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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-6, in the reply filed on 16 December 2025 is acknowledged. The traversal is on the ground(s) that Ayoma discloses an invention of an electrogalvannealed steel sheet whereas the present invention relates to an Fe-based electroplated steel sheet. Applicant further argues that Aoyama’s invention is directed to solving issues related to electrogalvannealed steel sheets and thus provides no teaching, motivation, or suggestion to change the sheet to an Fe-based electroplated steel sheet. Applicant asserts that omitting the alloying step would render the resultant steel sheet unsatisfactory for the intended purpose as taught by Ayoma.
These arguments are not found to be persuasive.
As set forth in the Requirement for Restriction mailed on 6 November 2025, the separate groups of the instant claims do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features. In particular, the groups lack unity of invention because the shared technical feature is not a special technical feature as it does not make a contribution over the prior art.
The Requirement for Restriction sets forth that that the shared technical feature is a steel sheet having the desired silicon content and iron based coating in the desired coating weight.
As set forth in the Requirement for Restriction, Ayoma has a steel sheet that is cold rolled and has the desired silicon content. Additionally, the iron layer is 20 g/m2 or more, thus disclosing the special technical feature, citing ¶40, ¶74, and ¶82. The layer can be considered to be an iron-based coating because iron is one of the components on which the layer is made up of in addition to any minor additional components. Therefore, the prior art teaches a layer that can be considered to be iron-based having the coating weight and amount of silicon. Accordingly, in contrast to Applicant’s arguments, there is no modification necessary to the prior art in order for one of ordinary skill in the art to consider the teaching found therein to correspond to the shared technical feature.
Additionally, as set forth in the prior art rejections below, the shared technical feature is further shown to not be a shared technical feature since it is taught in that prior art.
The requirement is still deemed proper and is therefore made FINAL.
Claims 7, 9-14 and 16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 16 December 2025.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 2 May 2023, 10 June 2024, 3 September 2024, 5 June 2025 were considered by the examiner.
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.
Claims 1-6 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.
In regards to independent claim 1, this claim sets forth “crystal orientations of the Fe-based electroplating layer and the Si containing cold-rolled steel sheet are integrated at a ratio of more than 50%” in the seventh and eighth lines of the claim. The metes and bounds of this limitation cannot be determined since it is not clear what is intended by the term “integrated” within this claim. It is also not clear how the percentage is determined. For example, a percentage can be determined by the number of crystals that are integrated or that each crystal is integrated with the other by a measure of 50%. It is therefore not clear how one would measure this ratio. For the purposes of examination the Office is interpreting this to mean that more than 50% or more of the volume percent of the crystals in the Fe-based electroplating layer and the Si-containing cold-rolled steel sheet have a matching orientation and structure.
As to claims 2-6, these claims depend from claim 1 and incorporate the limitations therein. Accordingly, claims 2-6 are rejected for the reasons set forth in regards to independent claim 1.
Claim Rejections - 35 USC § 102 / 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 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 1, 4, and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP 3913106 (EP ‘106).
In regards to independent claim 1, EP ‘106 is directed to a method of producing a hot-dip galvanized steel sheet with excellent surface appearance, coating adhesion, and corrosion resistance. (Abstract)
A Fe coating is formed on the surface of the steel sheet. (¶42) The formation of Fe coating is performed to delay the diffusion of Si and Mn to the surface of the steel sheet. (¶42) The method of forming Fe coating is not particularly limited and can include electroplating. (¶42)
As seen in Table 3, Example 10 sets forth an electroplated iron coating having a coating weight of 22.5 g/m2. (Table 10, Example 10) The steel includes 0.23% silicon. (Table 1, Steel Sample ID E) Each steel sheet was cold-rolled to obtain a cold-rolled steel sheet with a thickness of 1.4 mm. (¶54) This steel is subjected to an annealing process with a dew point of -50 C. (Table 3)
where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the Office can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. Whether the rejection is based on “inherency” under 35 USC 102, on “prima facie obviousness” under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the Office’s inability to manufacture products or to obtain and compare prior art products. In re Best, Bolton and Shaw, 195 USPQ 430 (CCPA 1977).
The method taught in the prior art appears to be the same method used by applicants to produce the claimed product. In particular, as to the properties of the crystal orientations, the instant application sets forth a process in which the iron-based electroplating layer is formed on the surface of the silicon-containing cold rolled steel sheet. (¶58) The steel sheet is formed by cold-rolling the steel sheet and then electroplating the iron-based electroplating layer. (¶69) The sheet is then annealed with a de w point of -30 C or lower. (¶69)
Consequently, absent a showing to the contrary, it appears that the product in the prior art necessarily or inherently possesses the characteristics of the claimed product, including the claimed crystal orientation properties as set forth in the instant claims.
As to claims 4 and 6, the composition for Steel Sample ID E has 0.146% of C, 5.03% of Mn, 0.005% of P, 0.0003% of S, 0.0044% of N, 0.033% of Al, and the balance of iron. (See Table 1) This falls within the claimed ranges.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Daniel Schleis whose telephone number is (571)270-5636. The examiner can normally be reached 10 AM to 4 PM Monday through Friday.
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, Humera Sheikh can be reached at (571) 272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Daniel J. Schleis
Primary Examiner
Art Unit 1784
/Daniel J. Schleis/ Primary Examiner, Art Unit 1784