DETAILED ACTION
Elections/Restrictions
1. This office action is a response to Applicant's election filed on 09/16/2025 without traverse of Group I, claims 15-20 for further examination. Claims 21-28 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Notice of Pre-AIA or AIA Status
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
3. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
4. The information disclosure statements (IDS) submitted on 04/15/2024 & 09/23/2025 are being considered by the examiner.
Claim Rejections
5. 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.
6. 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.
Claim Rejections - 35 USC § 103
7. 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 of this title, 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.
8. The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
9. Claims 15-20 are rejected under AIA 35 U.S.C. 103 as being unpatentable over Perkett et al. (US 6,673,391 B1) hereinafter Perkett (the terminology of the claims in the application is used, but the references of Perkett are included between parentheses).
Regarding claims 15-20, the recitation “for continuously manufacturing a steel strip coated with a varnish for electrical applications… varnish solution”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Perkett since Perkett meets all the structural elements of the claim and is capable of continuously manufacturing a steel strip coated with a varnish for electrical applications using a varnish solution, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 15, Perkett discloses a coating apparatus for continuously manufacturing a steel strip coated with a varnish for electrical applications (abs; col 1, ln 6-10; fig 2), comprising:
a tank (26; 1st tank mislabeled as 22 in fig 2) (col 6, ln 59-col 7, ln 9; col 8, ln 17-31; fig 2);
a coating roll (18) (col 7, ln 10-31; fig 2); and
an applicator roll (20) (col 7, ln 10-31; fig 2);
the tank (26; 1st tank mislabeled as 22 in fig 2) capable of containing a varnish solution (16) and configured such that the coating roll (18) is in contact with the varnish solution (16) (col 6, ln 59-col 7, ln 62; col 8, ln 17-31; fig 2);
the coating roll (18) configured to be in contact with the applicator roll (20) and to homogenously transfer, in a steel strip (12) width direction, the varnish onto the applicator roll (20) (col 6, ln 59-col 7, ln 62; fig 2);
the applicator roll (20) configured to be in contact with the steel strip (12), and to homogeneously coat the steel strip (12) widthwise, a surface of the applicator roll (20) having a shore A hardness from (40-80) (col 2, ln 24-46; col 7, ln 32-62; fig 2), however Perkett does not disclose a shore A hardness from 40 to 60.
Although Perkett does not explicitly disclose the claimed shore A hardness range, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the coating apparatus of Perkett to have the shore A hardness range recited in the claim and therefore is not expected to alter the operation of the device in a patentably distinct way as the shore A hardness range disclosed by Perkett overlaps the claimed shore A hardness 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
As regards to claim 16, Perkett discloses a coating apparatus (abs; col 1, ln 6-10; fig 2), wherein the surface of the applicator roll (20) has a shore A hardness from (40-80) (col 2, ln 24-46; fig 2), however Perkett does not disclose a shore A hardness from 40 to 55.
Although Perkett does not explicitly disclose the claimed shore A hardness range, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the coating apparatus of Perkett to have the shore A hardness range recited in the claim and therefore is not expected to alter the operation of the device in a patentably distinct way as the shore A hardness range disclosed by Perkett overlaps the claimed shore A hardness 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
As regards to claim 17, Perkett discloses a coating apparatus (abs; col 1, ln 6-10; fig 2), wherein the surface of the applicator roll (20) is made of an elastomer (polyurethane, EPDM rubber or similar pliable material ) (col 2, ln 24-46; fig 2).
As regards to claim 18, Perkett discloses a coating apparatus (abs; col 1, ln 6-10; fig 2), wherein the surface of the applicator roll (20) is made of polyurethane (col 2, ln 24-46; fig 2).
As regards to claim 19, Perkett discloses a coating apparatus (abs; col 1, ln 6-10; fig 2), wherein the tank (26; 1st tank mislabeled as 22 in fig 2) is a chamber doctor blade (enclosed doctor blade) (col 7, ln 10-31; fig 2).
As regards to claim 20, Perkett discloses a coating apparatus (abs; col 1, ln 6-10; fig 2), wherein the tank (26; 1st tank mislabeled as 22 in fig 2) is equipped with a wiping device (doctor blade) (col 7, ln 10-31; fig 2).
Conclusion
10. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: all references cited on the attached PTO-892 Notice of References Cited excluding the above relied upon references.
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jethro M Pence whose telephone number is (571)270-7423. The examiner can normally be reached M-TH 8:00 A.M. - 6:30 P.M..
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, Dah-Wei D. Yuan can be reached on 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jethro M. Pence/
Primary Examiner
Art Unit 1717