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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9 September 2026 has been entered.
Claim Objections
Claim 9 is objected to because of the following informalities: Regarding Claim 9, last line, “20” should read “2θ”. Appropriate correction is required.
Claim 9 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 1. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). The wording of the respective claims slightly differs, with respect to absolute values of I(110) and I(103), but the claim scope is the same since this language is not understood to change what Claim 9 encompasses, as compared to Claim 1.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 9 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claim 9, the claimed value of I(110) being 80 or less appears to be an arbitrary value (Figure 1), which would be expected to be a consequence of sample being tested and testing conditions and not necessarily distinguishing of the sample being tested. It is unclear how these arbitrary values would differentiate a plated steel sheet. In other words, it would be expected that for any specific plated steel sheet which otherwise meets the requirements of Claim 9 and any specific testing configuration there could always be a circumstance that would lead to I(110) being in the claimed range, and thus it is not a further distinguishing characteristic of the plated steel sheet alone. For example, the sampling time could be adjusted to lead to values in the claimed range. Note that the intensity values are reported as “arbitrary units” (Figure 1). The same applies to value of I(103) being 530 or more. Notwithstanding that these requirements are not understood to narrow claim scope as compared to what would be encompassed were they to be absent, they presumptively do since otherwise they would not be included in the claims AND applicant has argued that they do, in fact, narrow the claim scope. See Response filed on 1 June 2026 (pages 6 and 7). As applicant has failed to persuasively address this point, the inclusion of this language renders the claim scope indefinite.
Response to Amendment
In view of applicant’s arguments, applicant traverses the section 112, paragraph (b) rejection of the Office Action mailed on 11 June 2026. Applicant argues that the rejections with respect to claimed absolute values of I(110) and I(103) are moot since the claims are canceled, which is correct. Rejection with respect to these absolute values has been modified to be applied to the newly presented Claim 9; rejections are appropriate as applied to the newly presented Claim 9 for the reasons above and for the reasons provided in the Office Action mailed on 11 June 2026.
In view of applicant’s arguments, applicant traverses the section 112, paragraph (d) rejection of the Office Action mailed on 11 June 2026. Rejection is withdrawn.
Allowable Subject Matter
Claims 1-3 are allowed.
Regarding Claims 1-3 and 9, the reviewed prior art does not teach or suggest the subject matter of these claims for the reasons of record. See Office Action mailed on 11 June 2026 (paragraph 15).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL E. LA VILLA whose telephone number is (571)272-1539. The examiner can normally be reached Mon. through Fri. from 9:00 a.m. ET to 5:30 p.m. ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera N. Sheikh, can be reached at (571) 272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL E. LA VILLA/Primary Examiner, Art Unit 1784
11 September 2026
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