DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1 is/are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by (JP 5542747).
Regarding claim 1, JP 747’ discloses a manufacturing method of a hot-stamped product (“hot stamping steel sheet”), for making from aluminum plating steel sheet (“aluminized steel”) to a product by a hot-stamping process, comprising steps of: preparing water-soluble agent (“mold release agent”) having no flammability (“little risk of fire”) and non-volatility (examiner interprets that this does not evaporate at normal temperature based on google definition), where a mixing ratio of macromolecular polymer is 1 to 25 part by weight (weight%) (water-soluble polymer is 1 to 30% by mass), a mixing ratio of water is 50 to 98 part by weight (weight%) (40 to 90% by mass of water) and a mixing ratio of surfactant is 1 to 25 part by weight (weight%) (0.3 to 10% by mass of surfactant); (“ When the total mass of the lubricant release agent is 100% by mass, the solid lubricant is 1 to 50% by mass, the water-soluble polymer is 1 to 30% by mass, the carboxylate is 1 to 30% by mass, The lubricating mold release agent for hot stamping according to claim 1, comprising 0.3 to 10% by mass of the surfactant and 40 to 90% by mass of the water.”) applying said water-soluble agent to a surface of a mold (agent is applied to the mold) opposite to said aluminum plating steel sheet; and manufacturing (see abstract: agent is provided to the mold for better release of the product therefore, the product is manufactured after the agent is applied) said product after application of said water-soluble agent, thereby to apply said water-soluble agent to said surface of said mold so as to inhibit or prevent adhesion of aluminum plating (inherent action when applied the claimed agent to a mold).
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.
Claim 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 747’.
Regarding claim 2, JP 747’ discloses the method according to Claim 1.
JP 747’ is silent to wherein said application of said water-soluble agent is regularly performed.
Examiner takes official notice that applying the agent regularly to keep the agent on the surface of the mold would have been obvious to one having ordinary skill in the art at the time of filing to provide a lubricant layer for the product to be easily released from the mold (see abstract).
Applicant's arguments filed 5/27/2026 have been fully considered but they are not persuasive.
Applicant argues:
“For the following reasons, Applicant respectfully traverses these rejections.
1. The present invention relates to a method for manufacturing hot stamping products, whereas JP '747 relates to a lubricating release agent for hot stamping (an article). Since the JP '747 relates to the article, it lacks any description concerning a method for manufacturing the hot stamping products. The reference merely describes applying the lubricating release agent to the die in paragraphs [0009] and [0036].
2. The object of the present invention is to provide a manufacturing method that
suppresses or prevents the adhesion (bonding) of aluminum plating to the hot stamping die when manufacturing products from aluminum-plated steel sheets. In contrast, the object of JP '747, as described in [0007], is to provide a lubricating release agent that reduces friction between the workpiece and the mold, facilitates processing and demolding, and prevents damage to both the workpiece and the mold. Thus, the object of JP '747 is fundamentally different than that of the claimed invention.
3. The water-soluble agent used in the present invention is water-soluble agent having no flammability and non-volatility, where a mixing ratio of macromolecular polymer is 1 to 25 (weight%), a mixing ratio of water is 50 to 98 (weight%) and a mixing ratio of surfactant is 1 to 25 (weight%). The water-soluble agent contains no components other than the macromolecular polymer, the water and the surfactant. In contrast, the lubricating release agent in JP '747 is a hot stamping lubricating release agent containing a solid lubricant, water-soluble polymer, carboxylate salt, surfactant and water.
4. The reason the present invention does not use solid lubricants or carboxylates is
that, when painting hot-stamped products (e.g., vehicle bodies), the presence or absence of water repellency generally becomes a problem. To eliminate the water repellency, the product must be degreased, which requires the water-soluble agent referred to in the present invention to be removed during degreasing. For this reason, using the solid lubricants as described in JP '747 would actually interfere with degreasing.
5. As described in [0005] and [0036], JP '747 discloses applying or using a
lubricating release agent in hot stamping molding. However, it does not disclose or suggest applying a lubricating release agent to aluminum-coated steel sheets. Therefore, JP '747 does not address the problem of suppressing or preventing the aluminum coating adhesion to the die, as does the present invention.
