DETAILED ACTION1
REJECTIONS UNDER 35 USC 112
The following is a quotation of 35 U.S.C. 112:
(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.
Claims 19-20 are rejected under 35 U.S.C. 112 (b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claims 19 and 20 both recite the two cooperating smoothing rolls. This constitutes improper antecedent basis because parent claim 11 introduces two interacting smoothing rolls. (emphasis added). Claims 19 and 20 have been examined as if they recited interacting.
REJECTIONS UNDER 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 11, 14-16, & 21 rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. 2010/0116380 to Seidel as evidenced by https://stainlesssteelfoil.com/how-is-cold-rolled-stainless-steel-coil-strip-made/ (hereafter Myriad).2
Claim 11 recites a method for producing metal strips by continuous casting and rolling. Seidel relates to such a process. See Seidel [0001]. Seidel teaches casting a slab (3) in a casting machine (2) and then cleaning the slab in a cleaning device (13) downstream of the casting machine. See Seidel [0045]-[0047] and Fig. 1. Claim 11 then recites smoothing the slab by two interacting smoothing rolls between the cleaning device and [a] heat treatment device. Figure 1 of Seidel shows that after the descaling spray (13) the slab enters a pre-roller (4), that consists of two interacting…rolls before then entering a second furnace (7). See Seidel [0046]-[0048]. Seidel further teaches the pre-roller may apply either a “smooth pass” or a high reduction of the slab. See Seidel [0046]. The Myriad website teaches that the term “smooth pass” means a pass through rollers that smooths a steel strip, while only reducing thickness by 2% or less. See Myriad Step 8. As such, pre-roller (4) may be deemed two interacting smoothing rolls and further anticipates that a reduction in thickness the slab during the smoothing is less than 10%. The second furnace (7) of Seidel is deemed to meet the step of heat treating the slab because it applies heat, and claim 11 does not further define what type of heat treatment is required. Thus, the broadest reasonable interpretation includes any further application of heat to the slab. Claim 14 recites that the slab undergoes the smoothing in a fully solidified state. Since the slab is sprayed prior to entering the rollers, one of ordinary skill would infer the slab is in a fully solidified state.
Claims 15 recites that the reduction in thickness of the slab (3) during the smoothing is less than 5% and claim 16 recites less that 3%. As noted above, a smooth pass is understood to reduce less than 2%. Regarding claim 21, Seidel teaches fluid descaling. See Seidel [0067].
REJECTIONS UNDER 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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious3 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
Claims 12-13 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2010/0116380 to Seidel as evidenced by https://stainlesssteelfoil.com/how-is-cold-rolled-stainless-steel-coil-strip-made/ (hereafter Myriad)
Claim 12 recites that a mean roughness value of the surfaces of the slab after the smoothing is at most 10µm, while claim 13 recites at most 8µm. Seidel does not teach the surface roughness value of the strip after the smoothing pass. But one of ordinary skill would understand that the smoothing pass must yield some designed value. As such, the recited values are deemed a mere design choice. It would have been an obvious matter of design choice to modify the Seidel to smooth the slab to 8 or 10µm, or indeed any other desired value because applicant has not disclosed that a specific surface roughness solves any stated problem or is for any particular purpose. Rather, applicant’s specification discusses the need to apply a heat treatment to properly homogenize the steel slab prior to significant reduction in thickness to ensure the quality of the final product. It does not discuss the smoothness at this stage of the process as being relevant or critical to that goal. Absent a teaching as to criticality of a specific surface roughness, this particular arrangement is deemed to have been known by those skilled in the art since the instant specification and evidence of record fail to attribute any significance (novel or unexpected results) to a particular arrangement. In re Kuhle, 526 F.2d 553,555,188 USPQ 7, 9 (CCPA 1975). Claim 22 recites cooling the smooth rolls during the smoothing. It would have been obvious as a matter of common sense to cool the rolls to prevent overheating.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2010/0116380 to Seidel as evidenced by https://stainlesssteelfoil.com/how-is-cold-rolled-stainless-steel-coil-strip-made/ (hereafter Myriad), and further in view of U.S. 2008/0251232 to Benedetti.
Claim 23 recites that the smoothing is carried out at a speed between 1.0 and 6.0 m/min. Seidel is silent as to the speed of the slab. But one of ordinary skill would know that some speed must be chosen and would look to the prior art for known speeds. Benedetti also relates to continuous casting and rolling of steel. See Benedetti [0001]. Benedetti teaches a casting and slab speed of 4-16m/min. See Benedetti [0017]. This range overlaps claim 23. It would have been obvious to modify Seidel to use this speed because it is obvious to apply a known technique to a known product or method, ready for improvement, to yield predictable results. See MPEP 2143(D).
ALLOWABLE SUBJECT MATTER
Claims 17-18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 19-20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
CONCLUSION
Any inquiry concerning this communication should be directed to Moshe Wilensky whose telephone number is 571-270-3257. Mr. Wilensky’s supervisor, Sunil Singh can be reached at 571-272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Examiner interviews are available via telephone or video conferencing using a USPTO supplied web-based collaboration tool. Applicant may also use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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/MOSHE WILENSKY/
Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct claim quotations are presented in italics. All non-italic reference numerals presented with italicized claim language are from the cited prior art reference. All citations to “specification” are to the applicant’s published specification unless otherwise indicated. The use of the phrase “et al.” following a reference is used solely to refer to subsequent modifying references, and not to other listed inventors of the cited reference.
2 The Myriad website does not have a listed publication date, but references cited solely to evidence the innate properties of valid prior art need not have a valid priority date themselves. See In re Wilson, 424 F.2d 1382, CCPA 1970.
3 Hereafter all uses of the word “obvious” should be construed to mean “obvious to one of ordinary skill in the art at the time the invention was filed.”
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