DETAILED ACTION
Claims 36-38 and 41-50 are pending and currently under review.
Claims 1-35 and 39-40 are cancelled.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Amendment
The amendment filed 7/27/2026 has been entered. Claims 36-38 and 41-50 remain(s) pending in the application. Applicant’s amendments to the Claims have overcome each and every 112(b) rejection previously set forth in the Non-Final Office Action mailed 2/27/2026.
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 (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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 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.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 36-38 and 42-45 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Komatsu et al. (US 6,677,058) in view of Reimer et al. (US 2009/0098295) and Burke (US 4,165,401).
Regarding claim 36, Komatsu et al. discloses a method of metal coating with a composition seen in table 1 below [col.3 ln.15-40]. The examiner notes that the overlap between the composition of Komatsu et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I).
The method of Komatsu et al. includes a step of water quenching after coating [col.3 ln.56-63]. Komatsu et al. does not expressly teach controlling the pH of the cooling water by adding acid as claimed. Reimer et al. discloses a process of coating steel with Zn alloys [abstract]; wherein cooling water is utilized during coating and controlled to have an optimum pH value of about 5 to 12.5 by adding buffering substances such as acetate, which one of ordinary skill would recognize to be a type of weak acid [0022]. Therefore, it would have been obvious to one of ordinary skill to modify the method of Komatsu et al. by controlling a pH by adding acid as disclosed by Reimer et al. because the pH range of Reimer et al. is disclosed to be optimal. The examiner notes that the overlap between the pH range of Reimer et al. and that as claimed is prima facie obvious and further meets the limitation of “suppressing alkalinity” because pH control with an acid will naturally lower pH (ie. suppress alkalinity). See MPEP 2144.05(I).
The aforementioned prior art does not expressly teach continuous control of pH as claimed. However, as stated above, Reimer et al. teaches obtaining an “optimum pH value” by adding buffering substances to the coolant [0022]. The examiner submits that this feature of Reimer et al. would naturally require continuous control of pH because the pH is optimized and buffering substances are added as necessary during the process, as one of ordinary skill would recognize with the term “optimize”. The aforementioned prior art does not expressly teach steps of continuously monitoring the cooling water pH as claimed. Burke discloses that it is known to particularly monitor the pH of quenching water for hot dip zinc galvanizing processes such that heavily contaminated water can be removed from the system [abstract, col.3 In.18-24]. Thus, it would have been obvious to modify the method of the aforementioned prior art by also monitoring a desired pH level such that heavily contaminated water outside of the desired pH limits can be removed from the quenching system as suggested by Burke. The examiner submits that one of ordinary skill would have recognized this teaching of Burke to be continuous (ie. not only once) such that the entire washing process can be controlled to remove contaminated water when necessary. Furthermore, the prior art combination would suggest to one of ordinary skill to perform continuous monitoring (as taught by Burke) by performing the control (ie. adding acid as taught by Reimer et al.) continuously. The examiner further notes that the aforementioned prior art clearly suggests controlling cooling water pH and temperature as stated above. The only difference between the prior art and instant claims is a recitation of the pH and temperature control being continuous, which would have been further obvious because it is obvious to make a process continuous as would have been recognized by one of ordinary skill. See MPEP 2144.04(V)(E).
The prior art does not expressly teach an effect of reducing precipitate formation on cooling water heat exchangers and suppressing alkalinity of cooling water to reduce dissolution of the alloy coating as claimed. However, the examiner notes that these features are merely recitations of intended use and functional language of the claimed cooling parameters. See MPEP 2173.05(g). Specifically, the body of the claim fully and completely sets forth the claimed method step, wherein the preamble merely recites an intended use or effect of the claimed method. See MPEP 2111.02(II). Since the prior art suggests the same coating composition and cooling method, the prior art would have been entirely capable of achieving the same effect of reduction of precipitation and alloy coating dissolution as claimed. Furthermore, the fact that the inventor 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. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Therefore, the examiner cannot consider the aforementioned recitations of functional language of the claimed cooling parameters to distinguish over the prior art which teaches the same cooling parameters.
Table 1.
Element (wt.%)
Claim 36 (wt.%)
Komatsu et al. (wt.%)
Al
2 – 19
4 – 15
Si
0.01 – 2
0.002 – 0.05
Mg
1 – 10
1 – 4
Zn and impurities
Balance
Balance
Regarding claims 37-38, the aforementioned prior art discloses the method of claim 36 (see previous). The aforementioned prior art does not expressly teach the presence of a native oxide layer as claimed. However, the instant specification discloses that native oxide layers naturally form during the step of gas wiping [p.10 spec.]. Komatsu et al. further discloses that the coating method includes a gas wiping step (ie. using a wiping nozzle) [col.3 ln.55-60]. Therefore, the presence of native oxide layers as claimed would have been expected to occur in the disclosure of Komatsu et al. which undergoes an identical gas wiping step.
