DETAILED ACTION
Claims 1-4 are currently presented for examination.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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:
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 and 4
Claims 1 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Japanese Patent Application Publication JP 60-102532 to Shitaya (hereinafter “Shitaya”; English translation provided by Applicant 8 October 2024)
Regarding claim 1, Shitaya discloses a lubrication treatment method of a metal wire rod (1), which is a method for lubrication treatment of a coiled metal wire rod (1) in a batch manner, the method comprising: a descaling step of performing shot blast treatment (blasting surface with steel pellets; see Machine Translation at page 3; lines 30-35) of a coiled metal wire rod (1), and a lubrication coating formation step (page 3, line 36 – page 4, line 4) of applying a lubricant to the metal wire rod (1) after the descaling step (lubricant is applied after the oxide film removed), and the lubricant (solid lubricant; see page 3, line 36 – page 4, line 10) contains one or more coating base components selected from the group consisting of an inorganic salt and an organic acid salt, and a lubrication component (see page 1, line 27 – page 2, line 1; lubrication includes an inorganic binder as a salt, a salt, and a metal oxide).
Shitaya does not explicitly disclose wherein the coiled metal wire rod satisfies L/(d x N) ≥ 1.1 in the descaling step under an assumption that a coil width is L, a wire diameter of the metal wire rod is d, and a number of coil turns is N. Shitaya appears to teach that the number of coils is 6 (see page 3, lines 17-19) but the English translation does not appear to disclose the wire diameter.
However, the MPEP instructs that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. (See MPEP 2144.04(IV)(A)). There is nothing of record that suggests that a coil having the claimed dimensions would behave differently while being shot blasted or lubricated than a coil having any other dimensions or a different dimensional ratio.
It would have been obvious to one having ordinary skill in the art to modify the method taught by Shitaya to have a coil length and wire coil diameter which satisfy the inequality. One having ordinary skill in the art would reasonably expect a coil treated by blasting and lubricating would behave the same way regardless of its dimensions.
Thus, Shitaya teaches the limitations of claim 1.
Regarding claim 4, Shitaya teaches the limitations of claim 1, and further Shitaya teaches that the method comprises a preliminary heating step (heat treatment; see page 3, lines 29-31 and page 4, lines 14-18) of heating the metal wire rod before the lubrication coating formation step (see page 3, line 33 – page 4, line 4 and page 4, line 19).
Claim 2
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Shitaya as applied to claim 1 above, and further in view of United States Patent Application Publication 2010/0043933 to Breunig (hereinafter “Breunig”).
Regarding claim 2, Shitaya teaches the limitations of claim 1, but does not explicitly disclose that the lubricant has a viscosity at 25 degrees Celsius of 5 mPa*s to 50 mPa*s.
However, lubricants with the cited viscosity are conventional. For example, Breunig teaches a lubricating composition having a dynamic viscosity at 25 degrees Celsius (see paragraph [0015]). Compositions may have a viscosity of 50 to 100,000 mPa*s at 25 degrees Celsius. The MPEP further teaches that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05(I); second paragraph).
It would have been obvious to one having ordinary skill in the art to modify the method taught by Shitaya to include using a conventional lubricating compound such as the compound taught by Breunig. (See MPEP 2143(1)(A)). The resulting method would predictably be expected to provide the treated coil with a desirably lubrication, without modification of the principles of operation of Shitaya.
Thus, the combination of Shitaya and Breunig teaches the limitations of claim 2.
Claim 3
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Shitaya as applied to claim 1 above, and further in view of United States Patent Application Publication 2003/0130138 to Imai et al. (hereinafter “Imai”).
Regarding claim 3, Shitaya teaches the limitations of claim 1, but does not explicitly disclose that a solid weight ration B/(A+B) between the coating base component (A) and the lubrication component (B) in the lubricant is within a range of 0.05 to 0.90.
It is known in the art of lubricants to provide materials which lie within the solid weight ratio range claimed.
For example, Imai teaches a lubricant having a salts component (A) and a lubricating component (B) with a ratio of B/A between 0.3 and 1.5 (see paragraph [0022]-[0024]). Where B/A =1, a value lying within the disclosed range, a ratio B/(A+B) can be rewritten as B/(B+B) or B/2B = 0.5, which lies within the claimed ratio. Imai teaches other lubricant compositions are conventional (see paragraph [0023], [0024]), [0026]) and that different materials therein are not understood to be critical.
It would have been obvious to one having ordinary skill in the art to provide the method taught by Shitaya with a conventional lubricant having salt and lubrication components, such as the lubricant taught by Imai. (See MPEP 2143(1)(A)). The resulting method would be reasonably expected to lubricate the treated coil of material taught by Shitaya in predictable manner.
Conclusion
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/DARRELL C FORD/Examiner, Art Unit 3726
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