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 III, claims 7-10, in the reply filed on June 1, 2026 is acknowledged.
The requirement is still deemed proper and is therefore made FINAL.
Accordingly, claims 1 (product) and 2-6 (composition) are withdrawn from consideration as being directed to a non-elected invention.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 China on December 30, 2024. It is noted, however, that applicant has not filed a certified copy of the 202411964288.4 application as required by 37 CFR 1.55.
Drawings
The drawings were received on December 15, 2025. These drawings are acceptable.
Claim Objections
Claim 7 is objected to because of the following informalities:
Claim 7
line 6, please amend the word “a” to the word -- the --.
This is instance where the article should be changed to ensure proper antecedent basis for the claim terminology.
Appropriate correction is required.
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) 7 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2021/198429 (‘429) in view of CN 215103561 (‘561), WO 2017/205473 (‘473), CN 115522239 (‘239) and CN 201850322 (‘322).
Regarding claim 7, WO ‘429 teaches a zinc-iron electroplating method, comprising:
• preparing a zinc-iron alloy plating (= preferably as a layer resulting from a galvanization process, most preferably from a zinc-iron galvanization process) [page 5, lines 17-
18];
• in the zinc-iron alloy plating, plating zinc-iron alloy on a workpiece to give a plated workpiece (= wherein the zinc-iron alloy is present on the substrate as a layer, preferably as a layer resulting from a galvanization process, most preferably from a zinc-iron galvanization process) [page 5, lines 16-18];
• subjecting the plated workpiece to trivalent chromium passivation (= the black-passivation composition utilized in the method comprises one or more than one species of metal ions selected from the group consisting of trivalent chromium, titanium, and zirconium) [page 9, lines 27-29] to form a passivation film-coated workpiece (= contacting the substrate with said black-passivation composition such that the black-passivation layer is formed on the zinc-iron alloy) [page 4, lines 10-11]; and
• sealing the passivation film-coated workpiece with a sealing film (= wherein the substrate obtained after step (c) of the method is additionally treated with a post-dip composition and/or a sealer composition) [page 16, lines 23-25], thereby obtaining a finished workpiece (= with a sealer composition such that a sealed substrate is obtained) [page 17, lines 24-25].
WO ‘429 does not explicitly teach the following:
a. Preparing a potassium chloride-based zinc alloy plating solution.
b. Wherein the plating is electroplating in the potassium chloride-based zinc alloy
plating solution to give an electroplated workpiece.
c. Wherein the potassium chloride-based zinc-iron alloy plating solution comprises:
50-70 g/L of zinc chloride;
160-240 g/L of potassium chloride;
25-35 g/L of boric acid;
6-55 g/L of a complexing agent;
0.1-0.2 mL/L of a brightener; and
20-30 mL/L of an electroplating additive;
۰ the potassium chloride-based zinc-iron alloy plating solution has a pH of 4.5-5.6;
and
۰ the complexing agent comprises a component A;
the component A is selected from the group consisting of sodium gluconate, sodium glucoheptonate, potassium sodium tartrate, sodium citrate and a combination thereof;
the component B is sodium sulfosalicylate; and
۰ the component A and the component B are mixed according to a weight ratio of 3: 1-3; and
۰ a temperature of a plating bath is controlled at 15-30 oC, a current density of a cathode is 1-3 A/dm2, and a swept rate of cathode is 3-5 m/min.
WO ‘429 teaches that:
The method of the present invention generally applies to a zinc-iron alloy. Preferred is a method of the present invention, wherein the zinc-iron alloy is present on the substrate as a layer, preferably as a layer resulting from a galvanization process, most preferably from a zinc-iron galvanization process. Thus, most preferred is a method of the present invention, wherein the zinc-iron alloy is distinct from the rest of the substrate. In such a way, the substrate is typically protected from corrosion (page 5, lines 15-20).
Like WO ‘429, CN ‘561 teaches a zinc-iron galvanization process (= an acidic zinc-iron
alloy coating is prepared using the DETRONZIN 506 low-foaming potassium chloride zinc-iron
alloy plating process developed by Guangzhou Chaobang Chemical Co., Ltd.) [ρ [n0023]].
