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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/05/2026 has been entered.
Response to Amendment
The amendment filed on 01/05/2026 has been entered into the prosecution of the application.
Claims 32-34 are added, with claim 12 amended.
Currently, claim(s) 12-18 and 24-34 is/are pending.
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(s) 34 is/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.
As to claim 34, the term “to have a brightness comprised between 60 and 75” renders the instant claim indefinite because where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art of electrolytic pickling on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999).
Paragraph [0035] of the instant specification is the only place in the specification submitted 05/20/2022 explicitly mentions “brightness.”
Paragraph [0035] of the instant specification discloses “then their brightness has been assessed by a spectrophotometer, the CM-2600d from ©Konica-Minolta. The picking time corresponds to the time necessary to reach a brightness comprised between 60 and 75, which without to be bound by any theory, indicates that the all (or almost all) the oxide layer has been removed. The shorter the pickling time, the better is the pickling efficiency. It should be noted that the brightness of the surface covered by the scale, prior to its pickling, is of about 30 units and the brightness of a metallic steel without scale is typically in a range between 60 and 75 units depending on the product chemistry and surface morphology (roughness). Thus, the brightness increase during pickling is linked to the removal of the scale.”
Paragraph [0035] does not clearly redefine what a brightness is and how it would be calculated by one of ordinary skill in the art of electrolytic pickling. Instead, paragraph [0035] merely discloses that “brightness” is assessed by a spectrophotometer, the CM-2600d from ©Konica-Minolta.
A claim constructed with a unit of brightness that can only be assessed by a specific instrument raises an indefiniteness issue under 35 U.S.C. §112(b). Accessed on March 31, 2026, https://sensing.konicaminolta.us/us/products/cm-2600d-spectrophotometer/, the manufacturing of the instrument appears to be discontinued. The instrument appears to use ISO Brightness (ISO 2470), which appears to specify a method for measuring the diffuse blue reflectance factor of pulps, papers, and boards; these are not materials typically subjected to materials in the art of electrolytic pickling. Further, the written description for how the brightness in the specification 05/20/2022 does not appear to be readily available at https://www.iso.org/standard/69090.html for the public because ISO 2470 document is available for a purchase by an entity. Therefore, the applicant should clearly define how brightness is defined without adding new matter because there is no showing that one of ordinary skill in the art would have readily known the term “to have a brightness comprised between 60 and 75”.
For examination purposes, “to have a brightness comprised between 60 and 75” is interpreted as “to have the oxide removed” based on paragraph [0035] of the instant specification because the specification teaches that the brightness of the metallic strip increases with the removal of scale layer.
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) 12-13, 15-18, 25, 29, 30-32, and 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over John Collins of US 2003/0075456 (hereinafter, Collins) in view of Tatsuo Izumida of US 4,481,089 (hereinafter, Izumida).
As to claim 12, Collins teaches to a pickling process of a metallic strip including a scale layer comprising the steps of:
passing the metallic strip (Collins, paragraph [0001], teaches to passing the metallic strip, as Collins teaches to apparatus for electrolytically removing material, such as oxide layers, from the surface of a metal sample, such as a stainless steel strip) including the scale layer (Collins, paragraph [0001], teaches to including the scale layer, as Collins teaches to oxide layers) through a pickling bath being at a temperature between 1 and 100 °C (Collins, paragraph [0071], teaches to through a pickling bath being at a temperature between 1 and 100 °C, as Collins teaches to performing electrolytic pickling in a bath at a temperature between 55 °C and 65 °C for the electrolyte comprised of 30% sulfuric acid),
applying an alternating current on the metallic strip passing through the pickling bath (Collins, paragraph [0071], teaches to applying an alternating current on the metallic strip passing through the pickling bath, as Collins teach that AC was used for the pickling processes), the alternating current applying a current density of 1 x 102 to 1 x 105 A.m-2 of unit surface of said metallic strip to said metallic strip passing through the pickling bath (Collins, paragraphs [0060] and [0071], teaches to the alternating current applying a current density of 1 x 102 to 1 x 105 A.m-2 of unit surface of said metallic strip to said metallic strip passing through the pickling bath, as Collins teach to a high current density, typically between 0.1 and 10 A/cm2; 1 A/cm2 of Collins reads as 1 x 104 A.m-2),
wherein the alternating current is applied during a maximum of 300 seconds to the metallic strip as the metallic strip passes through the pickling bath (Collins, paragraphs [0022], [0069], [0073], teaches to wherein the alternating current is applied during a maximum of 300 seconds to the metallic strip as the metallic strip passes through the pickling bath, as Collins teaches that a period of applied alternating current may be of at least several seconds; Collins, paragraph [0073], teaches to 30 seconds, for instance; Collins, paragraph [0069], teaches to removing all traces of scale),
wherein the alternating current has a frequency of at least 15 Hz and at most 50 Hz (Collin, paragraph [0061], teaches to wherein the alternating current has a frequency of at least 15 Hz and at most 50 Hz, as Collins teaches to ideal frequency range of 10 to 500 Hz for the frequency of the applied current waveform in electrolytic pickling).
