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(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 30 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 30 requires “the at least one polymer is a melamine cross-linked polymer”; however, claim 29 from which the claims depends includes a Markush group for “the at least one polymer” and such a Markush group does not include melamine cross linked polymer (but requires melamine cross-lined polyesters) and therefore this requirement does not appear to be further limiting Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 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.
Claims 1-4, 6-19, 21-27, 29-38, 40-44 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2002212699, hereafter JP 699 collectively with US Patent Application Publication 20120052206 with Diez et al. and DE 69936071, hereinafter after DE 071.
Claim 1: JP 699 discloses process for the manufacture of a pre-painted sheet comprising the steps of:
supplying a steel substrate (0001, 0022); depositing a metallic coating on at least one face by hot-dipping the substrate in a bath including an amount within the range of 4.4% to 5.6% by weight aluminum and 0.3% to 0.56% by weight magnesium, a remainder of the bath including zinc and unavoidable impurities resulting from the process, the presence of nickel being excluded (0024-0029, Table, Example 10; solidifying the metallic coating (0044); surface preparation of the metallic coating (0045); and painting the metallic coating (0001, see e.g. automobiles which are painted, 0049, resin). JP 699 discloses the bath consist of Al, Mg, Zn and unavoidable impurities, which is described by JP 699 to include Bi in the range as claimed (Table, 0051).
JP 699 discloses all that is taught above and discloses plated and coated steel for automobiles (0001); however, fails to disclose the skin pass treating to provide a roughness. However, Diez, also in the art of manufacturing a metal strip for automobiles (0005) discloses skin pass rolling to achieve texture facilitating its further processing due to roughness (0067-0070). Taking the references collectively, it would have been obvious to one of ordinary skill in the art to provide ski pass rolling to achieve the roughness necessary for further processing as is taught by Diez as known for the production of automobile parts.
Additionally, as to Claim 2-5: Examiner maintains the position, but notes JP 699 explicitly discloses the amount of Al, Mg, Bi are result effective variables (0024-0027, i.e. workability and corrosion) and therefore taking the reference for its collective teaching it would have been obvious to have determined the optimum amount of these parameters through routine experimentation.
As for the requirement of exclusion of Ni, the examiner maintains such is explicitly excluded by the disclosure of JP 699; and notes that 0% Ni is within the range as disclosed by JP 699 and thus obvious to exclude Ni. Additionally, the examiner does acknowledge that Ni is taught as possible impurity. However, in such a disclosure, the prior art implicitly discloses that Ni causes problems in the coating (i.e. “even if” very small amounts exists no detriment to coating occurs) and therefore taking the level of one ordinary skill in the art, excluding Ni would have been obvious as beneficial results would of its exclusion, that is eliminate the potential coating problems.
JP 699 discloses all that is taught above and discloses an automobile body coating and a resin coating; however, fails to explicitly disclose the claimed paint. However, DE 071 discloses painting system for an automobile body and discloses using polyester with melamine resin crosslinking agent as claimed (stating “a polyester system paint, which together with a melamine resin or polyisocyanate as a curing agent is used”, see also “ organic Film layer on a base metal-treated sheet metal coated with a Zn-Mg-Al-Si alloy having . . . used is a resin system of a melamine-crosslinked polyester resin”). Therefore, since melamine-crosslinked polyester resin is known in the art of coating for automobile coatings, or coatings with a ZnMgAl alloy coated steel sheet, using such would have been obvious to one of ordinary skill in the art. A predictable use of prior art elements according to their established functions to achieve a predictable result is prima facie obvious. See KSR Int’l Inc. v. Teleflex Inc., 127 S Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007).
DE 071 discloses a paint film with a thickness as claimed (stating “The Thickness of the organic according to the invention Film layer is suitably 1 μm up to 100 μm”) and disclose a range that overlaps/is within the claimed range and thus makes obvious the claimed range.
JP 699 fails to disclose the claimed metallic coating weight that would overlap the claimed thickness (see 0042 related to adhesion amount). At the very least, the reference disclose the coating amount is adjusted to predetermined amount by gas drawing and such is not limited but adjusted based on property operation efficiency and thus the coating thickness would have been recognized as a result effective variable, directly affecting both the operation efficiency and the final product properties (i.e. reap the benefits of the hot dipping coating) and determination of the optimum amount would have been obvious as predictable to one of ordinary skill in the art. Additionally, Diez also discloses a coating thickness within the range as claimed for a metallic coating (0082) and thus using this thickness would have been obvious as a known metallic coating thickness on the steel strip.
Claim 2: JP 699 discloses Al content of 5.5 or 3.5 the range as claimed is therein and thus obvious the instant claimed range (Table), a JP 699 discloses 0.5 Mg, Example 10, within the claimed range and thus makes obvious the instant claimed ranges. DE 071 discloses the paint film thickness that encompasses and makes obvious the range as claimed ( The Thickness of the organic according to the invention Film layer is suitably 1 μm up to 100 μm”, see also Tables). The plating thickness is made obvious for the reasons set forth above with respect to JP 699 and Diez.
