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
Claims 1-19 remain for examination, wherein claim 1 is an independent claim.
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 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.
Claims 1-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hirata et al (US-PG-pub 2013/0337287 A1, corresponding US 9592772 B2, thereafter PG’287) in view of Kim et al (US-PG-pub 2021/0381091 A1, thereafter PG’091).
Regarding claims 1-19, PG’287 teaches a welded joint (Fig.3, par.[0028] of PG’287) of the hot-dip plated steel sheets (Abstract, examples, and claims of PG’287), which reads on the welded joint with 1st and 2nd steel sheet and weld bead portion formed by welding with plating layer on the steel sheet as claimed in the instant claims. The comparison between the claimed plating alloy composition ranges in the instant claims and those disclosed by the PG’287 (par.[0062]-[0068] of PG’287) is listed in the following table. All of the essential alloy composition ranges disclosed by PG’287 overlap the claimed alloy composition ranges as recited in the instant claims, 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 plating alloy composition ranges including Al, Mg, Fe, Si, Ca, Sb, Pb, Sr, Cu, Ti, V, Cr, Nb, Ni, Mn, Mo, Sn, Zr, Co, W, Ag, Li, la, Ce, Y, Bi, In, B, and Zn from the disclosures on PG’287 since PG’287 teaches the same weld joint with plating layer on the steel sheet as claimed throughout whole disclosing range.
Element
From instant Claims 1 and 3-19 (mass%)
From PG’287 (mass %)
Overlapping range
(mass %)
Al
5.0-40.0 (cl.1);
10.0-40.0 (cl.5-7);
15.0-40.0 (8-10)
3-22
5.0-22 (cl.1);
10.0-22 (cl.1);
15.0-22 (cl.1);
Mg
3.0-15.0 (cl.1)
4.5-15.0 (cl.3);
5.5-15.0 (cl.4)
0.05-10.0
3.0-10.0 (cl.1)
4.5-10.0 (cl.3);
5.5-10.0 (cl.4)
Fe
0.01-15.00
Up to 2.0
0.01-2.0
Si
0-10.00
0.005-2.0
0.005-2.0
Ca
0-1.5000
1 or less
0-1.5000
Sb
0-0.5000
Not intended added
0
Pb
0-0.5000
Not intended added
0
Sr
0-0.5000
1 or less
0.5 or less
Cu
0-1.0000
1 or less
1 or less
Ti
0-1.0000
0.0005-0.1
0.0005-0.1
V
0-1.0000
Not intended added
0
Cr
0-1.0000
1 or less
1 or less
Nb
0-1.0000
Not intended added
0
Ni
0-1.0000
1 or less
1 or less
Mn
0-1.0000
1 or less
1 or less
Mo
0-1.0000
Not intended added
0
Sn
0-1.0000 (cl.1);
0.0200-1.00 (cl.11-19)
1 or less
0-1.0000 (cl.1);
0.0200-1.00 (cl.11-19)
Zr
0-1.0000
Not intended added
0
Co
0-1.0000
1 or less
1 or less
W
0-1.0000
Not intended added
0
Ag
0-1.0000
Not intended added
0
Li
0-1.0000
Not intended added
0
La
0-0.5000
Not intended added
0
Ce
0-0.5000
Not intended added
0
Y
0-0.5000
Not intended added
0
Bi
0-0.5000
Not intended added
0
In
0-0.5000
Not intended added
0
B
0-0.5000
0.0001-0.05
0.0001-0.05
Zn
Remainder: 20.000 or more and impurities
Balance
Balance
From claim 2
From PG’287
Within range
One or more
Si: 0.01-10.00;
Ca: 0.0001-1.5000;
Sb, Pb, Sr, La, Ce, Y, B, In, B:: 0.0001-0.5000;
Cu, Ti, V, Cr, Nb, Ni, Mn, Mo, Sn, Zr, Co, W, Ag, Li: 0.0001-1.0000
Ti: 0.0005-0.1
B: 0.0001-0.05
Ti: 0.0005-0.1
B: 0.0001-0.05
Still regarding claims 1, 3-4, and 11-19, the claimed Fe-Al, Fe-Zn phases (cl.1); Mg-Zn phases (cl.1 and 3-4); and Mg2Sn (cl.11-19) are recognized as microstructures fully depended on the alloy composition and heat treatment. Since PG’287 teaches the same welded joint having the same plating alloy layer with the similar alloy composition ranges as claimed, the claimed phases, for example Fe-Al, Fe-Zn phases (cl.1); Mg-Zn phases (cl.1 and 3-4); and Mg2Sn (cl.11-19), would be highly expected in the welded joint of PG’287. MPEP 2112 01 and 2145 II. It is noted that PG’287 does not specify the claimed area portion of the Mg-Zn phase as claimed in the instant claims 1 and 3-4. PG’091 teaches a zinc alloy-plated steel material used in automobiles, building materials, home appliances, and the like (Abstract and par.[0001] of PG’091) with Zn-Al-Mg plating layer (par.[0012]-[0013] of PG’091). PG’091 teaches forming 20-45 area% Mg-Zn phases in the plating layer (par.[0035] of PG’091), which is within the claimed Mg-Zn phase ranges of the instant claims. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize distribution of Mg-Zn phases from the disclosures on PG’091 for the plating layer of PG’287 in order to obtain excellent corrosion resistance for the steel sheet (par.[0001] of PG’091).
