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 .
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 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 1, 3-6, 12-13 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Yoo et al. (WO 2019/124702) (Yoo) in view of Hong et al. (KR 101676173) (Hong) and Gerngross et al. (WO 2015/169278) (Gerngross).
The examiner has provided a machine translation of WO 2015/169278 and a machine translation of KR 101676173 with the Office Action mailed 04/22/2025. The citation of prior art in the rejection refers to the provided machine translations. Further, it is noted that when utilizing WO 2019/124702, the disclosures of the reference are based on US 2021/0078291 which is an English language equivalent of the reference. Therefore, the paragraphs cited with respect to WO 2019/124702 are found in US 2021/0078291.
In reference to claims 1, 4, 12 and 17, Yoo teaches a composite material including a steel sheet ([0001]) (corresponding to a composite steel sheet). The composite sheet includes a plastic layer and a steel sheet laminated on one side or both sides of the plastic layer ([0010]-[0011]) (corresponding to a base steel; a resin layer). The surface of the steel sheet in contact with the plastic layer has a structure in which a plated layer is formed ([0030]) (corresponding to a plating layer provided on at least one surface of the base steel; a resin layer provided on the plating layer).
The surface of the plated layer has an arithmetic mean roughness (Ra) in a range of 0.01 to 5 µm ([0030]) (corresponding to an interface roughness Ra between the plating layer and the resin layer is 0.5 to 1.5 µm). The plated layer is a galvanized layer, formed hot-dipping the steel sheet in a plating composition of 0.11Al %-0.05 Pb %-Zn ([0030]) (corresponding to the plating layer includes a zinc-based plating layer including 50% or more of Zn; the plating layer includes a zinc-based plating layer including 50% or more of Zn and one or more alloying elements selected from the group consisting of Al, Mg, Si, Sn, Pb and Fe).
Yoo does not explicitly teach the plating layer has pores therein, as presently claimed.
Hong teaches a steel plate and a plating layer formed on the steel plate having a plurality of protrusions therein (Abstract). The plating layer having a body cavity structure including pores formed by the projections (p. 3, #38) (corresponding to the plating layer having pores therein). The plating layer includes pores and the pores have an average diameter of 0.5 to 3.0 µm (p. 2, #12) (corresponding to the pores present in the plating layer have an average diameter of 10 nm to 3 µm).
Hong further teaches the pores are formed in a proportion of 5 to 30% with respect to the total surface area of the steel sheet (p. 3, #39) (corresponding to an area fraction of pores having a diameter of 10 nm or more to the total area of the cross-section of the plating layer is 10 to 80%). When the fraction is less than 5% the plating layer easily broken upon impact, so that the adhesion and workability between the steel sheet and the plating layer are inferior, while when the content exceeds 30% the pores are excessively formed in the plating layer drops out (p. 3-4, #39).
In light of the motivation of Hong, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the plated layer of Yoo include pores having a diameter of 0.5 to 3.0 µm in a proportion of 5 to 30% with respect to the total surface area of the steel sheet, in order to ensure the plated layer has good adhesion and workability and does not drop out.
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 (Fed. Cir. 1990).
Yoo in view of Hong does not explicitly teach a depth from a surface of the plated layer to the pores included in the plated layer and closest to the steel sheet is 10 to 90% a total thickness of the plating layer, as presently claimed. However, Yoo in view of Hong teaches the plating layer has a thickness of 4 to 6 µm (Hong, #63, 66, 68-69) (corresponding to an average thickness of the plating layer is 2.5 µm to 7.5 µm). In light of the disclosure of Hong, it would have been obvious to one of ordinary skill in the art to have the thickness of the plated layer be 4 to 6 µm, in order to provide a plating layer having sufficient thickness to provide pores and thereby ensure the plated layer has good adhesion and workability and does not drop out.
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 (Fed. Cir. 1990).
Gerngross teaches a galvanized workpiece with improved adhesion for topcoats ([0002]). The galvanized workpiece includes a zinc coating having pores ([0010]-[0014]). The diameter of the pores is between 1 and 5 micrometers ([0017]). Gerngross further teaches pore depths between 3 and 50 micrometers provides sufficient anchoring of cover layers ([0034]). The pores should not penetrate the entire thickness of the zinc coating at any steepness, as this would weaken the corrosion protection effect of the zinc layer and could potentially lead to the zinc coating detaching from the workpiece ([0034]).
In light of the motivation of Gerngross, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the pores of Yoo in view of Hong have a pore depth between 3 and 50 micrometers, in order to provide sufficient anchoring of the plastic layer, not weaken the corrosion protection effect of the plated layer and ensure the plated layer will not detach from the steel sheet.
