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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 04/28/2026, after the non-final rejection dated 12/23/2025, and is marked with “No IDS size fee is required under 37 CFR 1.17(v) at this time”, therefore, is being considered by the examiner.
Response to Amendments/ Status of Claims
An amendment, filed 03/23/2026, is acknowledged.
Claims 1-14 are currently pending.
Claim 1-6 are withdrawn.
Claim 7-12 have been amended.
Therefore, claim 7-14 are currently under consideration for this office action.
Status of Previous Rejections
The previous 35 USC § 112(b) rejections of the claims 8-9 and 11-12 have been withdrawn, due to amendments of the claims.
The previous 35 USC § 103 rejections of the claims 7-14 have been withdrawn, due to amendments of the claims.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 8 and 9 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 8 recites the limitation “the coating layer has a first thickness measured on the base steel sheet at the edge portion”, however, it is not found in the specification, the page, 2, 3, and 11-12 of the instant specification of the disclosure describes the thickness of the coating layer and thickness of the Zn-Al-Mg-based plating layer.
Claim 9 recites the limitation “the coating layer has a first thickness measured on the base steel sheet at the edge portion and a second thickness measured on the Zn-Al-Mg-based plating layer”, however, it is not found in the specification, the page, 2, 3, and 11-12 of the instant specification of the disclosure describes “the thickness of the coating layer and thickness of the Zn-Al-Mg-based plating layer” and the coating layer provided on the edge portion may have a thickness greater than or equal to a thickness of the Zn-Al-Mg-based plating layer and also have a thickness equal to or greater than half of a thickness of the coating layer provided on an upper surface of the Zn-Al-Mg-based plating layer”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 7-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 7 recites the limitation “a coating layer on at least one of the base steel sheets and the Zn-Al-Mg-based plating layer” and then “the Zn-Al-Mg-based plating layer is removed from the edge portion to expose the base steel sheet”, renders the claim indefinite, because these two limitations are not clear, as it appears if the coating layer needs to be on top of both the at least one base steel sheet and the Zn-Al-Mg-based plating layer, however, this cannot be true if the plating layer has also been removed from the edge portion. It is also not clear whether the coating layer can be on both the base steel and plating layer or only on the base steel or only on the plating layer. It is further not clear as claim recites “at least one base steel sheet” in line 2 and then in line 3, “at least one of the base steel sheets”, whether it means a single steel sheet or multiple steel sheets.
Appropriate correction is required.
Claim 8 recites the limitation “the coating layer has a first thickness measured on the base steel sheet at the edge portion”, renders the claim indefinite, because it is not clear which thickness is the first thickness whether it is a thickness of the coating layer or the thickness of the coating layer and Zn-Al-Mg plating layer. If the coating is on the base steel sheet then “first thickness” will be the thickness of the coating layer, but if the coating is on the Zn-Al-Mg plating layer then “first thickness” will be the thickness of the coating layer plus the Zn-Al-Mg plating layer thickness.
Claim 9 recites the limitation “the coating layer has a first thickness measured on the base steel sheet at the edge portion and a second thickness measured on the Zn-Al-Mg-based plating layer”, renders the claim indefinite, because according to claim language, the coating layer has two thicknesses, one on the base steel sheet and one on the Zn-Al-Mg based plating layer, but it is not clear how is that possible, whether the first thickness of the coating layer is the thickness of the coating layer and Zn-Al-Mg plating layer together and the second thickness of the coating layer measured on the Zn-Al-Mg plating layer, i.e. only thickness of the coating or this is something different.
Claims 8-14 are also rejected as being dependent of claim 7.
Claim Interpretation
As the first thickness and second thickness as claimed in claim 8 is not clear, however, the page, 2, 3, of the instant specification of the disclosure describes the thickness of the coating layer and thickness of the Zn-Al-Mg-based plating layer, therefore, according to this part of the specification, “the coating layer has a first thickness measured on the base steel sheet at the edge portion” is interpreted as thickness of the coating layer, and “the Zn-Al-Mg-based plating layer has a second thickness measured on the base steel sheet” is interpreted as the thickness of the Zn-Al-Mg-based plating layer.
