].
Regarding claim 30, Lomasney teaches wherein the deposition takes place at a current density in the range of 10 to 140 A/dm2 (= in some embodiments current density may be continuously or discretely varied with the range between 0.5 and 2000 mA/cm2)4 [page 4, [0064]].
II. Claim(s) 5, 11, 13 and 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over
Lomasney (US Patent Application Publication No. 2012/0088118 A1) in view of CN 1854350 (‘350) and WO 2016/001317 (‘317) as applied to claims 1-4, 6-7, 9-10, 28 and 30 above, and further in view of Mikami et al. (US Patent Application Publication No. 2023/0041195 A1).
Regarding claim 5, Lomasney, CN ‘350 and WO ‘317 teach the method of at least claims 1-4, 6-7, 9-10, 28 and 30 as applied above. The references do not explicitly teach wherein the inorganic silicates have a particle size and the particle size of the inorganic silicates in the electrolyte
is in the range of 10-100 nm.
Lomasney teaches that:
In other embodiments the electrodeposited species may comprise one or more metals selected from Ni, Zn, Fe, Cu, Au, Ag, Pd, Sn, Mn, Co, Pb, Al, Ti, Mg and Cr. Alternatively, the metals may be
selected from: Ni, Zn, Fe, Cu, Sn, Mn, Co, Pb, Al, Ti, Mg and Cr; or from Ni, Zn, Fe, Cu, Sn, Mn, Co, Ti, Mg and Cr; or from Ni, Zn, Fe, Sn, and Cr. The metal may be present in any percentage. In such embodiments the percentage of each metal may independently selected about 0.001, 0.005, 0.01, 0.05, 0.1, 0.5, 1, 5, 10, 15, 20, 25, 30, 30, 35, 40, 45, 50, 55, 60, 65, 70, 75, 80, 85, 90, 95, 98, 99, 99.9, 99.99, 99.999 or 100 percent of the electrodeposited species (page 3, [0039]).
In other embodiments the electrodeposited species may comprise one or more ceramics (e.g., metals oxides or metal nitrides) selected from Al2O3, SiO2, TiN, BoN, Fe2O3, MgO, SiC, ZrC, CrC, diamond particulates, and TiO2. In such embodiments the percentage of each ceramic may
independently selected about 0.001, 0.005, 0.01, 0.05, 0.1, 0.5, 1, 5, 10, 15, 20, 25, 30, 30, 35,
40, 45, 50, 55, 60, 65, 70, 75, 80, 85, 90, 95, 98, 99, 99.9, 99.99, 99.999 or 100 percent of the electrodeposited species (page 3, [0040]).
Like Lomasney, Mikami teaches a zinc-nickel-silica composite plating film (page 4, [0054]).
The colloidal silica used in the present invention is a colloidal silica whose zeta potential is cationic and which has at least one selected from the group of trivalent to heptavalent metal cations on a surface thereof. The particle size (BET) thereof is preferably nano-size and a particle size of 5 nm to 100 nm is suitable. The particle size is further preferably 10 nm to 65 nm. The concentration thereof for use is 1 to 100 g/L, and preferably 10 to 80 g/L (page 2, [0034]).
Note that in the composite plating bath of the present invention, since the components in the plating bath are stabilized by the action of the cationic colloidal silica having at least one selected from the group of trivalent to heptavalent metal cations on a surface thereof, a dispersant does not have to be used (page 4, [0050]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the inorganic silicates taught by Lomasney with wherein the inorganic silicates have a particle size and the particle size of the
inorganic silicates in the electrolyte is in the range of 10-100 nm. The person with ordinary skill in the art would have been motivated to make this modification because colloidal silica having a
particle size5 of 5 nm to 100 nm stabilizes the components in the plating bath where a dispersant does not have to be used as taught by Mikami in [0034] and [0050].
MPEP § 2143(I)(A) states that “combining prior art elements according to known
methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing
more than predictable results. Furthermore, 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 US 327, 65 USPQ 297 (1945).”
