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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/26/2026 has been entered.
Claim Objections
Claim 5 are objected to because of the following informalities:
In reference to claim 5, in line 2 amend “, among the Al included in the Al and Si composite oxide” to “the internal oxide layer includes an oxide, the oxide is formed of an Al and Si composite oxide, and wherein, among Al included in the Al and Si composite oxide”, 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, 5-7 and 11-13 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. 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.
In reference to claims 5 and 11-13, 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 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, 5-7 and 11-13 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. 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.
In reference to claims 5 and 11-13, Kim in view of Jiang teaches the limitations of claim 1, as discussed above. Kim teaches the internal oxide comprises a composite oxide of Si oxide and Al oxide ([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, 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 amended claim 1, which now requires the internal oxide layer have a thickness of 2.2 µm to less than 4 µm, it is noted that Jin et al. (WO 2008/078912) (Jin), Sohn et al. (US 2018/0371596) (Sohn) and Ikematsu et al. (JP 2004-323970) (Ikematsu) no longer meet the presently claimed limitations. Therefore, the previous 35 U.S.C. 103 rejection over Jin in view of Sohn and Jin in view of Sohn and Ikematsu are withdrawn from record. However, the amendments necessitate a new set of rejections as set forth 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
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