DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1 and 3-19 are pending as amended on 2/17/2026. Claims 13-19 stand withdrawn from consideration.
The non-substantial modifications made to the rejections under 35 USC 112(b) and 103 set forth below were necessitated by Applicant’s amendments to the claims. Therefore, this action is properly made final.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Claim Rejections - 35 USC § 112
Claims 9 and 11 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.
Claim 9 depends from claim 1 and recites “wherein the amine-based catalyst is divided into primary amine…, secondary amine…, or tertiary amine…” The phrase “is divided into” is not conventionally used claim language. It is not clear whether “is divided into…” has the same meaning as “is a…” The claim should be amended to replace “divided into” with “a” if this meaning was intended, or, the claim should be amended to clearly indicate the intended meaning.
Claim 11 depends from claim 1 and further limits the wax by reciting “wherein the wax is at least one of waxes containing” followed by a list of waxes. Claim 11 is not recited in a proper Markush group format, and it is not clear whether the recited list is open or closed to other waxes (see MPEP 2117 for guidelines regarding Markush claims). The examiner suggests replacing “is at least one of waxes containing” with “is”.
Claim Rejections - 35 USC § 103
Claim(s) 1 and 3-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jo et al (EP 3444303 A2) in view of Park et al (KR-100797321-B1; included machine translation cited herein), Jo et al (US 2010/0291379 “herein Jo-2”) and Choi et al (KR 2014-0051703-A; included machine translation cited herein).
As to claims 1, 5, 6 and 11, Jo discloses a composition for providing a resin-coated steel sheet which has high quality texture, high formability and high chemical resistance [0001] comprising [0009]:
30-60 wt% of a urethane-modified polyester resin (meeting the instant “(a)” component, including the recited range),
3-15 wt% of a melamine curing agent (meeting the instant “(b)” component, including the recited range),
0.1-15 wt% of an inorganic color pigment (which can be graphite [0023], meeting the thermally conductive pigment “(c)” component),
0.05-1.5 wt% of acid curing catalyst and 0.05 to 1.5 wt% of amine curing catalyst (meeting the instant “(d)” components, including the recited ranges),
An additive such as wax [0083] (meeting the instant “(e)” component),
And a remainder of solvent [0084] (meeting instant “(f)”).
As to the instant pigment (c):
As set forth above, Jo teaches 0.1-15 wt% of an inorganic color pigment, which can be graphite [0023]. Jo fails to characterize graphite as “thermally conductive,” however, instant claim 6 recites graphite as a thermally conductive pigment, and therefore, there is reasonable basis to conclude that “graphite,” as taught by Jo, is a thermally conductive pigment meeting instant claim 1 (and claim 6) because it is the same material which is presently characterized as being thermally conductive. Additionally, Jo teaches that if the content of the inorganic pigment is less than 0.1 wt%, it is difficult to provide attractive color, while if greater than 15 wt%, increased solution viscosity causes poor workability [0061]. It would have been obvious to the person having ordinary skill in the art, therefore, to have selected any appropriate amount of graphite within Jo’s disclosed range of 0.1-15 wt% in order to achieve a desired balance between appearance and solution viscosity, including an amount within the presently claimed range of 1 to 20 pbw.
Jo fails to teach including an anti-corrosive pigment.
Park teaches a composition for treating the surface of a steel sheet (p 2, second paragraph). Like Jo, Park teaches a composition which comprises a resin, such as polyester resins (p 3). Park further teaches including 10-40 wt% silica (p 3), such as colloidal silica (p 5) in order to improve corrosion resistance. If silica is added at less than 10 wt%, the improvement of corrosion resistance is insufficient, and if it exceeds 40 wt%, no further improvement in corrosion resistance is exhibited and the resin coating film becomes hard and easily breaks during processing (p 6, first paragraph).
Similarly, Jo-2 teaches a composition for a resin-coated steel sheet which provides excellent properties, including corrosion resistance [0009], and comprises a polyester resin, a melamine-based curing agent and a pigment such as graphite [0014, 0020, 0044]. Jo-2 teaches adding a flatting agent (preferably silica) to the resin composition in an amount of 2 to 8 parts by weight to improve the corrosion resistance of a resin-coating film, and, to achieve a desired level of gloss and composition viscosity [0047]. Jo-2 further teaches colloidal silica as capable of endowing a steel sheet with corrosion resistance [0073].