Regarding claim 11, Lomasney, CN ‘350 and WO ‘317 teach the method of at least claims 1-4, 6-7, 9-10, 28 and 30 as applied above. The references do not explicitly teach wherein the electrolyte has at least 90-200 g/l of divalent zinc ions, 3-5 g/l of silicic acid and/or 1-100 g/l of silane, 3-50 g/l of polysaccharide, 1-5 g/l of a non-ionic surfactant and unavoidable impurities.
Lomasney teaches an electrolyte (= (a) placing a substrate to be coated in a first
electrolyte containing one or more metal ions and ceramic particles) [page 4, [0051]] which contains at least zinc (= the electrodeposited species may comprise Zn) [page 3, [0038]] ions (=
metal ions) [page 4, [0051]], silicon compounds (= in other embodiments the electrodeposited species may comprise one or more ceramics selected from SiO2 and SiC) [page 3, [0040]] and a brightener (= Enviralloy Brightener) [page 5, Table 1].
CN ‘350 teaches that:
The composition of the electroplating solution is: FeSO₄·7H₂O 70-210 g/L, ZnSO₄·7H₂O 25-100 g/L, (NH4)2SO4 70-140 g/L, citric acid 20-70 g/L, H3BO3 20-40 g/L, ascorbic acid 0.8-1.5 g/L, SiO2 20-100 g/L, additives 0.5-5 g/L, SiO2 co-deposition accelerator 1-3 g/L (ρ [0008]).
WO ‘317 teaches that:
The aqueous alkaline plating bath further comprises a zinc plating bath additive. The
zinc plating bath additive is at least one compound of the general formula (I),
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(I)
wherein R is C4 -C10 -alkyl; G1 is selected from monosaccharides with 4 to 6 carbon atoms; x is in the range of from 1 to 4 and refers to average values (page 8, lines 4-7).
Said zinc plating bath additive improves the process for the electrolytic deposition of a zinc or zinc alloy coating on a metallic substrate in that only a small amount of foam or no foam is formed and, if foam is formed, in that it can be easily rinsed off from the metallic substrate. This also severely reduces the amount of foam which is attached to the zinc or zinc alloy coating on the metallic substrate when it is taken out of the aqueous alkaline plating bath such that the formation of foam marks on the coated substrate surface is clearly reduced in the present process. Thus, it was surprisingly found that the addition of the instant zinc plating bath additive in a process for the electrolytic deposition of a zinc or zinc alloy coating on a metallic
substrate results in a zinc or zinc alloy coated metallic substrate having improved optical appearances. Furthermore, said zinc plating bath additive has the advantage that it shows a
good wetting behavior such that the release of gas bubbles is improved from the metallic substrate resulting in a coated substrate surface showing less or no stripes resulting from such bubbles. Also, the adhesion of the zinc or zinc alloy coating on the metallic substrate is excellent by using said zinc plating bath additive. Accordingly, the optical properties are improved, i.e. less or no foam marks and stripes, and the mechanical properties of the resulting zinc or zinc
alloy coating formed on the metallic substrate are kept on a high level or are even improved by
using said zinc plating bath additive (page 8, lines 9-25).
In one embodiment, the at least one zinc plating bath additive(s) of general formula (I) is selected from alkyl glucosid (page 16, lines 15-16).
The aqueous alkaline plating bath preferably contains the at least one zinc plating bath
additive(s) of general formula (I) in an amount of from 0.1 to 10.0 g/L bath, preferably from 0.1
to 7.5 g/L bath and most preferably from 0.1 to 5.0 g/L bath (page 19, lines 33-35).
Mikami teaches that:
The colloidal silica used in the present invention is a colloidal silica whose zeta potential is cationic and which has at least one selected from the group of trivalent to heptavalent metal cations on a surface thereof. The particle size (BET) thereof is preferably nano-size and a particle size of 5 nm to 100 nm is suitable. The particle size is further preferably 10 nm to 65 nm. The concentration thereof for use is 1 to 100 g/L, and preferably 10 to 80 g/L (page 2, [0034]).
