DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
Claim 14 is 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 14 recites the limitation "wherein determining that surface energy of the aluminum alloy surface is sufficient”". There is insufficient antecedent basis for this limitation in the claim. claim 9 doesn’t cite any step of determining a surface energy of the aluminum alloy surface.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 7, 9, 15, 17, 19 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Inbe et al. (US 2012/0160372A1).
With respect to claims 1, 9, 17 Inbe describes a method for surface conditioning of a metal including aluminum and aluminum alloy (para 103, 109) using a composition comprising a chelating agent including citric acid (para 86) and a water soluble thickening agent (para 20, 63, 70, 103), wherein the composition is applied by spraying or claimed agitating the composition on the aluminum alloy surface (para 108). The conditioning composition would have to be removed from the aluminum alloy surface in order to perform the next step such as dipping treatment of the surface in phosphate chemical conversion treatment (para 111).
With respect to the limitations that “the aluminum alloy surface after removing the composition is configured to have a surface energy that is sufficient to apply a chemical conversion coating to the aluminum alloy surface based on a water break free surface test” or “the aluminum alloy surface after removing the agitated composition is configured to cause a droplet of deionized water, when applied on the aluminum alloy surface, to have a contact angle that is below a threshold angle” or “the aluminum alloy surface, after removing the agitated composition, is configured to cause deionized water, when poured onto the aluminum alloy surface, to form a thin film” is an intended use of the aluminum alloy surface and not an active step of the claimed method. Therefore, it doesn’t contribute to the claimed method of preparing an aluminum alloy surface. The aluminum alloy achieved from Inbe’s method would be able to be configured for any uses as desired since the surface is being conditioned by the same process and composition as that of the claimed invention.
With respect to claims 7, 15, and 19, the method further includes a phosphate chemical conversion treatment including phosphate crystal coating (para 111).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 2-6, 10-14, 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Inbe as applied to claim 1 above, and further in view of Hanson (US 20100098876A1).
With respect to claims 2-3, 5, 10-13, 18 Inbe doesn’t describes conducting water break free surface test to determine the surface energy is sufficient, wherein the measured contact angle of water is less than 30 or 40 degrees. However, measuring surface properties including water break freee and water contact angle after a surface cleaning is a known process. Hanson describes measuring water break free and water contact angle after a cleaning step (para 82). One skilled in the art would find it obvious before the effective filing date of the invention to conduct water break free surface test to determine the surface energy and water contact angle because it is a known process and it is also desired to obtain surface properties of the aluminum surface as suggested by Inbe (para 127). Providing information of the aluminum surface properties including surface energy and water contact angle would enable one skilled in the art to prepare the aluminum surface for the next step during the manufacture of a device having the aluminum surface with expected results.
With respect to claims 4 and 6, it would have been within the knowledge of one skilled in the art to be able to measure the water contact angle, determine and set a desired sufficient surface energy at the water contact angle of less than 40 degrees or the DI water forms a thin film on the aluminum surface since these properties would be necessarily present on the aluminum surface as the surface is cleaned by the same composition as taught by Inbe.
With respect to claim 14, measuring the surface energy such as measuring water contact angle and water break free of the aluminum surface within ten minutes after the surface conditioning step would be obvious and within the knowledge of one skilled in the art because it would provide a correct information of the effectiveness of the conditioning step as supposed to measure the surface energy later, in which other substance can be introduced onto the surface.
Allowable Subject Matter
Claims 8, 16, 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
With respect to claims 8, 16, and 20, Inbe, even though teaches a conditioning step using citric acid and a thickener; however, Inbe doesn’t teach using a conditioning composition comprising at least 50% citric acid by volume and 10-15% fumed silica by volume.
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/DUY VU N DEO/Primary Examiner, Art Unit 1713
8/24/2026
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