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 Objections
Claim 1 is objected to because of the following informalities:
In reference to claim 1, in line 14 after “oxide,” and before “Al”, it is suggested to insert “the”, in order to ensure 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 and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshida et al. (WO 2019/167573) (Yoshida) in view of Jiang et al. (CN 112080746) (Jiang).
The examiner has provided a machine translation of CN 112080746 with the Office Action mailed 03/16/2026. The citation of prior art in the rejection refers to the provided machine translation. Further, it is noted that when utilizing WO 2019/167573, the disclosures of the reference are based on US 2020/0407833 which is an English language equivalent of the reference. Therefore, the paragraphs cited with respect to WO 2019/167573 are found in US 2020/0407833.
In reference to claim 1, Yoshida teaches a hot-dip galvanized steel sheet ([0018]; [0028]) (corresponding to a high-strength hot-dip galvanized steel sheet). The steel sheet includes a steel substrate containing, in terms of % by mass, 0.10 to 0.5% of C, 0.7 to 2.5% of Si, 1.0 to 3% of Mn and 0.01 to 0.5% Al, with a balance being iron and inevitable impurities ([0018]; [0043]-[0062]) (corresponding to a base steel sheet; the base steel sheet includes, by weight%, carbon (C): 0.1% to 0.3%, silicon (Si): 0.1% to 2.0%, aluminum (Al): 0.1% to 1.5%, manganese (Mn): 1.5% to 3.0%, and balance being Fe and unavoidable impurities). A sum of Si and Al satisfies 0.071 to 3.0% (i.e., 0.7+0.01 = 0.71; 2.5+0.5 = 3.0) (corresponding to a sum satisfies 1.2% to 3.5%).
Yoshida teaches the elements Al and Si in overlapping ranges with the presently claimed. Within the overlapping ranges, a ratio of Al and Si (Al/Si) overlaps the presently claimed range (i.e., Al = 0.5, Si = 1.0, Al/Si = 0.5) (corresponding to a ratio of Al and Si (Al/Si) satisfies 0.5 to 2.0). 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).
A zinc-plated layer is on a surface of the steel substrate, the zinc-plated layer is a hot-dip galvanized layer ([0030]; [0099]) (corresponding to a hot-dip galvanized layer formed on one or both surfaces of the base steel sheet).
The zinc-plated steel sheet includes an internal oxide layer having a thickness of 1 µm or more ([0110]) (corresponding to the hot-dip galvanized steel sheet includes an internal oxide layer having a thickness of 2.2 µm to less than 4 µm directly under a surface of the base steel sheet).
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).
Yoshida does not explicitly teach a surface roughness (Ra) of the base steel sheet is 0.5 µm or more, as presently claimed.
Jiang teaches a zinc-aluminum-magnesium coated steel having a steel substrate and a coating ([0008]). The steel substrate has a surface roughness Ra of greater than or equal to 1 µm ([0016]; [0058]) (corresponding to a surface roughness (Ra) of the base steel sheet is 0.5 µm or more). Increasing Ra can increase the undulation of the surface roughness morphology, thereby effectively increasing the bonding area between the coating and the steel substrate, and thus improving the adhesion between the coating and the steel substrate ([0063]).
In light of the motivation of Jiang, 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 surface roughness Ra of the steel substrate of Yoshida be greater than or equal to 1 µm, in order to effectively increase the bonding area between the coating and the steel substrate, and thereby arriving at the presently claimed invention.
