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 .
Claim Rejections - 35 USC § 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 1-8 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.
Regarding Claim 1, it is unclear what defines “cross-linking degree”. There is no apparent single definition. The Specification at paragraph 19 provides one definition in terms of a test to be performed, but it is unclear whether the claim is limited to the results from this particular test to be performed. If not, it is unclear what other definition is being claimed and how it would reconcile results that could be different from the definition of the Specification.
Regarding Claim 2, it is unclear what is meant by “for” at line 2. Does this mean that there is claimed an electrodeposition coating on the sheet? If so, does it mean that the coating is necessarily applied to the paint layer? Does this mean that the sheet (paint layer) simply must be capable of or suitable for receiving such electrodeposition coating, but presence of coating is not required?
Regarding Claim 5, at line 5, it is unclear what is the antecedent basis of “the magnesium compound”. Does this pertain to the “at least one magnesium compound”, to each of “at least one magnesium compound,” or to something else?
Regarding Claim 6, at line 5, it is unclear whether “-based” has been inadvertently omitted following “composite” and between composite and film or whether its omission is intentional and the film is not merely based composite, but it is an inorganic/organic composite film.
Regarding Claim 7, at line 3, it is unclear what is the antecedent basis of “the outermost layer”. Should it read “an outermost layer”?
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-4, 7, and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kawamura USPA 2019/0330478. Kawamura teaches steel sheet having Zn plating layer thereon (paragraphs 91 and 92) to which is applied a paint layer (“resin coating film”) (paragraph 97) that contains binder that can be phenol resin (paragraph 101) that is cross-linked (paragraph 103), that contains conductive agent that can be doped zinc oxide (paragraph 125), and that contains rust preventer (“anti-corrosive pigment”) (paragraph 134 and 138). Kawamura may not exemplify these compositions. It would have been obvious to one of ordinary skill in the art before the time of filing to prepare compositions of these ingredients since Kawamura suggests they would be effective. Kawamura does not teach claimed thickness of resin coating film but suggests it can range from 1 to 25 grams per square meter (paragraph 165). In view of densities and relative amounts of ingredients, with resin being ca. 1 gram per cubic centimeter and representing 10 to 60 wt. % of solid mass (paragraph 105) and the balance being one of various metal oxides with density being possibly from 3 to 5 grams per cubic centimeter, the overall density could be 2 to 4 grams per cubic centimeter, which, for 3 grams per cubic centimeter, 2 gram per square meter would be a thickness of 0.66 microns and 15 grams per square meter would be a thickness of 5 microns. Thus, among the suggested thicknesses would be those being claimed. Kawamura teaches that the resin can be cross-linked and teaches that the amount of cross-linking agent can preferably range from 5 to 30 parts per 100 resin parts (paragraph 104). Kawamura teaches that the lower bound is characterized by not being film forming, whereas the upper bound is characterized by excessively hardened (paragraph 104). Thus, it is evident that the degree of cross-linking ranges from very little to almost complete. Accordingly, it would be expected that the claimed range of 40 to 80 % overlaps what is desired in Kawamura as being enough to form a film but not so much as to be fully cured, effectively “semi-cured” as characterized by Specification (paragraph 19). Therefore, the suggested range of inclusion of cross-linking agent for a cross-linked phenolic resin to be included renders obvious the claimed range. This is also the case because the ranges in Kawamura are characterized as preferable and so even amounts slightly outside the expressly suggested range in Kawamura are encompassed as suggestions, further bolstering suggesting the claimed range of cross-linking degree. Regarding Claim 2, Kawamura teaches that the coated sheet is poised for electrodeposition, rendering obvious this feature (Claims 8-14). Regarding Claims 3 and 4, Kawamura teaches doped zinc oxide at 10 wt. % to 45 wt. % with respect to paint film (paragraph 131). Zinc oxide has density of ca. 5.5 g/cc. If the balance of the film comprising resin (1 g/cc) and other inorganic (3 g/cc) has overall density of ca. 2 g/cc, then the volume of doped zinc oxide, if present at 20 wt. %, would be (20/5.5)/(80/2+20/5.5), or ca. 8 vol. %. Thus, it would have been obvious to include doped zinc oxide in claimed range. Regarding Claim 7, Kawamura teaches applying electrodeposition coating on the resin coating layer (paragraphs 175 and 176), rendering this aspect of the step obvious. Kawamura teaches choosing electrodeposition resin that will react with paint (paragraph 175: “reacts with hardening agent”.) Kawamura teaches that the resin coating layer can contain cross-linkers to improve adhesion with electrodeposited layer (paragraph 175: “hardening agents” leading to “improvement of the adhesion between the resin coating film and the electrodeposition coating film is facilitated”). This improvement of adhesion is understood to mean “bond” as claimed. Kawamura teaches heating resin coating film when electrodeposition film is applied (paragraphs 261 and 269). Thus, it would have been obvious to one of ordinary skill in the art before the time of filing to use an electrodepositing resin that will react with the paint layer via cross-linking reactions as suggested by Kawamura. The cross-linking moieties can be those already present in the partially cross-linked phenolic resin and/or additionally included cross-linker (“hardening agent”) suggested as being further included in the resin coating layer in Kawamura. Upon heating the electrodeposited resin on the paint film, which is what is taught and what would be necessary or obvious to do in order to activate the further cross-linking taught in Kawamura as desirable to improve adhesion, the claimed feature of “bond the paint film and the outermost layer” would be satisfied. The Specification (at paragraph 19) refers to curing by heating (“promote the cross-linking of the phenolic resin in the semi-cross-linked state”) as what is required to achieve this feature.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kawamura USPA 2019/0330478 in view of Visser et al. USPA 2012/0025142. Kawamura is relied upon as set forth above in the section 103 rejection over Kawamura. Kawamura teaches including anti-corrosive pigment (paragraphs 138 and 143), but does not teach those claimed in Claim 5. Visser teaches that those claimed in Claim 5 are conventional anti-corrosive pigments and that they are included in resin in range overlapping that claimed for effectiveness (paragraphs 29 and 30). It would have been obvious to one of ordinary skill in the art before the time of filing to include any effective, recognized anti-corrosive pigment in the coating of Kawamura, including those explained to be known by Visser at the amounts suggested by Visser, with the expectation that effective corrosion protection would be obtained and purposes of coating layer in Kawamura would be obtained.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kawamura USPA 2019/0330478 in view of Endo USPA 2009/0169875. Kawamura is relied upon as set forth above in the section 103 rejection over Kawamura. Regarding Claim 6, Kawamura teaches including inner layer of inorganic based film (paragraph 170), which can be non-chromate silica/silicate based. Kawamura does not teach thickness although teaches area density amounts can be optimized (paragraphs 170 and 171). Endo teaches coating galvanized steel (paragraphs 12 and 92) with non-chromate silica based inner layer (paragraph 34 and 92) and teaches thickness that overlaps claimed range for good corrosion resistance (paragraphs 32 and 66). It would have been obvious to one of ordinary skill in the art before the time of filing to include any effective, recognized non-chromate silica based inner layer on the substrate of Kawamura and to adjust to known effective thicknesses as suggested by Endo because Kawamura teaches that such compositionally effective inner layers are useful and teaches that varying amounts of such inner layer can be optimized (paragraphs 170 and 171).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL E. LA VILLA whose telephone number is (571)272-1539. The examiner can normally be reached Mon. through Fri. from 9:00 a.m. ET to 5:30 p.m. ET.
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/MICHAEL E. LA VILLA/Primary Examiner, Art Unit 1784
12 May 2026
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