The plating bath composition and operating conditions are as follows:
60-70 g/L zinc chloride (= 50-70 g/L of zinc chloride);
180-220 g/L potassium chloride (= 160-240 g/L of potassium chloride);
25-35 g/L boric acid (= 25-35 g/L of boric acid);
6-10 g/L sodium gluconate (= 6-55 g/L of a complexing agent);
0.8-1.5 mL/L Detronzin 506 brightener; and
25-35 mL/L Detronzin 506 softener (= 20-30 mL/L of an electroplating additive);
۰ plating bath pH range 4.8-5.6 (= the potassium chloride-based zinc-iron alloy plating solution has a pH of 4.5-5.6); and
۰ sodium gluconate (= the complexing agent comprises a component A; the component A is selected from the group consisting of sodium gluconate, sodium glucoheptonate, potassium sodium tartrate, sodium citrate and a combination thereof); and
۰ plating bath temperature 15oC-30oC (= a temperature of a plating bath is controlled at 15-30 oC), cathode current density 1.0-3.0 A/dm2 (= a current density of a cathode is 1-3 A/dm2), and cathode movement 2-3 m/min (= a swept rate of cathode is 3-5 m/min) [ρ [n0024]).
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 zinc-iron galvanization process taught by WO ‘429 with (a) to (c) above. The person with ordinary skill in the art would have been motivated to make this modification because WO ‘429 teaches that the zinc-iron alloy is present on the substrate as a layer, most preferably from a zinc-iron galvanization process on page 5, lines 16-18, where using the plating bath composition and operating conditions as taught by CN ‘561 in [n0024] would have been low-foaming and would have prepared an acidic
zinc-iron alloy coating as taught by CN ‘561 in [n0023].
As to “0.1-0.2 mL/L of a brightener”, CN ‘561 teaches 0.8-1.5 mL/L Detronzin 506 brightener. 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 CN ‘561 with 0.1-0.2 mL/L of a brightener. The person with ordinary skill in the art would have been motivated to make this modification because it has been held that changes in temperature, concentration or both, is not a patentable modification; however, such changes may impart patentability to a process if the ranges claimed produce new and unexpected results which are different in kind and not merely in degree from results of the prior art, such ranges are termed “critical” ranges and Applicant has the burden of proving such criticality; even though Applicant’s modification results in great improvement and utility over the prior art, it may still not be patentable if the modification was within capabilities of one skilled in the art. See MPEP § 2144.05.
MPEP § 2144.05 states that “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close that one skilled in the art would have expected them to have the same properties.”
Furthermore, WO ‘473 teaches any other known brightener useful in electroplating zinc, nickel, and/or iron may be useful herein (ρ [0046]). The amount of brightener provided in the bath can range from about 0.01 g/l to about 10 g/l (about 10 ppm to about 10,000 ppm) [ρ
[0047]].
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).”
d. 2-12 g/L of ferrous chloride tetrahydrate or 3-17 g/L of ferrous sulfate heptahydrate.
CN ‘561 teaches 3-5 g/L ferrous chloride (ρ [n0024]).
CN ‘239 teaches a flash zinc-iron alloy electroplating solution (ρ [n0017]). The inorganic iron salt includes either ferrous chloride or ferrous sulfate heptahydrate (ρ [n0014]).
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 ferrous chloride taught by CN ‘561 with 2-12 g/L of ferrous chloride tetrahydrate or 3-17 g/L of ferrous sulfate heptahydrate. The person with ordinary skill in the art would have been motivated to make this modification because CN ‘561 teaches ferrous chloride in [n0024] where ferrous sulfate heptahydrate would have been a suitable alternative to ferrous chloride as an inorganic iron salt in a zinc-iron alloy electroplating solution for electrodepositing a zinc-iron alloy layer as taught by CN ‘239 in
[n0014] and [n0020] where the substitution of art recognized equivalents as taught by CN ‘239 in [n0014] is within the level of ordinary skill in the art. In addition, the substitution of one inorganic iron salt for another is likely to be obvious when it does no more than yield
predictable results.
e. The complexing agent comprises a component B.
f. Wherein the component B is sodium sulfosalicylate.
WO ‘473 teaches sodium salicylate as a brightening agent or brightener.1 Any other known brightener useful in electroplating zinc, nickel, and/or iron may be useful herein (ρ [0046]).