Collins does not explicitly teach the alternating current having an anodic period and a cathodic period with a cathodic/anodic pulse length ratio from 1.1 to 2.7, wherein the cathodic/anodic pulse length ratio is from 1.5 to 2.4.
In an analogous art, Izumida teaches to the alternating current having an anodic period and a cathodic period with a cathodic/anodic pulse length ratio from 1.1 to 2.7, wherein the cathodic/anodic pulse length ratio is from 1.5 to 2.4. (Izumida, col. 2, ln. 5, teaches to the alternating current having an anodic period and a cathodic period with a cathodic/anodic pulse length ratio from 1.1 to 2.7, wherein the cathodic/anodic pulse length ratio is from 1.5 to 2.4, as Izumida teaches to an electrolysis treatment for electrolytic pickling, whereby the treatment consists of alternatively repeating cathode and anode electrolysis in respective unit periods with a ratio of the cathode electrolysis time to the anode electrolysis time of 1 to 4 in an electrolyte).
Both Collins and Izumida relate to electrolytic pickling (Izumida, col. 3, ln. 14-15). Collins does not explicitly teach the alternating current having a specific cathode to anode pulse length ratio. Collins does teach applying an alternating current on the metallic strip passing through the pickling bath (Collins, paragraph [0071] and Fig. 6). Collins does teach applying the use in electrolysis applications of a waveform containing both anodic and cathodic portions, i.e. current flowing in both directions, teaching advantages (Collins, paragraph [0064]). Collins does teach reversing polarity (Collins, paragraph [0078]). Izumida teaches a ratio of the cathode electrolysis time to the anode electrolysis time (Izumida, col. 1, ln. 59-60).
Therefore, it would have been obvious to one of ordinary skill in the art to have modified the electrolytic pickling method using AC of Collins in view of the pulse length ratio of Izumida for softening the oxide film composed of Fe2O3 and Fe-3O4 in electrolytic removal of iron oxides (Izumida, col. 4, ln. 31-64).
As to claim 13, Collins in view of Izumida teaches to the method of claim 12, wherein the metallic strip is made of steel (Collins, paragraph [0015], teaches to wherein the metallic strip is made of steel).
As to claim 15, Collins in view of Izumida teaches to the method of claim 12, wherein the pickling bath has a temperature of at least 40 °C (Collins, paragraph [0071], teaches wherein the pickling bath has a temperature of at least 40 °C, as Collins teaches to performing electrolytic pickling in a bath at a temperature between 55 °C and 65 °C for the electrolyte comprised of 30% sulfuric acid).
As to claim 16, Collins in view of Izumida teaches to the method of claim 12, wherein the pickling bath has a pickling acid or pickling salt concentration of at least 30 g.L-1 (Collins, paragraph [0068], teaches to wherein the pickling bath has a pickling acid or pickling salt concentration of at least 30 g.L-1, as Collins teaches to using 10 wt% H2SO4 at 60 °C equating to at least 60 g/L of a pickling acid).
