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 .
The amendment dated 06/26/2026 has been considered and entered. The response was considered but was not found to be persuasive. Therefore, the previous rejections are maintained.
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.
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.
Claims 1 – 14 are rejected under 35 U.S.C. 103 as being unpatentable over Chikara et al. (JP 2017105986) and alternatively in further view of Kawanishi et al. (JP 2004052072A)
In regard to claims 1 – 5, Chikara teaches lubricant coating for stainless steel plates and lubricated stainless steel plates having a coating comprising acrylic resin and polyethylene wax, the polyethylene wax has a melting point of 115℃ or greater and is present in the acrylic resin at amounts of from 20 to 50% by mass (title, abstract). The composition is paint that can further comprise an organic calcium compound in amounts of from 1 to 10% by weight of the resin [0010].
The coating is present in amounts of from 0.5 to 2.5g per side after drying [0010]. The polyethylene wax has a melting point of preferably 120℃ or higher, or 130℃ or higher and 145℃ or lower and has a particle size of preferably less than 1 mm, and preferably less than 0.2 mm [0015]. The amount of solid in the paint, comprising acrylic resin, polyethylene wax and calcium compound, is from 1 to 50% by mass [0021]. Chikara recites that average weight of the coating per side as present in claim 4 and thus provides the claimed limitations.
Chikara does not recite the average roughness of the precoated sheet. However, it is noted that such roughness values for steel sheets are known in the art and are obvious in view of Kawanishi.
Kawanishi teaches steel sheets similarly useful for automobile parts, and which are similarly coated but have a surface roughness before coating of 0.7 mm or higher and peak per inch (PPI) of 120 or more to providing a coating thickness of from 0.3 to 10 g/m2 (abstract, spec). The claimed limitations of formulas 1 and 2 are thus provided.
Thus, at least in view of Kawanishi it would have been obvious to have used steel sheets having similar surface roughness and/or coating weights in Chikara, as they are drawn similarly to steel sheets for the automotive industry.
In regard to claim 5, Chikawa teaches the steel sheet and coating having the particle size of the wax as previously stated.
In regard to claims 6 – 9, Chikawa teaches the steel sheet having the claimed limitations as previously stated.
In regard to claim 10, Chikawa in view of Kawanishi teaches the coating and steel sheet comprising the coating thus providing the method of manufacturing the sheet, wherein when the sheet is coated with the coating composition, the method is intrinsically performed.
In regard to claim 11, Chikawa teaches the steel sheet and provides the method. While the drying temperature for preparing coated sheet is not particularly recited by Chikawa, Kawanishi teaches a drying temperature of 200℃ or less or preferably 120℃ or less, and thus such drying temperatures would be useful for the steel sheets of Chikawa [0050].
In regard to claim 12, Chikawa provides the method and the composition having the claimed amount of organic resin and wax in the paint composition.
In regard to claim 13, Chikawa provides the method and the coated surface having the claimed amount of coating, thus fulfilling the claimed method.
In regard to claim 14, Chikawa in view of Kwanishi teach the coated surface having the amounts of coating in the claimed range which would be expected to provide similar coefficient of friction as claimed, as demonstrated by the examples in Table 7 of the instant specification.
Response to Arguments
Applicant’s arguments have been considered but are not persuasive.
Applicant argues that the surface roughness values is a property of the sheet and not a product by process limitation, and should be given proper weight. The argument is moot.
The surface roughness was given proper weight in the rejections above.
Applicant argues that Chikawa and Kawanishi are different because Chikawa is drawn to press forming while Kawanishi is drawn to ironing and thus are not combinable. The argument is not persuasive.
Chikawa teaches steel sheets for press working such as drawing (i.e., cold drawing) and which is similar to Kawanishi which also teaches steel sheets for press forming, ironing, cold forging and cold drawing and thus makes them analogous. Also both references teach sheets useful in the automotive industry.
Applicant argues that Chikara fails to teach the claimed Ra and W values of the claims. The argument is not persuasive.
Kawanishi was combined to teach the values. Applicant’s argument is a piecemeal analysis of the references.
Applicant argues that the surface roughness values are critical and relies upon the data in Table 7 to demonstrate criticality. The argument is not persuasive.
The inventive examples are not commensurate in scope with the claims.
While the claims recites amounts of coating according to the expressions of formula (1) and optionally formula (2) which are unbounded in value, the amount of coating (W) in the inventive examples are between 0.3 and 2 g/m2 which does not support the breadth of the claims, nor demonstrate criticality of the claimed range.
While the claims allow for any suitable value for surface roughness, Ra, that satisfies the equation of formulas (1) and (2), the inventive examples require a narrow range which does not support the breadth of the claims.
The results are not persuasive.
The results merely demonstrate improved friction coefficient of the inventive examples having 0.3 to 2 g/m2 film coating over the comparative examples with much less amount of film coating of 0.2 g/m2. This is not a proper demonstration of criticality. The results are merely additive.
Thus, applicant fails to provide inventive examples that are commensurate in scope with the claims for demonstrating criticality and superior properties.
Applicant previously argued that Kawanishi does not recite the Ra value of the claim which is a variable. The argument was not persuasive.
While the Ra value is in an expression, it may be a constant and does not have to be a variable. The expression is an expression for W and the values for W are provided in the dependent claims. Since Kawanishi provides Ra values and W values of the claims, the claimed limitations are met.
Applicant previously argued that it would not have been obvious to have replaced the lithium silicate of Kawanishi with the organic coating of Chikawa. The argument was not persuasive.
Kawanishi was added to the extent that it teaches suitable coating thickness for steel sheets used in cold working of automobile parts. The motivation to combine was not based on the motivation to replace the silicate base material of Kawanishi with an organic material from Chikawa.
Conclusion
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.
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771
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