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 complexing agent taught by WO ‘429 with the complexing agent comprises a component B; and wherein the component B is sodium sulfosalicylate. The person with ordinary skill in the art would have been motivated to make this modification because adding sodium salicylate to the electroplating bath would have brightened a zinc, nickel, and/or iron electrodeposit as taught by WO ‘473 in [0046]).2
Although sodium sulfosalicylate is recited as a complexing agent in the present claims and as a brightening agent or brightener in WO ‘473, 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 applicant. See MPEP § 2144(IV).
g. The component A and the component B are mixed according to a weight ratio of
3: 1-3.
CN ‘561 teaches 6-10 g/L sodium gluconate (ρ [n0024]).
WO ‘473 teaches sodium salicylate (ρ [0046]). The amount of brightener provided in the bath can range from about 0.01 g/1 to about 10 g/1 (about 10 ppm to about 10,000 ppm) [ρ [0047]].
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 weight ratio of mixed component A (sodium gluconate) as taught by CN ‘561 and the component B (sodium salicylate) as taught by WO ‘473 with wherein the component A and the component B are mixed according to a weight ratio of 3: 1-3. The person with ordinary skill in the art would have been motivated to make this modification because considering that CN ‘561 and WO ‘473 are silent as to the component A and the component B are mixed according to a weight ratio of 3: 1-3, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have optimized their weight ratio 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 MPEP § 2144.05.
h. Preprocessing a workpiece.
WO ‘429 teaches that:
Preferred is a method of the present invention, wherein the substrate comprises iron. This means that the substrate preferably comprises a base material, preferably a ferrous base
material, more preferably steel, on which the zinc-iron alloy is deposited. Thus, the zinc-iron
alloy is distinct from the rest of the substrate (i.e. is represented by the base material) [page 5,
lines 21-25].
Typically, a preferred substrate is selected from the group consisting of screws, bolts, nuts, and automotive parts (page 6, lines 5-6).
Like WO ‘429, CN ‘322 teaches automotive parts consisting of a zinc-iron alloy layer covering the steel of the automotive parts, a black passivation layer covering the zinc-iron alloy layer, and a sealing layer covering the passivation layer (ρ [0010]).
Pretreatment: This involves performing the following steps on the surface of the parts: “alkaline chemical degreasing → water washing → alkaline anodic electrolytic degreasing → water washing → acid washing (30% HCl) → water washing → electrolytic film removal agent (anodine) → water washing → activation (10% HCl) → water washing” to achieve high-strength adhesion (ρ [0024]).
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 taught by WO ‘429 with preprocessing a workpiece. The person with ordinary skill in the art would have been motivated to make this modification because WO ‘429 teaches automotive steel parts on page 5, lines 22-23; and page 6, lines 5-6, where performing a pretreatment on automotive steel parts would have achieved high-strength adhesion as taught by CN ‘322 in [0024].
i. Wherein the sealing film is with a graphene-modified sealant to form a graphene-modified.
WO ‘429 teaches that:
Generally preferred is a method of the present invention, wherein the substrate obtained after step (c) of the method of the present invention is additionally treated with a post-dip
composition and/or a sealer composition, preferably as outlined below, either in this order or in reversed order (page 16, lines 23-26).
CN ‘561 teaches that:
Graphene sealing: After passivation of the plated parts, the graphene sealing layer is
prepared by “immersing in graphene sealing solution → removing from the tank → dripping dry → blowing off the residual droplets at the bottom of the plated parts with high-pressure air → baking at 90℃ for 30 minutes” (ρ [n0052]).
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 sealing film taught by WO ‘429 with wherein the sealing film is with a graphene-modified sealant to form a graphene-modified. The person with ordinary skill in the art would have been motivated to make this modification because WO ‘429 teaches that the substrate obtained after passivation is additionally treated with a sealer composition on page 16, lines 23-26, where preparing a graphene sealing layer, after the passivation of plated parts, would have provided a layer having self-healing properties as taught by CN ‘561 in [n0016] and [n0052].
Regarding claim 8, WO ‘629 does not explicitly teach wherein an anode is a zinc plate with a weight percentage of 99.99%.
WO ‘239 teaches using a soluble zinc plate as the anode (ρ [n0020]).