As “the coating layer has a first thickness measured on the base steel sheet at the edge portion and a second thickness measured on the Zn-Al-Mg-based plating layer, and wherein the first thickness is greater than or equal to half of the second thickness” as claimed in claim 9 is not clear, however, the page, 11-12 of the instant specification of the disclosure describes “the coating layer provided on the edge portion may have a thickness equal to or greater than half of a thickness of the coating layer provided on an upper surface of the Zn-Al-Mg-based plating layer”.
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 7-14 are rejected under 35 U.S.C. 103 as being unpatentable over Hideo Hara, et.al. [US20200306892A1] (provided in the IDS) (hereafter Hara), and further in view of Tagami Takashi [JPH0531451A] (Machine translation) (Original provided in the IDS).
Regarding claim 7, and 11-12, Hara teaches a plated steel sheet, comprising wherein at least one base steel sheet; a Zn-Al-Mg-based plating layer on at least one base steel sheet (a Zn-plated steel sheet, see Hara’s [0010]), wherein the plated steel sheet comprises an edge portion formed by laser cutting, and wherein the Zn-Al-Mg-based plating layer is removed at the edge portion to expose the base steel sheet (laser cutting method for a plated steel sheet, is provided with: cutting the plated steel sheet by irradiating the plated steel sheet covered with a plate metal with laser light, see Hara’s [0010] – [0012] and claim 17). Hara further teaches Zn plated layer is Zn-Al-Mg-based plated layer (a steel sheet plated with zinc-alloy of 6% aluminum, 3% magnesium, and the balance of zinc, see Hara’s [0049]). Hara further teaches the cut surface being formed in the step of cutting, the plate metal fused by irradiation of the laser light flow to the cut surface so as to cover the cut surface with the plate metal see Hara’s [0011]).
But Hara is silent about a coating layer on at least one of the base steel sheets and the Zn-Al-Mg-based plating layer.
However, Takashi teaches a plated steel sheet for an exterior panel, wherein a base steel sheet, a Zn plating layer, and a coating layer are sequentially stacked and provided, and the Zn plating layer comprises an edge portion (a sheet metal is processed into a formed body of the desired shape by techniques such as cutting, bending and welding, is subjected to a zinc plating treatment to form a plated formed body, and a fluororesin coating is applied to the plated formed body. The surfaces and cut edges are completely coated with zinc plating. This, together with the subsequent fluororesin coating treatment, significantly improves the corrosion prevention effect compared to conventional methods) (Takashi’s Claim 1, [ 0008]-[0009]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have Takashi’s teachings of a fluororesin coating along with zinc plating to cover the surfaces and the cut edges to modify Hara’s Zn-Al-Mg based plated steel sheet to improve the corrosion resistance for using an exterior panel.
Regarding Claim 8 and 14, all the discussions above claim 7 are applicable for claim 8 and 14, however, Hara is silent about the thickness of the coating and Zn-Al-Mg-based plating layer.
However, Takashi teaches the coating layer provided on the edge portion has a thickness greater than or equal to a thickness of the Zn-Al-Mg-based plating layer (zinc-plated layer is of approximately 10 μm on the surface of the steel sheet base, [Section 0014] and (in the fluororesin coating process, first, a primer coat is applied as a fluororesin undercoat to the entire surface of the molded body (including the outer and inner surfaces and cut edges) to form a primer coating film of about 15 μm) [Section 0016] and (then a fluororesin coating film is of approximately 30 μm) [Section 0017]. Takashi further teaches therefore, there is no loss of zinc plating at bends during sheet metal processing, at welded surfaces, cut edges, etc., and the corrosion prevention effect can be significantly improved compared to conventional methods [Section 0020].
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have Takashi’s teaching to modify Hara for producing a plated steel sheet with a coating layer to reduce loss of zinc plating and to improve corrosion prevention effect significantly.
Regarding Claim 9, all the discussions above claim 7 are applicable for claim 9, however, Hara is silent about the thickness of the coating.