As to claim 17, Collins in view of Izumida teaches to the method of claim 12, wherein the pickling bath has a pickling acid or pickling salt concentration of at least 60 g/L (Collins, paragraph [0068], teaches to wherein the pickling bath has a pickling acid or pickling salt concentration of at least 60 g/L, as Collins teaches to using 10 wt% H2SO4 at 60 °C equating to at least 60 g/L of a pickling acid).
As to claim 18, Collins in view of Izumida teaches to the method of claim 12, wherein the current density is at least 1x103 A.m-2 (Collins, paragraphs [0060] and [0071], teaches to wherein the current density is at least 1x103 A.m-2, as Collins teaches to wherein the current density is at least 1x103 A.m-2).
As to claim 25, Collins in view of Izumida teaches to the method of claim 12, wherein the current density is at least 1x104 A.m-2 (Collins, paragraphs [0060] and [0071], teaches to wherein the current density is at least 1x104 A.m-2, as Collins teach to a high current density, typically between 0.1 and 10 A/cm2; 1 A/cm2 of Collins reads as 1 x 104 A.m-2).
As to claim 29, Collins in view of Izumida teaches to the method of claim 12, wherein the pickling bath has a pickling acid concentration of at least 60 g.L-1 (Collins, paragraph [0068], teaches to wherein the pickling bath has a pickling acid concentration of at least 60 g.L-1, as Collins teaches to using 10 wt% H2SO4 at 60 °C equating to at least 60 g/L of a pickling acid).
As to claim 30, Collins in view of Izumida teaches to the method of claim 12, wherein the current density is at least 5 x 103 A.m-2 (Collins, paragraphs [0060] and [0071], teaches to wherein the current density is at least 5 x 103 A.m-2, as Collins teach to a high current density, typically between 0.1 and 10 A/cm2; 1 A/cm2 of Collins reads as 1 x 104 A.m-2).
As to claim 31, Collins in view of Izumida teaches to the method of claim 12, wherein the current density is at least 5 x104 A.m-2 (Collins, paragraphs [0060] and [0071], teaches to wherein the current density is at least 5 x 104 A.m-2, as Collins teach to a high current density, typically between 0.1 and 10 A/cm2; 1 A/cm2 of Collins reads as 1 x 104 A.m-2).
As to claim 32, Collins in view of Izumida teaches to the method of claim 12, wherein the alternating current has a frequency of at least 20 Hz and at most 50 Hz (Collin, paragraph [0061], teaches to wherein the alternating current has a frequency of at least 20 Hz and at most 50 Hz, as Collins teaches to ideal frequency range of 10 to 500 Hz for the frequency of the applied current waveform in electrolytic pickling).
As to claim 34, Collins in view of Izumida teaches to the method of claim 12, wherein the passing of the metallic strip through the pickling bath causes the metallic strip to have a brightness comprised between 60 and 75 (For examination purposes, “to have a brightness comprised between 60 and 75” is interpreted as “to have the oxide removed” based on paragraph [0035] of the specification 05/20/2022 because the specification teaches that the brightness of the metallic strip increases with the removal of scale layer; see rejection under 35 U.S.C. 112(b) for details; as such, Izumida, col. 5, ln. 41, teaches to wherein the passing of the metallic strip through the pickling bath causes the metallic strip to have a brightness comprised between 60 and 75, as Izumida teaches that the film is completely removed; Collins, paragraph [0073], teaches to wherein the passing of the metallic strip through the pickling bath causes the metallic strip to have a brightness comprised between 60 and 75, as thick oxide scale is removed by electrolytic pickling).
Claim(s) 14 and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over John Collins of US 2003/0075456 (hereinafter, Collins) in view of Tatsuo Izumida of US 4,481,089 (hereinafter, Izumida), as applied to claim 12 above, and in further view of Alessandro Dulcetti of WO 02/086199 (hereinafter referred to as Dulcetti).
As to claim 14, Collins in view of Izumida does not explicitly teach wherein the metallic strip passes through the bath at a speed between 10 m.min-1 and 450 m.min-1.
In an analogous art, Dulcetti teaches to wherein the metallic strip passes through the bath at a speed between 10 m.min-1 and 450 m.min-1 (Dulcetti, pg. 8, ln. 30, Example 1, teaches to wherein the metallic strip passes through the bath at a speed between 10 m.min-1 and 450 m.min-1, as Dulcetti teaches to a range of operating speed of stainless-steel strips from 20 to 70 m/min).
