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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-2, in the reply filed on 28 October 2025 is acknowledged. The requirement is still deemed proper and is therefore made FINAL.
Claims 3-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 28 October 2025.
Claim Rejections - 35 USC § 102/103
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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 1-2 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Nakagawa et al. (WO 2018/225739 – using US 2020/0149179 as an English language equivalent, both references cited by applicant).
Considering claim 1, Nakagawa teaches a steel sheet for cans (abstract) where the steel sheet (2) has a chromium metal layer (3) with a weight of 50-200 mg/m2 (Paragraph 20), a hydrated chromium oxide layer (4) with a weight of 3-30 mg/m2 in terms of chromium amount (Paragraph 20) having granular protrusions (3b) separated by flat portions (e.g. flat plate shape base portion) (Fig. 1 – reproduced below; Paragraphs 40-41). However, Nakagawa does not expressly teach the claimed circularity or percentage thereof.
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Nakagawa teaches where the plated steel is manufactured by a cathodic electrolysis treatment C1 using aqueous solution, anodic treatment A1 and cathodic electrolysis treatment C2 (Paragraph 85) in a fluorine-containing compound and sulfuric acid (Paragraph 91) where C1 is performed at 20-50 C/dm2 (Paragraph 106), where A1 forms the granular protrusions (Paragraph 109) at 0.1-5.0 A/dm2 (Paragraph 113) and C2 is performed at 10-60.0 A/dm2 (Paragraph 120) followed by a post-treatment in an aqueous solution of a hexavalent chromium compound of chromium trioxide, dichromates, or chromates (Paragraphs 127-130). These conditions substantially overlap those disclosed by applicant in Paragraphs 34-35, 43-45, and 47-48 of the originally filed specification. As such, one would reasonably expect the claimed circularity or percentage thereof as substantially identical materials treated in a substantially identical manner are expected to behave the same, absent an objective showing. See MPEP 2112.
As such, Nakagawa anticipates and/or renders obvious the instantly claimed steel sheet as Nakagawa teaches chromium metal and chromium oxide layers in a content falling within and overlapping that which is claimed and the courts have held that where claimed ranges overlap or lie inside of those disclosed in the prior art a prima facie case of obviousness exists. See MPEP 2131.03 and 2144.05.
Considering claim 2, Nakagawa teaches where the granular protrusions have a maximum grain size of not more than 200 nm and a number density of not less than 30 protrusions/µm2 (Paragraph 22). See MPEP 2131.03 and 2144.05.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Haghdoost et al. (US 2017/0334170), Nakagawa et al. (US 2018/0355496 and US 2018/0363160) teach chromium plated steels demonstrating the level of ordinary skill in the art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SETH DUMBRIS whose telephone number is (571)272-5105. The examiner can normally be reached M-F 6:00 AM - 3:30 PM.
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, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784
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