Note that in the composite plating bath of the present invention, since the components
in the plating bath are stabilized by the action of the cationic colloidal silica having at least one selected from the group of trivalent to heptavalent metal cations on a surface thereof, a dispersant does not have to be used (page 4, [0050]).
It would have been obvious to a person having ordinary skill in the art before the
effective filing date of the claimed invention to modify the electrolyte taught by Lomasney with wherein the electrolyte has at least 90-200 g/l of divalent zinc ions, 3-5 g/l of silicic acid
and/or 1-100 g/l of silane, 3-50 g/l of polysaccharide and 1-5 g/l of a non-ionic surfactant6. The
person with ordinary skill in the art would have been motivated to make this modification
because the composition of FeSO₄·7H₂O 70-210 g/L, ZnSO₄·7H₂O 25-100 g/L, (NH4)2SO4 70-140 g/L, citric acid 20-70 g/L, H3BO3 20-40 g/L, ascorbic acid 0.8-1.5 g/L, SiO2 20-100 g/L, additives 0.5-5 g/L, SiO2 co-deposition accelerator 1-3 g/L would have been suitable to use as a solution
to electroplate a composite coating of Zn-Fe-SiO2 on a steel pipe as taught by CN ‘350 on page 6, lines 6-14, and adding 1 to 100 g/L of colloidal silica having a particle size of 5 nm to 100 nm
would have stabilized the components in the plating bath as taught by Mikami in [0034] and [0050] and 0.1 to 10.0 g/L of at least one compound of the general formula (I),
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(I)
wherein R is C4 -C10 -alkyl; G1 is selected from monosaccharides with 4 to 6 carbon atoms; x is in
the range of from 1 to 4 and refers to average values would have formed forms only a small amount of foam or no foam; results in a zinc or zinc alloy coated metallic substrate having improved optical appearances; shows a good wetting behavior such that the release of gas bubbles is improved from the metallic substrate resulting in a coated substrate surface showing less or no stripes resulting from such bubbles; and the adhesion of the zinc or zinc alloy coating on the metallic substrate is excellent as taught by WO ‘317 on page 8, lines 4-25.
MPEP § 2143(I)(A) states that “combining prior art elements according to known
methods to yield predictable results” may be obvious. The claimed elements were known in the
prior art and one skilled in the art could have combined the elements as claimed by known
methods with no change in their respective functions, and the combination would yield nothing
more than predictable results. Furthermore, 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 US 327, 65 USPQ 297 (1945).”
Regarding claim 13, Lomasney, CN ‘350 and WO ‘317 teach the method of at least claims 1-4, 6-7, 9-10, 28 and 30 as applied above. The references do not explicitly teach wherein the electrolyte is formed on a chloride basis or sulfate basis.
Lomasney teaches that:
In other embodiments the electrodeposited species may comprise one or more metals selected from Ni, Zn, Fe, Cu, Au, Ag, Pd, Sn, Mn, Co, Pb, Al, Ti, Mg and Cr. Alternatively, the metals may be
selected from: Ni, Zn, Fe, Cu, Sn, Mn, Co, Pb, Al, Ti, Mg and Cr; or from Ni, Zn, Fe, Cu, Sn, Mn, Co, Ti, Mg and Cr; or from Ni, Zn, Fe, Sn, and Cr. The metal may be present in any percentage. In such embodiments the percentage of each metal may independently selected about 0.001, 0.005, 0.01, 0.05, 0.1, 0.5, 1, 5, 10, 15, 20, 25, 30, 30, 35, 40, 45, 50, 55, 60, 65, 70, 75, 80, 85, 90, 95, 98, 99, 99.9, 99.99, 99.999 or 100 percent of the electrodeposited species (page 3, [0039]).
A first electrolyte containing one or more metal ions, ceramic particles, polymer particles, or a combination thereof (page 4, [0051) and a second electrolyte containing one or more metal ions that is different from said first electrolyte (page 4, [0054]).