Given that Yoo in view of Hong and Gerngross teaches the plated layer has a thickness of 4 to 6 µm and the pore depth is between 3 and 50 µm, wherein the pores do not penetrate the entire thickness of the plated layer, it is clear the pore depth is less than 100% to 50% of the total thickness of the plated layer (i.e., (3/6)*100 = 50%) (corresponding to a depth from a surface of the plating layer to the pores included in the plating layer and closest to the base steel is 10 to 90% of a total thickness of the plating layer).
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 (Fed. Cir. 1990).
In reference to claim 3, Yoo in view of Hong and Gerngross teaches the limitations of claim 1, as discussed above. Hong teaches the density of the protrusions is 100,000 mm2 or greater (i.e., ≥ 0.1 µm2) (p. 3, #33). Hong further teaches it is desirable for the density to be 100, 000 mm2 or greater in order to provide adhesion between the plated layer and the steel sheet (p. 3, #35). Hong further teaches a ratio of pores to protrusions is 1:1 (Fig. 1). Thus, it is clear the pore density will be 100,000 mm2 or greater.
In light of the motivation of Hong, it would have been obvious to one of ordinary skill in the art to have the density of the pores in the plated layer of Yoo in view of Hong and Gerngross be 100,000 mm2 or greater, in order to provide adhesion between the plated layer and the steel sheet.
Yoo in view of Hong and Gerngross teaches the pores have a diameter of 0.5 to 3.0 µm, thus it is clear all the pores have a diameter of 10 nm or more. Given that Yoo in view of Hong and Gerngross teaches a pore density of 0.1 µm2 or more, it is clear that in a unit area of 9 µm2 there will be 0.9 or more pores having a diameter of 10 nm or more (corresponding to the number of the pores having a diameter of 10 nm or more included in a unit area of 9 µm2 of a cross section of the plating layer is 5 to 30).
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 (Fed. Cir. 1990).
In reference to claim 5, Yoo in view of Hong and Gerngross teaches the limitations of claim 1, as discussed above. Yoo further teaches plastic particles are located in the valley portions between the peaks formed on the surface of the plated layer. Through this, the steel sheet and the plastic layer are stably bonded ([0033]).
While Yoo in view of Hong and Gerngross does not explicitly disclose the a fraction of the area occupied by the plastic layer in the pores to the total area of the pores included in the plated layer is 20 to 90% as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to vary the area occupied by the plastic layer in the pores, including over the presently claimed, in order to ensure sufficient bonding occurs between the steel sheet and the plastic particles.
In reference to claim 6, Yoo in view of Hong and Gerngross teaches the limitation of claim 1, as discussed above. Yoo further teaches the structure of the composite includes a three-layer structure that a steel sheet, a plastic layer and a steel sheet are sequentially laminated ([0023]). The surface of the steel sheet in contact with the plastic layer has a plated layer formed thereon ([0030]). Thus, it is clear the composite material includes the following structure steel sheet/plated layer/plastic layer/plated layer/steel sheet (corresponding to further comprising a second plating layer provided on the resin layer; and a second base steel provided on the second plating layer).
In reference to claims 13 and 19, Yoo in view of Hong and Gerngross teaches the limitations of claim 1, as discussed above. Yoo further teaches a thickness ratio of the plastic layer and the steel sheet laminated to the plastic layer is in a range of 3:1 to 1:5 (claim 5; [0027]) (corresponding to a thickness ratio of the resin layer to the steel sheet laminated to the resin layer is of 3:1 to 1:5). By controlling the thickness of the steel sheet and the plastic layer to the above range, it is possible to simultaneously realize rigidity and lightening of the composite material ([0027]).
While Yoo in view of Hong and Gerngross does not explicitly disclose the thickness of the plastic layer is 100 µm to 600 µm as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to vary the plastic layers thickness, including over the presently claimed, in order to realize rigidity and lightening of the composite material.
In reference to claim 18, Yoo in view of Hong and Gerngross teaches the limitations of claim 1, as discussed above. Yoo further teaches the plastic layer is formed of an engineering plastic. The performance and characteristics of engineering plastics vary depending on the chemical structure, where mainly polyamide, polyacetyl, polycarbonate, polyphenylene oxide and polybutylene terephthalate, ([0025]) (corresponding to the resin layer includes at least one selected from the group consisting of polyamide, polyacetyl, polycarbonate, polyphenylene oxide and polybutylene terephthalate).
Response to Arguments
In response to amended claims 4 and 17, the previous Claim Objections of record are withdrawn.
Applicant primarily argues:
“Applicant respectfully submits that the Office Action's position is based on impermissible hindsight, improperly combining disparate teachings from references with significantly different technical backgrounds and mechanisms for pore formation. The conclusion appears to have been reached by arbitrarily piecing together isolated numerical values from the references with the benefit of Applicant's disclosure.”
