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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on May 11, 2026 has been entered.
Status of the Claims
By response filed May 04, 2026 no amendments have been made to the claims. Claims 12 through 15 were previously withdrawn. Claims 1 through 20 are currently pending.
Response to Arguments
Applicant's arguments filed March 04, 2026 have been fully considered but they are not persuasive.
Applicant’s argument that Imai teaches away from the claimed PDI range is not persuasive because the taught range of 1.8 or less was a preferred range and Imai teaches multiple examples, such as examples 11 and 12, wherein the PDI was above the preferred range. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Furthermore, "[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004). See MPEP section 2123.II.
Applicant’s arguments against the rejection of Kruger in view of Imai are not persuasive because Imai teaches that the polydispersity index/degree of dispersion was a relevant process parameter affecting the uniformity of the crosslinked film (Column 7 Lines 57-67). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP section 2144.05.II.A. Applicant has not provided any argument or objective evidence that the claimed PDI range of 2.0 to 8.0 produced unexpected and superior results over the prior art.
Applicant’s arguments against the rejection of claim 10 and the double patenting rejections are not persuasive for the reasons discussed previously and because applicant has not filed a valid terminal disclaimer.
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 1-9, 11 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kruger et al (U.S. Patent Publication No. 2013/0177768) in view of Imai et al (U.S. Patent # 7,851,568).
In the case of claims 1, 2 and 16, Kruger teaches a method for coating a metallic surface with an aqueous composition (Abstract) wherein the composition was a lubricant because it formed a dry film with sliding properties and was applied to the substrate prior to subsequent forming operations (Page 2 Paragraph 0020 and Page 3 Paragraph 0034). Kruger further teaches that the metallic surfaces/materials treated with the aqueous composition included those comprised of aluminum and steel (Page 13 Paragraph 0138).
Kruger teaches that the aqueous composition comprised at least one film-forming polymer (b1) in the form of an acid-tolerant polymer/copolymer e) (Pages 2-3 Paragraphs 0021-0026) wherein the polymer/copolymer was prepared by polymerization of at least vinyl pyrrolidone as at least one monomer because the polymer/copolymer was based on polyvinylpyrrolidone/vinyl pyrrolidone (Page 3 Paragraph 0033 and Page 4 Paragraphs 0043-0044). The composition of Kruger further comprised at least one wax (b2) (Page 5 Paragraph 0048) and at least one defoamer/defoaming agent (b3) (Page 7 Paragraph 0069). The composition of Kruger further comprised component (b4) in the form of phosphate anions (Pages 8-9 Paragraph 0072). Furthermore, Kruger teaches that the pH of the composition was in the range of 2 to 5 (Page 13 Paragraph 0135).
Furthermore, after contacting/coating the substrate with the aqueous composition the coating film was dried (Page 14 Paragraph 0147).
Though Kruger teaches a copolymer based on vinyl pyrrolidone Kruger does not teach that the homopolymer/copolymer had a polydispersity index (PDI) in the range of 2.0 to 8.0. However, Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP section 2144.05.II.A.
Imai teaches a vinylpyrrolidone-based copolymer (Abstract) used in metal surface-treating agents (Column 9 Lines 6-15). Imai teaches that the PDI of the copolymer in the form of degree of dispersion, which was calculated by the ratio of weight-average molecular weight to the number-average molecular weight, affected the uniformity of the coating film during formation/crosslinking (Column 7 Lines 57-67 and Column 16 Lines 61-67). Furthermore, Imai teaches additional preferred degree of dispersions in the values of 2.10 and 2.07 (Column 22 Lines 18-22 and 55-59).
Based on the teachings of Imai, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have determined an optimal polydispersity index value for the copolymer of vinyl pyrrolidone in the process Kruger the dispersity index value affected the uniformity of the coating film during formation/crosslinking.
Furthermore, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art it would have been obvious to have used copolymers of vinyl pyrrolidone in the process of Kruger with a PDI value of 2.07 or 2.10 because these were known PDI values in the art which provided uniform crosslinked coatings.
As for claims 3 and 17, Kruger teaches that the film forming polymer had a transition temperature Tg in the range of -10 to 120 ℃ (Page 3 Paragraph 0030), which overlapped with the claimed ranges of 40 to 200 ℃ and from 50 to 190 ℃. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See section 2144.05.I of the MPEP.
As for claim 4, Kruger further teaches that the film forming polymer in addition to vinyl pyrrolidone was further prepared with (meth)acrylate monomers (Page 3 Paragraph 0033 and Page 4 Paragraph 0043). Kruger does teach that the film was formed by crosslinking (Page 7 Paragraph 0061).
As for claim 5 and 18, Kruger does not specifically teach that the film forming polymer/component e) was present in the range of from 0.05 to 20 wt% or 0.10 to 15 wt%, based on the total weight of the composition. However, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP section 2144.05.II.A.
Furthermore, Kruger does teach that the amount of film forming polymer was a relevant process parameter and had acid tolerant properties (Page 3 Paragraphs 0032-0033).
Therefore, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have determined optimal concentrations for the film-forming polymer (b1)/cationic or nonionic organic polymer/copolymer e) of Kruger in view of Imai through routine experimentation because the amount of film forming polymer/copolymer affected the acid tolerance of the formed film.
