DETAILED ACTION
Claims 36-50 are pending and currently under review.
Claims 1-35 are cancelled.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 112
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.
Claim 38 is 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. Claim 38 recites “oxides of other elements of the Al-Zn-Si-Mg alloy coating”, which is indefinite because it is unclear as to what the term “other elements” requires. It is unclear whether “other elements” requires oxides of all other element besides Mg and Al (ie. Zn, Si, and others if applicable), or if “other elements” merely requires any one or more of other elements in the Al-Zn-Si-Mg coating composition. The examiner interprets the instant claim to be met by any of the above interpretations based on broadest reasonable interpretation.
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, 40, 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).
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 and temperature of the cooling water 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 [0022]. Therefore, it would have been obvious to one of ordinary skill to modify the method of Komatsu et al. by specifying a pH 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. See MPEP 2144.05(I).
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 40, the aforementioned prior art discloses the method of claim 36 (see previous). Reimer et al. further teaches that the cooling water pH can be controlled by adding buffering substances such as acetate, which one of ordinary skill would recognize to be a type of weak acid [0022].
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 39 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 Burke (US 4,165,401).
Regarding claim 39, the aforementioned prior art discloses the method of claim 36 (see previous). 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.
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).
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 36-50 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.
Conclusion
No claims allowable.
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.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734