Given that the hot-dip galvanized steel sheet of Yoshida in view of Jiang is substantially identical to the present claimed steel sheet in composition, structure and made by a substantially identical process as that disclosed in the instant application [0063]-[0075] and [0080] (i.e., reheating a steel slab, hot rolling, coiling, pickling, cold rolling, annealing and coating (Yoshida, [0063]-[0100]), it is clear the internal oxide layer of Yoshida in view of Jiang would intrinsically include an oxide having a maximum length of less than 4 µm, wherein the oxide is formed of an Al and Si composite and intermittently exists at a grain boundary and among the Al included in the Al and Si composite oxide, Al present at the grain boundary has a spacing of 20 nm or more.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
In reference to claim 6, Yoshida in view of Jiang teaches the limitations of claim 1, as discussed above. Given that the hot-dip galvanized steel sheet of Yoshida in view of Jiang is substantially identical to the present claimed steel sheet in composition, structure and made by a substantially identical process as that disclosed in the instant application [0063]-[0075] and [0080] (i.e., reheating a steel slab, hot rolling, coiling, pickling, cold rolling, annealing and coating (Yoshida, [0063]-[0100]), it is clear the hot-dip galvanized steel sheet of Yoshida in view of Jiang intrinsically has a yield strength of 600 MPa or more, a tensile strength of 950 MPa or more and an elongation of 20% or more.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
In reference to claim 7, Yoshida in view of Jiang teaches the limitations of claim 1, as discussed above. Yoshida teaches the steel sheet surface is immersed in the galvanizing bath ([0137]). Thus, it is clear the surface of the steel sheet is 100% covered with the galvanized layer (corresponding to in the hot-dip galvanized steel sheet, an area of the hot-dip galvanized layer compared to a total area of the base steel sheet is 95% or more). 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).
Alternatively, Yoshida in view of Jiang does not explicitly teach an area of the zinc plated layer compared to a total area of the base steel sheet is 95% or more, 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 of the plated layer to the total area of the base steel sheet, including over the presently claimed, in order to ensure corrosion resistance (Yoshida, [0100]).
Claims 1 and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (KR 101528008) (Kim) in view of Jiang.
The examiner has provided a machine translation of KR 101528008 with the Office Action mailed 03/16/2026. The citation of prior art in the rejection refers to the provided machine translation.
In reference to claim 1, Kim teaches a hot dip galvanized steel sheet ([0001]) (corresponding to a high-strength hot-dip galvanized steel sheet). The hot-dip galvanized steel sheet comprises a base steel sheet, a zinc-plated layer formed on the surface of the base steel sheet and an internal oxide at a depth of 0.3 to 5.0 μm in the direction of the base steel sheet from the interface between the base steel sheet and the zinc-plated layer ([0019]) (corresponding to a base steel sheet; and a hot-dip galvanized layer formed on one or both surfaces of the base steel sheet; an internal oxide layer having a thickness of 2.2 µm to less than 4 µm directly under a surface of the base steel sheet).
The base steel sheet comprising manganese (Mn): 3.0 to 10% by weight, silicon (Si): 3.0% or less (including 0%), and aluminum (Al): 3.0% or less (including 0%), with at least one of Si and Al each limited to 0.5% or more, and the remainder being Fe and unavoidable impurities, wherein the sum of at least two of Mn, Si, and Al is 3 to 15%, and the relationship Mn ≥ Si + Al is satisfied ([0015]) (corresponding to a base steel sheet; the base steel sheet includes, by weight%, carbon (C): 0.1% to 0.3%, silicon (Si): 0.1% to 2.0%, aluminum (Al): 0.1% to 1.5%, manganese (Mn): 1.5% to 3.0%, and balance being Fe and unavoidable impurities). A sum of Si and Al is 1.0 to 6.0% (i.e., 0.5+0.5 = 1; 3.0+3.0 = 6) (corresponding to a sum of Si and Al satisfies 1.2% to 3.5%).
Kim teaches the elements Al and Si in overlapping ranges with the presently claimed. Within the overlapping ranges, a ratio of Al and Si (Al/Si) overlaps the presently claimed range (i.e., Al = 1.5% and Si = 2% 1.5/2 = 0.75) (corresponding to a ratio of Al and Si (Al/Si) satisfies 0.5 to 2.0). 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).
Kim does not explicitly teach a surface roughness (Ra) of the base steel is 0.5 µm or more, as presently claimed.
