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 .
Specification
The disclosure is objected to because of the following informalities: In paragraph [0011], the reference to FIGS. 5B-4E should be written “FIGS. 5B-5E.” Also, the phrase “show are” is ungrammatical; perhaps either “show” or “are” was meant.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the combination of limitations, “contacting a surface of the substrate with a first pretreatment composition . . .; and contacting the substrate surface with a second pretreatment composition . . .; or contacting the substrate surface with a third pretreatment composition.” The limitation is indefinite as ambiguous, because it is not clear whether it should be interpreted as a) requiring EITHER contacting a surface of the substrate with a first pretreatment composition and also with a second pretreatment contact OR ELSE contacting a substrate surface with a third pretreatment composition or b) contacting a surface of the substrate with a first pretreatment composition AND EITHER with a second pretreatment composition OR with a third pretreatment composition. Examiner considers interpretation a) above to be the broadest reasonable interpretation, but will apply either interpretation a) or b) as the broadest reasonable interpretation for any given dependent claim, since the broadest reasonable interpretation of the ambiguous combination of limitations may differ from claim to claim.
Claim 5 recites the limitation “an electropositive metal, a Group IA metal, a Group IVB metal, and/ or a Group VIIIB metal.” The limitation is indefinite, because the broadest reasonable interpretation of Claim 5 requires the second pretreatment to include in addition to the Group IVB metal and free fluoride already required in Claim 1 only one of the listed categories metals in Claim 5. One of the listed categories of metals in Claim 5 is Group IVB metal, which is already required in the second pretreatment composition in Claim 1. Therefore, it is not clear whether Claim 5 necessarily further narrows Claim 1. Examiner considers Claim 5 met by the Group IVB metal, required in Claim 1.
Claim 6 requires the limitation “the Group IVB metal in an amount of 5 ppm to 500 ppm.” The limitation is indefinite as ambiguous, because Claim 1 requires a Group IVB metal and Claim 5 requires “further comprises . . . a Group IVB metal.” Thus, it is not clear whether the recited concentration in Claim 6 refers a) to the concentration of Group IVB metal recited in Claim 1, b) to the concentration of Group IVB metal recited in Claim 5, or c) whether the limitation “Group VIB metal” in Claim 1 and the limitation “Group VIB metal” in Claim 5 are the identical “Group VIB metal.” Examiner considers the limitation to include any of the above possibilities.
Claims 2-19 are rejected as depending from other rejected claims.
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 and 7-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lemon et al. (US 2018/0044796).
Regarding Claim 1, Lemon et al. (US’796) teaches a method of treating a metal substrate, comprising contacting a substrate surface with a third pretreatment composition comprising a lanthanide series metal and an oxidizing agent (Abstract; [0012,0035,0037]).
Regarding Claim 7, US’796 teaches that the third pretreatment composition comprises the lanthanide series metal in an amount of 5 ppm to 25,000 ppm based on total weight of the third pretreatment composition [0035].
Regarding Claim 8, US’796 teaches that the third pretreatment composition comprises the oxidizing agent in an amount of 25 to 13,000 ppm based on total weight of the third pretreatment composition [0037].
Regarding Claim 9, US’796 teaches that the third pretreatment composition has a pH of 2.0 to 5.5 [0043].
Regarding Claim 10, US’796 teaches that the third pretreatment composition is substantially to completely free of gelatin and/or lanthanide oxide [0041]. Claim 10 requires the third pretreatment composition to substantially free of only one of the listed compositions, since the compositions are connected with “and/or.”
Regarding Claim 11, US’796 teaches that the third pretreatment composition is substantially free of chromium and/ or phosphate (i.e. teaches excluding chromium and/ or phosphate) [0038,0055].
Regarding Claim 12, US’796 teaches contacting the substrate surface with a film-forming composition [0062].
Regarding Claim 13, US’796 teaches that the film-forming composition comprises an anionic electrodepositable coating composition, a cationic electrodepositable coating composition, a powder coating composition, a liquid coating composition, a primer composition, and/or a topcoat composition [0076-0079,0088].
Regarding Claim 14, US’796 teaches that the substrate comprises magnesium or a magnesium alloy [0011].
Regarding Claims 15-17, US’796 teaches a substrate, including one comprising magnesium or a magnesium alloy, coated with the third pretreatment composition. See citations in the rejections of Claims 1 and 14 above.
Regarding Claim 18, US’796 teaches that the substrate comprises a vehicle, a part, an article, a and/or a multi-metal article [0010-0012,0049].
Regarding Claim 19, US’796 teaches that a substrate can be an automobile (e.g. car or truck) or an aircraft [0011].
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 2-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lemon et al. (US 2018/0044796) in view of Kolcun et al. (US 2017/0121533).
