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 .
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.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11965249 A1. Although the claims at issue are not identical, they are not patentably distinct from each other because the US249 is obvious over the presently claimed invention. Specifically, the US249 teaches surface treated metal material having a metal sheet, a plating layer containing zinc, and a composite coating on a surface of the plating layer comprising an organic silicon compound, a phosphoric acid, and a fluorine compound (US 249, Claim 1). Moreover, while US249 does not explicitly disclose the surface roughness on the surface of the coating as presently claimed, US249 teaches a method of forming the coating by a first heating comprising holding at the steel plate temperature for 2-5 seconds in 80% or higher humidity and a second heating comprising heating to a peak metal temperature (US249, Column 12, lines 55-60 and Column 14, lines 50-62). Therefore the composition and method are substantially identical to the composition and method as used in the present invention and the surface roughness would be inherent to the composition of US 249.
Claim Rejections - 35 USC § 112(b)
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 5-12 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 claims 5 and 6, the phrase "when" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Specifically, the use of “when” makes the limitation optional and therefore not required when finding prior art. Clarification is required.
Regarding dependent claims 7-12, these claims do not remedy the deficiencies of parent claims 5 and 6 noted above, and are rejected for the same rationale.
Claim Rejections - 35 USC § 102(a)(1)
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 (i.e., changing from AIA to pre-AIA ) 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 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.
Claims 5-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kaneto et al.(US 2009/0110921 A1, hereinafter “Kaneto”).
Regarding claims 5, 6, 7, and 9, Kaneto teaches a chromate-free surface treated metal material (Kaneto, Abstract). Kaneto teaches the surface treated material includes a plated metal material comprising a zinc-based plated steel sheet or a zinc-aluminum-magnesium plated steel sheet and a chromate-free coating on top of the plated steel sheet (Kaneto, [0015]). Kaneto also teaches the chromate-free coating comprises an organic silicon compound, a fluorocompound, and a phosphoric acid (Kaneto, [0016-0021]).
The surface-treated steel sheet of Kaneto corresponds to a surface-treated metal sheet of claim 5. The zinc-aluminum-magnesium plated steel sheet and chromate-free covering layer of Kaneto corresponds to a steel sheet; a plating layer containing zinc formed on the steel sheet; and a coating formed on the plating layer, wherein the coating contains an organosilicon compound, a phosphate compound and a fluorine compound of claim 5.
Kaneto further teaches the surface treated metal material is coated with the aqueous metal surface treatment agent and dried at a peak temperature higher than 50°C and less than 250°C, so as to have a dried coating weight of 0.05-2.0 g/m2 (Kaneto, [0026]).
Given that the composition and method of making the chromate-free coating of Kaneto are substantially identical to the composition and method of making the coating as used in the present invention, as set forth above, it is clear that that the coating would inherently have a surface roughness, at 1µm or 5µm, with a mean heigh of 0.1-10 nm, or a maximum heigh of 1-1000nm, or a root mean square roughness of 0.1-100 nm (claims 5 and 6) and the coating contains 1-100 granular organosilicon compound particles with a major axis of 10-300nm (claims 7 and 9) as presently claimed.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Alternatively, the wording of claim 5, makes the surface roughness optional, with the use of “when.” Therefore, claims 5 and 6 are satisfied by Kaneto.
Regarding claims 8, 10, 11, and 12, Kaneto teaches the hot dip zinc coating contains 11 wt.% aluminum, 3 wt.% magnesium, 0.2 wt.% silicon, and a remainder zinc (Kaneto, [0036-0038]). The hot dip zinc coating falls within the composition of the plating layer of claims 8, 10, 11, and 12 of the present invention.
Claim Rejections - 35 USC § 102/103
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 (i.e., changing from AIA to pre-AIA ) 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 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.
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 5-6 are rejected under 35 U.S.C. 102(a)(1) as anticipated by, or in the alternative, under 35 U.S.C. 103 as being unpatentable over Shoji et al. (US 2018/0187313 A1, hereinafter “Shoji”).
Regarding claims 5 and 6, Shoji teaches a surface-treated steel sheet for fuel tanks including a Zn-Ni alloy plating layer on one or both surfaces of a steel sheet and a chromate-free covering layer on the Zn-Ni alloy plating layer (Shoji, Abstract). Shoji teaches the chromate-free covering layer includes a silicon compound, a phosphoric acid compound, and one or more of compounds of Zr, V, Ti, and Co (Shoji, [0167]). Shoji further teaches the silicon compound is preferably an organic silicon compound, the phosphoric acid compound can be phosphoric acid, and the compounds of Zr, V, Ti, and Co can be hexafluorotitanic acid, or hexafluorozirconic acid (Shoji, [0169], [0174], and [0185-0186]). Shoji teaches on the surface of the chromate-free covering layer, the arithmetic average roughness (Ra) in a rectangular area with four 5 µm sides is 5-200nm and the maximum cross-sectional height (Rt) of a roughness curve is 100-1000nm (Shoji, [0144]).