Both Collins in view of Izumida and Dulcetti relate to electrolytic pickling (Dulcetti, abstract). Collins in view of Izumida does not explicitly teach the specified speed range of metallic strip. Collins in view of Izumida does teach to an electrolytic pickling. Dulcetti teaches to a continuous electrolytic pickling using a specified speed range of metallic strip for the electrolytic pickling.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Collins in view of Izumida with the speed of the metallic strip of Dulcetti for enabling efficient electrolytic pickling at an industrial setting.
As to claim 26, Collins in view of Izumida does not explicitly teach wherein the pickling bath is maintained at a temperature of 40 °C.
In an analogous art, Dulcetti teaches to the method of claim 12, wherein the pickling bath is maintained at a temperature of 40 °C (Dulcetti, pg. 9, Example 2, and pg. 5, ln. 20-24, teaches to wherein the pickling bath is maintained at a temperature of 40 °C, as Dulcetti teaches to the pickling bath maintained at a temperature of 40 °C and that the acid solution for the electrolytic descaling can be obtained from strong acids, including sulfuric acid and hydrochloric acid, or mixtures thereof, wherein the temperature of the bath ranges from 30 to 100 °C, respectively).
Both Collins in view of Izumida and Dulcetti relate to electrolytic pickling (Dulcetti, abstract). Collins in view of Izumida does not explicitly teach the specified operating temperature. Collins in view of Izumida does teach using temperatures above the specified operating temperature. Dulcetti teaches operating electrolytic pickling at the operating temperature.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Collins in view of Izumida with the temperature of Dulcetti for enabling efficient electrolytic pickling at optimized temperatures.
Claim(s) 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over John Collins of US 2003/0075456 (hereinafter, Collins) in view of Tatsuo Izumida of US 4,481,089 (hereinafter, Izumida), as applied to claim 12 above, and in further view of Franz Gerhard Pempera of US 5,804,056 (hereinafter referred to as Pempera).
As to claim 27, Collins in view of Izumida does not explicitly teach wherein the scale layer has a thickness of from 4 to 20 µm.
In an analogous art, Pempera teaches to wherein the scale layer has a thickness of from 4 to 20 µm (Pempera, col. 5, ln. 40, teaches to wherein the scale layer has a thickness of from 4 to 20 µm, as Pempera teaches that total scale layer subjected to electrolytic pickling may have a thickness of approximately 10 to 15 µm; Pempera, col. 2, ln. 4-12, teaches that while hot strip generally involves larger strip thickness and cold strip involves smaller strip thickness, the thickness ranges of individual product lines can overlap to a greater or lesser extent).
Both Collins in view of Izumida and Pempera relate to electrolytic pickling (Pempera, col. 5-8). Collins in view of Izumida does not explicitly teach a specified thickness of the scale layer on which the electrolytic pickling can be performed. Collins in view of Izumida does teach the thickness to be approximately 100 μm thick. Pempera teaches the thickness of 4 to 20 μm.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Collins in view of Izumida with the specified thickness of Pempera for using the electrolytic pickling for scale layers of different thickness.
Claim(s) 24 and 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over John Collins of US 2003/0075456 (hereinafter, Collins) in view of Tatsuo Izumida of US 4,481,089 (hereinafter, Izumida), as applied to claim 12 above, and in further view of Ralf Waldmann of DE 19624436 A1 (hereinafter, Waldmann).
As to claim 24, Collins in view of Izumida does not explicitly teach wherein the pickling bath comprises HCl in a concentration of at least 60 g.L-1.
In an analogous art, Waldmann teaches to the method of claim 12, wherein the pickling bath comprises HCl in a concentration of at least 60 g.L-1 (Waldmann, paragraph [0013], teaches to wherein the pickling bath comprises HCl in a concentration of at least 60 g.L-1, as Waldmann teaches to the picking solution containing about 70-140 g/L of HCl; Waldmann, paragraph [0007], teaches that the pickling solution of HCl is relatively inexpensive, easily regenerable and enables wastewater-free surface treatment).
