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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 September 2, 2026, has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3, 6-8 and 16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 has been amended to recite that lubrication is applied to “a metal sheet that is not laminated with a resin film.” Applicants point to examples 1-37 in their remarks (Remarks, P. 4), however there does not appear to be any discussion of the presence or absence of a film on the blank after a review of these examples as well as the rest of the specification. Paragraph [0088] describes the metal sheet and states that “[n]o particular limitation is imposed on a metal sheet as material to be processed” while providing no description of the absence or presence of a film on the sheet. The examples describe a metal sheet, e.g., an aluminum alloy sheet in Example 1 at Para. [0158], but does state whether or not a film is present or not. Accordingly, there is not written description support for the metal sheet not being laminated with a resin film. Claims 2-3, 6-8 and 16 depend from claim 1 and lack written description for the reasons discussed above.
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.
Claims 1-3 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over JP H10-137861 to Akira in view of US 2023/0166313 A1 to Kiefer in further view of US 2018/0318900 to Takao as evidenced by US 2020/0055147 A1 to Shiroishi.
Regarding claim 1, Akira teaches a method for manufacturing a bottomed cylindrical body (Abstract), comprising:
a lubricant application step (Paras. [0036] and [0039]; a lubricant is applied for the drawing step);
a drawing step of drawing the metal sheet by use of forming members each of which has a hardness of more than hardness of Hv 1500 and less than or equal to 12000 at a processing surface thereof, wherein the metal sheet is formed into a workpiece (Paras. [0019]-[0021] and [0039]; the forming members have a hardness of Hv2500, i.e., between 1500 and 12000);
an ironing step of ironing the workpiece into the bottomed cylindrical body by using a coolant (Figs. 1-4; Paras. [0035]-[0036], [0039] and [0060]; the workpiece is subjected to ironing to form a bottomed cylindrical body and a coolant is used during the ironing process) and by use of forming members each of which has a hardness of HV 8000 to 12000 at a processing surface thereof (Figs. 1-4; Paras. [0012]-[0014] and [0021]; the forming members used in the ironing process have a DLC film on the processing surface which is known to have a hardness of over Hv 8000 depending on the ratio of diamond to graphite, as evidenced by US 2020/0055147 A1 which teaches that in ironing operations a film of diamond and graphite, i.e., a DLC film, has a hardness of over Hv 8000 when more diamonds are used relative to the graphite);
wherein the coolant is a coolant of lower than 4.0 vol% concentration (Para. [0039; the coolant has 2% oil by volume), and
wherein the forming members in the ironing step include an ironing punch and an ironing die (Paras. [0012] and [0019]; the ironing apparatus includes a die and a person of ordinary skill in the art would understand that a punch is used to move the workpiece through the die), and the ironing die has a diamond film at the processing surface thereof (Paras. [0012] and [0021]; the ironing die has a diamond film on the processing surface).
Akira fails to explicitly teach, a lubricant application step of applying liquid lubricant having a viscosity of lower than 200 mPa-s to a surface of a metal plate and a thickness of the diamond film is 5 to 30 um.
Kiefer teaches a method for manufacturing a beverage container (Para. [0002]) comprising a lubricant application step of applying liquid lubricant having a viscosity of lower than 200 mPa-s to a surface of a metal plate prior to a drawing step (Paras. [0012], [0057] and [0060]; a lubricant with a viscosity between 2.5 mPa-s and 190 Mpa-s is applied to a metal blank before it is drawn).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify the lubricating and drawing operations of Akira to include a current provided during the drawing and a lubricant with a viscosity between 2.5 and 190 mPas as taught by Kiefer for better and more precise control over the forming operations, thus reducing the failure rate (Kiefer, Para. [0032]).
Takao teaches a method for forming a bottomed cylindrical body (Fig. 4; Para. [0002]) using forming members having a diamond film that is 5 to 30 um (Figs. 2A, 3A, and 4A-D; Para. [0039]-[0040]; the diamond film is between 5 and 15 um).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify the diamond film to have a thickness between 5 and 30 um as taught by Takao so that the film is not too thin, thus making it difficult to uniformly coat the tool, or too thick, thus degrading the peeling resistance (Takao, Para. [0040]).
Regarding claim 2, modified Akira teaches the method for manufacturing a bottomed cylindrical body according to claim 1 (Abstract), wherein the bottomed cylindrical body is a seamless can body (Paras. [0038]-[0039]; the workpieces are formed to size for the cylindrical body and then drawn and ironed, i.e., the products are seamless).
Regarding claim 3, modified Akira teaches the method for manufacturing a bottomed cylindrical body according to claim 1 (Abstract), wherein the metal sheet is made of an aluminum alloy (Para. [0039]).
Regarding claim 7, modified Akira teaches the manufacturing method of claim 1 (Abstract), further comprising a washing step of removing a lubricant and/or coolant attached on a surface of the bottomed cylindrical body (Para. [0051]; the body is cleaned, i.e., foreign substances on the body are removed).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Akira in view of Kiefer in further view Takao in further view of US 5,020,350 to Knepp as evidenced by Shiroishi.
Regarding claim 6, modified Akira teaches the manufacturing method according to claim 1 (Abstract).
Akira fails to explicitly teach the coolant contains a preservative and/or a corrosion inhibitor.