However, Takashi teaches the coating layer provided on the edge portion may have a thickness equal to or greater than half of a thickness of the coating layer provided on an upper surface of the Zn-Al-Mg-based plating layer (in the fluororesin coating process, first, a primer coat is applied as a fluororesin undercoat to the entire surface of the molded body (including the outer and inner surfaces and cut edges) to form a primer coating film of about 15 μm) [Section 0016] and (then a fluororesin coating film is of approximately 30 μm) [Section 0017]. Takashi further teaches therefore, there is no loss of zinc plating at bends during sheet metal processing, at welded surfaces, cut edges, etc., and the corrosion prevention effect can be significantly improved compared to conventional methods [Section 0020]. As Takashi’s coating covers the outer and inner surfaces and cut edges, therefore, Takashi’s coating layer on the edge portion and on an upper surface of the Zn-Al-Mg-based plating layer are the same film would have same thickness.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have Takashi’s teaching to modify Hara for producing a plated steel sheet with a coating layer to reduce loss of zinc plating and to improve corrosion prevention effect significantly.
Regarding Claim 10, all the discussions above claim 7 are applicable for claim 10, but Hara is silent about the about the edge portion has a width of 100 µm or less.
[AltContent: rect][AltContent: rect][AltContent: rect][AltContent: rect][AltContent: textbox (Base sheet)][AltContent: textbox (Zn-Al-Mg based plating layer sheet)][AltContent: textbox (Primer coat layer)][AltContent: textbox (Takashi’s steel sheet)][AltContent: textbox (Coating layer)]However, Takashi teaches the coating layer provided on the edge portion has a thickness greater than or equal to a thickness of the Zn-Al-Mg-based plating layer (zinc-plated layer is of approximately 10 μm on the surface of the steel sheet base, [Section 0014] and (in the fluororesin coating process, first, a primer coat is applied as a fluororesin undercoat to the entire surface of the molded body (including the outer and inner surfaces and cut edges) to form a primer coating film of about 15 μm) [Section 0016] and (then a fluororesin coating film is of approximately 30 μm) [Section 0017]. A schematic representation of Takashi’s teachings has been demonstrated by the examiner,
Therefore, Takashi’s total width of the edge portion will be, thickness of the Zn-Al-Mg-based plating layer + thickness of the primer coat + thickness of the fluororesin coating (10 μm +15 μm +30 μm) = 55 μm, which is within the as recited in the instant claim.
Takashi further teaches therefore, there is no loss of zinc plating at bends during sheet metal processing, at welded surfaces, cut edges, etc., and the corrosion prevention effect can be significantly improved compared to conventional methods [Section 0020].
Regarding Claim 13, all the discussions above claim 7 are applicable for claim 13, Hara is silent about the thickness of the Zn-Al-Mg-based plating layer.
However, Takashi teaches he Zn-Al-Mg-based plating layer has a thickness of 10 μm on the surface of the steel sheet base [Section 0014], which is within the as recited range in the instant claim.
Claims 7, 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Kumon Fumishiro et.al. [JP5398310B2] (Machine translation) (Original provided in the IDS) and further in view of Hideo Hara, et.al. [US20200306892A1] (provided in the IDS) (hereafter Hara).
Regarding claim 7, 11 and 12, Hara teaches a plated steel sheet, comprising wherein at least one base steel sheet; a Zn-Al-Mg-based plating layer on at least one base steel sheet (a plated steel sheet for an exterior panel, which has improved corrosion resistance, particularly outdoor exposure properties, at exposed metal parts such as cut end faces and bent parts, and to an exterior member of a building using the coated steel sheet (see Kumon’s [0001]). Kumon teaches a Zn-Al-Mg-based plating layer on at least one base steel sheet (Zn-3 to 22% Al-2 to 10% Mg alloy plated steel sheets, see Kumon’s [0017]), and a coating layer on at least one of the base steel sheets and the Zn-Al-Mg-based plating layer (a coated steel sheet having a plating layer of Zn-Al-Mg based plating layer, and further having coating on the plated layer, and provides an exterior component for a building, which is formed using the above-mentioned coated steel sheet as a raw material and has at least one of an exposed metal portion at the cut end surface and an exposed metal portion (base steel sheet and plating layer) at the bent portion (see Kumon’s [0008]).
Kumon further teaches the corrosion resistance in an outdoor exposure environment, at exposed metal portions such as cut end faces, has been improved. That is, at a relatively early stage after the start of exposure, the components in the coating rapidly combine with the eluted components of the plated metal to form a highly protective coating, which in particular makes it possible to significantly suppress the occurrence of edge creep. (see Kumon’s [0009]).
