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 .
Response to Arguments
Applicant’s arguments with respect to the rejection of claim 1 under 35 USC 102(a)(1) have been considered as to the point that the cited references do not teach a content of the acetic acid is not less than 1 mass ppm and not more than 2500 mass ppm but are moot based on the new grounds of rejection.
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.
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(s) 1-2 is/are rejected under 35 U.S.C. 103 as being unpatentable over McCormick et al. (U.S. Patent Application Publication 2009/0032057, hereafter McCormick ‘057).
Claim 1: McCormick ‘057 teaches a treatment liquid (abstract) used on steel sheets ([0009]), the treatment liquid comprising:
an inorganic acid which can be phosphoric acid, sulphuric acid, or hydrochloric acid ([0057], [0068]); and
acetic acid ([0057], [0068]),
where a 56% solution of acetic acid can be present in an amount of 0.45 wt% ([0068]), giving an acetic acid concentration of 0.252 wt%, which is the same as 2520 mass ppm.
With respect to claim 1, McCormick ‘057 does not explicitly teach that the acetic acid concentration is not less than 1 mass ppm and not more than 2500 mass ppm. However, the claimed acetic acid concentration range of not less than 1 mass ppm and not more than 2500 mass ppm is obvious over the acetic acid concentration of 2520 taught by McCormick ‘057 because they are so close that one of ordinary skill in the art would have expected them to have the same properties. See MPEP 2144.05.I.
Further, it has been held that, generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating that said concentration is critical. See MPEP 2144.05.II.A.
With respect to limitations “used on an electrical steel sheet having a forsterite coating before applying an insulating coating treatment liquid containing at least one salt selected from the group consisting of phosphate, borate, and silicate”, it is noted that these limitations are recitations of an intended use of the treatment liquid, and there is no indication that said intended use requires a different structure than the treatment liquid of McCormick ‘057 or that the treatment liquid of McCormick ‘057 would be incapable of said intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02.II.
Claim 2: McCormick ‘057 teaches that the inorganic acid can have a concentration of about 5 to about 20 wt% ([0058]).
Claim(s) 3-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shigesato et al. (U.S. Patent Application Publication 2003/0180553, hereafter Shigesato ‘553) in view of McCormick et al. ‘057.
Claim 3: Shigesato ‘553 teaches a method for manufacturing an electrical steel sheet with an insulating coating (abstract) comprising:
subjecting an electrical steel sheet having a fosterite coating on a surface thereof to a pickling pretreatment using a pickling liquid, which corresponds to the claimed pre-treatment liquid (abstract, [0012], [0019]); and
subsequently applying and baking an insulating coating treatment liquid containing a phosphate salt (abstract, [0018], [0019]).
With respect to claim 3, Shigesato ‘553 does not teach that the pickling liquid comprises at least one inorganic acid selected from hydrochloric acid, sulfuric acid, and phosphoric acid, and acetic acid, wherein a content of acetic acid is not less than 1 mass ppm and not more than 2500 mass ppm (as required by claim 1).
McCormick ‘057 teaches a pickling method for steel sheets using a pickling liquid (abstract, [0009]). McCormick ‘057 teaches that the pickling liquid can comprise hydrochloric acid ([0057], [0068]) and acetic acid ([0057], [0068]), where a 56% solution of acetic acid can be present in an amount of 0.45 wt% ([0068]), giving an acetic acid concentration of 0.252 wt%, which is the same as 2520 mass ppm. McCormick ‘057 teaches that this pickling liquid provides good effectiveness and storage stability ([0007]-[0009]). Both McCormick ‘057 and Shigesato ‘553 teach pickling steel sheets using a pickling liquid (‘553, abstract, [0012], [0019]; ‘057, abstract, [0009]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the pickling liquid comprising hydrochloric acid and acetic acid, with an acetic acid concentration 2520 mass ppm taught by McCormick ‘057 as the pickling liquid used in the method taught by Shigesato ‘553 because this pickling liquid provides good effectiveness and storage stability, as taught by McCormick ‘057.
With respect to claim 3, the modified teachings of Shigesato ‘553 do not explicitly teach that the acetic acid concentration is not less than 1 mass ppm and not more than 2500 mass ppm. However, the claimed acetic acid concentration range of not less than 1 mass ppm and not more than 2500 mass ppm is obvious over the acetic acid concentration of 2520 taught by the modified teachings of Shigesato ‘553 because they are so close that one of ordinary skill in the art would have expected them to have the same properties. See MPEP 2144.05.I.
Further, it has been held that, generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating that said concentration is critical. See MPEP 2144.05.II.A.
Claim 4: Shigesato ‘553 teaches that the pickling pretreatment comprises bringing the picking liquid into contact with the forsterite coating (abstract, [0041]).
Claim 5: With respect to claim 5, the modified teachings of Shigesato ‘553 do not explicitly teach that a temperature of the pickling liquid is not lower than 30°C and not higher than 95°C, or that a contact time between the pickling liquid and the forsterite coating is 1.0 second or longer and 40 seconds or shorter.