Mikami teaches:
A zinc-nickel-silica composite electroplating bath of the present invention uses an acidic plating bath having a pH of 3.5 to 6.9 in order to improve a covering power. Particularly, a
chloride bath is most preferable. In addition, the pH of the plating bath is preferably 4.5 to 6.0, and most preferably 5.2 to 5.8. Note that the pH of the plating bath can be easily adjusted using hydrochloric acid, a sodium hydroxide aqueous solution, a potassium hydroxide aqueous solution, ammonia water, a sodium carbonate aqueous solution, a potassium carbonate
aqueous solution, acetic acid, a sodium acetate aqueous solution, a potassium acetate aqueous
solution, or the like (page 2, [0029]).
It would have been obvious to a person having ordinary skill in the art before the
effective filing date of the claimed invention to modify the electrolyte taught by Lomasney with
wherein the electrolyte is formed on a chloride basis or sulfate basis. The person with ordinary
skill in the art would have been motivated to make this modification because using an acidic
chloride bath having a pH of 3.5 to 6.9 as the zinc-nickel-silica composite electroplating bath
would have improved a covering power as taught by Mikami in [0029].
MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the
prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results. Furthermore, 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 US 327, 65 USPQ 297 (1945).”
Regarding claim 29, Lomasney, CN ‘350 and WO ‘317 teach the method of at least
claims 1-4, 6-7, 9-10, 28 and 30 as applied above. The references do not explicitly teach wherein the deposition takes place at a temperature in the range of 50 to 60°C.
It would have been obvious to a person having ordinary skill in the art before the
effective filing date of the claimed invention to modify the deposition taught by Lomasney with wherein the deposition takes place at a temperature in the range of 50 to 60°C because considering that Lomasney is silent as to the specific temperature of the deposition, and hence could vary in a wide range, it would have been obvious to one having ordinary skill in the art to have optimized the temperature of the deposition through routine experimentation for best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 617 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re
Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re Aller, 220 F2d 454,456,105 USPQ 233,235 (CCPA 1955) [MPEP § 2144.05].
MPEP § 2144.05(II)(A)) states that "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 in In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).”
Furthermore, Mikami teaches that the bath temperature is normally within a range of 25 to 50° C. (page 4, [0052]).
III. Claim(s) 12 and 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lomasney (US Patent Application Publication No. 2012/0088118 A1) in view of CN 1854350 (‘350) and WO 2016/001317 (‘317) as applied to claims 1-4, 6-7, 9-10, 28 and 30 above, and further in view of Klos et al. (US Patent Application Publication No. 2005/0031894 A1).
Regarding claim 12, Lomasney, CN ‘350 and WO ‘317 teach the method of at least claims 1-4, 6-7, 9-10, 28 and 30 as applied above. The references do not explicitly teach wherein the method steps are carried out as a continuous method, in particular as a through-feed method with a through-feed speed, wherein the through-feed speed is at least 2 m/min.
CN ‘350 teaches a steel pipe with a Zn-Fe-SiO2 composite coating (ρ [0018]).
Klos teaches that:
FIG. 4 is a perspective view of an example of an electroplating bath for applying a zinc and/or silicate coating on a metal tube in a continuous process in an embodiment of the process
of the instant invention (page 3, [0027]).
Electrolytically coating said metal body with zinc (or zinc alloys such as zinc nickel, zinc iron, tin zinc, among other zinc containing layers) to form a zinc layer (page 4, [0046]).
The actual time in the drying oven is increased by the time needed to heat the article,
which varies with the running speed of the article and thickness of the synthetic resin coating, being about 20 seconds for an article with a 14 to 18 microns thick synthetic resin coating moving at 11 m/min (page 11, [0136]).
