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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/22/2026 has been entered.
Status of Claims
Claims 1 and 7 are amended in view of applicant’s response filed 1/22/2026. Claim 8 is canceled. Therefore, claims 1-7 and 9-20 are currently under examination.
Claim Rejections - 35 USC § 103
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) 1-7 and 9-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP0232929A1(EP929), and further in view of CN105940144(CN144).
EP929 teaches a method for treating a stainless steel substrate to form a lubricating layer prior to cold working, comprising contacting a surface of the metal substrate with an aqueous treatment/coating composition(abstract) that applies to the instant claims as follows:
Coating composition
Instant Invention
EP929 (translation)
Oxalate anions
2-500g/l
20-100g/l (abstract, [0010])
Thiosulfate anions
0.01-25g/l
0.1-10g/l (abstract, [0012])
Chloride anions
0.1-25g/l
Optional (abstract, [0016])
Film-forming polymer
comprising monomers such as vinyl pyrrolidone, etc.
0.05-20wt%
Polyvinyl pyrrolidone
0.3-3g/l (abstract, [0009])
Wax
Polyolefin waxes, etc.
0.1-20wt%
fluoride/bifluoride anions
0.01-25g/l
Optional (abstract, [0016])
pH
Below 2.0
Treatment temperature
20-95°C
85-95°C [0014]
Coating weight
1.0-40.0g/m2
>2g/m2 [0027]
EP929 further teaches the claimed drying step after the treatment step[0021].
However, EP929 does not explicitly teach the claimed pH and the claimed wax in its treatment solution.
CN144 teaches a method of treating a stainless steel surface with an aqueous lubricating oxalate solution that additionally comprises 0.001-20g/l of wax [0043], wherein the oxalate solution has a pH of 0.2-2[0062].
Regarding claims 1-7, 9-10, 13-14 and 16-20, it would have been obvious to one of ordinary skill in the art to have incorporated the wax as taught by CN144 into the oxalate solution of EP929 in order to prepare the stainless steel surface from subsequent cold forming step as taught by CN144(claims 6-8). Additionally, it would have been obvious to one of ordinary skill in the art to have incorporated the acidic pH of 0.2-2 as taught by CN144 into the oxalate solution of EP929 with expected success since CN144 teaches an acidic aqueous oxalate based coating composition with such a pH is capable of forming a lubricant coating suitable for severe cold forming without using environmentally harsh chemicals[0028-0029].
Additionally, the amounts of polyvinyl pyrrolidone and the amount of wax in the oxalate treatment solution of EP929 in view of CN144 significantly overlap the claimed amounts of polymer and wax. Therefore, a prima facie case of obviousness exists. See MPEP 2144.05.
Furthermore, EP929 teaches that fluoride and/or chloride produces a pickling effect to remove the oxide on the metal surface[0002,0016], which shows that the concentrations of fluoride and/or chloride are result effective variables that affect the removal of oxide on the metal surface in preparation to form a lubricating oxalate film. Therefore, it would have been well within the skills of an ordinary artisan to have arrived at the claimed fluoride and chloride concentration via routine optimization in order to achieve desired pickling effect and to remove oxide from the stainless steel surface, absent persuasive evidence that the claimed particular concentrations of fluoride and chloride ions are significant.
Regarding claims 11-12, the process of EP929 In view of CN144 produces a pretreated stainless steel substrate having a coating weight that significantly overlap the claimed coating weight. Addition, the examples of EP929 demonstrate coating weights that read on the claimed coating weight (see table on page 9).
Regarding claim 15, CN144 further teaches that the treatment solution can be produced by diluting from a concentrate[0058-0060].
Response to Arguments
Applicant's arguments filed 1/22/2026 have been fully considered but they are not persuasive.
In the remarks, applicant argues that C2-C5(comparative examples 2-5) of the instant application collectively demonstrate that all the claim elements are necessary to produce the superior results exemplified in the instant application.
The examiner does not find applicant’s argument convincing because combined teachings of EP929 in view of CN144 teaches all components of claimed aqueous lubricant composition. C2(comparative example 2) of the instant application does not include chloride. C3(comparative example 3) of the instant application does not include a thiosulfate. C4(comparative example 4) of the instant application neither includes a chloride nor a thiosulfate. C5(comparative example 5) of the instant application has a higher than claimed pH. However, the combined teaching of EP929 in view of CN144 includes all of the missing ingredients of C2-C4 and claimed pH not included in C5.
Additionally, the independent claim 1 does not include any concentration ranges for the claimed oxalate anions, thiosulfate anions, polymer and wax. The aqueous composition I1 discussed in the instant specification merely represent just one particular composition out of infinite possible compositions with various concentrations allowed by the independent claim 1. Therefore, the aqueous composition I1 is not commensurate with the scope of instant claim 1. Additionally, C5 shows only one pH of greater than 3, which is about at least 50% higher than the claimed pH of less than 2. There are not sufficient data in pH values just outside of the claimed pH upper limit such as a pH of 2 or values very close to 2. Therefore, the embodiment and comparative examples as shown in the instant specifications are not sufficient to establish the surprising result of a treatment method utilizing the claimed aqueous composition.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
EP0233503 teaches a process of forming lubricating coating on a surface of stainless steel using a treatment solution comprising 10-50g/l of oxalic acid, 0.1-5g/l of fluoride, 1-10g/l of polymer such as polyvinylpyrrolidone, wherein the coated stainless steel is further subjected to cold working.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOIS L ZHENG whose telephone number is (571)272-1248. The examiner can normally be reached Mon-Fri 8:15-4:45.
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LOIS ZHENG
Primary Examiner
Art Unit 1733
/LOIS L ZHENG/Primary Examiner, Art Unit 1733