Both Collins in view of Izumida and Waldmann relate to electrolytic pickling (Waldmann, paragraph [0011]). Collins in view of Izumida does not explicitly teach using a specific concentration of HCl for electrolytic pickling. Collins in view of Izumida does teach using HCl for electrolytic pickling for stainless steels. Waldmann teaches a specific HCl concentration for electrolytic pickling of stainless steels.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Collins in view of Izumida with the HCl concentrations of Waldmann for enabling efficient electrolytic pickling of stainless steels.
As to claim 28, Collins in view of Izumida does not explicitly teach wherein the alternating current is applied using a series of electrodes on both sides of the metallic strip that alternate between an anode and a cathode the electrodes being within the pickling bath and facing the metallic strip.
In an analogous art, Waldmann teaches to wherein the alternating current is applied using a series of electrodes on both sides of the metallic strip that alternate between an anode and a cathode the electrodes being within the pickling bath and facing the metallic strip (Waldmann, paragraph [0011], Fig. 2, teaches to wherein the alternating current is applied using a series of electrodes on both sides of the metallic strip that alternate between an anode and a cathode the electrodes being within the pickling bath and facing the metallic strip, as Waldmann teaches to a typical electrolytic pickling setup as shown in the Fig. 2 in an industrial setting).
Both Collins in view of Izumida and Waldmann relate to electrolytic pickling (Waldmann, paragraph [0011]). Collins in view of Izumida does not explicitly teach a series of electrodes. Collins in view of Izumida does teach electrolytic pickling. Waldmann teaches to a series of electrodes used for electrolytic pickling in the recited configuration, a typical electrolytic pickling setup.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Collins in view of Izumida with the series of electrodes of Waldmann for enabling efficient electrolytic pickling in an industrial setting.
Claim(s) 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over John Collins of US 2003/0075456 (hereinafter, Collins) in view of Tatsuo Izumida of US 4,481,089 (hereinafter, Izumida), as applied to claim 12 above, and in further view of Wilhelm Karner of US 6,120,671 A (hereinafter, Karner)
As to claim 33, Collins in view of Izumida does not explicitly teach wherein the electrodes are positioned at a distance between 1 and 10 cm from the metallic strip.
In an analogous art, Karner teaches to the method of claim 28, wherein the electrodes are positioned at a distance between 1 and 10 cm from the metallic strip (Karner, col. 3, ln. 38, teaches to wherein the electrodes are positioned at a distance between 1 and 10 cm from the metallic strip, as Karner teaches that the spacing between any of the electrodes and the strip can be anywhere between 1 and 15 mm, or could also be up to 150 mm, if desired, as the spacing can be any practical value as would be appreciated by one skilled in the art).
Both Colins in view of Izumida and Karner relate to electrolytic pickling (Karner, col. 1, ln. 54). Collins in view of Izumida does not explicitly teach the specific value of a distance for the distanced electrodes from the metallic strip. Collins in view of Izumida does teach using cathodes and anodes for electrolytic pickling. Karner teaches to the specific range of distances between electrode and the metallic strip for electrolytic pickling. See col. 1, ln. 25, of Karner for what is very well known in the art.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Collins in view of Izumida with the specific distance between the electrodes used and the metallic strip used for enabling efficient electrolytic pickling.
Response to Arguments
Applicant's arguments filed 01/05/2026 have been fully considered but they are not persuasive.
On pg. 5 of 10, the applicant asserts that “the Office has not met the burden of establishing that this language i[s] not clear and definite.”
A claim constructed with a unit of brightness that can only be assessed by a specific instrument raises an indefiniteness issue under 35 U.S.C. §112(b). Accessed on March 31, 2026, https://sensing.konicaminolta.us/us/products/cm-2600d-spectrophotometer/, the manufacturing of the instrument appears to be discontinued. The instrument appears to use ISO Brightness (ISO 2470), a standard defined by an entity. The standard appears to specify a method for measuring the diffuse blue reflectance factor of pulps, papers, and boards; these are not materials typically subjected to materials in the art of electrolytic pickling. Further, the written description for how the brightness in the specification 05/20/2022 does not appear to be readily available at https://www.iso.org/standard/69090.html for the public because ISO 2470 document is available for a purchase by an entity. There is no showing that one of ordinary skill in the art would have readily known the term “to have a brightness comprised between 60 and 75”. The brightness is not a standard widely used or recognized by ordinary skill in the art of electrolytic steel pickling. Therefore, the applicant bears the burden to clearly disclose how brightness is defined without adding new matter for the term “to have a brightness comprised between 60 and 75”.
