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 .
Status of Claims
No claim amendments are made in view of applicant’s response filed 5/11/2026. Therefore, claims 1-7 and 9-20 are currently under examination.
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, 0015-0016], 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 5/11/2026 have been fully considered but they are not persuasive.
In the remarks, applicant argues that EP929 teaches away from using fluoride and chloride ions because they cause unwanted pickling attack.
The examiner does not find applicant’s argument convincing because EP929 teaches both fluoride and chloride ions as optional components in the oxalate solution(abstract). Although the pickling effect from fluoride and chloride are not able to completely dissolve the oxide film, nevertheless, they are prerequisite for formation of a perfectly adhering oxalate coating according to EP929 [0015]. EP929 further teaches that fluoride and/chloride can also be used in the oxalate solution[0016]. Therefore, the examiner maintains that the rejection ground is proper.
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.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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
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