Regarding Claims 2-6, US’796 teaches contacting a surface of the substrate with a first pretreatment composition comprising a fluorometallic acid comprising a Group IVA metal (e.g fluorosilicic acid) and/or a Group IVB metal (e.g. fluorotitanic acid or fluorozirconic acid) and free fluoride [0046,0049]. Some comparative examples teach free fluoride in an amount of 100 ppm, 226 ppm, or 0.014 ppm [0149,0154,0156]. NOTE: although silicon is not a Group IVA metal, but a Group IVA metalloid, Applicant characterizes silicon as a Group IVA metal (Specification [0046]). US’796 does not clearly teach a first coating with free fluoride in the recited concentration, although it suggests that the recited concentration range of free fluoride in analogous coatings containing compounds from IVB were known in the prior art (see, for example, comparative examples [0149,0154,0156] and provides reasons both to include and to eliminate free fluoride [0004,0049]. However, US’796 teaches that it was prevalent in the prior art for analogous coatings which contained Group IVB for metal substrates also to include free fluoride [0004], and US’796 provides evidence that the concentration of free fluoride in these analogous coatings is a result effective variable, known in the art to affect etching and efficiency of deposition, including solubility, while affecting environmental safety and health on the other hand [0004,0049]. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of US’796 by including free fluoride within the recited concentration range through routine optimization of a concentration of a component prevalent in analogous prior art coatings, including within the recited concentrations as suggested by comparative prior art examples in US’796.
US’796 teaches a pH of a prior art third composition (corresponding to “second conversion composition” in US’796) [0043,0035] and provides comparative examples of prior art compositions containing a Group IVB metal at pH 4.72 (also free fluoride, 100 ppm) [0155-0157]. US’796 fails to teach a pH within the recited range or the precise ranges of concentration. Kolcun et al. (US 2017/0121533) teach an analogous method of treating a metal substrate, comprising contacting a surface of the substrate with a pretreatment composition (also “pre-rinse composition”) analogous to the conventional prior art compositions taught in US’796 and to that of the “first pretreatment composition” in Applicant’s present claims, including a fluorometallic acid comprising Group IVB metal (e.g. hexafluorozirconic acid and fluorotitanic acid) in a concentration of between 20 ppm-600 ppm, including 200 to 300 ppm, including 70 ppm to 300 ppm [0035-0036] (pre-rinse source: 100-2000) [0078] and free fluoride in a concentration of between 25 and 5000 ppm, including 200 ppm-1000 ppm (pre-rinse source: 100 ppm to 2000 ppm) [0078] at a pH of, for example, 3.5 or less, including, for example 3.0-5.5 (pre-rinse also between 2.5-5 [0076,0063]. Additionally, as in US’796, US’533 suggests contacting a surface already contacted with the first pretreatment composition with another composition containing any of a Group IVB metal and/ or a lanthanide [0143]. Either the pre-rinse or the pretreatment composition can be considered the first pretreatment composition and the other the second pretreatment composition, because of their obvious similarity both to each other in US’533 and to each of the recited pretreatment compositions. The same evidence and arguments concerning obvious concentrations and pH apply to each equally.
To summarize, US’533 teaches both a pre-rinse and a pretreatment composition both analogous to both the “first pretreatment composition” and to the “second pretreatment composition” recited in Applicant’s Claim 1. The concentration of free fluoride taught in US’533 includes a range of 200-1000 ppm (pre-rinse (100-2000ppm), which substantially overlaps with the recited concentration and for which there is evidence of result-effectiveness (see rejection of Claim 1 above). US’533 further teaches substantially overlapping ranges of pH, including both 3.5 or less and 3.0-5.5, both of which substantially overlap the recited range and which also together would suggest a range of pH 3.0-3.5. Also, US’533 teaches Group IVB metal in a concentration of between 70 and 300 ppm, also substantially overlapping with the recited ranges in the dependent claims. Thus, it would have been obvious to a person of ordinary skill in the art to modify the process of US’796 by contacting a surface of the substrate with a first pretreatment composition comprising a fluorometallic acid comprising a Group IVA metal and/or a Group IVB metal and free fluoride in an amount of 10 ppm to 500 ppm based on total weight of the first pretreatment composition and having a pH of 1.0 to 4.0; and contacting the substrate surface with a second pretreatment composition comprising a Group IVB metal and free fluoride in an amount of 15 ppm to 200 ppm based on total weight of the second pretreatment composition, because US’533 suggests contacting a metal substrate in a process analogous to that of US’796 with pretreatment compositions (both pretreatment composition and obviously similar pre-rinse) analogous to those that US’796 teaches were well-known in the prior art, and the recited concentration ranges of recited components and pH substantially and obviously overlap those taught. Additionally, it would have been obvious to optimize both the concentration of free fluoride and clearly the concentration of free fluoride source – Group IV fluorometallic acid, because free fluoride concentration is a result-effective variable as shown in the rejection of Claim 1 above. Finally, generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical.
Conclusion
No claim is allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
McMillen et al. (US 2009/0032144) (method for treating metal substrate with pretreatment composition, comprising IVB metal in a concentration of 10-5000 ppm and free fluoride in a concentration of 170 ppm and a pH between 2-7, including 3.5-5.5, including examples of pH 3.7,3.8)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER M WEDDLE whose telephone number is (571)270-5346. The examiner can normally be reached 9:30-6:30.
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, Michael Cleveland can be reached at 571-272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
ALEXANDER M WEDDLE
Examiner
Art Unit 1712
/ALEXANDER M WEDDLE/ Primary Examiner, Art Unit 1712
Prosecution Insights