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 Group I, claims 1-13, in the reply filed on December 4, 2025 is acknowledged.
The requirement is still deemed proper and is therefore made FINAL.
Accordingly, claims 14-24 (product) are withdrawn from consideration as being directed to a non-elected invention.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Europe on October 20, 2023. It is noted, however, that applicant has not filed a certified copy of the 23204872.8 application as required by 37 CFR 1.55.
Drawings
The drawings were received on October 18, 2024. These drawings are acceptable.
Specification
The disclosure is objected to because of the following informalities:
page 2, line 6, the reference to “claim 1” should be deleted.
Appropriate correction is required.
Claim Objections
Claims 1-3, 6, 9 and 11 are objected to because of the following informalities:
Claim 1
line 4, please amend the word “step” to the word -- steps --.
Claim 2
line 2, please amend the word “produced” to the word -- deposited --.
This is an instance where the article should be changed to ensure the consistency of the claim terminology.
line 3, please amend the word “method” to the word -- applying --.
This is an instance where the article should be changed to ensure proper antecedent basis for the claim terminology.
Claim 3
line 2, please amend the word “produced” to the word -- deposited --.
This is an instance where the article should be changed to ensure the consistency of the
claim terminology.
line 3, please amend the word “method” to the word -- applying --.
This is an instance where the article should be changed to ensure proper antecedent basis for the claim terminology.
lines 3-4, please amend the sentence “the method comprises at least the following further method steps” to -- the method further comprises at least the following method steps --.
line 8, please insert the words -- second electrolytic -- before the word “bath”.
This is an instance where the article should be changed to ensure proper antecedent basis for the claim terminology.
line 13, please insert the words -- third electrolytic -- before the word “bath”.
This is an instance where the article should be changed to ensure proper antecedent basis for the claim terminology.
Claim 6
line 3, please inserted the word -- the -- before the word “inorganic”.
This is an instance where the article should be added to ensure proper antecedent basis for the claim terminology.
line 3, please inserted the word -- the -- before the word “organic”.
This is an instance where the article should be added to ensure proper antecedent basis for the claim terminology.
Claim 9
line 2, please amend the word “has” to the words -- further contains --.
This is an instance where the article should be changed to ensure the consistency of the claim terminology.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 1-13 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
lines 1-3 (preamble), recite “A method for the galvanic deposition of a zinc coating having at least three zinc tiers on a steel substrate in the form of a tube”.
lines 7-8 (body), recite “applying current to the bath in order to deposit a silicon-
containing zinc tier”.
It is unclear from the claim language which zinc tier of the at least three zinc tiers is the silicon-containing zinc tier.
Claim 2
lines 2-4, “a first, second and/or further zinc tier of the zinc coating” lacks antecedent basis.
The method steps of claim 1 do not recite depositing at least three zinc tiers. There is no relationship recited between the at least three zinc tiers (preamble of claim 1, line 2) and the silicon-containing zinc tier (body of claim 1, line 8). The method of claim 1 only produces a silicon-containing zinc tier.
Claim 5
line 2, “the particle size” lacks antecedent basis.
Antecedent basis must be laid for each recited element in a claim, typically, by
introducing each element with the indefinite article (“a” or “an”). See Slimfold Mfg. Co. v.
Kincaid Properties, Inc., 626 F. Supp 493, 495 (N.D. Ga. 1985), aff'd, 810 F.2d 1113 (Fed. Cir. 1987) (citing P. Rosenberg, 2 Patent Law Fundamentals § 14.06 (2d. Ed. 1984)). Subsequent mention of an element is to be modified by the definite article “the”, “said” or “the said,” thereby making the latter mention(s) of the element unequivocally referable to its earlier
recitation.
Claim 9
lines 3-4, the phrase “in particular selected from the group of octylphenolethoxylates and/or alkylglucosides” is indefinite.
The phrase “in particular” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 10
lines 3-4, the phrase “preferably of 50 to 60 oC” is indefinite.
The phrase “preferably” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
line 5, the phrase “preferably in the range of 10 to 140 A/dm2” is indefinite.
The phrase “preferably” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 12
lines 3-4, the phrase “in particular as a through-feed method” is indefinite.
The phrase “in particular” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
line 4, “the through-feed speed” lacks antecedent basis.
Antecedent basis must be laid for each recited element in a claim, typically, by introducing each element with the indefinite article (“a” or “an”). See Slimfold Mfg. Co. v.
Kincaid Properties, Inc., 626 F. Supp 493, 495 (N.D. Ga. 1985), aff'd, 810 F.2d 1113 (Fed. Cir. 1987) (citing P. Rosenberg, 2 Patent Law Fundamentals § 14.06 (2d. Ed. 1984)). Subsequent mention of an element is to be modified by the definite article “the”, “said” or “the said,” thereby making the latter mention(s) of the element unequivocally referable to its earlier recitation.
lines 4-5, the phrase “in particular at least 2 m/min” is indefinite.