High production rates can be obtained by a further development of the above method wherein the individual method steps are carried out sequentially in continuous progression. Thus, where tubing is to be coated, pieces of tubing can be connected together end to end and transported through the galvanizing plant, mineralizing zone, plastic coating and thermal treatment line. The continuous progression which represents a constant velocity of the base body during its movement through the individual method steps is significant because it affords an optimal manner of introducing the dried, just chromated body into the plastic dispersion and thereafter drying the chromating in such a manner that the water of crystallization therein is not displaced. The continuous mode of operation, moreover, insures a uniform quality at all times (page 11, [0144]).
It would have been obvious to a person having ordinary skill in the art before the
effective filing date of the claimed invention to modify the method steps taught by the Lomasney combination with wherein the method steps are carried out as a continuous method, in particular as a through-feed method with a through-feed speed, wherein the through-feed speed is at least 2 m/min. The person with ordinary skill in the art would have been motivated to make this modification because applying a zinc alloy coating on a metal tube moving at 11 m/min in a continuous mode of operation insures a uniform quality at all times as taught by Klos in [0136] and [0144].
MPEP § 2143(I)(A) states that “combining prior art elements according to known
methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known
methods with no change in their respective functions, and the combination would yield nothing more than predictable results.
Regarding claim 31, Klos teaches wherein the through-feed speed is between 5-100 m/min (= moving at 11 m/min) [page 11, [0136] and [0144]].
IV. Claim(s) 25 and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lomasney (US Patent Application Publication No. 2012/0088118 A1) in view of CN 1854350 (‘350) and WO 2016/001317 (‘317) as applied to claims 1-4, 6-7, 9-10, 28 and 30 above, and further in view of Holker (US Patent No. 3,778,358).
Regarding claim 25, Lomasney, CN ‘350 and WO ‘317 teach the method of at least claims 1-4, 6-7, 9-10, 28 and 30 as applied above. The references do not explicitly teach wherein the water-soluble polysaccharides are selected from the group of amylose, methylcellulose and laminarin.
Like Lomasney, Holker teaches the electrodeposition of zinc (col. 1, lines 14-15).
Levelling agents include gelatin, glucose, starch, glue, goulac, polyethylene glycol, triethanolamine, gum of guar, fecula, products of the degradation of starch and fecula such as hydroxy ethyl starch, gluten, casein, albumin, carboxymethyl celluloses, polyvinyl alcohols and alkali metal silicates (col. 2, lines 31-36).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the electrolyte taught by Lomasney with a selection from the group of amylose, methylcellulose and laminarin. The person with ordinary skill in the art would have been motivated to make this modification because carboxymethyl celluloses are leveling agents as taught by Holker in col. 2, lines 31-36 where using them in a zinc plating solution would have improved the smoothness, uniformity, and quality of the
deposited metal layer by controlling how the metal grows on the substrate surface.7
As to wherein the carboxymethyl celluloses of Holker is an organic brightener, the reason or motivation to modify the reference may often suggest what the inventor has done,
but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by the Applicant.
See MPEP § 2144.
MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing
more than predictable results. Furthermore, 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 US 327, 65 USPQ 297 (1945).”
Regarding claim 26, Holker teaches wherein the water-soluble polysaccharides comprise glucose chains with a low degree of branching (= carboxymethyl celluloses ) [col. 2, line 35) or salts of alginic acid.
V. Claim(s) 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lomasney (US Patent Application Publication No. 2012/0088118 A1) in view of CN 1854350 (‘350) and WO 2016/001317 (‘317) as applied to claims 1-4, 6-7, 9-10, 28 and 30 above, and further in view of
Holker (US Patent No. 3,778,358) as applied to claims 25 and 26 above, and further in view of WO 2021/121640 (‘640).
Regarding claim 27, Lomasney, CN ‘350 and WO ‘317 teach the method of at least claims 1-4, 6-7, 9-10, 28 and 30 as applied above. The references do not explicitly teach wherein the water-soluble polysaccharides comprise sodium or potassium salts of alginic acid.