Claim 3: DE 071 discloses two successive layers of paint (see e.g. Example 12, primer coat of a polyester resin system and a base coat of a polyester resin system).
Claim 4: DE 071 discloses two successive layers of paint, see e.g. Example 12, primer coat of a polyester resin system with antirust pigment (i.e. claimed anticorrosion pigment) and a base coat of a polyester resin system. DE 071 discloses the “a polyester system paint, which together with a melamine resin or polyisocyanate as a curing agent is used” and therefore it would have been obvious to use the curing agent of melamine resin in the primer and base coat as such is explicitly taught by DE 071 as a known and suitable agent used in a polyester system and each of the primer coating and base coating are taught as polyester resin system.
Claim 6: DE 071 discloses the paint film thickness that encompasses and makes obvious the range as claimed ( The Thickness of the organic according to the invention Film layer is suitably 1 μm up to 100 μm”, see also Tables). The plating thickness is made obvious for the reasons set forth above with respect to JP 699 and Diez.
Claim 7: JP 699 discloses Al content of 5.5 or 3.5 the range as claimed is therein and thus obvious (Table), a JP 699 discloses 0.5 Mg, Example 10, within the claimed range and thus makes obvious the instant claimed ranges.
Claim 8-10: JP 699 discloses cooling rate of 20C/s ( see table). JP 699 discloses the cooling rate is a result effective variable (0043-0044) and therefore taking the reference for its collective teaching it would have been obvious to have determined the optimum amount of these parameters through routine experimentation.
Claim 11: As noted above in claim 8-10, JP 699 discloses cooling rate of 20C/s ( see table) and while the reference discloses small spangles may be present, the examiner notes that the applicants disclosure illustrates that the metallic coating and presence of spangles is a direct result of the cooling rate, specifically cooling at greater than 15C/s prevents the formation of the spangles and therefore since the prior art discloses each and every process step that the applicant’s disclose as required by the applicants to achieve the results, the prior art must necessarily meet the free from spangles requirement unless the applicant is performing different or other process steps/materials that are not claimed or required.
Claim 12: JP 699 discloses the reduction of propensity to reduce cracks (see e.g. 0015). The propensity to reduce cracking due to painting is not disclosed by the prior art; however, the claims are merely are result of performing the claimed and disclosed process steps and therefore the presence of the paint would reduce, to some degree, the propensity of cracking because the prior art makes obvious each and every process step as claimed and disclosed as required to achieve the results. In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art." Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990) (emphasis in original). Here, the evidence shows that the presence of the polymer coating the same metallic coating would necessarily have some degree of reduction of propensity of cracking and thus the prior art by making obvious the polymer coating the same metallic coating would necessarily have the same results, unless the results flow from some undescribed or undisclosed process steps or materials. Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985)
Claim 13: The temperature of the bath is taught at 0051. JP 699 discloses the temperature of the bath is a result effective variable, directly affecting the hot dip galvanization process (0041) and therefore taking the reference for its teaching it would have been obvious to have determined the optimum bath temperature through routine experimentation.
Claims 14-15: JP 699 discloses Al content of 5.5 or 3.5 the range as claimed is therein and thus makes obvious the instant claimed ranges (Table), a JP 699 discloses 0.5 Mg, Example 10, within the claimed range and thus makes obvious the instant claimed ranges.
Claim 16: JP 699 discloses Bi in the range as claimed (example 14, 0027-0029).
Claim 17: JP 699 discloses the bath consist of Al, Mg, Zn and unavoidable impurities (Table, 0051).
Claim 18: JP 699 discloses what can fall under the degreasing (0044). JP 699 discloses degreasing (0050).
Claim 19: JPP 699 with Diez and DE 071 discloses each and every claim limitations of this instant claim as set forth above and therefore make obvious this claim for the reasons as set forth above. Diez discloses the claimed surface preparation, see discussion above.
Claim 21-27: See discussion with respect to claims 3-4, 6-12 above where the limitations of these claims are specifically addressed above and therefore the prior art makes obvious these claims for the same reasons as set forth above.
Claim 29-38, 40-41: See discussion with respect to claims 3-4, 6-12 above where the limitations of these claims are specifically addressed above and therefore the prior art makes obvious these claims for the same reasons as set forth above.
Claim 42: Diez discloses surface preparation prior to painting includes applying mechanical forces to the strip and metallic coating (see 0070) and therefore taking the level of one ordinary skill in the art at the time of the invention it would have been obvious to one of ordinary skill in the art to have provided the mechanical force preparation as such is known and suggested in the prior art as a preparation prior to painting.