Jiang teaches a zinc-aluminum-magnesium coated steel having a steel substrate and a coating ([0008]). The steel substrate has a surface roughness Ra of greater than or equal to 1 µm ([0016]; [0058]) (corresponding to a surface roughness (Ra) of the base steel sheet is 0.5 µm or more). Increasing Ra can increase the undulation of the surface roughness morphology, thereby effectively increasing the bonding area between the coating and the steel substrate, and thus improving the adhesion between the coating and the steel substrate ([0063]).
In light of the motivation of Jiang, 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 surface roughness Ra of the base steel of Kim be greater than or equal to 1 µm, in order to effectively increase the bonding area between the coating and the steel substrate, and thereby arriving at the presently claimed invention.
Kim in view of Jiang further teaches the internal oxide comprises a composite oxide of Si oxide and Al oxide (Kim, [0019]) (corresponding to the internal oxide layer includes an oxide; the oxide is formed of an Al and Si composite oxide). Given that the hot-dip galvanized steel sheet of Kim in view of Jiang is substantially identical to the present claimed steel sheet in composition and structure and made by a substantially identical process as that disclosed in the instant application (i.e., cold rolling, annealing and coating), it is clear the oxide of Kim in view of Jiang would intrinsically have a maximum length of less than 4 µm and among the Al included in the Al and Si composite oxide, Al present at the grain boundary has a spacing of 20 nm or more.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
In reference to claim 6, Kim in view of Jiang teaches the limitations of claim 1, as discussed above. Given that the hot-dip galvanized steel sheet of Kim in view of Jiang is substantially identical to the present claimed steel sheet in composition and structure, it is clear the hot-dip galvanized steel sheet of Kim in view of Jiang intrinsically has a yield strength of 600 MPa or more, a tensile strength of 950 MPa or more and an elongation of 20% or more.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
In reference to claim 7, Kim in view of Jiang teaches the limitations of claim 1, as discussed above. Kim teaches immersing the steel sheet in a hot-dip galvanizing bath to preform plating ([0018]). Thus, it is clear the surface of the steel sheet is 100% covered with the galvanized layer (corresponding to in the hot-dip galvanized steel sheet, an area of the hot-dip galvanized layer compared to a total area of the base steel sheet is 95% or more). 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).
Alternatively, Kim in view of Jiang does not explicitly teach an area of the zinc-plated layer compared to a total area of the base steel sheet is 95% or more, 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 of the plated layer to the total area of the base steel sheet, including over the presently claimed, in order to ensure corrosion resistance (Kim, [0001]).
Response to Arguments
In response to cancelled claim 5, the previous Claim Objections of record are withdrawn. However, the amendments necessitate a new set of Claim Objection as set forth above.
Applicant primarily argues:
“Applicant respectfully traverses the rejection of pending claims 1, 6, and 7. The Office Action relies on Yoshida or Kim for a galvanized steel sheet and on Jiang only to supply surface roughness, but the pending claims are directed to an integrated high strength hot dip galvanized steel sheet in which the steel chemistry, Si and Al sum, Al/Si ratio, surface roughness, internal oxide thickness and oxide morphology are all controlled together. As amended, claim 1 requires an internal oxide layer directly under the surface of the base steel sheet having a thickness of 2.2 µm to less than 4 µm, and further requires that the internal oxide layer include an oxide having a maximum length of less than 4 µm, that the oxide be formed of an Al and Si composite oxide, that the Al and Si composite oxide intermittently exists at a grain boundary, and that, among Al included in the Al and Si composite oxide, Al present at the grain boundary has a spacing of 20 nm or more. Claims 6 and 7 further require specified mechanical properties and a hot-dip galvanized layer area of 95% or more. The cited combinations do not teach or suggest that this coordinated structure would result merely from importing Jiang’s roughness into Yoshida or Kim.”