Considering the disclosures of Park and Jo-2, when forming a composition for coating the surface of a steel sheet, the person having ordinary skill in the art would have been motivated to add silica (e.g., colloidal silica, as recited in instant claim 6) in order to improve corrosion resistance. Additionally, the person having ordinary skill in the art would have been motivated to select an appropriate amount of silica in order to achieve sufficient corrosion resistance and a desired level of gloss and viscosity, while also avoiding cracking/film hardening due to excessive amounts of silica. It would have been obvious to the person having ordinary skill in the art, therefore, to have included silica (e.g., colloidal silica) in Jo’s composition for coating a steel sheet in any appropriate amount (such as 10-40 wt% as taught by Park, or 2 to 8 pbw as taught by Jo-2) in order to provide corrosion resistance to Jo’s coating, including an amount within the presently claimed range of 1-20 pbw, thereby arriving at a composition which includes a component (i.e., silica/colloidal silica) corresponding to the presently recited anti-corrosive pigment.
As to instant wax (e):
As set forth above, Jo teaches including an additive such as wax [0083]. However, Jo fails to teach a suitable amount of wax.
Like Jo, Choi teaches a resin composition for application to a surface of a steel sheet comprising a polyester resin, a pigment dispersion, a wax, a crosslinking agent and a catalyst (p 3, middle), where the pigment can be graphite (p 7), the crosslinking agent can be melamine-based (p 8, top), and the acid can be a sulfonic acid (p 9). Choi teaches that the wax serves to increase physical properties such as lubricity, and that if the content is less than 0.1 wt%, lubricity is insufficient, while if the wax content exceeds 10 wt%, the coating film may lack adhesion (p 8, lower half). Choi names various examples of waxes, including polyethylene and polypropylene (p 8, lower half), which are species recited in instant claim 11.
Considering Choi’s disclosure, when forming a composition for coating the surface of a steel sheet which contains wax, the person having ordinary skill in the art would have been motivated to select any amount of a wax known in the art for use in steel coating compositions (such as polyethylene or polypropylene wax) within a range of 0.1-10 wt% in order to achieve a desired balance between lubricity and adhesion in the coating. Therefore, when preparing a composition comprising wax for coating steel, as suggested by modified Jo, it would have been obvious to the person having ordinary skill in the art to have utilized a known wax (such as polyethylene or polypropylene) in any amount within a range of 0.1-10 wt%, as taught by Choi, including an amount within the presently claimed range of 0.05 to 5.0 pbw.
As to the recitation that the composition has “excellent weather resistance and heat-radiation characteristics,” as set forth above, modified Jo suggests a composition which comprises substantially the same components as in the examples in the instant specification which are considered to have “excellent” weather resistance and heat radiation characteristics. See [0190]. There is reasonable basis to conclude, therefore, that modified Jo suggests a composition exhibiting weather and heat radiation characteristics which are substantially similar to the instant compositions (i.e., within the scope of the term “excellent” as presently recited).
As to claim 3, modified Jo suggests a composition according to claim 1, as set forth above. Jo teaches that the modified polyester resin has a molecular weight ranging from 2000-40,000 (less than 2000 results in insufficient chemical resistance and formability; greater than 40,000 results in deteriorated storage stability and workability) [0042]. It would have been obvious to the person having ordinary skill in the art, therefore, to have selected any appropriate molecular weight within Jo’s range of 2000-40,000 to achieve a desired balance in properties as taught by Jo, including a molecular weight within the presently claimed range of 5000-50,000.
As to claim 4, modified Jo suggests a composition according to claim 1, as set forth above. Jo teaches that the resin has a hydroxyl value of 20 to 400 (encompassing the claimed range of 20-60) and acid value of 5 to 30 mgKOH/g (overlapping the claimed range of 1 to 20 mgKOH/g). Lower values result in deteriorated crosslinking, higher values result in deteriorated chemical resistance [0045-46]. It would have been obvious to the person having ordinary skill in the art, therefore, to have selected any appropriate acid value and any appropriate hydroxyl value within the corresponding ranges taught by Jo, including values within the presently claimed ranges, in order to achieve a desired balance between chemical resistance and crosslinking.
As to claims 7 and 8, modified Jo suggests a composition according to claim 1, as set forth above. Jo teaches that the acid catalyst may be sulfonic acid (such as dinonylnaphthalene sulfonic acid, “DNNSA”) blocked with an organic chain (such as with an amine-based compound as a blocking substance) [0055-56]. It would have been obvious to the person having ordinary skill in the art, therefore, to have selected any appropriate acid catalyst from the list of those named by Jo in order to achieve a desired curing temperature of the coating layer [0057], including amine-blocked DNNSA.
As to claims 9 and 10, modified Jo suggests a composition according to claim 1, as set forth above. Jo teaches that the amine-based catalyst may be primary, secondary or tertiary amine (as recited in instant claim 9), and names several examples thereof which are recited in instant claim 10, including di-n-butylamine [0058].
