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 .
Applicant's submission filed on 6/25/26 has been entered. Claims 1 and 6 are pending examination, claims 2-5 have been canceled.
Claims
The examiner notes that at line 13 of Claim 1, the term “contituting” has been replaced with the term “constituting”, but no mark-ups have been provided to identify this amendment. As Applicant’s arguments have particularly noted this amendment as a means to overcome a previous 112(b) rejection, the examiner accepts that this amendment was intentional. To facilitate compact prosecution and avoid issuance of a notice of non-compliance the Examiner accepts this amendment and examines the claims as prepared in the 6/25/26 claim set.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1 and 6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee et al (KR 20140074231; citations directed to machine translation provided herein; hereafter Lee). {Kim US 2021/0214830 relied for evidence only for at least claims 2 and 4; hereafter Kim}
Claim 1: Lee teaches a method of manufacturing a plated steel material having excellent workability and corrosion resistance, (see, for example, [0001]) the method comprising:
immersing a base steel in a Zn plating bath comprising, by wt. %, 10.5%/ 12% / 15% of Al, 3 % of Mg, balance Zn and inevitable impurities. (See, for example, Table 3, [0038], [0060]);
and forming a plated layer on the base steel by drawing the immersed base steel from the Zn plating bath and performing a cooling process (see, for example, [0060-62], examples)
wherein a first average cooling rate from a time point at which the immersed base steel is drawn from the Zn plating bath to a time point at which an MgZn2 phase starts to solidify varies depending on a difference between a first temperature which is a temperature of the Zn plating bath, and a second temperature which is a solidification start temperature of the MgZn2 phase constituting the plated layer, wherein, when the difference between the first temperature and the second temperature is 50oC or greater and less than 100oC, the first average cooling rate is 15 to 35oC/s (See, for example, Fig 1-2, [0060], [0065-0066], [0121] wherein the cooling temperature for the process is taught to vary from 15 to 30 C/s down to room temperature, thus inclusive of the period from first to the second temperature. Further, specifically consider Table 3, sample 3-4, wherein the first temperature is 470oC and a cooling rate of 15C/s is used. Assuming a second temperature / solidification temperature on the order of 380oC {as evidenced by Kim [0056]} Lee has explicitly taught when the difference between first and second temperature is 90oC, the cooling rate is 15oC/s which would anticipate the alternative claimed ranges by satisfying the above recited range. Further / alternatively within any such value there is intrinsically some degree of variability).
Assuming the solidification temperature of the MgZn2 phase is on the order of 380oC {as evidenced by Kim [0056]}, the second average cooling rate per the calculation of claimed formulation 1 would be~ 4.0< 2nd CR< 19.5; thus this same exemplary embodiment (3-3 of Table 3 of Lee) of cooling at 15oC/s would satisfy the claimed formula (See, for example, samples 3-3 of Table 3). For sake of argument that 380C is not a reasonable solidification temperature, the examiner notes that a cooling rate of 15C/s satisfies Formula 1 for solidification temperatures ranging from 200oC (which inherently is well below any reasonably expected solidification temperature) well through the disclosed bath temperature of 470C (see, for example, Table 3, sample 3-3). Further / alternatively within any such value there is intrinsically some degree of variability).
Claim 6: Lee further teaches wherein among the total MgZn2 phase present on a surface of the plated layer formed on the base steel, an area fraction of a MgZn2 phases each having a ratio of an average minor axis length (a) to an average major axis length (b) of greater than 0 to 0.5 or less is 40% or more and 70% or less (see, for example, [0031], [0039], and Fig 1, wherein the specification and micrograph of the plated surface demonstrates the presence of both polygonal MgZn2 and multi-phased “rod” phase MgZn2). Although Lee does not explicitly quantify the ratio of polygonal to rod shaped phases, and the office does not possess the infrastructure for image phase analysis, as the claimed bath chemistries, temperatures, and cooling rate attributed to achieving the claimed resulting phase structure have all been anticipated by Lee (refer to rejection of claim 1 above), the resulting material property of solidified phase structure / content produced by Lee is believed to inherently achieve the same properties as claimed since 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).
Response to Arguments
Applicant’s amendments to “constituting” in claim 1, further clarification of units in claimed Formula 1, and restructuring amendments in claim 6 have been fully considered and are persuasive with respect to the previously applied 35 USC 112 (b) rejections of claims 1-6, therefore these rejection have been withdrawn.
Applicant's remaining arguments filed 6/25/26 directed to the art rejections have been fully considered but they are not persuasive.
Applicant argues that “Lee does not disclose or suggest selecting the first average cooling rate according to these temperature-difference-based ranges”. in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “the first average cooling rate must be 20-35 C/s when the temperature difference is 50-<100C, and the first average cooling rate must be 22-50 C/s when the temperature is 100C or more” ) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Claim 1 explicitly recites the first average cooling rate must be “15-35” C/s when the temperature difference is 50-<100C, and the first average cooling rate must be “20-50” C/s when the temperature is 100C or more.) The examiner notes that with respect to the actually claimed conditions, at least sample 3-3 of Table 3 of Lee explicitly teaches using a cooling rate of 15C/s when the temperature difference is 90oC, which anticipates the middle of the three claimed alternatives, thus it does disclose selecting the first average cooling rate according to the “claimed” temperature-difference-based ranges. The examiner notes that the controlled cooling at 15 C/s in sample 3-3 further anticipates formula 1 for the claimed second average cooling rate.
With respect to claim 6, the examiner maintains (as above) that contrary to Applicant’s argument that Lee does not control cooling within the argued temperature -difference-based ranges; Lee does actually control cooling within the claimed temperature-difference-based ranges, thus if such conditions result in the formation of the claimed phase structure for Applicant, performing the same process at these same claimed conditions would inherently result in the formation of the claimed phase structure for Lee.
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 NATHAN H EMPIE whose telephone number is (571)270-1886. The examiner can normally be reached Monday-Thursday 5:30AM - 4 PM.
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/NATHAN H EMPIE/Primary Examiner, Art Unit 1712
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