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 .
DETAILED ACTION
Claim 5 has been amended; Claims 2 and 4 are withdrawn from consideration as non-elected claims, Claims 1, 3, and 5-6 remain for examination, wherein claim 1 is an independent claim
Allowance Subject matter
Claim 6 includes allowable subject matter.
Claim 6 is still objected to as depending from rejected independent claim(s), but would be allowed if rewritten in independent form including all of the limitations of the base claim and any intervening claims since it is noted that the recorded prior art(s) does not specify the claimed Si range as claimed in the instant claim.
Notes: claim 6 is still rejected under on the ground of nonstatutory obviousness type double patenting as listed in the following.
Previous Rejections/Objections
Previous rejection of Claim 5 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” dated 02/03/2026.
However, in view of the Applicant’s “Arguments/Remarks with amendment” dated 02/03/2026 and reconsideration, the new ground rejection has been listed in the following:
Claim Rejections - 35 USC § 103
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.
Claims 1, 3, and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Tokuda et al (US-PG-pub 2020/0002798 A1, listed in IDS filed on 10/03/2023, thereafter PG’798).
PG’798 is applied to the instant claims 1, 3, and 5 for the same reason as stated in the previous office action dated 11/17/2025.
Regarding the amendment in the instant claim 5, PG’798 specify adjusting Al in range 15-35 mass% in order to ensure the corrosion resistance at the planar portion and the corrosion resistance at welding heat affected zones (corrosion resistance after welding) of a metallic coated steel sheet (Par.[0167] of PG’798), which overlaps the claimed Al range as recited in the instant claim. Overlapping in Al range creates a prime facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the amount of Al as disclosed in PG’798 since PG’798 teaches the same hot-dip metallic coated steel sheet throughout whole disclosing range and more specifically PG’798 teaches optimize Al in order to ensure the corrosion resistance at the planar portion and the corrosion resistance at welding heat affected zones (corrosion resistance after welding) of a metallic coated steel sheet (Par.[0167] of PG’798).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1, 3, and 5-6 are rejected on the ground of nonstatutory obviousness type double patenting as being unpatentable over Claims 1-4 of copending application No. 18/285777 (US-PG-pub 2024/0093340 A1, updated as 12,110,595).
Claims 1-4 of copending application No. 18/285777, (updated as US-PG-pub 2024/0093340 A1) is applied to the instant claims 1, 3, and 5-6, for the same reason as stated in the previous office action dated 1/13/2025.
Regarding the amended limitation in the instant claim 5, claim 1 of copending application No. 18/285777 (US-PG-pub 2024/0093340 A1, updated as 12,110,595) indicates adjusting Al in range of 10.0-30.0 mass%, which overlaps the claimed Al range as claimed in the instant claim, which creates a prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the amount of Al as disclosed in claims of copending application No. 18/285777 (US-PG-pub 2024/0093340 A1, updated as 12,110,595) since claims of copending application No. 18/285777 (US-PG-pub 2024/0093340 A1, updated as 12,110,595) teaches the same hot-dip plated steel as claimed throughout whole disclosing range.
Claims 1, 3, and 5-6 are rejected on the ground of nonstatutory obviousness type double patenting as being unpatentable over Claims 1-16 of copending application No. 18/014466 (US-PG-Pub 2023/0193425 A1, updated as US 11,781,200 B2).
Claims 1-16 of copending application No. 18/014466 (updated as US 11,781,200 B2) is applied to the instant claims 1, 3, and 5-6, for the same reason as stated in the previous office action dated 1/13/2025.
Regarding the amended limitation in the instant claim 5, claim 1 of copending application No. 18/014466 (US-PG-Pub 2023/0193425 A1, updated as US 11,781,200 B2)indicates adjusting Al in range of 10.0-40.0 mass%, which overlaps the claimed Al range as claimed in the instant claim, which creates a prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the amount of Al as disclosed in claims of copending application No. 18/014466 (US-PG-Pub 2023/0193425 A1, updated as US 11,781,200 B2) since claims of copending application No. 18/014466 (US-PG-Pub 2023/0193425 A1, updated as US 11,781,200 B2) teaches the same hot-dip plated steel as claimed throughout whole disclosing range.