6. Applicant wishes to note that the present invention has already been patented in Japan as Patent No.5542747.
7. As described above, the subject matter and the object addressed by the present
invention and the invention described in JP '747 are different. Further, the water-soluble agent used in the present invention and the lubricating release agent described in JP '747 differ in composition and function. Moreover, JP '747 does not explicitly disclose a method for manufacturing hot stamping products. Therefore, it is respectfully submitted that the invention of claims 1 and 2 are novel and non-obvious over JP '747.”
Examiner respectfully disagrees.
Examiner response:
Applicant argues that JP’747 fails to disclose a method for manufacturing the hot stamping products. Examiner notes that it discloses “The present invention relates to a hot stamping lubricant release agent used when hot stamping a steel sheet, and more particularly, in hot stamping of carbon steel, alloy steel, non-ferrous metal, aluminized steel and galvanized steel.” (emphasis added) Examiner adds that throughout the description of the prior art, the prior art discloses that the lubricant is used when hot stamping a steel sheet and molded.
Applicant argues that the invention is to provide a manufacturing method that suppresses the adhesion of plating to the hot stamping die when manufacturing products from aluminum-plated steel sheets. And JP ‘747 is to provide lubricating release agent that reduces friction between the workpiece and the mold. Examiner notes that adhesion is caused by friction and lubricating and reducing friction is by definition suppressing the adhesion of workpiece to the stamping die when hot stamping. Examiner also notes that the workpiece of JP’747 is “aluminized steel” sheet which by definition aluminum plated steel sheet. And therefore, reducing the friction is reducing the adhesion and therefore preventing the adhesion of the aluminum plating when hot stamping.
Applicant argues that the water-soluble agent used in the present invention is different from the prior art because the water-soluble agent contains no components other than the macromolecular polymer, the water and the surfactant. Examiner notes that the phrase “comprising steps of” is open ended. It does not exclude the presence of additional, unrecited steps or components. Also, the listed weight percentage ranges do not inherently mandate a 100% total. The prior art composition could have 10% polymer, 50% water, and 1% surfactant, leaving 29% of the composition entirely open for other elements.
The present invention states “When the high-temperature steel sheet material 20 is carried to the mold 30, only the water in the water-soluble agent applied to the surface of the mold 30 evaporates as the high-temperature steel sheet material 20 approaches, and the macromolecular polymer and the surfactant remains as the residue and forms residue films 40 and 41 as shown in FIG.7C. The residue film 40 physically intercepts the aluminum plating 22 and an iron material of the mold 30, which are bonded by hydrogen bonding, so it is possible to inhibit or prevent the adhere to the mold 30 of the aluminum plating 22” the prior art states “The lubricant release agent applied to the high-temperature (100 to 500 ° C.) mold evaporates the water and forms a lubricant film of solid components on the mold surface. This lubricating coating has excellent lubricity, so it can reduce friction and wear between the workpiece and the mold, which makes the processing smooth and easy to metal parts from the mold Can be released.” Examiner notes that both the present invention and the prior art would have the same problem as applicant argues. Also, the claim does not prevent any of what applicant is arguing.
Examiner notes that the claim does not state that the release agent be applied to aluminum-coated steel sheets directly. “The present invention relates to a hot stamping lubricant release agent used when hot stamping a steel sheet, and more particularly, in hot stamping of carbon steel, alloy steel, non-ferrous metal, aluminized steel and galvanized steel. The present invention relates to a hot stamping lubricant release agent that makes it easy to work and release by exhibiting excellent lubricity, lowering the coefficient of friction, and preventing seizure and mold wear on the mold surface.” Examiner notes that applying the release agent to the mold for hot stamping the aluminum plating steel sheet is disclosed.
Being patented in Japan does not mean it can be automatically patented in the US.
Examiner suggests positively reciting limitations that would differentiate the present invention to the prior art.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BOBBY YEONJIN KIM whose telephone number is (571)272-1866. The examiner can normally be reached M-F 9 am - 5 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, Christopher Templeton can be reached on (571) 270-1477. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BOBBY YEONJIN KIM/Examiner, Art Unit 3725
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