Remarks, p. 6
The examiner respectfully traverses as follows:
In response to Applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the Applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Yoon, Hong and Gerngross are all drawn to coated steel sheets. Further, as discussed in the rejection above, Hong and Gerngross each provide proper motivation to combine, namely to ensure good adhesion of the plated layer and workability and ensure sufficient anchoring of the plastic layer, while not weakening the corrosion effect of the plated layer.
Applicant further argues:
“The technical significance of the present embodiment lies in quantitatively controlling the depth (Tp) from the surface of the plating layer to the pore closest to the base steel, ensuring it is within 10% to 90% of the total thickness of the plating layer. This specific numerical range optimizes the balance between securing strong adhesion and preventing degradation of corrosion resistance. The specification teaches that if Tp is less than 10%, insufficient bonding occurs, while if Tp exceeds 90%, adhesiveness is degraded due to excessive pore formation.
The Office Action's allegation relies on a thin plating layer of 4 to 6 µm, as taught by Yoon and Hong, while the pore depth data (3 to 50 µm) is extracted from Gerngross, which discloses a plating layer thickness of 100 µm. There is no technical basis to assume that pore formation behavior in a 100 µm layer applies to a layer more than 15 times thinner.
In Hong, pores form structurally when a plating layer is deposited over pre-formed protrusions, originating from the base steel/plating layer interface. In contrast, Gerngross creates pores by electrochemically etching the zinc plating layer, avoiding the interface. These fundamentally different mechanisms provide no motivation to combine the teachings.”
Remarks, p. 6
The examiner respectfully traverses as follows:
Applicant has not provided sufficient evidence (i.e., data) to support a depth (Tp) from the surface of the plating layer to the pore closes to the base steel being 10% to 90% a total of the thickness of the plating layer optimizes the balance between securing strong adhesion and preventing degradation of corrosion resistance.
While Gerngross teaches a coating having a thickness of 100 µm in the working example ([0027]), Gerngross discloses the coating can have thickness in the range of 50-150 micrometers as well as up to about 20 micrometers ([0009]). A range of up to about 20 micrometers, overlaps a range of 2.5-7.5 µm. It is noted Applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
Gerngross teaches if the depth-to-diameter ratio (i.e., aspect ratio) exceeds 3, the pores penetrate so deeply into the grain that part of the pore space is covered by the zinc grain wall to which the pore attach. This offers greater resistance to peeling and allows a polymer film that is applied in liquid form to the galvanized workpiece to penetrate the pore space and then harden ([0017]). Gerngross teaches the depth of the pores is between 3 to 50 microns (i.e., aspect ratio of the pores is 3 to 10) and the pores should not penetrate the entire thickness, as this would weaken the corrosion protection effect of the zinc layer and could potentially lead to the zinc coating detaching from the workpiece ([0034]).
Hong and Gerngross are both drawn to plated steel sheets, wherein the plating includes pores. Further, Gerngross provides motivation to combine, namely when pores have a depth between 3 to 50 microns, or alternatively have a depth-to-diameter ratio of 3 to 10, the plating has greater resistance to peeling and provides sufficient anchoring of the plastic layer while not weakening the corrosion protection effect of the plated layer. Therefore, absent evidence to the contrary, it is the examiner’s position one of ordinary skill in the art would be motivated to combine Yoo, Hong and Gerngross as discussed set forth in the rejection above.
Applicant further argues:
“Additionally, the Office Action's reasoning regarding claim 3 is speculative. Hong discloses a protrusion density of 100,000/mm2, but there is no teaching of a one-to-one correspondence between protrusions and pores. Figure 1 of Hong is schematic and cannot establish a quantitative relationship.”
Remarks, p. 6
The examiner respectfully traverses as follows:
Hong teaches Figure 1 is a schematic view schematically showing a cross section of a high corrosion resistant coated steel sheet according to the present invention. As shown in FIG. 1, a high corrosion resistant coated steel sheet having excellent plating adhesion, which is one embodiment of the present invention, includes: a steel plate having a plurality of protrusions with a steep angle at a steep angle and a plating layer formed on the steel sheet by a dry deposition process, and the protrusions may have a density of 100,000 / mm2 or more (p. 3, #33).
The description of the article pictured can be relied on, in combination with the drawings, for what they would reasonably teach one of ordinary skill in the art. It is the examiner’s position, absent evidence to the contrary, one of ordinary skill in the art would understand a ratio of pores to protrusion in a cross-section of the plating layer would be 1:1 from figure 1.
Therefore, Applicant's arguments filed 04/27/2026 have been fully considered but they are not persuasive.
Conclusion
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 Mary I Omori whose telephone number is (571)270-1203. The examiner can normally be reached M-F 8am-4pm.
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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.
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/MARY I OMORI/Primary Examiner, Art Unit 1784
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