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 .
DETAILED ACTION
Claims 1-7 have been cancelled; Claims 8 and 15-18 have been amended; Claims 9-14 and 19-24 have been withdrawn as non-elected; Claims 25-30 are added as new claims. claims 8, 15-18, and 25-30 remain for examination, wherein claim 8 is an independent claim.
Previous Rejections/Objections
Previous objection of Claim 8 because of the informalities is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 4/18/2026.
Previous objection of Claims 15-18 because of the informalities is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 4/18/2026.
Allowance Subject matter
Claims 29 -30 are allowed.
Regarding the independent claim 29, it is noted that the recorded prior art(s) does not specify the claimed properties coated steel sheet with the claimed alloy composition, microstructure, and a decarburized layer topping the bulk and comprising in upper part, a layer consisting of ferrite and having a thickness from 1-100mm as claimed in the instant claim. Claim 30 depends on claim 29, it is also allowed.
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 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 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.
Claims 8, 15-18, and 25-27 are rejected under 35 U.S.C. 103 as being unpatentable over Yasui et al (US-PG-pub 2018/0312954 A1, listed in IDS filed on 12/03/2025, corresponding to US 10,704,132 B2 thereafter PG’954).
PG’954 is applied to the instant claims 8 and 15-18 for the same reason as stated in the previous office action dated 1/21/2026.
Regarding the amendments in the instant claim 8, PG’954 specify an average thickness of the decarburized layer is 10 to 200 μm, and an average volume fraction of the ferrite phase in the decarburized layer is 70% or more, and a remaining structure is made up of austenite, bainite, martensite, or pearlite. (par.[0034] and cl.8 of PG’954), which overlaps the claimed layer made of ferrite (which does not excluding other phases in the layer) and thickness of the decarburized layer as claimed in the instant claim. MPEP 2144 05 I. Overlapping in fraction of the ferrite phase, and the thickness of the decarburized layer create a prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the amount of ferrite fraction and thickness of decarburized layer from PG’954 since PG’954 teaches the same coated steel sheet as claimed throughout whole disclosing range.
Regarding claim 25, 0.4-3.0wt% Si disclosed by PG’954 (claims and par.[0055] of PG’954) overlap the claimed 0.2-1.5wt%Si as claimed in the instant claim. Overlapping in Si range in alloy composition, create a prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the amount of wt% Si from PG’954 since PG’954 teaches the same coated steel sheet as claimed throughout whole disclosing range.
Regarding claims 26-27, PG’954 teaches applying with Al concentration of plating layer (Fig. 1 and par.[0074]-[0075] of PG’954), which reads on the limitations in the instant claims.
Claims 8, 15-18, and 25-28 are rejected under 35 U.S.C. 103 as being unpatentable over Cabo et al (US-PG-pub 2017/0253941 A1, listed in IDS filed on 12/03/2025, thereafter PG’941) in view of PG’954.
PG’941 in view of PG’954 is applied to the instant claims 8 and 15-18 for the same reason as stated in the previous office action dated 1/21/2026.
Regarding the amendments in the instant claim 8, PG’954 specify an average thickness of the decarburized layer is 10 to 200 μm, and an average volume fraction of the ferrite phase in the decarburized layer is 70% or more, and a remaining structure is made up of austenite, bainite, martensite, or pearlite. (par.[0034] and cl.8 of PG’954), which overlaps the claimed layer made of ferrite (which does not excluding other phases in the layer) and thickness of the decarburized layer as claimed in the instant claim. MPEP 2144 05 I. Overlapping in fraction of the ferrite phase, and the thickness of the decarburized layer create a prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the amount of ferrite fraction and thickness of decarburized layer from PG’941 in view of PG’954 since both PG’941 and PG’954 teaches the same coated steel sheet as claimed throughout whole disclosing range.
Regarding claim 25, 0.1-0.7 wt% Si disclosed by PG’941 (abstract and claims of PG’941) overlap the claimed 0.2-1.5 wt% Si as claimed in the instant claim. Overlapping in Si range in alloy composition, create a prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the amount of wt% Si from PG’941 since PG’941 teaches the same coated steel sheet as claimed throughout whole disclosing range.
Regarding claims 26-28, PG’941 teaches applying with Al or Al alloy coating including aluminum-silicon alloy (par.[0034], [0105]-[0108]), which reads on the limitations in the instant claims.
Double Patenting
The non-statutory 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 non-statutory obviousness-type 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); and 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 a non-statutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 8, 15-18, and 25-28 are rejected on the ground of non-statutory obviousness type double patenting as being unpatentable over Claims 1-7 of co-pending application No. 18/038104 (US 12,385,121 B2) in view of Yasui et al (US-PG-pub 2018/0312954 A1, listed in IDS filed on 12/03/2025, corresponding to US 10,704,132 B2 thereafter PG’954).
Regarding instant Claims 8, 15-18, and 25-28, although the conflicting claims are not identical, they are not patentable distinct from each other because Claims 1-7 of co-pending application No. 18/038104 (US 12,385,121 B2) teaches the same coated steel sheet. The essential alloy composition ranges and microstructure phases and decarburization thickness disclosed by Claims 1-7 of co-pending application No. 18/038104 (US 12,385,121 B2) reads on or overlaps the claimed ranges. Overlapping in alloy composition ranges creates a prima facie case of obviousness. MPERP 2144 05 I. It is noted that 0.15-0.25 wt% C disclosed by Claims 1-7 of co-pending application No. 18/038104 (US 12,385,121 B2) is different to the claimed 0.26-0.40wt% C as claimed in the instant claim 8. PG’954 teaches a high-strength hot-dip galvanized steel sheet including a hot-dip galvanized plating layer on a steel sheet base material (Abstract, examples, and claims of PG’954) with Al concentration of plating layer (par.[0074]-[0075 of PG’954). All of the essential alloy composition ranges disclosed by PG’954 (par.[0098]-[0116] of PG’954) overlap the claimed alloy composition ranges. MPEP 2144 05 I. PG’954 specify adjusting C in range 0.04-0.4 mass% and more specifically, the content is preferably set in a range of 0.07 to 0.3 mass % in view of workability and weldability (par.[0098] of PG’954), which overlaps the claimed C range as claimed in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the C from the disclosure of PG’954 for the alloys disclosed from Claims 1-7 of co-pending application No. 18/038104 (US 12,385,121 B2) since both PG’954 and Claims 1-7 of co-pending application No. 18/038104 (US 12,385,121 B2) teach the same steel sheet with coating as claimed throughout whole disclosing range.
Notes: Cobo et al (US 9,845,518 B2) is cited as a reference only.
Response to Arguments
Applicant’s arguments to the art rejection to Claims 8, 15-18, and 25-28have been considered but they are not persuasive in view of the new ground rejection as stated above. Regarding the arguments related to the amendments in the instant claims, the Examiner’s position has been stated as above.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIE YANG whose telephone number is (571)270-1884. The examiner can normally be reached on IFP.
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 J Johnson can be reached on 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JIE YANG/Primary Examiner, Art Unit 1734
Prosecution Insights