Lomasney teaches that in other embodiments the electrodeposited species may comprise one or more metals selected from Ni, Zn, Fe, Cu, Au, Ag, Pd, Sn, Mn, Co, Pb, Al, Ti, Mg and Cr (page 3, [0039]).
Like Lomasney, WO ‘640 teaches a Zn-based electrolyte (page 5, line 32).
As another aspect, the invention relates also the addition of thickener additives necessary to guarantee the better particles dispersion and a suitable electrolyte viscosity in case of dispersed particles. The amount of these organic additives is comprised in a range between 0.0001% to 10% by weight of the electrolyte, preferably from 0.1% to 5%, still more preferably from 0.1% to 1% by weight. In a preferred embodiment, the zinc-based electrolyte contains organic additives including but not limited to Xanthan gum, Arabic gum, Carboxymethyl cellulose, Chitosan, Agar-Agar, sodium alginate and polyethylene oxide (page 7, lines 22-29).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the electrolyte taught by Lomasney with wherein the water-soluble polysaccharides comprise sodium or potassium salts of alginic acid. The person with ordinary skill in the art would have been motivated to make this modification because sodium alginate is a thickener additive and the addition of a thickener additive to a Zn based electrolyte would have guaranteed better particles dispersion and a suitable electrolyte viscosity in the case of dispersed particles as taught by WO ‘640 on page 7, lines 22-29.
As to wherein the sodium alginate of WO ‘640 is an organic brightener, the reason or
motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by the Applicant.
See MPEP § 2144.
MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing
more than predictable results. Furthermore, 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 US 327, 65 USPQ 297 (1945).”
Response to Arguments
Applicant’s arguments filed May 12, 2026 have been fully considered but they are not persuasive.
• Applicant states that in this respect, the Examiner referred to step e) of a method as disclosed in paragraph [0055] of Lomasney. However, the repetition of the method steps a)-d) of paragraphs [0051] - [0054] of Lomasney only disclose periodically varying multilayers produced by repeated cycles, wherein adjacent layers differ in composition and/or microstructure to generate galvanic effects, and does not mention the use of zinc.
In response, Lomasney teaches that:
Where variations in electrodeposited species or combinations thereof are employed, in some embodiments, the electrodeposited species may comprise one or more of Ni, Zn, Fe, Cu, Au, Ag, Pd, Sn, Mn, Co, Pb, Al, Ti, Mg and Cr, Al2O3, SiO2, TiN, BoN, Fe2O3, MgO, and TiO2, epoxy, polyurethane, polyaniline, polyethylene, poly ether ether ketone, polypropylene (page 3, [0038]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have utilized zinc because Zn is a suitable selection for the electrodeposited species as disclosed by Lomasney in [0038].
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art. Non-preferred and alternative embodiments constitute prior art (MPEP § 2123) and the disclosure of desirable alternatives does not necessarily negate a suggestion for modifying the prior art to arrive at the claimed invention (MPEP § 2143.01).
Furthermore, there is no requirement that the presently claimed features be expressly articulated in one or more of the references. References are evaluated by what they collectively suggest to one versed in the art, rather than by their specific disclosures. In re Simon 174 USPQ 114 (CCPA 1972); In re Richman 165 USPQ 509, 514 (CCPA 1970).
• Applicant states that zinc is disclosed in Lomasney only as one of a variety of metals of the electrodeposited species (see paragraph [0038] of Lomasney). The only other disclosure of zinc in Lomasney is in Table 1 in paragraph [0068] of Lomasney, where a multilayer coating comprises nanoscale layers of zinc-iron alloy. Thus, even if zinc is listed as one metal, Lomasney
does not disclose at least three zinc tiers, as is required by claim 1.
In response, Lomasney teaches at least three tiers (= in another embodiment may
include three or more non-identical layers (e.g., layer 1, layer 2, layer 3, layer 1, layer 2, layer 3, etc.) [page 2, [0031]].
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art. Non-preferred and alternative embodiments constitute prior art (MPEP § 2123) and the disclosure of desirable alternatives does not necessarily negate a suggestion for modifying the prior art to arrive at the claimed invention (MPEP § 2143.01).
