DETAILED ACTION
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 .
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 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15-20 and 22-24 of copending Application No. 18698095 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other for the following reason.
Regarding claims 1-10, the copending claims disclose the same coating composition as presently claimed except that the copending claims further disclose a steel sheet having one surface.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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(s) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Higai et al. (US 2004/0249036) in view of Hirasawa et al. (US 2018/0345317).
Regarding claims 1-3 and 9, Higai teaches a film of a coating on a metal sheet (0020), where the metal sheet is a steel sheet (0044), where the coating includes a thermoplastic resin having a glass transition point of more than 100⁰C, an acid value of 20-350mg-KOH/g (calculates to acid value/Tg of greater than 0 to 5; (0011)), and the thermoplastic resin is an acrylic resin (0023-0024), and further includes a polyethylene wax with a melting point of 100⁰C or more (0031, 0040).
Higai does not specifically teach an average particle diameter of ≤3.0 micron of the polyolefin wax.
Hirasawa is in the similar field of endeavor of a coated steel sheet including polyethylene wax and acrylic resin (Abstract) and teaches mean particle diameter of the polyethylene wax is preferably less than 1.0 micron (0021).
It would have been obvious to one of ordinary skill in the art to modify Higai to incorporate the particles size of Hirasawa. The motivation for doing so would have been to more uniformly distribute the wax in the film (0021) and provide the lubricating characteristics (0020), this provides the wear resistance of the coating film at room temperature as desired by Higai (0040).
Regarding claim 4, Higai in view of Hirasawa discloses the coating of claim 1, wherein Higai further teaches a coating including an acrylic resin, a metallic soap of metal stearate and an anti-galling agent (0011), where the anti-galling agent is contained at 0.5-40 mass% (0015), an organic lubricant of polyethylene wax of 0.5-5 weight% (0040) and the metal stearate is 0.5-30 weight % (0034), this calculates to a remaining 25-98.5 mass% of acrylic resin.
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Regarding claim 5, Higai in view of Hirasawa discloses the coating of claim 1, wherein acrylic resin has a mass average molecular weight of 10,000 to 1,000,000 (0028).
Regarding claim 6, Higai in view of Hirasawa discloses the coating of claim 1, wherein acrylic resin is styrene acrylic resin (0024).
Regarding claims 7-8, Higai in view of Hirasawa discloses the coating of claim 1, wherein the anti-galling agent such as aluminum salt of phosphoric acid is contained at 0.5-40 mass% (0015).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Higai et al. (US 2004/0249036) in view of Hirasawa et al. (US 2018/0345317) and further in view of Mori et al. (US 6797770).
Regarding claim 10, Higai in view of Hirasawa discloses the coating of claim 1 but is silent with respect to 1-10 mass% silica.
Mori is in the similar field of endeavor a coating composition that forms a film with a polyurethane resin (Abstract; Col. 1 Lns. 33-40) with polyolefin wax in the resin layer (Col. 3 Lns. 15-22) on a steel sheet (Col. 1 Ln. 23), and teaches including of 1-30 wt% silica (Col. 9 Lns. 8-26).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention to further modify Higai to incorporate the silica of Mori. The motivation for doing so would have been the silica improves film strength and cohesion with the steel sheet (Col. 9 Lns. 16-18) and thereby and deliver the benefits imparted by the surface treatment (of press formability and anti-rust properties Higai 0001).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMIR SHAH whose telephone number is (571)270-1143. The examiner can normally be reached 8:00am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAMIR SHAH/Primary Examiner, Art Unit 1787
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