DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 102/103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-7, 9, and 15-19 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Oh et al. (US 2018/0320260).
Considering claims 1 and 16-17, Oh teaches a zinc alloy plated steel sheet (abstract). The plating layer on the steel sheet comprises by weight 0.5-3% Mg, 0.5-3% Al, and the balance Zn and impurities (Paragraph 21) where the layer is hot-dipped (Paragraph 23). The plating layer comprises a Zn/MgZn2 binary eutectic structure or Zn/AlMgZn2 ternary eutectic structure (Paragraph 35) where the eutectic structures are present in an area fraction of 50% or greater such that a MgZn2 single phase is adjusted to as low as possible (Paragraph 36). Oh also teaches where the zinc coating is oxidized (Paragraph 3) (e.g. comprises a native oxide layer). Examples of a steel sheet coated with 0.6% Al, 2.3% Mg, and balance Zn (Paragraph 58) are taught having an area fraction of 28% Zn, 41% Zn/MgZn2 and 31% Zn/Al/MgZn2 (Table 3).
Additionally, Oh teaches Example No.8 in Table 3 with a MgZn2 content of 46 area percent falling within the instantly claimed range.
Oh does not expressly teach the claimed average nanohardness of at least 4, 5, or 5.5 GPa. However, Oh teaches a substantially identical hot-dip plated steel sheet with a Zn-Mg-Al plating composition with microstructural phases in area fractions falling within that which is claimed and therefore one would reasonably expect the coating of Oh to possess these features as a material and its properties are inseparable, absent an objective showing. See MPEP 2112.01.
As such, the composition and area ratio taught by Oh falls within that which is claimed and therefore the teachings of Oh are considered to anticipate that which is claimed. See MPEP 2131.03. Alternatively, Oh teaches a hot-dip coated steel sheet with composition overlapping that which is claimed and the courts have held that this establishes a prima facie case of obviousness. See MPEP 2144.05.
Considering claims 2-4, Oh teaches where the eutectic structures are present in an area fraction of 50% or greater (Paragraph 36) and examples which fall within the claimed ranges. See MPEP 2131.03. While not expressly teaching the claimed depth and nanohardness this is expected to be present as outlined above as a material and its properties are inseparable, absent an objective showing. See MPEP 2112.01.
Considering claims 5-6 and 18, Oh teaches examples of where the coating comprises 0.6% Al, 2.3% Mg, and balance Zn (Paragraph 58). See MPEP 2131.03.
Considering claim 7, Oh teaches an example of a thickness between 2-20 µm (Figure 2a). See MPEP 2131.03.
Considering claim 9, the recitation of “are exposed after treatment…” is considered a property of the hot-dip coated steel sheet which would exist if treated as recited. The feature is expected to be present in the teachings of Oh due to the substantially identical materials as outlined above, absent an objective showing. See MPEP 2112.01.
Considering claim 15, in addition to the disclosure as outlined above, Oh teaches where the area fraction of Ex.2 in Table 3 has an area fraction of Zn/MgZn2 of 57% and a separate 1% of ZnMg2 and this is considered to comprise 57 area% which comprises MgZn2 overlapping that which is claimed using the broadest reasonable interpretation and is considered to possess the claimed average nanohardness as outlined above. See MPEP 2111.01.
Considering claim 19, the teachings of Oh as outlined above are considered to meet the instant claimed formation as no particular structure is recited. See MPEP 2111.01.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Oh et al. (US 2018/0320260) as applied to claim 7 above further in view of Honda et al. (US 2004/0258949).
Considering claim 8, the teachings of Oh as applied to claim 1 are outlined above. Oh teaches Zn-Mg-Al plated steel sheets for use in use in construction and automotive applications (Paragraph 2) having improved center line roughness (Paragraph 6). However, Oh does not teach the claimed impressed deterministic or stochastic surface structure.
In a related field of endeavor, Honda teaches a plated steel sheet (abstract) used in automobiles and building materials (Paragraph 2). The plated layer comprises a Zn2Mg phase and can coexist with a Al/Zn/Zn2Mg ternary eutectic structure (Paragraph 8) with a Mg content of 1-10 mass% and the Al content of 2-19 mass% (Paragraph 10). The plated steel may be subjected to skin-pass rolling to impose roughness (Paragraph 15) which improves paint coat image clarity (Paragraph 22).