Remarks, p. 5
The examiner respectfully traverses as follows:
As discussed in the rejection set forth above, Yoshida in view of Jiang teaches a hot-dip galvanized steel sheet substantially identical to the presently claimed steel sheet in composition, structure and made by a substantially identical process as that disclosed in the instant application and Kim in view of Jiang teaches a hot-dip galvanized steel sheet substantially identical to the presently claimed steel sheet in composition and structure. Absent evidence to the contrary, it is clear the internal oxide layer of Yoshida in view of Jiang and the oxide of Kim in view of Jiang would intrinsically include an oxide having a maximum length of less than 4 µm, wherein the oxide is formed of an Al and Si composite and intermittently exists at a grain boundary and among the Al included in the Al and Si composite oxide, Al present at the grain boundary has a spacing of 20 nm or more.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
It is not clear how the prior art can disclose the same hot-dip galvanized steel sheet as presently claimed comprising the same types and amount of components and be produced by a substantially identical process as presently claimed and not possess the properties of the oxide layer as claimed. The Office realizes that the claimed properties are not positively stated by the references. However, the references teach all of the claimed ingredients and claimed amounts. Therefore, the claimed properties would be inherently necessarily be capable of being achieved by the prior art. If it is Applicant’s position that this would not be the case: (1) evidence would need to be provided to support this position; and (2) it would be the Office's position that the application contains inadequate disclosure in that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients and claimed amounts.
Applicant further argues:
“Jiang is not a general teaching to roughen any galvanized steel substrate. Jiang concerns a zinc aluminum magnesium coated steel in which a separate alloy layer containing Ni and high Al is first coated on the steel substrate, and that alloy layer reacts with the zinc aluminum magnesium coating and with the steel substrate to form compounds and solid solutions that Jiang identifies as the source of improved adhesion. Jiang's Ra value is described within that multilayer reactive system, together with its alloy layer, coating chemistry, preheating, bath temperature and cooling conditions. Taking only Jiang's roughness while omitting Jiang's alloy layer and zinc aluminum magnesium adhesion mechanism would not have given one of ordinary skill in the art a reason to modify Yoshida or Kim, and would not have provided a reasonable expectation of obtaining Applicant's claimed internal oxide layer thickness, oxide maximum length, Al and Si composite oxide distribution, grain boundary Al spacing, mechanical properties or coating area.”
Remarks, p. 6
The examiner respectfully traverses as follows:
Jiang is only used as teaching reference in order to teach a surface roughness (Ra) of a base steel sheet that is to be coated. It is noted that the “test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference...Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art”, In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that “combining the teachings of references does not involve an ability to combine their specific structures”, In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
Jiang explicitly teaches the surface roughness Ra of the steel substrate and that increasing Ra can increase the undulation of the surface roughness morphology, thereby effectively increasing the bonding area between the coating and the steel substrate, and thus improving the adhesion between the coating and the steel substrate ([0016];[0058];[0063]). Therefore, it is clear the surface roughness of the steel substrate will affect the adhesion between the steel and the coating applied on the steel. Further, as evidence by Influence of Surface Roughness Variation on the Quality and Adhesion of Hot-Dip Galvanized Coatings on Medium Carbon Steel it is known that proper control of surface topography before galvanizing can improve coating adhesion (Abstract). Thus, it is clear the roughness of the substrate alone does offer better adhesion of a zinc coating.
Further, Jiang, Yoshida and Kim are all drawn to hot-dip galvanized steel sheets. Jiang provides proper motivation to have the surface of the steel substrate be greater than or equal to 1 µm, namely to effectively increase the bonding area between the coating and the steel substrate. Therefore, absent evidence to the contrary it is the examiner’s position that there would be reasonable expectation of obtaining the claimed hot-dip galvanized steel sheet.
