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 .
Election/Restrictions
Applicant’s election without traverse of group II (claims 12-20) in the reply filed on February 05, 2026 is acknowledged.
Claim 11 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on February 05, 2026.
Claims 12-20 are pending, claim 12 is independent.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement filed March 28, 2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. Specifically, copies of foreign patents 7 and 8 were not provided and as such were not considered by the examiner (struck through on annotated IDS).
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length (currently too short and fails to provide sufficient information).
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided. Specifically, “The disclosure relates to” is language that can be implied.
Examiner’s Note
Throughout the claim set, “the steel sheet” is understood to one of ordinary skill in the art to refer to “the temper-rolled steel sheet” introduced in line 1 of claim 12.
Regarding claim 14, the examiner notes that after “may contain” in line 3, the rest of this claim is optional limitations, not required.
Claim Objections
Claim 12 is objected to because of the following informalities:
“arithmetic roughness average Ra” should read “ arithmetic roughness average (Ra)” for readability
“skew Rsk” should read “ skew (Rsk)” for readability
“peak count Rpc” should read “peak count (Rpc)” for readability
“roughness depth Rz” should read “roughness depth (Rz)” for readability
“developed interfacial area ratio Sdr” should read “developed interfacial area ratio (Sdr)” for readability
“material ratio T” should read “material ratio (T)” for readability
“void volume L” should read “void volume (L)” for readability. Appropriate correction is required.
Claims 19 and 20 are objected to because of the following informalities: "claimed in any of claim" should read "claimed in claim". Appropriate correction is required.
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.
Claims 12-20 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Regarding claim 12, it is rejected for being indefinite for the following reasons:
Lines 1-2, it is indefinite how “a respective surface structure” can be on an upper and a lower side of the steel sheet (particularly as later in the claim they are noted to have different characteristics on the respective sides). Examiner suggests changing this to “respective surface structures”
Line 4, the phrase "in such a way" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP 2173.05(d). For purposes of examination they shall be considered optional.
Lines 4-5 recites "the characteristic values". There is insufficient antecedent basis for this limitation in the claim. This is not a term of art, and as such, “characteristic values” are not inherent to a structure until the characteristics are defined.
Line 5, it is indefinite what “the structure” is and how it relates to the “surface structures” of the individual sides of the steel sheet, and further “the structure” lacks antecedent basis.
-Further in Line 5, “selected from the group comprising” is indefinite. A Markush group is a closed group of alternatives, if a Markush group requires a material selected from an open list of alternatives it is unclear what other alternatives are intended to be encompassed (MPEP 2173. 05 (h)). For purposes of examination, the limitations following this phrase shall be considered optional, as they may further encompass other options.
Lines 5-6 recites "the ”. There is insufficient antecedent basis for this limitation in the claim.
Line 7, it is indefinite what “material ratio T” and “void volume L” are, [0014] of the specification provides a description of how they can be generally calculated; however, a definition is not provided. For purposes of examination, a structure that meets any of the other characteristics shall be considered to meet these limitations as they are presently not definite.
Line 8, it is indefinite what “a maximum relative deviation in comparison with one another” is, [0017] of the specification provides a description of how it can be generally calculated; however, a definition is not provided.
Regarding claims 13 and 15, these claims are rejected for their incorporation of the above, due to their respective dependencies on claim 12.
Regarding claim 14, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Further, claim 14 is rejected for its incorporation of the above due to its dependence on claim 12.
Regarding claim 16,
it is indefinite how “outer side” and “inner side” relate to “upper” and lower” sides of claim 12, are they additional sides (i.e. sides 3 and 4) or do they somehow duplicate/refer to the original sides of claim 12. It appears they are meant to refer to the original sides of claim 12 as the characteristic values of the structure are again referred to.
Further, as rejected in claim 12, “T” and “L” are indefinite
Additionally, it is rejected for its incorporation of the above due to dependence on claim 12.
Regarding claim 17,
it is indefinite how “outer side” and “inner side” relate to “upper” and lower” sides of claim 12, are they additional sides (i.e. sides 3 and 4) or do they somehow duplicate/refer to the original sides of claim 12. It appears they are meant to refer to the original sides of claim 12 as the characteristic values of the structure are again referred to.
Further, “a steel sheet” is indefinite in line 2, is it intended to be the same “steel sheet” of claim 12? Or is a new steel sheet being introduced?
Further, as rejected in claim 12, “T” and “L” are indefinite
Additionally, it is rejected for its incorporation of the above due to dependence on claim 12.
Regarding claim 18, it is indefinite what an “outer skin part” is, this is not a term of art and the specification provides no definition. For purposes of examination, any component on or with an outer part of anything to any degree will be considered to meet this limitation. Further, claim 18 is rejected for its incorporation of the above due to its dependence on claims 12 and 16.