McCormick ‘057 teaches a pickling method for steel sheets using a pickling liquid (abstract, [0009]). McCormick ‘057 teaches that the contact time and temperature with the pickling liquid affects required component concentrations and corroding by the acid ([0060]). Both McCormick ‘057 and Shigesato ‘553 teach pickling steel sheets using a pickling liquid (‘553, abstract, [0012], [0019]; ‘057, abstract, [0009]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the temperature of the pickling liquid and contact time between the pickling liquid and the forsterite coating in the method taught by the modified teachings of Shigesato ‘553 because the contact time and temperature with the pickling liquid affects required component concentrations and corroding by the acid, as taught by McCormick ‘057.
Claim 6: Shigesato ‘553 teaches that the insulating coating treatment liquid can contain a chromium compound ([0034], [0127]).
With respect to claim 6, the modified teachings of Shigesato ‘553 do not explicitly teach that the concentration of the chromium compound is 1 part by mass or less with respect to 100 parts by mass of the salt.
However, the claimed method differs from the method taught by Shigesato ‘553 only in the concentration of the chromium compound in the insulating coating treatment liquid, and it has been held that, generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating that said concentration is critical. See MPEP 2144.05.II.A.
Claim 7: Shigesato ‘553 teaches a method for manufacturing an electrical steel sheet with an insulating coating (abstract) comprising:
subjecting an electrical steel sheet having a fosterite coating on a surface thereof to a pickling pretreatment using a pickling liquid, which corresponds to the claimed pre-treatment liquid (abstract, [0012], [0019]); and
subsequently applying and baking an insulating coating treatment liquid containing a phosphate salt (abstract, [0018], [0019]).
With respect to claim 7, Shigesato ‘553 does not teach that the pickling liquid comprises at least one inorganic acid selected from hydrochloric acid, sulfuric acid, and phosphoric acid, and acetic acid, wherein a content of acetic acid is not less than 1 mass ppm and not more than 3000 mass ppm (as required by claim 1), and wherein a content of the at least one inorganic acid is not less than 0.20 mass% and not more than 30.00 mass% (as required by claim 2).
McCormick ‘057 teaches a pickling method for steel sheets using a pickling liquid (abstract, [0009]). McCormick ‘057 teaches that the pickling liquid can comprise hydrochloric acid ([0057], [0068]) and acetic acid ([0057], [0068]), where a 56% solution of acetic acid can be present in an amount of 0.45 wt% ([0068]), giving an acetic acid concentration of 0.252 wt%, which is the same as 2520 mass ppm, and where the hydrochloric acid can have a concentration of about 5 to about 20 wt% ([0058]). McCormick ‘057 teaches that this pickling liquid provides good effectiveness and storage stability ([0007]-[0009]). Both McCormick ‘057 and Shigesato ‘553 teach pickling steel sheets using a pickling liquid (‘553, abstract, [0012], [0019]; ‘057, abstract, [0009]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the pickling liquid comprising hydrochloric acid and acetic acid, with an acetic acid concentration 2520 mass ppm, and where the hydrochloric acid has a concentration of about 5 to about 20 wt% taught by McCormick ‘057 as the pickling liquid used in the method taught by Shigesato ‘553 because this pickling liquid provides good effectiveness and storage stability, as taught by McCormick ‘057.
Claim 8: Shigesato ‘553 teaches that the pickling pretreatment comprises bringing the picking liquid into contact with the forsterite coating (abstract, [0041]).
Claim 9: With respect to claim 9, the modified teachings of Shigesato ‘553 do not explicitly teach that a temperature of the pickling liquid is not lower than 30°C and not higher than 95°C, or that a contact time between the pickling liquid and the forsterite coating is 1.0 second or longer and 40 seconds or shorter.
McCormick ‘057 teaches a pickling method for steel sheets using a pickling liquid (abstract, [0009]). McCormick ‘057 teaches that the contact time and temperature with the pickling liquid affects required component concentrations and corroding by the acid ([0060]). Both McCormick ‘057 and Shigesato ‘553 teach pickling steel sheets using a pickling liquid (‘553, abstract, [0012], [0019]; ‘057, abstract, [0009]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the temperature of the pickling liquid and contact time between the pickling liquid and the forsterite coating in the method taught by the modified teachings of Shigesato ‘553 because the contact time and temperature with the pickling liquid affects required component concentrations and corroding by the acid, as taught by McCormick ‘057.
Claim 10-14: Shigesato ‘553 teaches that the insulating coating treatment liquid can contain a chromium compound ([0034], [0127]).
With respect to claims 10-14, the modified teachings of Shigesato ‘553 do not explicitly teach that the concentration of the chromium compound is 1 part by mass or less with respect to 100 parts by mass of the salt.
However, the claimed method differs from the method taught by Shigesato ‘553 only in the concentration of the chromium compound in the insulating coating treatment liquid, and it has been held that, generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating that said concentration is critical. See MPEP 2144.05.II.A.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/BG/
/SHAMIM AHMED/ Primary Examiner, Art Unit 1713