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
Claims 24-26, 31, 36-37 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 6/18/25.
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.
Claim(s) 16, 18-20, 27-30, 32-35, 38-40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Demnati (EP 3231894) in view of Harada (US 6129994).
Claims 16:
Demnati teaches a method for applying a primer to a steel substrate before application of enamel [0039]. The primer comprises metal, metal oxides, or metal salts in a solvent [0044] and an inorganic binder [0053-0054].
Demnati does not teach the binder is aluminum oxide-based or titanium oxide based. However, Harada teaches an analogous process for applying an undercoat to steel followed by enamel (abstract). The undercoat comprises a bonding metal or a bonding metal oxide and aluminum oxide or titanium oxide (i.e., the binder) (4:50-67).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the method of Demnati and use aluminum oxide or titanium oxide as the binder because Harada their inclusion in an undercoat for enamel.
Claims 18-20:
The preferred embodiment includes Molybdenum in metallic, oxide, and salt form [0046-0047].
Claims 27-29:
The primer is applied by wet spraying onto the steel substrate [0069] wherein the primer is an aqueous solution [0068].
Claim 30:
After priming, a drying step is performed prior to enameling [0069].
Claim 32:
The steel substrate is cleaned prior to priming [0011]. This includes degreasing (claim 16).
Claims 34-35, 38-40:
Harada teaches the underlayer has a thickness of 10-750µm (claim 1) and the enamel layer can have a thickness of 1mm or less (Table 1).
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Demnati (EP 3231894) in view of Harada (US 6129994) in view of Marques (Sol-gel process: an overview).
Previously cited prior art does not explicitly state the applied primer layer is a sol-gel based system. It is noted that the primer system does include inorganic binders of silicates and silica sol added to improve rheology [0054]. However, Marques teaches the sol-gel routes for applying coatings onto substrates using either metal alkoxides or sols that gel (slide 4). There are various advantages to the sol-gel method such as better control of the resulting structure (slide 5). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the method of Demnati/Harada using the sol-gel method for the reasons explained by Marques.
Claim(s) 34-35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Demnati (EP 3231894).
Demnati does not explicitly state the thickness of the primer layer or the enamel layer. It is noted that Demnati does teach the amount of primer applied onto the substrate [0058], which is considered a different measurement for the same property. Nevertheless, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to routinely optimize the thickness of the primer layer and the thickness of the enamel layer in the course of determining sufficient thicknesses required to exhibit appropriate levels of adhesion (in the case of the primer) and appropriate levels of protection (in the case of the enamel).
Response to Arguments
Applicant’s arguments, filed 10/21/25, with respect to the rejection(s) of claim(s) under 102 have been fully considered and are persuasive in light of co-filed claim amendments. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of further search.
Applicant argues the claims 34-35 are not routine optimization and have criticality. The examiner disagrees. Demnati specifically states the purpose of the primer layer is adhesion and the purpose of the enamel layer is protection. One of ordinary skill in the art would have appreciated that the amount of these material (as represented by layer thickness) directly results in the manifestation of these desirable properties. With respect to criticality, this requires a showing the particular range achieves unexpected results by providing a sufficient number of tests both inside and outside the claimed range. MPEP 2144.05 III A. This is not provided, but also the cited explanation of the ranges provided from the spec. is nothing more than an explanation of routine optimization (excellent adhesion, cost efficient, etc.).
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 ALEX A ROLLAND whose telephone number is (571)270-5355. The examiner can normally be reached M-F 10-6:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at 5712721234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEX A ROLLAND/Primary Examiner, Art Unit 1759
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