As for claims 6 and 7, as was discussed previously, the aqueous composition of Kruger in view of Imai had a pH in the range of 2 to 5.
As for claim 8, Kruger teaches that the wax comprised paraffin waxes (Page 5 Paragraph 0048).
As for claim 9, Kruger teaches that the composition comprised at least one corrosion inhibitor which was different from constituents (b1) to (b4) in the form of a complexing agent which provided corrosion-protective effects (Page 9 bottom of Paragraph 0075).
As for claim 11, Kruger teaches that the aqueous composition was applied to the substrate/metallic strip by dipping into a bath (Page 14 bottom of Paragraph 0146) and that the coating was applied at a temperature in the range of 10 to 40 ℃ (Page 13 Paragraph 0138), which overlapped with the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See section 2144.05.I of the MPEP.
As for claim 19, Kruger teaches that the waxes included polyethylene and polypropylene waxes (Page 5 Paragraph 0048).
As for claim 20, as was discussed previously Kruger teaches that the composition comprised at least one wax. However, Kruger does not teach that the wax was present in the amount of 0.1 to 20 wt%, based on the total weight of the composition. However, Kruger teaches that the amount of wax was a relevant process parameter and that the amount of wax affected the coefficient of friction for the formed coating (Page 5 Paragraphs 0048, 0051 and 0053).
Therefore, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have determined optimal concentrations for the amount of wax in the composition of Kruger in view of Imai through routine experimentation because the amount of wax affected the coefficient of friction properties of the formed film.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Kruger et al in view of Imai et al as applied to claim 1 above, and further in view of Sohi (U.S. Patent Publication No. 2006/0003901).
The teachings of Kruger in view of Imai as they apply to claim 1 have been discussed previously and are incorporated herein.
In the case of claim 10, though Kruger teaches that the composition comprised a defoamer (Page 7 Paragraph 0068) Kruger did not specifically teach that the defoamer was free of silicone.
Sohi teaches a composition for forming a lubricant coating on a metal substrate (Abstract, Page 1 Paragraph 0002 and Page 4 Paragraph 0054) comprising a silicon free defoaming in the form of petroleum distillates (Pages 3-4 Paragraphs 0047-0048).
Based on the teachings of Sohi, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have sued petroleum distillate as the defoamer in the composition of Kruger in view of Imai because this was a known defoamer in the art and therefore one of ordinary skill would have had a reasonable expectation of success in the combination.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-11 and 16-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 16-20 of copending Application No. 17/904,969 (Shi ‘443) in view of Imai and Kruger. Shi ‘443 claims substantially the same pretreatment method of the present application wherein a metallic substrate is contacted with an aqueous lubricant composition having a non-neutral pH comprised of a film forming polymer comprising a homopolymer and/or copolymer prepared from vinyl pyrrolidone monomers, oxalate anions, chloride anions and at least one wax.
Shi ‘443 does not claim that the homopolymer and/or copolymer prepared from vinyl pyrrolidone monomers had a PDI of 2.0 to 8.0. However, as was discussed previously, based on the teachings of Imai it would have been obvious to one of ordinary skill in the art to have used a copolymer of vinyl pyrrolidone with a PDI of either 2.07 or 2.10 in order to form a coating with uniformity.
Shi ‘443 does not claim that the composition comprised a defoamer. However, as was discussed previously, Kruger teaches that it was known in the art for lubricant composition to comprise a defoamer and therefore it would have been obvious to have included a defoamer in the claimed composition of Shi ‘443 in order to limit foam formation during coating.
This is a provisional nonstatutory double patenting rejection.
Claims 1-11 and 16-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 16-20 of copending Application No. 17/802,189 (Shi ‘175) in view of Imai and Kruger. Shi ‘175 claims substantially the same pretreatment method of the present application wherein a metallic substrate is contacted with an aqueous lubricant composition having a non-neutral pH comprised of a film forming polymer comprising a homopolymer and/or copolymer prepared from vinyl pyrrolidone monomers, oxalate and/or phosphate anions and at least one wax.
Shi ‘175 does not claim that the homopolymer and/or copolymer prepared from vinyl pyrrolidone monomers had a PDI of 2.0 to 8.0. However, as was discussed previously, based on the teachings of Imai it would have been obvious to one of ordinary skill in the art to have used a copolymer of vinyl pyrrolidone with a PDI of either 2.07 or 2.10 in order to form a coating with uniformity.
Shi ‘175 does not claim that the composition comprised a defoamer. However, as was discussed previously, Kruger teaches that it was known in the art for lubricant composition to comprise a defoamer and therefore it would have been obvious to have included a defoamer in the claimed composition of Shi ‘175 in order to limit foam formation during coating.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Claims 1 through 11 and 16 through 20 have been rejected. Claims 12 through 15 are withdrawn. No claims were allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P WIECZOREK whose telephone number is (571)270-5341. The examiner can normally be reached Monday - Friday, 6:00 AM - 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Cleveland can be reached at (571)272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL P WIECZOREK/Primary Examiner, Art Unit 1712
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