But Kumon is silent about the laser cutting.
However, Hara teaches a Zn-plated steel sheet, (see Hara’s [0010]), laser cutting method for a plated steel sheet, is provided with: cutting the plated steel sheet by irradiating the plated steel sheet and covered with a plate metal with laser light, (see Hara’s [0010] – [0012] and claim 17). Hara further teaches Zn plated layer is Zn-Al-Mg-based plated layer (a steel sheet plated with zinc-alloy of 6% aluminum, 3% magnesium, and the balance of zinc, see Hara’s [0049]). Hara further teaches laser cutting has benefit over punch and die cutting for complex curve and to cover the whole cut surface with part of the overlay (see Hara’s [0007] and [0008]) and another advantage is the cut surface being formed in the step of cutting, the plate metal fused by irradiation of the laser light flow to the cut surface so as to cover the cut surface with the plate metal (see Hara’s [0011]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have Hara’s teachings of cutting to modify Kumon’s Zn-Al-Mg based plated steel sheet to improve the corrosion resistance for using an exterior panel, for easy and complex curvature cut as well as to cover the cut edge with the plated metal.
Response to Arguments
Applicant’s arguments dated 03/23/2025, with respect to the previous 35 USC § 103 rejections of the claims have been acknowledged, but does not seem persuasive.
In response to applicant's argument that “Takashi’s steel body is subjected to a zinc plating treatment and subsequently coated with a fluororesin layer so that the surfaces and cut edges are covered with plating and coating” seems persuasive, as Takashi teaches cutting of steel sheet but does not teach the plated sheet, therefore, the new rejection has been made over Hara in view of Takashi. As Hara teaches laser cutting of Zn-Al-Mg plated steel and Takashi teaches a coating over Zn-Al-Mg plated steel, together improves corrosion resistant and reduces loss of the Zn (Takashi’s Claim 1, [ 0008]-[0009]).
In response to applicant's argument that “Takashi does not teach or suggest any specific structural definition of an "edge portion" of the plated steel sheet, nor does it define a region corresponding to the edge portion as recited in the present claims….”, does not seem persuasive, as the claim recites “an edge portion formed by laser cutting”, Takashi teaches fluororesin coating applied to the entire surface of the body including the outer and inner surfaces and cut edges, see Takashi’s [0016]. Takashi is silent about laser cutting, However, the new rejection has been made over Hara, wherein Hara teaches laser cutting of a Zn-Al-Mg plated sheet, wherein “an edge portion formed by laser cutting” (see Hara’s [0010] – [0012] and claim 17).
In response to applicant's argument that “Hara cannot be properly combined with Takashi to arrive at the claimed structure. In Takashi's product, the zinc layer uniformly covers all surfaces including the cut edge. In Hara's product, the plating is present on the flat surfaces but removed at the laser-cut edge.”, does not seem persuasive, because the new rejection is over Hara in view of Takashi, wherein Hara's product, the plating is present on the flat surfaces and removed at the laser-cut edge, and then laser melting of Hara's Zn-Al-Mg layer flows to the edge to cover the cut edge (see Hara’s [0010] – [0012] and claim 17). Therefore, Hara’s Zn-Al-Mg Plating layer covers all surfaces including the cut edge same as Takashi, therefore, Takashi is analogous to Hara.
In response to applicant's argument about Akihiro is moot as Akihiro is not being used in this rejection.
Therefore, the 35 U.S.C. § 103 rejection of the claims 7-14 have been maintained but rewritten due to amendment. (please see the corresponding rejection section for further details).
A new 35 U.S.C. § 103 rejection of the claims have been made over Kumon Fumishiro et.al. [JP5398310B2] (Machine translation) (Original provided in the IDS), (please see the corresponding rejection section for further details).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Luc Diez, et.al [US20160251761A1] discloses a combination has a synergy such that the Zn-Al-Mg coating has fewer cracks in the severe bends when it is covered by a paint film than when it is bare (see Luc’s [0012]-[0030]).
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/NAZMUN NAHAR SHAMS/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738
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