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 1-19 are rejected on the ground of nonstatutory obviousness type double patenting as being unpatentable over Claims 1-19 of copending application No. 18/660866 (US-PG-pub 2025/0346976 A1).
Regarding instant Claims 1-9, although the conflicting claims are not identical, they are not patentable distinct from each other because Claims 1-19 of copending application No. 18/660866 (US-PG-pub 2025/0346976 A1) teaches the same welded joint with plating Zn-Al-Mg alloy layer having composition ranges overlap the claimed alloy composition ranges, 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 plating Zn-Al-Mg alloy composition from the disclosure of Claims 1-19 of copending application No. 18/660866 (US-PG-pub 2025/0346976 A1) since Claims 1-19 of copending application No. 18/660866 (US-PG-pub 2025/0346976 A1) teaches the same welded joint as claimed throughout whole disclosing range. Thus, no patentable distinction was found in the instant claims compared with the Claims 1-19 of copending application No. 18/660866 (US-PG-pub 2025/0346976 A1).
This is a provisional obvious-type double patenting rejection since the conflict claims in the copending application have not in fact been patented.
Claims 1-19 are rejected on the ground of nonstatutory obviousness type double patenting as being unpatentable over Claims 1-7 of copending application No. 18/716435 (US-PG-pub 2025/0035139 A1).
Regarding instant Claims 1-9, although the conflicting claims are not identical, they are not patentable distinct from each other because Claims 1-7 of copending application No. 18/716435 (US-PG-pub 2025/0035139 A1) teaches the same welded joint with plating Zn-Al-Mg alloy layer having composition ranges overlap the claimed alloy composition ranges, 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 plating Zn-Al-Mg alloy composition from the disclosure of Claims 1-7 of copending application No. 18/716435 (US-PG-pub 2025/0035139 A1) since Claims 1-7 of copending application No. 18/716435 (US-PG-pub 2025/0035139 A1) teaches the same welded joint as claimed throughout whole disclosing range. Thus, no patentable distinction was found in the instant claims compared with the Claims 1-7 of copending application No. 18/716435 (US-PG-pub 2025/0035139 A1).
This is a provisional obvious-type double patenting rejection since the conflict claims in the copending application have not in fact been patented.
Claims 1-19 are rejected on the ground of nonstatutory obviousness type double patenting as being unpatentable over Claims 1-7 of copending application No. 18/725477 (US 12,491,586 B2).
Regarding instant Claims 1-9, although the conflicting claims are not identical, they are not patentable distinct from each other because Claims 1-7 of copending application No. 18/725477 (US 12,491,586 B2) teaches the same welded joint with plating Zn-Al-Mg alloy layer having composition ranges overlap the claimed alloy composition ranges, 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 plating Zn-Al-Mg alloy composition from the disclosure of Claims 1-7 of copending application No. 18/725477 (US 12,491,586 B2) since Claims 1-7 of copending application No. 18/725477 (US 12,491,586 B2) teaches the same welded joint as claimed throughout whole disclosing range. Thus, no patentable distinction was found in the instant claims compared with the Claims 1-7 of copending application No. 18/725477 (US 12,491,586 B2).
Conclusion
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/JIE YANG/Primary Examiner, Art Unit 1734
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