DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 7/22/2026 is acknowledged. The traversal is on the ground(s) that a serious search burden does not exists nor does the cited prior art disclose a rinsing composition containing the benzoic acid or derivative thereof but rather a cleaning composition. This is not found persuasive because with respect to the serious search burden, such is not required for lack of unity. Additionally, while the claims reference a generic rinsing, the claims themselves do not limit the term as specifically argued. The prior art discloses a composition that includes water and the corrosion inhibitor as claimed and in the claimed amounts and therefore reads on the broadly drafted claimed rinsing (which would occur using a cleaning composition as disclosed by the prior art, i.e. removing the materials on the surface). As such, the common technical feature of the claims is taught by the prior art and thus does not qualify as a special technical feature as required by the unity of invention. Additionally, the lack of unity requirement is further supported by the prior art rejection presented hereinafter. There is lack of unity a posteriori, since the common feature or a group of features is not a technical feature that defines a contribution over the prior art.
Claim 11-16 are withdrawn from consideration.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 17 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 4 requires “cleaning steps; directly followed by ii one or more phosphate-free chemical pre-treatment steps; where I and ii. are followed by one or more rinsing steps”; however, the requirement that the cleaning steps are directly followed by phosphate free pretreatment is in direct contrast to the requirement that step i is followed by one or more rinsing steps (i.e. if there is an intervening rinsing step, the cleaning step can not be directly followed by).
Claim 17 recites the limitation "the layer-forming phosphate conversion treatment composition and/or non-layer forming phosphate conversion treatment composition." There is insufficient antecedent basis for this limitation in the claim as claim 1 does not introduce either layer forming or non-layer forming phosphate and this feature is only introduced in non-intervening claim 9.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1 requires compounds of formula (I) are in at least one rinsing composition and thus claim 5 as drafted does not appear to be further limiting. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1-3, 5-10 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN116497267A, hereinafter CN 267 taken collectively with EP 2112247, hereinafter EP 247.
Claim 1: CN 267 discloses a method of pre-treating a metallic substrate, the method comprising
one or more pre-treating steps selected from the groups consisting of cleaning steps, wherein at least part of the surface of the metallic substrate is contacted with one or more cleaning compositions, to obtain a cleaned metallic substrate (“the band steel enters the degreasing tank through the tension roller, the oil stain on the surface of the band steel is cleaned by the alkaline degreasing agent”); and/or
one or more chemical pre-treatment steps selected from the group consisting of conversion treating steps, passivation treating steps and thin-layer forming steps, wherein at least part of the surface of a metallic substrate is contacted with one or more chemical pre-treatment compositions selected from the group consisting of conversion treatment compositions, passivation treatment compositions and thin-layer forming compositions to obtain a chemically pre-treated substrate (activation and passivation, phosphating);
wherein i. and/or ii. are followed by one or more rinsing steps, characterized in that at least one rinsing composition is used, which comprises an amount of water with sodium benzoate (“water + corrosion inhibitor with mass percentage of 0.2-1.1 %, at the same time of fully cleaning the surface, it can effectively reduce the surface corrosion risk in the water washing process”, “The added corrosion inhibitor is selected from one or more of sodium phosphate, sodium nitrite, sodium benzoate and sodium silicate”)
Additionally, it would have been obvious to have selected sodium benzoate as the corrosion inhibitor as such is specifically disclosed by CN 267 to be included in the water rinse. As for the amount, the examiner notes that the amount taught by CN 267 overlaps the range as claimed and thus makes obvious such and at the very least, CN 267 explicitly discloses the amount is a result effective variable, directly effecting the corrosion protection benefit (“too low to be less than 0.2 %, it cannot have effective corrosion inhibiting effect, when the excess of the additive is more than 1.1 %, It does not meet the economic and environmental requirements.”) and therefore taking the reference for its entire teaching it would have been obvious to have determined the optimum amount of corrosion inhibitor through routine experimentation.
CN 267 generally discloses various chemical pretreatments (including degreasing, activation, passivating and phosphating); however, fails to disclose the degreasing is an aqueous cleaning composition. However, EP 247, also in the art of steel sheet treating discloses degreasing the sheet in a “2% aqueous solution of an alkaline degreasing agent” (0058) and therefore using an aqueous degreasing cleaner would have been obvious to one of ordinary skill in the art at the time of the invention as a known and suitable cleaner for metal sheets.
