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 Pre-brief request dated 12/22/2025 was considered. This non-final rejection is being made to address the objections made to claim 11 in the Pre-brief request. All other claims remain rejected as previously.
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 – 13 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 regards 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 a 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 provide the claimed limitations.
While the claims recite a roughness value prior to coating, the claims are drawn to a coated sheets and not uncoated sheets with the roughness value (Ra) as claimed. Thus, the coated sheet of the claim is taught. However, to the extent that the average roughness of the precoated sheet is critical, 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 has 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 limitation 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 regards to claim 5, Chikawa teaches the steel sheet and coating having the particle size of the wax as previously stated.
In regards to claims 6 – 9, Chikawa teaches the steel sheet having the claimed limitations as previously stated.
In regards to claim 10, Chikawa and alternatively 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 regards 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 regards to claim 12, Chikawa provides the method and the composition having the claimed amount of organic resin and wax in the paint composition.
In regards to claim 13, Chikawa provides the method and the coated surface having the claimed amount of coating, thus fulfilling the claimed method.
Response to Arguments
Applicant’s arguments have been considered but are not persuasive.
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 Kawanishi does not recite the Ra value of the claim which is a variable. The argument is 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
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771