Detailed Office Action
Notice of Pre-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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Restriction/Election
Applicant’s election without traverse of Group I, claims 1 – 11 and 18 – 20, in the reply filed on 07/02/26 is acknowledged. Claims 12 – 17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/02/26.
Claim Objections
Claim 1 is objected to because of the following informalities: The abbreviation “BOF” should be fully spelled out prior to using an abbreviation for purposes of clarity.
Appropriate correction is required.
Claim Rejections – U.S.C. § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 9 – 11 and 18 – 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “narrow” in claims 9 and 18 are a relative term which renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For purposes of examination, any width will be interpreted as meeting the term.
Claims 10 – 11, which depend on claim 1, recite the limitation "the laminate". There is insufficient antecedent basis for this limitation in the claim.
Regarding claims 10 – 11 and 19 – 20, the claims limitations presented are indefinite. First, the while claims are dependent upon the method of claim 1 or claim 7, the method steps are directed to producing a three-piece can (whereas the method of claim 1 and 7 are directed to manufacturing tinplate steel). As such, the limitations appear directed to a separate process. Moreover, the phrase “are producible” makes it unclear whether these steps are positively recited/required. For these reasons, the metes and bounds of protection sought by the limitations is unclear and indefinite.
Based on the language of the claim and the description in the specification, the limitations are interpreted to mean that the product produced by claim 1 or claim 7 is capable of being used in the manner described in the respective claims.
Claim Rejections – U.S.C. §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 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 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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1 – 2, 4, and 9 – 10 are rejected under 35 U.S.C. 103 as being unpatentable over Kaup (US 11,920,206) in view of Britannica (NPL)
Regarding claims 1 – 2, Kaup teaches a production method for a flat steel product [Title]. Kaup teaches a particular composition of [Table 1, Ex 6].
Element
Claimed Invention (wt%)
Kaup (wt%)
Relation
Carbon (C)
0.045 – 0.095%
0.067%
Falls within
Manganese (Mn)
0.25 – 0.475%
0.29%
Falls within
Silicon (Si)
0 – 0.03%
0.005%
Falls within
Aluminum (Al)
0.005 – 0.025%
0.016%
Falls within
Nitrogen (N)
0.007 – 0.014%
0.0111%
Falls within
Sulfur (S)
0 – 0.02%
0.01%
Falls within
Phosphorus (P)
0 – 0.02%
0.01%
Falls within
Chromium (Cr)
0 – 0.1%
0 – 0.03% (claim 2)
0.02%
Falls within
Copper (Cu)
0 – 0.1%
0 – 0.04% (claim 2)
0.009%
Falls within
Nickel (Ni)
0 – 0.1%
0 – 0.06% (claim 2)
0.018%
Falls within
Titanium (Ti)
0 – 0.01%
0 – 0.004% (claim 2)
0 – 0.001%
Falls within
Niobium (Nb)
0 – 0.01%
0 – 0.004% (claim 2)
0 – 0.001%
Falls within
Vanadium (V)
0 – 0.01%
0 – 0.004% (claim 2)
0%
Falls within
Ni+Cu+Cr+Mo+Sn+Nb+Ti+V
0 – 0.1%
0.05 – 0.052%
Falls within
Iron (Fe)
Balance
Balance
Meets
Kaup teaches the method of producing the steel includes:
Producing a hot-rolled steel via casting and rolling a slab into a strip [Col 10, line 15 – 25]
Meeting the claimed limitation of hot-rolling a slab to produce a strip
Cold – rolling at a reduction ratio range of 85 – 98% [Col 10, line 37 – 38]
Which meet the limitation of a first cold-rolling and overlaps with the claimed range
Annealing to achieve complete recrystallization in a continuous furnace [Col 10, line 40 – 50; Col 4, line 46 – 48]
Which meets the claimed limitation of full recrystallization annealing
Performing either re-rolling at a reduction ratio range of 5 – 45%, which overlaps with the claimed range of the second cold rolling, or performing skin pass rolling at a reduction ratio range of 0.2 – 5%, which overlaps with the claimed range of second cold rolling [Col 11, line 45 – 50].
Electrolytic tin plating [Col 7, line 19 – 25].
Kaup suggests that the lower yield strength is 445 – 545 MPa [Table 3, ex 2 – 5], which falls within the claimed range.
Kaup does not expressly disclose the H-grain welding range, however, Kaup teaches a substantially identical composition (see above) as well as a substantially identical method of cold – rolling, full recrystallization annealing, secondary cold – rolling, and electrolytic tin plating. As such, there is a reasonable expectation to an ordinarily skilled artisan that the composition of Kaup would possess a H-grain welding range that met the claimed range. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, in this case composition and process, a prima facie case of obviousness is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (MPEP 2112.01 I)
Kaup does not expressly teach that the steel slab is produced by a BOF steelmaking process.