WO ‘473 teaches that anodes can be used that are soluble, such as zinc anodes, and that at the same time can serve as a source of zinc ions so that the zinc deposited on the cathode is recovered by dissolution of zinc at the anode (ρ [0054]).
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 anode taught by modified WO ‘429 with wherein an anode is a zinc plate with a weight percentage of 99.99%. The person with ordinary skill in the art would have been motivated to make this modification because using a
soluble zinc anode can serve as a source of zinc ions so that the zinc deposited on the cathode is recovered by dissolution of zinc at the anode as taught by WO ‘473 in [0054].
II. Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2021/198429 (‘429) in view of CN 215103561 (‘561), WO 2017/205473 (‘473), CN 115522239 (‘239) and CN 201850322 (‘322) as applied to claims 7 and 8 above, and further in view of CN 105220190 (‘190).
Regarding claim 9, WO ‘429, CN ‘561, WO ‘473, CN ‘239 and CN ‘322 teach the method of at least claims 7 and 8 as applied above. The references do not explicitly teach wherein an area ratio of a cathode to an anode is 2:0.7-1.3.
CN ‘190 teaches electroplating is performed to obtain a samarium zinc iron alloy coating (ρ [0016]). In step (2), the area ratio of the cathode to the anode is (1/2 to 2): 1 (ρ [0019]).
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 an area ratio of the cathode to the anode taught by modified WO ‘429 with wherein an area ratio of a cathode to an anode is 2:0.7-1.3. The person with ordinary skill in the art would have been motivated to make this modification because considering that modified WO ‘429 is silent as to the area ratio of the cathode to the anode, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have optimized the area ratio of the cathode to the anode 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 MPEP § 2144.05.
CN ‘190 teaches that the area ratio of the cathode to the anode is (1/2 to 2): 1 [[0019]] which is suitable to electroplate a (samarium)-zinc-iron alloy in [0019].
III. Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2021/198429 (‘429) in view of CN 215103561 (‘561), WO 2017/205473 (‘473), CN 115522239 (‘239) and CN 201850322 (‘322) as applied to claims 7 and 8 above, and further in view of Rudy (“Analysis, Observation, and Maintenance of Finishing Baths,” Plating, 17 November 2023, pp. 1-3).
Regarding claim 10, WO ‘429, CN ‘561, WO ‘473, CN ‘239 and CN ‘322 teach the method of at least claims 7 and 8 as applied above. The references do not explicitly teach wherein a 30 wt.% ferrous chloride tetrahydrate solution is supplemented to the plating bath during production, so as to maintain a weight concentration of ferrous chloride tetrahydrate at 2-12 g/L.
CN ‘561 teaches 3-5 g/L ferrous chloride (p [n0024]).
Rudy teaches that:
Based on their make-up and operating requirements, metal finishing processes are subject to depletion of chemical constituents (page 1, lines 1-2).
There are many other baths and processes that are similarly affected when in use.
Appropriate replenishment is the critical factor in maintaining the desired operation of any process bath, be it surface activation, finishing, or post-finishing. This is typically accomplished by adding specified quantities of bath components. Individual salts, additives, or product concentrates
may be needed to keep any system optimum (page 1, lines 13-16).
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 plating bath taught by modified WO ‘429 with wherein a 30 wt.% ferrous chloride tetrahydrate solution is supplemented to the plating bath during production, so as to maintain a weight concentration of ferrous chloride tetrahydrate at 2-12 g/L. The person with ordinary skill in the art would have been motivated to make this modification because replenishing a process bath by adding specified quantities of bath components such as Individual salts would have kept the system optimum as taught by Rudy on page 1, lines 13-16.
As “a 30 wt.% ferrous chloride tetrahydrate solution,” CN ‘561 teaches 3-5 g/L ferrous chloride in [n0024]. In order to maintain the concentration of ferrous chloride in this range, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have optimized the concentration of a ferrous chloride tetrahydrate solution 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 MPEP § 2144.05.
Citations
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Meyer et al. (US Patent Application Publication No. 2007/0196632 A1) is cited to teach:
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(Fig. 12).
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.
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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 Brightening agents are added to electroplating baths to improve the appearance, uniformity and functional properties of the deposited metal coating.
2 The brightening agent for one type of bath would have been suitable for the others.
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