Regarding claim 42, the aforementioned prior art discloses the method of claim 36 (see previous). Komatsu et al. further teaches providing the alloy coating on a steel sheet [abstract].
Regarding claims 43-45, the aforementioned prior art discloses the method of claim 36 (see previous). As stated above, Reimer et al. discloses an optimum pH value of about 5 to 12, which further overlaps with the claimed ranges. See MPEP 2144.05(I).
Claims 41 and 46-50 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Komatsu et al. (US 6,677,058) and Reimer et al. (US 2009/0098295) as applied to claim 36 above, and further in view of Rossi et al. (US 3,845,540).
Regarding claim 41, the aforementioned prior art discloses the method of claim 36 (see previous). The aforementioned prior art does not expressly teach steps of continuously monitoring the cooling water temperature as claimed. Rossi et al. discloses that it is known to monitor a method for zinc galvanization of steel [abstract]; wherein a water quenching step of the zinc coating is performed using water at a temperature of 85 to 140 degrees F (approximately 30 to 60 degrees C) and the temperature is controlled by monitoring the water temperature and adding further water (ie. cooling) if the measured water temperature approaches the upper limits of an acceptable temperature range [col.11 In.20-47]. This control of water temperature serves to obtain best quenching results as taught by Rossie et al., as well as clear temperature control as would have been recognized by one of ordinary skill. Therefore, it would have been obvious to one of ordinary skill to modify the method of the aforementioned prior art by performing continuous monitoring of water temperature for the aforementioned benefits disclosed by Rossi et al.
Regarding claims 46-50, the aforementioned prior art discloses the method of claim 41 (see previous). Reimer et al. further teaches a desirable water temperature of up to 42 degrees C to avoid heavy attack of the alloy coating by the coolant [0016]. Alternatively, Rossi et al. further teaches water temperature of about 30 to 60 degrees C as stated above. The examiner notes that these ranges further overlap with the instantly claimed ranges. See MPEP 2144.05(I).
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 36-38 and 41-50 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 11,613,792. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are broader than the aforementioned patented claims. The only difference between the instant claims and patented claims are the instances of intended use and functional language of reducing precipitate formation and reducing dissolution of the alloy coating as recited in the instant claims. However, as stated above, these limitations do not actually further limit any of the claimed method steps, such that the instant claims are obvious over the overlapping parameters of the patented claims. In other words, the patented claims (which also recite same cooling water parameters) would reasonably achieve the same effects of reducing alloy coating dissolution and precipitate formation.
Response to Arguments
Applicant's arguments filed 7/27/2026 regarding the 103 rejections have been fully considered but they are not persuasive.
Applicant argues that Reimer et al. is directed to PVD coating which is different from the galvanized coating of Komatsu et al. The examiner cannot concur. PVD is only disclosed as an exemplary coating means by Reimer et al., wherein other means such as hot dip galvanization are also disclosed [0027]. Therefore, the examiner cannot concur with applicant’s unreasonably narrow interpretation of Reimer et al.
Applicant argues that the Zn coating composition of Reimer et al. is different from the Al-Zn-Si-Mg composition such that different native oxides will be present. The examiner cannot concur. Reimer et al. expressly broadly teaches Zn alloys, which encompasses Al-Zn-Si-Mg because this is an alloy of Zn as would have been recognized by one of ordinary skill. Furthermore, Reimer et al. is never relied upon to teach the presence of native oxides. As stated above, native oxides would have naturally flowed from the disclosure of Komatsu et al. because Komatsu et al. expressly teaches an overlapping coating composition and substantially similar method of preparation. The reliance upon Reimer et al. is merely to establish obvious of controlling pH during water cooling. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant argues that Reimer et al. does not teach continuous monitoring of pH. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Reimer et al. was never relied upon to teach this feature, such that applicant’s argument is moot.
Applicant appears to argue that the claimed parameters achieve unexpected results that are unobvious. The examiner cannot concur absent concrete evidence to the contrary commensurate in scope with the claimed ranges, which has not been provided (emphasis added). The examiner suggests that filing of an affidavit similar to the parent case 15/999,186 may potentially aid in overcoming the above art rejections.
Applicant's arguments filed 7/27/2026 regarding the double patenting rejections have been fully considered but they are not persuasive.
Applicant alleges that a terminal disclaimer has been filed in the response filed 7/27/2026. However, no such terminal disclaimer appears to be present in the record. Therefore, the double patenting rejections still stand.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 NICHOLAS A WANG whose telephone number is (408)918-7576. The examiner can normally be reached usually M-Th: 7-5.
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, Jonathan Johnson can be reached at 5712721177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734
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