As to claim 12, modified Jo suggests a composition according to claim 1, as set forth above. Jo further teaches the addition of pigment agglomeration inhibitor, antifoaming agent and leveling agent [0083].
Response to Arguments
Applicant's arguments filed 2/17/2026 have been fully considered.
Applicant argues (p 7) that the cited prior art uses wax conventionally as a friction modifier to tune lubricity/adhesion, while the presently claimed invention uses wax to control morphology, govern curing-induced surface structure and spacing to deliver the claimed combination of processability, weather resistance and surface quality.
However, as acknowledged by Applicant in both the remarks on p 7 and in the specification as filed (see [0078]: in general, wax is used for the purpose of improving frictional properties of the coating film), and further consistent with the disclosures of the cited prior art, one having ordinary skill would have been motivated to include a wax additive as disclosed by primary reference Jo, and, would have been motivated to optimize the content of wax within Choi’s disclosed range, in order to achieve the desired lubricity/frictional properties for which the use of wax is known in the art.
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, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). See MPEP 2144(IV). 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). Therefore, Applicant’s argument that the prior art fails to recognize that wax can be used for morphology control is not sufficient to overcome the prima facie case of obviousness, because the prior suggests including wax for a different purpose/to solve a different problem.
Applicant argues (p 8) that the cited art does not teach any criticality associated with the claimed range of 0.05 to 5.0 parts by weight. Applicant provides additional experimental results (comparative example 5). The evidence submitted by Applicant fails to comply with 37 CFR 1.132 because it is not in the form of an oath or declaration (when any claim of an application or a patent under reexamination is rejected or objected to, any evidence submitted to traverse the rejection or objection on a basis not otherwise provided for must be by way of an oath or declaration…). If Applicant wishes to overcome the rejection of record by submitting experimental data, Applicant must submit the new data by way of an oath or declaration.
In the interest of compact prosecution, the following discussion is provided with regard to the experimental data submitted by Applicant:
Applicant has provided a comparison of a steel sheet coated with inventive example 2 and a steel sheet coated with new comparative example 5 data to show that several properties are inferior when wax is not included in the composition. However, Applicant’s data is not sufficient to overcome the rejection of record for at least the following (non-exhaustive) reasons:
Applicant must compare the claimed subject matter with the closest prior art to rebut a prima facie case of obviousness, as set forth in MPEP 716.02(e). Primary reference Jo requires using a specific urethane-modified polyester resin having both a linear structure and a crosslinked structure in a specified weight ratio. The resin used in the instant examples is characterized as a urethane-modified polyester [00141], but there is no disclosure with regard to a linear and crosslinked structure. For at least this reason, it is not clear that comparative example 5 represents the closest prior art.
To establish unexpected results over a claimed range, Applicant should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range, as set forth in MPEP 716.02(d). As set forth in the rejection of record, the cited prior art renders obvious the use of wax within a range of 0.1-10 wt% in order to achieve a desired balance between lubricity and adhesion in the coating, which overlaps the claimed range of 0.05 to 5.0 parts by weight of a wax. Applicant alleges that a composition having 0.5 wt% wax exhibits unexpected improvements in properties when compared to the same composition without wax. However, Applicant has not provided sufficient data to establish that the alleged unexpected result is achieved for a wax content at the claimed lower endpoint of 0.05 wt%, nor has Applicant established that the alleged unexpected result is only achieved at wax contents within the claimed range, and not throughout the entire range disclosed by the cited prior art (i.e., Applicant has not provided any comparison to compositions having wax contents above 5.0 wt% to 10 wt%). For at least this reason, Applicant has not demonstrated criticality of the claimed wax content range.
Evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support, as set forth in MPEP 716.02(d). The present claims encompass a very large number of species for each generically recited component of the composition, yet Applicant has only provided data comparing compositions comprising one species encompassed by each recited component. For at least the reason that Applicant has not provided sufficient evidence to show that the allegedly unexpected results would be obtained for all species encompassed by the present claims, Applicant’s data is not sufficient to overcome the present rejection by showing unexpected results.
Additionally, the present claims are drawn to a composition. In contrast, Applicant’s allegedly unexpected results are demonstrated for coated plated steel sheets formed in a specific manner [00148-00150]. The claimed compositions are considered to have utility other than for making coated plated steel sheets using the same conditions exemplified by Applicant (see, e.g., conditions exemplified by Jo, which differ from those exemplified by Applicant). Because Applicant’s examples do not present evidence drawn directly to the compositions themselves, the experimental results are not considered to be probative regarding nonobviousness of the presently claimed composition.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 RACHEL KAHN whose telephone number is (571)270-7346. The examiner can normally be reached Monday to Friday, 8-5.
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/RACHEL KAHN/Primary Examiner, Art Unit 1766