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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/27/2025 has been entered.
Election/Restrictions
Applicant’s election without traverse of species (ii), claims 16 and 17, in the reply filed on 11/27/2025 is acknowledged.
Claims 14 and 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/27/2025.
Claim Objections
Claims 4 and 17 are objected to because of the following informalities:
In reference to claim 4, in line 2 before “pore”, insert “the”, in order to ensure consistency and proper antecedent basis in the claim language. Appropriate correction is required.
In reference to claim 17, in line 2 amend “a zinc-based plating layer” to “the zinc-based plating layer”, in order to ensure consistency and proper antecedent basis in the claim language. Appropriate correction is required.
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 3 and 5 and cancelled claim 2, the previous Claim Objections of record are withdrawn. However, the amendments necessitate a new set of Claim Objections as set forth above.
In response to amended claim 19, the previous 35 U.S.C. 112(b) rejections of record are withdrawn.
In response to amended claim 1, which now requires a depth from a surface of the plating layer to the pores included in the plating layer and closest to the vase steel is 10 to 90% of a total thickness of the plating layer, it is noted that Yoo and Hong, alone or in combination, no longer meet the presently claimed limitations. Additionally, upon further search and consideration Porous Nickel plating (Mitsuya) is no longer used to meet the presently claimed limitation. Therefore, the previous 35 U.S.C. 103 rejections over Yoo in view of Hong are withdrawn. However, the amendment necessitates a new set of rejections as discussed above.
Applicant’s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon, namely Myers (US 2012/0219823), is considered pertinent to applicant's disclosure. However, the rejection using this reference would
be cumulative to the rejection of record set forth above.
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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/MARY I OMORI/Primary Examiner, Art Unit 1784