The phrase “in particular” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
line 5, the phrase “preferably between 5-100 m/min” is indefinite.
The phrase “preferably” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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.
I. Claim(s) 1-4, 6-7 and 10 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).
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 the method comprises at least the following step:
• 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 a silicon-containing zinc tier (= (b) applying electric current in order to produce periodic layers of electrodeposited species) [page 4, [0052]].
Lomasney does not teach wherein the steel substrate is in the form of a tube.
Lomasney teaches a Zn-Fe (page 3, [0038]) -SiO2 (page 3, [0040]) 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]).
CN ‘350, like Lomasney, 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 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.
Regarding claim 2, Lomasney teaches wherein the silicon-containing zinc tier produced by the method step constitutes a first, second and/or further zinc tier of the zinc coating (= a nanometer-thickness layer under such conditions) [page 4, [0053]].
Regarding claim 3, Lomasney teaches wherein the silicon-containing zinc tier produced by the method step constitutes a first zinc tier (= a nanometer-thickness layer under such conditions) [page 4, [0053]] and the method comprises at least the following further 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 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 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) [page 3, [0040]].
Regarding claim 6, Lomasney teaches wherein the electrolyte has inorganic silicates in a range of 3-5 g/l and/or 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)1 [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 10, Lomasney teaches wherein the deposition takes place at a
temperature in the range of 25 to 80 oC , preferably of 50 to 60 oC (= non-varying electrolyte
temperature = implicit, at room temperature) [page 4, [0052]], and the deposition takes place at a current density of up to 200 A/dm2, preferably 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)2 [page 4, [0064]].
II. Claim(s) 5 and 13 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) 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).
Regarding claim 5, Lomasney and CN ‘350 teach the method of claims 1-4, 6-7 and 10 as applied above. The references do not teach wherein 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]).
Mikami, like Lomasney and CN ‘350, teaches a composite deposition of solid particles and zinc-based alloy (= the 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 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 size3 of 5 nm to 100 nm
stabilizes the components in the plating bath where a dispersant does not have to be used.
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 “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 and CN ‘350 teach the method of claims 1-4, 6-7 and 10 as applied above. The references do not 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 improves a covering power.
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).”
III. Claim(s) 8 and 9 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) as applied to claims 1-4, 6-7 and 10 above, and further in view of WO 2016/001317 (‘317).
Regarding claim 8, Lomasney and CN ‘350 teach the method of claims 1-4, 6-7 and 10 as applied above. The references do not teach wherein the brightener constitutes an organic brightener based on polysaccharide.
Lomasney teaches Enviralloy Brightener (page 5, Table 1).
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]).
WO ‘317, like Lomasney, teaches a process for the electrolytic deposition of a zinc or zinc alloy coating on a metallic substrate (page 3, lines 10-11).
WO ‘317 teaches an additive (page 3, lines 16-19) for a zinc-nickel plating bath (page 6, lines 25-28).
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).
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 brightener taught by Lomasney with wherein the brightener constitutes an organic brightener based on polysaccharide. The person with ordinary skill in the art would have been motivated to make this modification because the Enviralloy Brightener disclosed by Lomasney is exemplary. Using an 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 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.
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 9, WO ‘317 teaches wherein the electrolyte has at least one non-ionic
surfactant, in particular selected from the group of octylphenolethoxylates and/or 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].
IV. Claim(s) 11 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) 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).
Regarding claim 11, Lomasney and CN ‘350 teach the method of claims 1-4, 6-7 and 10 as applied above. The references do not 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]).
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]).
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 glucoside (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)
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 surfactant4. 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 is 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 stabilizes 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),
PNG
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69
113
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Greyscale
(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 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).”
V. Claim(s) 12 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) 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).
Regarding claim 12, Lomasney and CN ‘350 teach the method of claims 1-4, 6-7 and 10 as applied above. The references do not teach wherein the method steps are carried out as a
continuous method, in particular as a through-feed method, wherein the through-feed speed is
in particular at least 2 m/min, preferably between 5-100 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 Lomasney in view of CN ‘350 with wherein the method steps are carried out as a continuous method, in particular as a through-feed method, wherein the through-feed speed is in particular at least 2 m/min, preferably between 5-100 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.
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.
Citations
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Opaskar et al. (US Patent Application Publication No. 2005/0133376) is cited to teach tubing for fuel lines or air conditioning use (page 1, [0007]). The plating baths comprise at least one non-ionogenic, surface active compound such as Igepal® CO 710, a nonylphenoxy ethoxylate (page 4, [0037]), and water soluble compounds such as diols, triols, polyols and larger molecules such as mono- or polysaccharides (page 5, [0049]). Examples of water-softener are EDTA, sodium silicates and tartaric acid (page 8, [0086]).
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
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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 0.001-0.5% = 0.01-5 g/L.
2 0.5-2000 mA/cm2 = 0.05-200 A/dm2.
3 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.
4 The unavoidable impurities stem from the raw materials and/or reactions.