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 .
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.
Claims 4 and 5 are 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 4, the claimed value of I(110) being 120 to 200 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 meets the requirements of Claim 1 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). Analogous rejection applies to Claim 5.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 4 and 5 are rejected 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. Regarding Claims 4 and 5, to the extent that the claimed values of I(110) of Claim 4 or of I(103) of Claim 5 fail to further limit respective previous Claim 1 because these requirements can be satisfied for any plated steel sheet that meets the requirements of previous Claim 1 under claimed conditions since units being claimed are arbitrary, these claims do not further limit previous Claim 1 and are improper. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Allowable Subject Matter
Claims 1-3 and 6-10 are allowed.
Regarding Claims 1-10, 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 4 March 2026 (paragraph 15).
Response to Amendment
In view of applicant’s amendments and arguments, applicant traverses the section 112, paragraph (b) rejection and the section 112, paragraph (d) rejection of the Office Action mailed on 4 March 2026. Notwithstanding the added claim requirements, the absolute values being claimed without specification of totality of measurement conditions do not have any physical correspondence. Applicant’s claims do not incorporate those conditions that applicant has used and that one of ordinary skill in the art would need to use to assess these intensity metrics, as applicant has found to be important, and the Specification may not even mention them all. It is mentioned again that Figure 1 refers to “arbitrary units”, which is no doubt correct. It follows that the absolute intensities as measured and claimed in terms of those “arbitrary units” by themselves have no physical meaning, rendering the claims indefinite and improper for failing to further limit. Rejections are maintained.
It is noted that the claim status identifiers for Claims 7-9 are incorrect. These claims are no longer withdrawn. See Office Action mailed on 15 November 2025 (paragraph 12). Appropriate correction is required.
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.
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
9 June 2026
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