The term “to have a brightness comprised between 60 and 75” renders the instant claim indefinite because where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art of electrolytic pickling on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999).
Paragraph [0035] of the instant specification is the only place in the specification submitted 05/20/2022 explicitly mentions “brightness.”
Paragraph [0035] of the instant specification discloses “then their brightness has been assessed by a spectrophotometer, the CM-2600d from ©Konica-Minolta. The picking time corresponds to the time necessary to reach a brightness comprised between 60 and 75, which without to be bound by any theory, indicates that the all (or almost all) the oxide layer has been removed. The shorter the pickling time, the better is the pickling efficiency. It should be noted that the brightness of the surface covered by the scale, prior to its pickling, is of about 30 units and the brightness of a metallic steel without scale is typically in a range between 60 and 75 units depending on the product chemistry and surface morphology (roughness). Thus, the brightness increase during pickling is linked to the removal of the scale.”
Paragraph [0035] does not clearly redefine what a brightness is and how it would be calculated by one of ordinary skill in the art of electrolytic pickling. Instead, paragraph [0035] merely discloses that “brightness” is assessed by a spectrophotometer, the CM-2600d from ©Konica-Minolta.
For examination purposes, “to have a brightness comprised between 60 and 75” is interpreted as “to have the oxide removed” based on paragraph [0035] of the instant specification because the specification teaches that the brightness of the metallic strip increases with the removal of scale layer.
Please refer to the rejection claim 34 under 35 U.S.C. 112(b) above.
On pg. 8 of 10, the applicant asserts criticality of the claimed invention and refers to MPEP §716.02(e) in concluding that the Office is in error for comparing the data of the present application to a Collins/Izumida combination that did not exist in the prior art. In particular, the applicant emphasizes the operating frequency of the applied alternating current for the electrolytic pickling, wherein the cathodic/anodic pulse length ratio is from 1.5 to 2.4.
The Examiner appreciates the Applicant’s assertion for criticality of the claimed invention, relying on Fig. 13 and 14 from Drawings 05/20/2022. However, the data does not show the claimed range is unexpectedly better because Fig. 13 and 14 does not compare to the range outside the claimed range to show the unexpected element. Without showing of a comparison, the unexpected element of criticality is less convincing, and therefore the claims do not have unexpected results.
Further, the claimed invention is being compared with the closest subject matter that exists in the prior art. The operating frequency range for the electrolytic pickling for operating cathode electrolysis and anode electrolysis is explicitly taught by Collins for the inventive concept revealed in Collins. Collins does not explicitly teach the recited cathodic/anodic pulse length ratio. Izumida cures the deficiency because Izumida teaches the recited cathodic/anodic pulse length ratio for the electrolytic pickling. Izumida does not explicitly teach operating at the recited frequency range, but Izumida does not need to. Collins already teaches operating at the recited frequency range is very well known in the art. For an invention to be critical, there has to be a showing or general understanding in the art that the other operable frequency would not have been sufficient, making the claimed invention distinct. MPEP §716.02(b).I. teaches that applicants have burden of establishing results are unexpected and significant, and MPEP §716.02(b).II. teaches that applicants have the burden of explaining proffered data. Mere conclusions are not entitled the weight of conclusions accompanying the evidence, either in the specification or in a declaration.
The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. Further, Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.
For these reasons, the rejection is maintained for previously presented claims.
For added claims, please refer to the rejection above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN LEE whose telephone number is (703)756-1254. The examiner can normally be reached M-F, 7:00-16:00.
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/JOHN LEE/Examiner, Art Unit 1794
/JAMES LIN/Supervisory Patent Examiner, Art Unit 1794
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