Notes: Tokuda et al(US 8,562,757 B2 is cited as a reference only.
Response to Arguments
Applicant’s arguments to the art rejection to claims 1, 3, and 5-6, have been considered but they are persuasive.
The Applicant’s arguments to claims 1, 3, and 5-6 has been considered but they are not persuasive. Regarding the arguments related to the amended features in the instant claims, the Examiner’s position has been stated as above.
The Applicant’s arguments are summarized as following:
1, there are following technique features (A)-(C) as claimed distinctions over Tokuda et al (PG’798)
(A) 10-20 mass% Al;
(B) 0.3 ≤I(002)MgZn2/{I(100)MgZn2 + I(101)MgZn2 ≤ 3.0.
(C) 5.0 <I(111)α/I(200)a ≤ 40.0
2, Similar remarks are required to be considered for the ODP rejections as discussed in the response for the art rejection above.
In response,
Regarding the argument 1, Firstly, as pointed out in the rejection above and refer to the previous rejection in office action dated 11/17/2025, Tokuda et al (PG’798) specify adjusting Al in range more than 15 to less than 35 mass% in order to ensure the corrosion resistance at the planar portion and the corrosion resistance at welding heat affected zones (corrosion resistance after welding) of a metallic coated steel sheet (Par.[0167] of PG’798), which overlaps the claimed Al range as recited in the instant claims. Overlapping in Al range creates a prime facie case of obviousness. MPEP 2144 05 I. Secondly, the invention of Tokuda et al (PG’798) ought to be taken as a whole, and should not in any way be limited to the examples provided in the reference. It has been well settled in many court decisions that it would have been obvious to one having ordinary skill in the art to construct the process comprising said parameter within the disclosed range. Finally, the claimed XRD intensity features of the coated Zn-Al-Mg alloy fully depended by the alloy composition and hot-dipping processes. Tokuda et al PG’798) not only teaches the same coated alloy composition as discussed above, Tokuda et al PG’798) but also teaches applying the same hot-dipping process including coating in plating bath (par.[0295] of PG’798) with same plating bath temperature (the melting point of a plating bath+20° C.) (par.[0287] of PG’798); the mean cooling rate applied to temperature range from 420° C to 250° C in the range of 10 to 20° C/sec (par.[0289] of PG’798) and more specifically cooling with similar mist cooling (par.[0278] and [0342] of PG’798), which are same hot-dipping and cooling process as disclosed in the instant specification (refer to table 2 of the instant specification). Therefore, the claimed XRD intensity features as claimed in the formulas (1a)-(2a) (cl.1) and (2a)-(2b)(c.,5) would be highly expected in the coated steel sheet of PG’798. MPEP 2112 01 and 2145 II.
Regarding the argument 2, the claims of copending applications teaches a hot-dip metallic coated steel sheet with same alloy composition ranges and similar XRD features, for example formula (1a) in claim 1 of copending application No. 18/285777 (US-PG-pub 2024/0093340 A1, updated as 12,110,595) overlapping the claimed(1a) in the instant claim 1; and the up limit (5) in formula (2a) of claim 1 of copending application No. 18/285777 (US-PG-pub 2024/0093340 A1, updated as 12,110,595) is very close to the low limit (>5) in the claimed (2a) of the instant claim 1. Overlapping and/or being very close in ranges of the XRD intensity ratios create a prima facie case of obviousness. MPEP 2144 05 I. Furthermore, the argued controlling flux of the cooling gas, which is not included in the instant claims. The copending application No. 18/285777, (updated as US-PG-pub 2024/0093340 A1, updated as 12,110,595) and/or copending application No. 18/014466 (US-PG-Pub 2023/0193425 A1, updated as US 11,781,200 B2) disclosed similar the mist cooling method (table 2 of copending application No. 18/285777 and table 2 of copending application No. 18/014466) as disclosed in the instant specification. Proper “Terminal Disclaimers” can overcome the ODP rejections.
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 JIE YANG whose telephone number is (571)270-1884. The examiner can normally be reached on IFP.
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/JIE YANG/Primary Examiner, Art Unit 1734