Claim 43: The scope of the term “natural convection” is not specifically defined and the prior art cooling can reasonably be considered natural convection within the scope of this broadly drafted requirement. Additionally, JP 699 discloses 3C/sec (table), which reasonably reads on the applicant’s disclosure of what natural convention may include (does not limit this to about 2C/min). Additionally, the cooling is a result effective variable (0043-0044) and therefore taking the reference for its collective teaching it would have been obvious to have determined the optimum amount of these parameters through routine experimentation.
Claim 44: JP 699 discloses the bath consist of Al, Mg, Zn and unavoidable impurities (Table, 0051). JP 699 discloses Bi in the range as claimed (example 14, 0027-0029).
Claims 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 699 with Diez and DE 071 and US Patent 5059455 by Hasselbach et al.
JP 699 with Diez and DE 071 discloses all that is taught above and discloses sheet treatment; however, fails to disclose the claimed coiling. However, Hasselbach, related to the treatment of steel sheets including hot dip treatment and painting, discloses uncoiling for each process and thereafter recoiling (see Figure 1 and accompanying text). Therefore, taking the references collectively and all that is known to one of ordinary skill in the art, it would have been obvious to have coiled the steel sheet after each individual process (i.e. after coating, after skin passing and/or after painting) and such would have led to predictable and successful results.
Claims 5, 20, 39, and 42 is/are rejected under 35 U.S.C. 103 as being unpatentable JP 699 collectively with Diez et al. and DE 071 taken collectively with EP 1199376, hereinafter EP 376.
Claims 5, 20 and 39: JP 699 with Diez and DE 071 discloses all that is that above and fails to disclose bending after painting. However, EP 376 at 0103 disclose painting the steel sheet and thereafter bending and thus it would have been obvious to have painted the steel sheet before the sheet is bent as such is taught by EP 376 as a known mechanism for preparing painted metallic steel.
Claims 42: JP 699 with Diez and DE 071 discloses all that is that above and while the examiner maintains the prior art can reasonably be considered natural convection, the examiner notes that EP 376 discloses the cooling rate during solidification at a rate that would read on natural convection (0054) and discloses that adjustment of the cooling rate will have a direct effect on the various structures in the coating (0054, 00195) and therefore taking the reference collectively for their entire teachings using natural convection would have been obvious to one of ordinary skill in the art at the time of the invention to reap the benefits of providing the coating with the desired crystal refinement within the coating layer (see 0054).
Claims 5, 20 and 39 is/are rejected under 35 U.S.C. 103 as being unpatentable JP 699 collectively with Diez et al. and DE 071 taken collectively with CA 02809940, hereinafter CA 940.
JP 699 with Diez and DE 071 discloses all that is that above and fails to disclose bending after painting. Diez discloses stamping before paint. However, CA 940 at 0003-0004 disclose in automobile art (same as JP 699) post coated metal sheets shaping processes are being replaced with painting the steel sheet and thereafter bending /shaping/press forming and thus it would have been obvious to have painted the steel sheet before the sheet the press forming as such is taught by CA 940 as a known mechanism for preparing painted metallic steel for automobile parts to provide high productivity and beautiful appearance by eliminating the coating operation after press forming (0003).
Claim 2, 6, 24, and 31 is/are rejected under 35 U.S.C. 103 as being unpatentable JP 699 collectively with Diez et al. and DE 071 taken collectively with US Patent Application Publication 20100055344 by Ostwald et al.
JP 699 with Diez and DE 071 discloses all that is that above and fails to explicitly disclose the claimed galvanization thickness. However, Ostwald disclose in providing steel suitable for vehicle construction, see 0065 same as JP 699, discloses a metallic coating including Zn, Al and Mg with Al and Mg overlapping the range as claimed (0010) and adjusting the coating thickness of the metal to be 3-20 microns and cooling prior to application of the organic coating direction to the steel sheet (0010-0013). Ostwald also supports the thickness of the organic layer as claimed (0060-0062). Thus it would have been obvious to have adjusted the thickness to the 3-20 microns before applying the organic coating to the metallic coating because JP 699 generally discloses a Zn-Mg-Al layer for vehicles and Ostwald discloses a thickness of a Zn-Mg-Al layer for vehicles prior to organic coating is within the range of 3-20 microns. As the range overlaps the claimed range, the claimed range is deemed obvious.
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 1-44 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12,116,673. Although the claims at issue are not identical, they are not patentably distinct from each other because claims of U.S. Patent No. 12,116,673 fully encompass and require each of the individual claim limitations and therefore anticipate and/or make obvious the instant claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID P TUROCY whose telephone number is (571)272-2940. The examiner can normally be reached Mon, Tues, Thurs, and Friday, 7:00 a.m. to 5:30 p.m.
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/DAVID P TUROCY/Primary Examiner, Art Unit 1718