Britannica teaches that a basic oxygen process (BOP) using a basic oxygen furnace (BOF) produces more than half the world’s steel [Page 1], including the use of scrap metal in initial process. Britannica also notes that the process can be used for producing a large variation in product volume depending upon demand [Page 1].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have produced the steel slab of Kaup using a basic oxygen process and furnace, as described by Britannica, to achieve predictable results. Britannica is directed to the manufacture of steel and as such, an ordinarily skilled artisan would consider the teachings pertinent to Kaup. Additionally, Kaup notes that the flat steel product can be produced from a steel melt [Col 7, line 62 – 66] and Britannica teaches that over half of the world’s steel is produced using a BOP/BOF. Therefore, an ordinarily skilled artisan would have had a reasonable expectation of success in achieving predictable results. Moreover, Britannica notes that the process allows for a wide range of production sizes, providing the benefit of production flexibility depending upon application.
The combination of prior art elements to yield predictable results is a prima facie case of obviousness (MPEP 2143 A). “The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art”. KSR, 550 U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976)
With regards to the overlapping ranges taught, “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)”, absent evidence of criticality or unexpected results (MPEP 2144.05 I). "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05 III A).
Regarding claim 4, Kaup in view of Britannica teaches the invention as applied in claim 1. Kaup teaches that the composition has a content of [Table 1, Ex 6]:
silicon at 0.005 wt%, which falls within the claimed range
titanium at less than 0.001 wt%, which falls within the claimed range
niobium at less than 0.001 wt%, which falls within the claimed range
Regarding claims 9 – 10, Kaup in view of Britannica teaches the invention as applied in claim 1. Kaup does not expressly teach that the tinplated steel produced can be used for a three-piece can, however, Kaup teaches that the tinplated steel can be used to produce food/beverage cans and Kaup teaches a steel material composition that is substantially identical to the claims and produced in a substantially identical manner of hot-rolling, cold-rolling, full recrystallization annealing, secondary cold – rolling, and electrolytic tin plating. As such, there is a reasonable expectation to an ordinarily skilled artisan that the flat steel material of Kaup would be capable of producing three-piece cans via the steps of claims 9 and 10. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, in this case composition and process, a prima facie case of obviousness is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (MPEP 2112.01 I)
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Kaup (US 11,920,206) in view of Britannica (NPL), as applied to claim 1, in further view of Tosaka (US 6,221,180)
Regarding claim 3, Kaup in view of Britannica teaches the invention as applied in claim 1. Kaup does not expressly teach a crown value at 40 mm from the edge of the hot-rolled strip.
Tosaka discusses the manufacturing of steel that is used for producing cans [abstract; Col 1, line 5 – 15]. Tosaka discloses that when using the steel in secondary forming to produce the desired products, unevenness in the thickness distribution can cause cracking [Col 3, line 8 – 12]. Tosaka states that the crown value of the product following hot-rolling, cold rolling, annealing, and secondary cold rolling, and tin plating [Example 1] has a crown value of 5 µm or less to prevent said cracking [Col 3, line 8 – 12]. To this end, Tosaka expressly notes that the crown value of the hot-rolled sheet should be 40 µm or less, which falls within the claimed range [Col 4, line 24 – 29]. Tosaka states that controlling this feature allows for achieving the final crown value more easily [Col 13, line 47 – 55].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the method of Kaup and controlled the crown values to the ranges described by Tosaka (i.e., 40 µm or less after hot-rolling and 5 µm or less at the end of the process). Kaup and Tosaka are both directed to the same field of endeavor manufacturing steel for cans/packaging. Moreover, Kaup and Tosaka disclose using similar methods involving hot rolling, cold-rolling, and annealing (as well as tin plating) and as such, an ordinarily skilled artisan would have had a reasonable expectation of success in applying the teachings of Tosaka to Kaup. An ordinarily skilled artisan would have been motivated to apply the teachings because Tosaka discloses that these values are important for preventing cracking of the steel during product formation.
Lastly, Tosaka teaches a crown value measured closer to the edge (30 mm) than the claimed range (40 mm). However, as illustrated in Fig 9 of the instant invention, a crown value closer to the center (i.e., the claimed value) would be smaller than closer to the edge (i.e., Tosaka). As such, the value of Tosaka would fall within the claimed range.