Regarding claims 19 and 20, these claims are rejected for their incorporation of the above, due to their respective dependencies on claims 12 and 16.
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 (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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 12, 13, 16-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Schwethelm (GB1045641A), of record.
Regarding claim 12, Schwethelm teaches a steel sheet of which opposite sides have different degrees of roughness with a roughness grade of one side of the sheet is 2.1+/- 0.4 microns and on the other side it is 1.2 +/-0.3 microns formed by rolling with rolls having different surface roughnesses (Pg. 1 Lns. 41-60). The differences between the Ras include values that meet the claimed Ra of a maximum relative deviation of > 6% (for example a roughness of 2 on one side and 1 on the other gives a maximum relative deviation as calculated in [0017] of the specification of 50%).
Regarding “upper” and “lower” these are relative terms considered by the examiner to give structural definition of “opposite” surfaces as they can be adjusted by merely flipping the steel sheet over for examination. The prior art has opposing sides with different structures meeting the claimed characteristics and is therefore considered to read on the claimed “upper” and “lower” surfaces of the claim.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Regarding “temper-rolled”, this is product-by-process language, which provides no structural limitations beyond that of steel with structures on both sides of the steel, which is addressed above. The structure implied by the process steps should be considered when assessing the patentability of product-by process claims over the prior art (MPEP 2113 I). In this instance, no additional structure is implied beyond steel with roughness on both sides, addressed below. The burden therefore shifts to applicant to come forward with a non obvious difference between the claimed product and the prior art product (MPEP 2113 II).
Regarding claim 13, Schwethelm teaches each limitation of claim 12, and further teaches the steel sheet surface is subjected to an electrolytic treatment (Pg. 1 Lns. 13-16; coated with a metallic coating).
Regarding claim 16, Schwethelm teaches each limitation of claim 12, and further teaches the steel sheet is used in industry for vehicle body construction (Pg. 1 Lns. 10-13; a component of the steel sheet) and a steel sheet of which opposite sides have different degrees of roughness with a roughness grade of one side of the sheet is 2.1+/- 0.4 microns and on the other side it is 1.2 +/-0.3 microns formed by rolling with rolls having different surface roughnesses (Pg. 1 Lns. 41-60). The differences between the Ras include values that meet the claimed Ra being higher on an “outer side” (for example a roughness of 2 on one “outer” side and 1 on the other “inner” side).
Examiner reiterates that as “T” and “L” are indefinite as rejected above, any prior art (including Schwethelm) that reads on any of the other characteristics (Ra) is considered to by the examiner to read on an indefinite “T” and “L” meeting claimed limitations.
It is of no moment which side is the “inner” and which is the “outer” as they are relative terms and can be determined alternately by the location of the observer. Further, there is motivation to reverse parts in MPEP 2144.04 VI B, “mere reversal ….was held to be an obvious modification”.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Regarding claim 17, Schwethelm teaches each limitation of claim 12, and further teaches the steel sheet is used in industry for vehicle body construction (Pg. 1 Lns. 10-13; a component of the steel sheet) and a steel sheet of which opposite sides have different degrees of roughness with a roughness grade of one side of the sheet is 2.1+/- 0.4 microns and on the other side it is 1.2 +/-0.3 microns formed by rolling with rolls having different surface roughnesses (Pg. 1 Lns. 41-60). The differences between the Ras include values that meet the claimed Ra being higher on an “outer side” (for example a roughness of 2 on one “inner” side and 1 on the other “outer” side).
Examiner reiterates that as “T” and “L” are indefinite as rejected above, any prior art (including Schwethelm) that reads on any of the other characteristics (Ra) is considered to by the examiner to read on an indefinite “T” and “L” meeting claimed limitations.
It is of no moment which side is the “inner” and which is the “outer” as they are relative terms and can be determined alternately by the location of the observer. Further, there is motivation to reverse parts in MPEP 2144.04 VI B, “mere reversal ….was held to be an obvious modification”.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Regarding claim 18, Schwethelm teaches each limitation of claims 12 and 16, and further teaches the steel sheet is used in industry for vehicle body construction (Pg. 1 Lns. 10-13; a component of the steel sheet and steel sheets have an outer edge).
Regarding claim 20, Schwethelm teaches each limitation of claims 12 and 16, and further teaches the steel sheet is used in industry for vehicle body construction (Pg. 1 Lns. 10-13; a component of the steel sheet and steel sheets have an outer edge) and is enameled (Pg. 1 Lns. 13-16; painted).
Claims 12, 13, 16-18 and 20 are alternately/additionally rejected and claims 14, 15 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Blumenau et al. (US 2017/0306430 A1), hereinafter Blumenau.