Applicant further argues:
“The proposed modifications also would not have been expected to work in the Yoshida or Kim processes. Yoshida is directed to galvanized steel for hot stamping and forms an internal oxide layer containing Si and Mn by high dew point annealing, while also indicating that grain boundary oxide should be removed as much as possible for surface appearance and roughness stability. Kim relies on a different controlled oxidation system in which dew point, heating rate, Mn content and the relationship of Mn to Si and Al are managed to balance internal oxides and external oxides. In both systems, roughness, internal oxidation, external oxide removal, zinc wettability and coating adhesion are interdependent. Increasing roughness according to Jiang's zinc aluminum magnesium process, without Jiang's Ni and Al alloy layer, would at minimum alter oxygen diffusion and oxide morphology and would risk the non coating, peeling and surface defects that the references themselves seek to avoid.”
Remarks, p. 6
The examiner respectfully traverses as follows:
As discussed in the rejections above, each of Yoshida and Kim do not explicitly teach a surface roughness of the steel substrate. However, Yoshida and Kim do not exclude the surface of the steel sheet having a surface roughness of greater than or equal to 1 µm.
Further, as discussed above Jiang teaches the surface roughness of the steel sheet alone increases the bonding area available between the coating and the steel substrate which leads to better adhesion between steel substrate and coating. Even if roughness, internal oxidation, external oxide removal, zinc wettability and coating adhesion are interdependent the Applicant has provided no evidence to support that a Ra of greater than or equal to 1 µm would alter oxygen diffusion and oxide morphology and would risk the non coating, peeling and surface defects.
Applicant further argues:
“The Office Action’s reasoning therefore uses Applicant’s claims as a roadmap. It selects broad or endpoint compositional descriptions from Yoshida or Kim, imports one isolated roughness parameter from Jiang, leaves behind the very adhesion mechanism that makes Jiang's roughness meaningful, and then assumes that the remaining microstructural and performance features are inherent. The products and processes are not substantially identical, so there is no sound basis to presume inherency for the Al and Si composite oxide morphology, grain boundary spacing, mechanical properties or 95 percent coating area. Because the cited references, as combined by the Office Action, provide neither a motivation to make the proposed modification nor a reasonable expectation of success in obtaining the claimed steel sheet, the rejections of pending claims 1, 6, and 7 should be withdrawn.”
Remarks, p. 6-7
The examiner respectfully traverses as follows:
Jiang, Yoshida and Kim are all drawn to hot-dip galvanized steel sheets. Jiang provides proper motivation to have the surface of the steel substrate be greater than or equal to 1 µm, namely to effectively increase the bonding area between the coating and the steel substrate. Therefore, absent evidence to the contrary it is the examiner’s position that there would be reasonable expectation of obtaining the claimed hot-dip galvanized steel sheet.
Yoshida in view of Jiang teaches a hot-dip galvanized steel sheet substantially identical to the presently claimed steel sheet in composition, structure and made by a substantially identical process as that disclosed in the instant application and Kim in view of Jiang teaches a hot-dip galvanized steel sheet substantially identical to the presently claimed steel sheet in composition and structure. Absent evidence to the contrary, it is clear the internal oxide layer of Yoshida in view of Jiang and the oxide of Kim in view of Jiang would intrinsically include an oxide having a maximum length of less than 4 µm, wherein the oxide is formed of an Al and Si composite and intermittently exists at a grain boundary and among the Al included in the Al and Si composite oxide, Al present at the grain boundary has a spacing of 20 nm or more.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
It is not clear how the prior art can disclose the same hot-dip galvanized steel sheet as presently claimed comprising the same types and amount of components and be produced by a substantially identical process as presently claimed and not possess the properties of the oxide layer as claimed. The Office realizes that the claimed properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients and claimed amounts. Therefore, the claimed properties would be inherently necessarily be capable of being achieved by the prior art. If it is Applicant’s position that this would not be the case: (1) evidence would need to be provided to support this position; and (2) it would be the Office's position that the application contains inadequate disclosure in that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients and claimed amounts.
Therefore, Applicant's arguments filed 07/16/2026 have been fully considered but they are not persuasive.
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 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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/MARY I OMORI/Primary Examiner, Art Unit 1784
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