Claims 5 – 9 and 18 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over Kaup (US 11,920,206) in view of Britannica (NPL), as applied to claim 1, in further view of Tijssen (WO2019110616, using espacenet translation)
Regarding claims 5 – 6, Kaup in view of Britannica teaches the invention as applied in claim 1. Kaup teaches that the flat steel is electrolytically plated with tin [Col 7, line 17 – 20], but does not expressly disclose the coating amount/density.
Tijssen teaches a method for producing cans from cold rolled steel sheet which has been coated with tin [Title; Col 5, line 11 – 22]. Tijssen discloses that for a three-piece can, the tin coating amount can be 2.0 g/m2 [Example 2], which falls within the claimed ranges of claims 5 and 6.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the method of Kaup and combined it with Tijssen, to achieve predictable results. Tijssen is directed to the manufacture/treatment of steel for cans and Kaup discusses manufacturing steel for cans/packages [Col 1, line 10 – 22] and as such, an ordinarily skilled artisan would consider the teachings of Tijssen to be pertinent to Kaup. Additionally, Kaup expressly discloses that the flat steel is electrolytically plated with tin and therefore, an ordinarily skilled artisan would have had a reasonable expectation of success in achieving predictable results.
The combination of prior art elements to yield predictable results is a prima facie case of obviousness (MPEP 2143 A). “The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art”. KSR, 550 U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976)
Regarding claims 7 – 9 and 18, Kaup in view of Britannica teaches the invention as applied in claim 1. Kaup teaches that the flat steel can be coated with a polymer [Col 7, line 24 – 27], but does not expressly disclose the process.
Tijssen teaches a method for producing cans from cold rolled steel sheet which has been coated with tin [Title; Col 5, line 11 – 22]. Tijssen states that the tinplate is coated with a plurality of polymer films [Page 2, line 32 – 37] and that the polymer can be a thermoplastic [Page 7, line 10 – 22], meeting the limitation of claim 7. The polymer film is coated onto the tinplate via a nip-roller and heating (meeting the broadest reasonable interpretation of film lamination and heating bonding of claim 8) [Page 7, line 34 – page 8, line 3]. Tijssen discloses a manner of coating the tinplate via multiple thermoplastic polymer layers on one side of the steel sheet such that strips of the narrow sheet remain exposed [Fig 2, 3], meeting claim 18. Lastly, Tijssen teaches that the coated tinplates can be cut in different directions such that laminates with polymer-free edges are formed [Fig 3; Page 7, line 33 – 37], meeting claim 9.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the method of Kaup and combined it with polymer coating and cutting method disclosed by Tijssen, to achieve predictable results. Tijssen is directed to the manufacture/treatment of tinplate steel for cans and Kaup discusses manufacturing tinplate steel that is to be used in the production of cans/packages [Col 1, line 10 – 22] and as such, an ordinarily skilled artisan would consider the teachings of Tijssen to be pertinent to Kaup. Additionally, Kaup expressly discloses that the flat steel can be coated with a polymer therefore, an ordinarily skilled artisan would have had a reasonable expectation of success in achieving predictable results.
The combination of prior art elements to yield predictable results is a prima facie case of obviousness (MPEP 2143 A). “The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art”. KSR, 550 U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976)
Regarding claims 19 – 20, Kaup in view of Britannica teaches the invention as applied in claim 7. Kaup does not expressly teach that the tinplated steel produced can be used for a three-piece can, however, Kaup teaches that the tinplated steel can be used to produce food/beverage cans and Kaup teaches a steel material composition that is substantially identical to the claims and produced in a substantially identical manner of hot-rolling, cold-rolling, full recrystallization annealing, secondary cold – rolling, and electrolytic tin plating. As such, there is a reasonable expectation to an ordinarily skilled artisan that the steel material of Kaup would be capable of producing three-piece cans via the steps of claims 19 and 20. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, in this case composition and process, a prima facie case of obviousness is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (MPEP 2112.01 I)
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US2023/0081814 – Cold-rolled flat steel for packaging products, overlapping composition and production method, and overlapping Sn coating amount
US 11,560,608 – Cold-rolled flat steel for packaging products, overlapping composition and production method
US2021/0277495 – Cold-rolled flat steel for packaging products, overlapping composition and production method
US2015/0136635 – three-piece can body and production method with overlapping composition
US 6,042,952 – production of thin steel sheet with overlapping composition and production steps. Discussion of the importance of crown value and Sn coating amount/density.
WO2022130131 – tin coated steel sheet with overlapping compositon and process but lower yield strength
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUSTIN POLLOCK whose telephone number is (571)272-5602. The examiner can normally be reached M - F (8 - 5).
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, Sally Merkling can be reached on (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738
Prosecution Insights