DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/6/2026 has been entered.
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.
Claims 12, 14-16, 21, 22, 24-26, and 28-31 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kurosaki et al. (EP 1,225,246).
Regarding claims 12, 14, 15, 28 and 29: Kurosaki et al. teach a method of forming an Al-Zn-Si-Mg alloy on a steel strip comprising dipping a steel strip into a bath of molten Al-Zn-Si-Mg alloy and forming a coating of the alloy on the steel strip and controlling the conditions of the molten coating bath and downstream of the coating bath [Examples]. Kurosaki et al. teach an example with 38.5 wt% Zn [Example 28; Table 1]. Kurosaki et al. teach controlling the concentration of Mg from at least 1% to less than 5% [Page 3], with examples at 3%, making the claimed range obvious due to the overlapping ranges [Examples; Table 1]. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05). Furthermore, the amount of 3% is extremely close to the amount of less than 2.5%. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05). Kurosaki et al. teach the claimed amount of Si [Examples; Table 1]. Kurosaki et al. teach the claimed cooling rate [Examples; Table 1]. Kurosaki et al. teach controlling the Ca concentration to be at least 100 ppm Ca, and teaches ranges that overlap the claimed range [Claim 3; Examples]. The remaining balance is Kurosaki et al. is either Al or “unavoidable impurities” [Examples].
The concentration of calcium overlaps the claimed range.
The subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made, since it has been held that choosing the over lapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
Since the composition and method are the same as claimed, the steel strip will have no visual apparent ash mark defect, and will produce the claimed Al/Zn ratio within the outermost 1-2 microns of the alloy coating. The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Regarding claim 16: Kurosaki et al. teach controlling the concentration of Mg from at least 1% to less than 5% [Page 3; Examples; Table 1].
Regarding claims 21 and 22: Kurosaki et al. teach the claimed amount Si [Examples; Table 1].
Regarding claim 24: Kurosaki et al. teach an example with 38.5 wt% Zn, 2 wt% Si and 3 wt% Mg [Example 28; Table 1]. The amount of 3% is extremely close to the amount of less than 3%. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05).
Regarding claims 25-26: Kurosaki et al. teach controlling the Ca and Mg concentration in the coating bath [page 3; Examples]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to take a sample of the Ca and Mg from the bath and measure the Ca and Mg to ensure the desired concentrations are present in the bath. The instant specification states that this is “a generally standard practice in the industry” [0039].
Regarding claim 30: The composition and method are the same as claimed. Kurosaki et al. teach a film thickness of 0.5 to 20 microns [0034]. Therefore, Kurosaki et al. teach an overlapping coating mass.
The subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made, since it has been held that choosing the over lapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
Regarding claim 31: Kurosaki et al. teach keeping the temperature of the plating bath at 500-650°C [0010, 0036] with examples at 600°C [0037], starting at 630°C and cooling [0047] will reach the claimed temperature.
Response to Arguments
Applicant's arguments filed 2/6/2026 have been fully considered but they are not persuasive.
The applicant has alleged that Kurosaki does not teaching controlling variation of an Al/Zn ratio by controlling the rate of cooling. This is not persuasive because Kurosaki teaches the claimed rate of cooling. All of the claimed method steps are met by Kurosaki. Only the motivation for the method steps differs from the applicant.
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). See MPEP 2144.
The applicant has alleged that Kurosaki does not teach that the Mg concentration is critical. This is not persuasive because the Applicant has not demonstrated the criticality of Mg, or any difference between 2.5 and 3% Mg. Furthermore, Kurosaki et al. teach the importance of controlling the concentration of Mg from at least 1% to less than 5% [Page 3; Examples; Table 1].
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
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/JOHN E USELDING/ Primary Examiner, Art Unit 1763
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