Furthermore, there is no requirement that the presently claimed features be expressly articulated in one or more of the references. References are evaluated by what they collectively suggest to one versed in the art, rather than by their specific disclosures. In re Simon 174 USPQ 114 (CCPA 1972); In re Richman 165 USPQ 509, 514 (CCPA 1970).
• Applicant states that furthermore, Lomasney also does not disclose at least one of the tiers being a silicon-containing zinc tier, as is now required by amended claim 1. Lomasney only generically lists SiO2 or SiC among many optional ceramic species in paragraph [0040]. In the only example of a nanoscale layer comprising zinc (Table 1), the layer is made of a zinc-iron alloy and no silicon is mentioned.
In response, Lomasney teaches that:
Where variations in electrodeposited species or combinations thereof are employed, in some embodiments, the electrodeposited species may comprise one or more of Ni, Zn, Fe, Cu, Au, Ag, Pd, Sn, Mn, Co, Pb, Al, Ti, Mg and Cr, Al2O3, SiO2, TiN, BoN, Fe2O3, MgO, and TiO2, epoxy, polyurethane, polyaniline, polyethylene, poly ether ether ketone, polypropylene (page 3,
[0038]).
In other embodiments the electrodeposited species may comprise one or more metals selected from Ni, Zn, Fe, Cu, Au, Ag, Pd, Sn, Mn, Co, Pb, Al, Ti, Mg and Cr. Alternatively, the metals may be
selected from: Ni, Zn, Fe, Cu, Sn, Mn, Co, Pb, Al, Ti, Mg and Cr; or from Ni, Zn, Fe, Cu, Sn, Mn, Co, Ti, Mg and Cr; or from Ni, Zn, Fe, Sn, and Cr. The metal may be present in any percentage. In such embodiments the percentage of each metal may independently selected about 0.001, 0.005, 0.01, 0.05, 0.1, 0.5, 1, 5, 10, 15, 20, 25, 30, 30, 35, 40, 45, 50, 55, 60, 65, 70, 75, 80, 85, 90, 95, 98, 99, 99.9, 99.99, 99.999 or 100 percent of the electrodeposited species (page 3, [0039]).
In other embodiments the electrodeposited species may comprise one or more ceramics (e.g., metals oxides or metal nitrides) selected from Al2O3, SiO2, TiN, BoN, Fe2O3, MgO, SiC, ZrC, CrC, diamond particulates, and TiO2. In such embodiments the percentage of each ceramic may
independently selected about 0.001, 0.005, 0.01, 0.05, 0.1, 0.5, 1, 5, 10, 15, 20, 25, 30, 30, 35,
40, 45, 50, 55, 60, 65, 70, 75, 80, 85, 90, 95, 98, 99, 99.9, 99.99, 99.999 or 100 percent of the electrodeposited species (page 3, [0040]).
It would have been obvious to a person having ordinary skill in the art before the
effective filing date of the claimed invention to have utilized a combination of zinc and SiO2 or SiC because Zn and SiO2 or SiC are suitable selections for the electrodeposited species as disclosed by Lomasney in [0038 to [0040].
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art. Non-preferred and alternative embodiments constitute prior art (MPEP § 2123) and the disclosure of desirable alternatives does not necessarily negate a suggestion for modifying the prior art to arrive at the claimed invention (MPEP § 2143.01).
Furthermore, there is no requirement that the presently claimed features be expressly articulated in one or more of the references. References are evaluated by what they collectively suggest to one versed in the art, rather than by their specific disclosures. In re Simon 174 USPQ 114 (CCPA 1972); In re Richman 165 USPQ 509, 514 (CCPA 1970).
• Applicant states that CN ‘350 discloses a method for electroplating Zn-Fe-SiO2 coated
iron and steel parts. CN ‘350, however, does not disclose that the coating consists of at least three tiers, in particular, wherein at least one tier is a silicon-containing tier, or feeding the steel substrate into an electrolytic bath having an electrolyte that contains a brightener.