As both Oh and Honda teach plated steels for use in automobiles and building materials they are considered analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the teachings of Oh with the skin passed roughness taught by Honda as this is known to improve paint coat image clarity and one would have had a reasonable expectation of success. While not expressly teaching the claimed impressed deterministic or stochastic surface structure, applicant discloses where skin passing affords the claimed stochastic impression (Specification p.8, 2nd full paragraph) and therefore this is expected to be present in the teachings of modified Oh, absent an objective showing. See MPEP 2112.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Oh et al. (US 2018/0320260) as applied to claim 1 above further in view of Banik (US 2014/0048181).
Considering claim 10, the teachings of Oh as applied to claim 1 are outlined above. Oh teaches Zn-Mg-Al plated steel sheets for use in use in construction and automotive applications (Paragraph 2) and where the steel is subjected to a phosphate treatment (Paragraph 39). However, Oh does not teach the claimed homogenous layer with zinc phosphate crystals.
In a related field of endeavor, Banik teaches flat steel products with an anti-corrosion coating of Zn or Zn alloy with a separate finishing layer (abstract) used in vehicles, etc. (Paragraph 6) and where the steel is subjected to hot press forming (Paragraph 1). The finishing coating comprises phosphate compounds of Zn, etc. (Paragraph 34), may be crystalline (Paragraph 39) and have an optimum particle size of 0.01-3 µm (Paragraph 38). The coating may be up to 98% of the compound where the remainder is binder and/or water (Paragraph 57) and where the binder may be removed (Paragraph 60) and this is considered to teach a homogenous phosphate layer. The finishing coating seals the layer structure of the steel (Paragraph 20) and protects the steel during subsequent processing (Paragraph 27).
As both Oh and Banik teach Zn-plated steels for vehicles they are considered analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the teachings of Oh with the zinc phosphate coating and size thereof taught by Banik as this is known to protect the underlying coated steel and one would have had a reasonable expectation of success. Further, the particle size taught by modified Kim overlaps that which is claimed and the courts have held that where claimed ranges overlap or lie inside of those disclosed in the prior art a prima facie case of obviousness exists. See MPEP 2144.05.
Allowable Subject Matter
Claim 14 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art of record is that of Oh (US 2018/0320260 – previously cited) which is silent regarding the presence of Zn2Mg11 combined with the claimed area fraction.
A phone call was held with applicant’s representative Brian Hollis on 12 March 2026 indicating claims 14-15 contained allowable subject matter. No specific agreement was reached. However, on further review, as outlined above, claim 15 stands rejected over Oh.
Response to Arguments
Applicant's arguments filed 10 March 2026 have been fully considered but they are not persuasive. Applicant’s arguments are addressed as follows:
Applicant argues that Oh has a different technical purpose than the instant invention as Oh seeks to minimize the presence of MgZn2 to as low as possible (remarks p.6, 1st – 2nd full paragraphs). This is not persuasive as Oh positively discloses the presence of 1-3% MgZn2 within the inventive examples (Table 3) and the instant claims only require the Zn-Mg phase to comprise one of MgZn2 or Mg2Zn11 and not where all 35 area% or more consist of the claimed materials or where the Zn-Mg phases are present in at least 35 area%. Further, while Oh does teach to minimize MgZn2 content this is not persuasive as prior art is relevant for all that it discloses per MPEP 2123 and the teachings of Oh are no less anticipatory by teaching to minimize MgZn2 content as the comparative example No.8 in Table 3 falls within the claimed area range per MPEP 2131.05.
Applicant argues that Oh does not teach the native oxide as a distinct structural feature with the specific properties beneath it (remarks p.7, 1st paragraph). This is not persuasive as Oh recognizes where an oxide layer forms on zinc platings (Paragraph 3) and the properties to which applicant points are that of the Mg-Al coating beneath the native oxide. The oxide layer itself is not claimed to afford the claimed properties and therefore applicant’s argument is not commensurate with that which is claimed. See MPEP 2145 (VI).
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 SETH DUMBRIS whose telephone number is (571)272-5105. The examiner can normally be reached M-F 6:00 AM - 3:30 PM.
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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784