Knepp teaches a manufacturing method of a cylindrical body including drawing and ironing steps (Abstract) wherein the coolant used in the processes contains a corrosion inhibitor (Col. 8, Lns. 14-18).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify the coolant of Akira to include a corrosion inhibitor as taught by Knepp so that the equipment used in the drawing and ironing processes are protected from corrosion and thus have longer working lifespans.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Akira in view of Kiefer in further view of Takao as evidenced by Shiroishi in further view of US 4,535,615 to Ebben.
Regarding claim 8, modified Akira teaches the manufacturing method a bottomed cylindrical body according to claim 1 (Abstract).
Akira fails to explicitly teach a purification step of purifying effluent discharged in the ironing step and/or a washing step.
Ebben teaches a method of producing cans (Abstract) including a purification step of purifying effluent discharged in the ironing step and/or a washing step (Col. 4, Lns. 13-17).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify the method of producing cylindrical bodies of Akira to include the purification step of Ebben so that the waste water may be cleaned to such an extent that it may be used in other processes, thus reducing waste and increasing efficiency of the process.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Akira in view of Kiefer in further view of Takao as evidenced by Shiroishi in further view of US 4,581,152 to Hotta.
Regarding claim 16, modified Akira teaches the manufacturing method according to claim 1 (Abstract).
Akira fails to explicitly teach wherein an ironing ratio of a first ironing step is set at 10 % or higher and the ironing ratio of a last ironing step is set at 30 % or higher, wherein the ironing ratio = 100 x (tO – t1)/t1, tO is a thickness of the workpiece before ironing and t1 is a thickness of the workpiece after ironing at a portion of 60 mm from a bottom of the body. Akira teaches that the ironing process includes at least two ironing passes (Para. [0060]), but is silent regarding the ironing ratio for the passes.
Hotta teaches a method of drawing and ironing a workpiece into a can shape (Abstract) including multiple ironing passes in which wherein an ironing ratio of a first ironing step is set at 10 % or higher and the ironing ratio of a last ironing step is set at 30 % or higher (Col. 6, Lns. 6-19; the first ironing ratio is 38.2%, i.e., higher than 10%, and the last ironing pass has a ratio of 39.4%, i.e, higher than 30%), wherein the ironing ratio = 100 x (tO – t1)/t1, tO is a thickness of the workpiece before ironing and t1 is a thickness of the workpiece after ironing at a portion of 60 mm from a bottom of the body (Col. 6, Lns. 6-19; the ironing is performed on the length of a can that is 145 mm long, and therefore the ratio would be present at a location 60 mm from the bottom of body as the entire can body is ironed according to the ratio).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify the ironing passes of Akira to have the ironing ratios of Hotta so that the ironing is performed in such a manner that the thickness is not reduced too much on each pass which could result in damage to the can body.
Response to Arguments
Applicant’s amendments and remarks dated September 2, 2026, with respect to the rejections under 35 USC 103 have been fully considered and are persuasive. However, it is noted that the claim amendments introduced 112(a) issues, and amending the claims to remove the limitation that the metal sheet is not laminated with a resin film may result in the previous prior art combination rendering the claimed invention obvious again.
While the rejection has changed, Applicant’s arguments regarding the teachings of Shiroishi and Takao are still applicable and will be addressed below.
Applicant argues that Akira “does not merely teach that a DLC film should have high hardness” but also points to thickness and roughness properties of the film. Remarks, PP. 6-7. This argument is not persuasive as the embodiment of Akira relied upon is with a diamond film (not a DLC film). Applicant has focused on the examples in Akira with a DLC film, however Akira explicitly states that a diamond film may be used in Para. [0021]. Applicant further argues that the rejection should have relied upon Shirioshi as a secondary reference rather than as evidence (Remarks, pages 6-7), which is not persuasive because Shirioshi teaches the hardnesses that a diamond film may have depending on the manner in which it is formed and thus provides evidence that the film in Akira has the claimed hardness. Applicant then provides a response to hypothetical rejections in which Shirioshi is used as a secondary reference (Id.) which is not persuasive because it does not address the pending rejection.
Applicant argues that Akira teaches away from increasing the thickness of the film because Akira teaches the range between 0.5 and 5 μm states that “increasing the thickness of the coating beyond 5 μm is not only uneconomical, rather film becomes brittle.” Remarks, PP. 8-9. However, the discussion highlighted by Applicant is directed to a DLC film and the rejection relies upon a diamond film being used in Akira. While Akira discloses a preference for a DLC film being under 5 μm due to economic factors and the potential brittleness, the reference does not discourage one of ordinary skill in the art from using greater than 5 μm for a diamond film. Accordingly, Akira does not teach away from a diamond film thickness of over 5 μm. Takao teaches the members for forming a cylindrical body include a diamond film of 5 to 30 μm and this thickness is beneficial because the film is not so thin that it is difficult to coat the tool uniformly or too thick which degrades the peeling resistance (Takao, Paras. [0039]-[0040]). Thus, it would have been obvious to modify the diamond film of Akira to include the thickness taught by Takao so that the tool is uniformly coated and there is not degradation to the peeling.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW STEPHENS whose telephone number is (571)272-6722. The examiner can normally be reached M-F 930-630.
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, Chris Templeton can be reached on (571)270-1477. 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.
/MATTHEW STEPHENS/Examiner, Art Unit 3725 /BOBBY YEONJIN KIM/Primary Examiner, Art Unit 3725
Prosecution Insights