The surface-treated steel sheet of Shoji corresponds to a surface-treated metal sheet of claim 5. The steel sheet, Zn-Ni plating layer, and chromate-free covering layer of Shoji corresponds to a steel sheet; a plating layer containing zinc formed on the steel sheet; and a coating formed on the plating layer, wherein the coating contains an organosilicon compound, a phosphate compound and a fluorine compound of claim 5.
Claim 5, optionally requires one or more of an arithmetic mean height, maximum height, or a root mean square roughness be satisfied. The maximum cross-sectional height (Rt) of a roughness curve being 100-1000nm of Shoji is the same as the maximum height Sz being 1.0-1000nm of claims 5 and 6. Therefore, Shoji teaches all the limitations of claims 5 and 6 of the present invention.
Alternatively, while this limitation is optional, Shoji teaches an overlapping average roughness Ra and falls within the maximum height Rt of when the surface roughness in a rectangular area with a side of 1 µm or 5µm on the surface of the coating is represented by an arithmetic mean height Sa, a maximum height Sz, and a root mean square roughness Sq, one or more of an arithmetic mean height Sa being 0.10 to 10.0 nm, a maximum height Sz being 1.0 to 1,000 nm, and a root mean square roughness Sq being 0.10 to 100 nm are satisfied of claims 5 and 6.
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 (Fe. Cir. 1990).
Response to Arguments
In response to Applicant’s arguments regarding the double patenting rejection over US 11965249 A1, the double patenting rejection is being maintained because of the following responses. Applicant primarily argues that UA 249 does not require the surface roughness features of present claim 5. See Remarks, pg. 7. The Examiner respectfully traverses as the use of “when” preceding the surface roughness limitations makes the surface roughness limitations optional and therefore not required. As US249 teaches a similar surface-treated metal sheet comprising a similar coating composition, US249 still teaches the required limitations of claim 5. However, Applicant also argues that the method of US249 does not include performing the same first drying process, which is necessary to obtain the surface roughness values. See remarks, pg. 7-8. The Examiner would be persuaded to withdraw the double patenting rejection if the surface roughness values were required in claim 5 as US249 does not disclose or suggest the method required to inherently have the surface roughness values. Therefore, as long as the surface roughness values are optional in claim 5, US249 comprises a similar surface-treated metal material.
In response to Applicant’s arguments regarding the clarity of claims 5 and 6 and the use of “when” the Examiner respectfully traverses that “when” is not a conventional way of defining parameters used in determining the measurements and that it is still unclear whether the limitations following “when” are required. For the sake of compact prosecution, the Examiner is interpreting “when” to be optional and the limitations following are not required.
Applicant primarily argues that Kaneto does not explicitly teach the surface roughness values or does not disclose a similar first drying method which is required to obtain at least one of Sa, Sz, and Sq, therefore Kaneto does not teach each and every limitation of claim 5. See Remarks, pg. 10-12. The Examiner respectfully traverses as the use of “when” in claim 5 makes the following limitation optional and therefore not required to be present in the prior art. However, Applicant does have enough evidence to establish unexpected results with respect to the drying method producing better Sa, Sz, and Sq values. However, as these values are optional, Kaneto still teaches the required limitations of claim 5.
Applicant also argues that Shoji fails to clearly and directly disclose the surface roughness features of present claim 5, in particular the Sq value, nor does Shoji teach a similar drying method. See Remarks, pg. 12-14. The Examiner respectfully traverses based on Applicant’s own claim language. Applicant highlights that Shoji does not disclose the surface roughness defined by Sa, Sz, and Sq, however, the optional limitation of claim 5 only requires that “one or more of Sa, Sz, and Sq be satisfied.” There is no requirement that all three features be satisfied. Moreover, Applicant’s data in the specification have inventive examples is which only one of Sa, Sz, and Sq are within the claimed ranges. Therefore Shoji need not directly disclose all three surface roughness features. Moreover, Shoji need not teach a similar method of drying as the drying method is not being examined only the surface-treated metal sheet and the various properties are being examined and Shoji at a minimum teaches an overlapping surface-treated steel sheet.
Therefore, the arguments of Applicant have been considered but are not persuasive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: WO2020/129473 A1, teaches a surface-treated steel sheet having an overlapping chemical conversion coating; US 2014/0050939 A1, is very similar to Kaneto above and teaches a surface-treated metal material and aqueous metal surface-treatment agent; US 2010/0003529 A1, is also similar to Kaneto above, and teaches a surface-treated metal material having an overlapping chemical composition for the coating agent.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIELLE CARDA whose telephone number is (571)270-1240. The examiner can normally be reached Monday-Friday 8:30-4:00 EST.
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, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIELLE M. CARDA/Primary Examiner, Art Unit 1738