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 .
Election/Restrictions
Applicant’s election without traverse of 1-12 in the reply filed on 06/25/2026 is acknowledged.
Claims 13-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 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 (i.e., changing from AIA to pre-AIA ) 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.
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, 3, 5, 7, 9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Hirasawa et al. (U.S. App. Pub. No. 2018/0345317) in view of Maghsoodi et al. (U.S. App. Pub. No. 2016/0002498).
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 1, Hirasawa et al. discloses a lubricant coating material for stainless steel sheets that has a coating weight amount after drying of 0.5-2.5 g/m2 on a surface of the steel sheet. (Abstract, par. [0014] and Table 1).
Hirasawa et al. does not disclose the indentation reduced Young’s modulus and indentation hardness as presently claimed.
Maghsoodi et al. teaches a top-layer coating material that has improved durability performance including abrasion resistance for application to the surface of glass, metal or plastic substrates. (Abstract and par. [0008]). Maghsoodi et al. teaches that to obtain high hardness and abrasion resistance, the coating should have a reduced elastic modulus between 17-26 GPa (par. [0239]) and a pencil hardness (i.e. indentation hardness, due to pressing of the pencils into the coating surface to measure the hardness) of 1-4 GPa (par. [0239], [0294]). Both these ranges substantially overlap with the presently claimed ranges such that they would render them obvious.
It would have been obvious to one of ordinary skill in the art to optimize the indentation reduced Young’s modulus and indentation hardness of the coating composition of Hirasawa et al. such that they lie in the same range as disclosed in Maghsoodi et al.
One of ordinary skill in the art would have found it obvious to use the values disclosed in Maghsoodi et al. as the targeted ranges for the values of indentation reduced Young’s modulus and indentation hardness of the lubricant coating of Hirasawa et al. in view of the disclosure therein that the disclosed ranges produce coatings having improved hardness and abrasion resistance. One of ordinary skill in the art would therefore have been motivated to produce a coating having substantially identical coating and abrasion resistance to protect the underlying steel sheet in Hirasawa et al.
Regarding claim 3, Hirasawa et al. teaches that the coating composition includes an acrylic resin material. (par. [0018]).
Regarding claim 5, Hirasawa et al. teaches inclusion of a polyethylene wax in the coating composition in an amount of more than 20 parts by mass with respect to 100 parts of acrylic resin (par. [0019]), overlapping with the presently claimed range.
Regarding claim 7, polyethylene wax would be considered a hydrocarbon-based wax. (par. [0019]).
Regarding claims 9 and 11, the mean particle diameter of the polyethylene wax is 1.0 micrometers or less. (par. [0021]), overlapping with the presently claimed range.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Hirasawa et al. (U.S. App. Pub. No. 2018/0345317) in view of Okawa et al. (JP 2007-204601) and Thies et al. (U.S. App. Pub. No. 2006/0014012).
Citations to Okawa et al., below, refer to the machine translation document included with this office action.
Regarding claims 1-2, Hirasawa et al. discloses a lubricant coating material for stainless steel sheets that has a coating weight amount after drying of 0.5-2.5 g/m2 on a surface of the steel sheet. (Abstract, par. [0014] and Table 1).
Hirasawa et al. does not disclose the indentation reduced Young’s modulus and indentation hardness as presently claimed.
Okawa et al. teaches a composition for a sliding member including a lubricant film (Abstract, element 80, Fig. 1) wherein the film has a nanoindenter hardness of 0.1 GPa or more and 0.5 GPa or less for controlling the degree of mechanical strength (page 3, first full paragraph) and overlap with the presently claimed ranges.
It would have been obvious to one of ordinary skill in the art to optimize the indentation hardness of the coating composition of Hirasawa et al. such that they lie in the same range as disclosed in Okawa et al.
One of ordinary skill in the art would have found it obvious to use the values disclosed in Okawa et al. as the targeted ranges for the values of theindentation hardness of the lubricant coating of Hirasawa et al. in order to adjust the desired mechanical strength of the lubricating coating of Hirasawa et al.
Hirasawa et al. does not disclose the indentation reduced Young’s modulus as presently claimed.
Thies et al. teaches a mechanically durable single layer anti-reflective coating composition having a reduced tensile modulus above 3 GPa with preference of 20 or 40 GPa as measured by nano-indentation. (Abstract and par. [0066]).
It would have been obvious to one of ordinary skill in the art to optimize indentation reduced Young’s modulus of the coating composition of Hirasawa et al. based on the teachings of Thies et al. regarding desired tensile modulus ranges.
One of ordinary skill in the art would have found it obvious to optimize the indentation reduced Young’s modulus in order to obtain a coating having improved resistance to deformation of tensile and compressive forces. While Young’s modulus measures both tensile and compressive forces, based on the disclosure in Thies et al. regarding what value for tensile modulus is would be considered beneficial from a durability standpoint for a coating composition, one of ordinary skill in the art would have desired to have a Young’s modulus value, which includes the tensile modulus, to be substantially similar. "Where 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 (CCPA 1955). MPEP 2144.05 (II).
Regarding claims 3-4, Hirasawa et al. teaches that the coating composition includes an acrylic resin material. (par. [0018]).
Regarding claims 5-6, Hirasawa et al. teaches inclusion of a polyethylene wax in the coating composition in an amount of more than 20 parts by mass with respect to 100 parts of acrylic resin (par. [0019]), overlapping with the presently claimed range.
Regarding claims 7-8, polyethylene wax would be considered a hydrocarbon-based wax. (par. [0019]).
Regarding claims 9-12, the mean particle diameter of the polyethylene wax is 1.0 micrometers or less. (par. [0021]), overlapping with the presently claimed range.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRE F FERRE whose telephone number is (571)270-5763. The examiner can normally be reached M-F: 8 am to 4 pm ET.
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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 08/10/2026
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