In response, the rejection is not overcome by pointing out that one reference does not contain a particular limitation when reliance for that teaching is on another reference. In re Lyons 150 USPQ 741 (CCPA 1966). Moreover, it is well settled that one cannot show nonobviousness by attacking the references individually where, as here, the rejection is based on a combination of references. In re Keller 208 USPQ 871 (CCPA 1981); In re Young 159 USPQ 725 (CCPA 1968).
• Applicant states that it is therefore not evident why a skilled person in the art would consider the disclosure of CN '350, when starting from the teaching of Lomasney.
• Applicant states that even if, arguendo, a skilled person in the art were to consider CN '350, they would not derive the teaching that the method of Lomasney should be modified to be used for a steel tube, as CN '350 discloses a steel tube only as one example, while other examples refer to, for example, a railway rail (see paragraph [0021] of CN '350).
In response, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art.
There is no requirement that the motivation to make the combination be expressly articulated in one or more of the references. The test for combining references is what the combination of disclosures taken as a whole would suggest to one of ordinary skill in the art. In
re McLaughlin 170 USPQ 209 (CCPA 1971); In re Rosselet 146 USPQ 183 (CCPA 1960). References are evaluated by what they collectively suggest to one versed in the art, rather than by their specific disclosures. In re Simon 174 USPQ 114 (CCPA 1972); In re Richman 165 USPQ 509, 514 (CCPA 1970).
Lomasney teaches that the substrates that are particularly suited for the multilayer coatings are made of materials that are susceptible to corrosion such as steel in [0065] where a steel pipe is susceptible to corrosion as taught by CN ‘350 in [0002], [0006] and [0018], and coating the steel pipe with a Zn-Fe-SiO2 composite coating has advantages such as high hardness, corrosion resistance, wear resistance, high temperature oxidation resistance,
density, and comprehensive performance.
• Applicant states that the modification proposed by the Examiner therefore requires selective extraction of isolated features from unrelated disclosures and reconstruction of the claimed architecture using the disclosure of the present application as a roadmap, constituting impermissible hindsight.
In response to Applicant’s argument that the Examiner’s conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the Applicant’s disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392,
170 USPQ 209 (CCPA 1971).
• Applicant states that however, no disclosure of an organic brightener based on water-soluble polysaccharide is given in WO '317.
In response, as to wherein the zinc plating bath additive of WO ‘317 is an organic brightener, the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by the Applicant. See MPEP § 2144.
Citations
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
CN 101762116 is cited to teach that the operating speed of the fine tube is 8-12 m/min (ρ [0025]).
CN 101063216 is cited to teach that the nonionic surfactant is an OP emulsifier (ρ [0010]).
Gomes et al. (“Pulsed Electrodeposition of Zn in the Presence of Surfactants,” Electrochimica Acta (2006 Jan 5), Vol. 51, No. 7, pp. 1342-1350) is cited to teach the surfactant octylphenolpoly(ethyleneglycolether)n, n = 10, Triton X-100) [page 1342, abstract].
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDNA WONG whose telephone number is (571) 272-1349. The examiner can normally be reached Monday-Friday, 7:00 AM- 3:30 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, Luan Van can be reached at (571) 272-8521. The fax phone number for the
organization where this application or proceeding is assigned is 571-273-8300.
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/EDNA WONG/Primary Examiner, Art Unit 1795
1 where x is in the range of from 2 to 4, G1 is a polysaccharide.
2 0.001-0.5% = 0.01-5 g/L.
3 0.5-2000 mA/cm2 = 0.05-200 A/dm2.
4 0.5-2000 mA/cm2 = 0.05-200 A/dm2.
5 The BET surface area is a key parameter determining the reactivity, stabilization, and thickening efficiency of the silica in applications like coatings, catalysts, and polishing slurries.
6 The unavoidable impurities stem from the raw materials and/or reactions.
7 Leveling agent definition.
Prosecution Insights