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 .
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-10, drawn to a coated steel sheet.
Group II, claim(s) 11-13, drawn to a method of producing the coated steel sheet.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I-II lack unity of invention because even though the inventions of these groups require the technical feature of claim 1, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Hirasawa et al. (US 2018/0345317). Hirasawa discloses coating material for steel sheet comprising base steel sheet and on at least one side of the base steel sheet, a film containing acrylic resin and polyethylene wax in an amount of 20 to 50 parts by mass (abstract, 0022) wherein the polyethylene wax has a melting point of 115 C or higher and average particle diameter of 1 microns or less (0014, 0019) wherein the coating weight of the film per side is 0.5 to 2.5 g/m2 (0034). Given that Hirasawa discloses the same resin and wax and its amount as presently claimed, it is clear that the film of Hirasawa would inherently have the same properties as claimed in present claim. Thus, the common feature is not a special technical feature and present claims fail to form a single general inventive concept. Therefore, unity of inventive is lacking and restriction is proper.
During a telephone conversation with Mr. Tatsuya Sawada on 06/12/2026 a provisional election was made with traverse to prosecute the invention of group I, claims 11-13. Affirmation of this election must be made by applicant in replying to this Office action. Claims 11-13 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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 15-24 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 acrylic resin having a specific glass transition temperature and acid value and present claims recite distribution of wax value. However, given that the copending claims disclose the same coating as presently claimed, it is clear that the coated steel sheet of copending claims would inherently have the same properties as claimed in present claim.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-2 and 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hirasawa et al. (US 2018/0345317).
Regarding claims 1 and 4, Hirasawa discloses coating material for steel sheet comprising base steel sheet and on at least one side of the base steel sheet, a film containing acrylic resin and polyethylene wax in an amount of 20 to 50 parts by mass or 10 to 30 mass % (abstract, 0022, table 1) wherein the polyethylene wax has a melting point of 115 C or higher and average particle diameter of 1 microns or less (0014, 0019) wherein the coating weight of the film per side is 0.5 to 2.5 g/m2 (0034). Given that Hirasawa discloses the same resin and wax and its amount as presently claimed, it is clear that the film of Hirasawa would inherently have the same properties as claimed in present claim.
Regarding claim 2, Hirasawa discloses the coated steel sheet of claim 1, wherein the acrylic resin is in an amount of 66 to 90 mass % and the wax is present in an amount of 10 to 30 mass % (table 1).
Regarding claim 5, Hirasawa discloses the coated steel sheet of claim 1, wherein given that Hirasawa discloses the same resin as claimed in present claim, it is clear that the acrylic resin of Hirasawa would inherently be soluble in an alkali soluble resin.
Regarding claim 6, Hirasawa discloses the coated steel sheet of claim 1, wherein the film further contains a rust preventive agent, i.e. rust inhibitor, (0018).
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) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hirasawa et al. (US 2018/0345317) in view of Hiroyuki et al. (JP 4675553).
Regarding claim 3, Hirasawa discloses the coated steel sheet of claim 1, but does not specifically teach the steel sheet has an arithmetic mean roughness Ra of 0.4-2.5 micron.
Hiroyuki is in the similar field of endeavor of a steel plate with a resin layer with galling resistance and press formability (claim 1) with polyethylene wax in the resin layer ([0013]), and teaches a steel sheet having an average surface roughness Ra of 0.5-5 microns ([0014]). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention to further modify Hirasawa to incorporate the surface roughness of Hiroyuki. The motivation for doing so would have been to prevent having an unpainted portion ([0022]) which impairs appearance ([0022]) and would also reduce the benefits imparted by the surface treatment (of press formability and anti-rust properties Hirasawa).
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Hirasawa et al. (US 2018/0345317) in view of Kikuchi et al. (US 2009/0215937).
Regarding claims 8-9, Hirasawa discloses the coating of claim 1 but is silent with respect to dispersant such as carboxylic acid copolymer.
Kikuchi discloses resin composition for metal surface (abstract) comprising carboxylic acid copolymer, i.e. dispersant, to obtain corrosion resistance and adhesion to the steel sheet and to obtain uniform coating (0037-0039, 0042).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention to further modify Hirasawa to incorporate the dispersant of Kikuchi to obtain corrosion resistance and adhesion to the steel sheet and to obtain uniform coating.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Hirasawa et al. (US 2018/0345317) in view of Mori et al. (US 6797770).
Regarding claim 10, Hirasawa discloses the coating of claim 1 but is silent with respect to 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 Hirasawa 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 Hirasawa).
Claim(s) 1-2 and 4-7 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 claim 1 and 4, 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 such as an acrylic resin (0023-0024) and further includes 0.5 to 5 % by weight of polyethylene wax with a melting point of 100⁰C or more (0031, 0040) and a coating amount of the film on the metal sheet is 0.5-7.0 g/m2 (0043).
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). Given that Higai in view of Hirasawa discloses the same resin and wax and its amount as presently claimed, it is clear that the film of Higai in view of Hirasawa would inherently have the same properties as claimed in present claim.
Regarding claim 2, 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 given that Higai discloses the same resin as claimed in present claim, it is clear that the acrylic resin of Higai would inherently be soluble in an alkali soluble resin.
Regarding claims 6-7, 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%, i.e. rust inhibitor, (0015).
Claim(s) 3 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) and further in view of Hiroyuki et al. (JP 4675553).
Regarding claim 3, Higai in view of Hirasawa discloses the coated steel sheet of claim 1, but does not specifically teach the steel sheet has an arithmetic mean roughness Ra of 0.4-2.5 micron.
Hiroyuki is in the similar field of endeavor of a steel plate with a resin layer with galling resistance and press formability (claim 1) with polyethylene wax in the resin layer (0013), and teaches a steel sheet having an average surface roughness Ra of 0.5-5 microns ([0014]). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements. As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
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 in view of Hirasawa to incorporate the surface roughness of Hiroyuki. The motivation for doing so would have been to prevent having an unpainted portion ([0022]) which impairs appearance ([0022]) and would also reduce the benefits imparted by the surface treatment (of press formability and anti-rust properties Higai in view of Hirasawa).
Claims 8-9 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) and further in view of Kikuchi et al. (US 2009/0215937).
Regarding claims 8-9, Higai in view of Hirasawa discloses the coating of claim 1 but is silent with respect to dispersant such as carboxylic acid copolymer.
Kikuchi discloses resin composition for metal surface (abstract) comprising carboxylic acid copolymer to obtain corrosion resistance and adhesion to the steel sheet and to obtain uniform coating (0037-0039, 0042).
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 in view of Hirasawa to incorporate the dispersant of Kikuchi to obtain corrosion resistance and adhesion to the steel sheet and to obtain uniform coating.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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