Claim 2: CN 267 discloses comprising i. one or more cleaning steps; followed by ii. one or more chemical pre-treatment steps, wherein i. and ii. are followed by one or more rinsing steps (see first and second rinsing steps as claimed, first after degreasing, second after phosphating).
Claim 3: CN 267 discloses cleaning, rinsing, activating, phosphating and rinsing that reads on the claims as broadly drafted.
Claim 5: CN 267 discloses one or more compounds of formula (I) are comprised in at least one of the rinsing compositions (“water + corrosion inhibitor with mass percentage of 0.2-1.1 %” and “corrosion inhibitor is selected from one or more of sodium phosphate, sodium nitrite, sodium benzoate”)
Claim 6: CN 267 discloses the one or more compounds of formula (I) are present in at least one composition selected from the group consisting of cleaning compositions, rinsing compositions and chemical pre-treatment compositions in an amount from 1.0 to 150 mmol per liter of the respective composition (see “water + corrosion inhibitor with mass percentage of 0.2-1.1 %” and “corrosion inhibitor is selected from one or more of sodium phosphate, sodium nitrite, sodium benzoate”)
Claim 7: Sodium benzoate meets this claim requirements.
Claim 8: CN 267 discloses water with a pH as claimed (“rinsed by industrial pure water with conductivity not more than 10 us/cm”, which would have an about neutral pH). At the very least, the pH is an art recognized result effective variable, directly affecting the rinsing process and substrate and determination of the optimum pH through routine experimentation would have been obvious to one of ordinary skill in the art to provide a rinse of the metal.
Claim 9: CN 267 discloses the chemical pre-treatment composition e.g. phosphating or passivation (“the phosphating film” and “passivation treatment agent having the phosphating barrier function is a Zr acid salt passivation treatment”) and therefore meets the broadly drafted claims.
Claim 10: CN 267 discloses it is known in the art for metal treatment to apply one or more chemical pre-treatment compositions is carried out by spray application and/or dip application for a contacting time from 15 seconds to 8 min, and a contacting temperature in the range from 10 to 60° C(”wherein the phosphating temperature is 60 to 85 degrees centigrade, dipping for 3 to 10 minutes”) and therefore using the known and predictable temperature and times would have been obvious to one of ordinary skill in the art at the time of the invention.
Claim 17: CN 267 discloses phosphating; however, fails to disclose the claimed phosphating; however, EP 247, also in the art of steel strip manufacturing discloses using a zinc phosphating that reads on the broadly drafted claim “and immersed in a phosphating solution . . . to form a zinc phosphate film” and therefore it would have been obvious to have modified CN 267 to use the known phosphating composition to for the zinc phosphate with a reasonable expectation of predictable results.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 267 taken collectively with EP 247 and further in view of EP 1669475, hereinafter EP 475.
CN 267 with EP 247 disclose all that is taught above and disclose degreasing, rinsing and zinc phosphate pretreatment of metal for automobiles (see background); however, fails to disclose the phosphate free chemical pretreatment. However, EP 475, also in the art of metal pretreatment for automobile parts and discloses using phosphate free pretreatments to replace the known zinc phosphate (0005, 0006 related to zirconium surface treatments in place of zinc phosphate, or chemical treatments as taught by EP 475 at 0009-00010) and discloses degreasing followed by rinsing and thereafter applying the pretreatment that is free of phosphorus (00039-0045). Therefore, taking the references collectively it would have been obvious to have modified CN 267 with EP 247 with the phosphorus free pretreatment after degreasing and rinsing as suggested by EP 475 as such is taught as a known and suitable substitute for zinc phosphate. Rinsing steps after degreasing and pretreatment are taught at 0040, 0042.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID P TUROCY whose telephone number is (571)272-2940. The examiner can normally be reached Mon, Tues, Thurs, and Friday, 7:00 a.m. to 5:30 p.m.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached at 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID P TUROCY/ Primary Examiner, Art Unit 1718
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