Regarding claim 12, Blumenau teaches a flat steel product that is temper rolled ([0045]-[0047]), that may be a steel sheet ([0003]) where at least one surface has an Ra of 0.8-1.6 micron and a peak count RPc of at least 75/cm (Abstract; [0045]) Blumenau teaches Ra and RPc are typically established by temper rolling ([0008]), one of ordinary skill in the art reasonably understands that therefore the opposite surface that is not temper rolled has a significantly different Ra and RPc. As Blumenau teaches where one surface has particular Ra and Rpc, one of ordinary skill in the art reasonably understands the other surface has a different structure with different Ra and Rpc values.
Regarding “upper” and “lower” these are relative terms considered by the examiner to give structural definition of “opposite” surfaces as they can be adjusted by merely flipping the steel sheet over for examination. The prior art has opposing sides with different structures and is therefore considered to read on the claimed “upper” and “lower” surfaces of the claim.
Regarding the maximum relative deviations and particular characteristics claimed, examiner notes this indefinite and the characteristics and the values themselves are optional (as rejected under 35 U.S.C. 112(b) above). Therefore, as rejected above the steel sheet with different structures on opposite surfaces of Blumenau renders the claimed steel sheet obvious.
However, additionally/alternately, the claimed maximum relative deviation of Ra and Rpc are obvious as differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical (MPEP 2144.04 II A) and no evidence of criticality has been provided. The motivation to adjust these values (and subsequently their deviations) is to satisfy customer demands for formability and surface impression that are controlled by Ra and Rpc ([0006]), and allow painting with optimized paint gloss on the surface with the roughness and Rpc ([0045]).
Regarding claims 13 and 15, Blumenau teaches each limitation of claim 12 as rejected above and further teaches coating the steel product with a metallic protective layer of electrolytic zinc based coating ([0047]) and the flat steel product may be a steel sheet ([0003].
Regarding claim 14, Blumenau teaches each limitation of claims 12 and 13, as rejected above. Blumenau further teaches coating the steel product with a metallic protective layer of electrolytic zinc based coating ([0047]) and the flat steel product may be a steel sheet ([0003]. One of ordinary skill in the art reasonably understands “layer based on zinc” ([0047]) includes zinc and unavoidable impurities.
Regarding “applied by hot-dip”, this is product-by-process language. Product-by-process claims are limited by and defined by the process, however, the determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product by process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. MPEP 2113. In this instance, the patentable distinction structurally of “hot-dip coating” is that of a metallic coating, addressed above.
Regarding “coating may contain additional elements”, this is optional language and is not a required limitation of the claim as presently recited.
Regarding claims 16 and 17, Blumenau teaches each limitation of claim 12, as discussed above and further teaches flat steel product that is temper rolled ([0045]-[0047]), that may be a steel sheet ([0003]) where at least one surface has an Ra of 0.8-1.6 micron and a peak count RPc of at least 75/cm (Abstract; [0045]) Blumenau teaches Ra and RPc are typically established by temper rolling ([0008]), one of ordinary skill in the art reasonably understands that therefore the surface that is not temper rolled has a significantly different Ra and RPc. As Blumenau teaches where one surface has particular Ra and Rpc, one of ordinary skill in the art reasonably understands the other surface has a different structure with different Ra and Rpc values.
Regarding the outer side has a higher or lower values in comparison with the inner side in respect to Ra and Rpc, this is considered obvious, as differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical (MPEP 2144.04 II A) and no evidence of criticality has been provided. The motivation to adjust these values (and subsequently their deviations) is to satisfy customer demands for formability and surface impression that are controlled by Ra and Rpc ([0006]), and allow painting with optimized paint gloss on the surface with the roughness and Rpc ([0045]).
It is of no moment which side is the “inner” and which is the “outer” as they are relative terms that can be determined alternately by the location of the observer. Further, there is motivation to reverse parts in MPEP 2144.04 VI B, “mere reversal ….was held to be an obvious modification”. Therefore, the prior art of Blumenau reads on these claims, regardless of the orientation of the flat steel product when considered.
Regarding claim 18, Blumenau teaches each limitation of claims 12 and 16, as rejected above and further teaches a painted surface of an automobile chassis component formed from a flat steel product of the invention ([0119]), one of ordinary skill in the art reasonably understands painted auto chassis components to be outer parts, under a broadest reasonable interpretation of “outer” and painting can be considered a “skin” part.
Regarding claim 19, Blumenau teaches each limitation of claims 12 and 16, as rejected above and further teaches the flat steel product may be coated with an inorganic coating, for example a phosphation ([0048]) and the flat steel product may be a steel sheet ([0003].
Regarding claim 20, Blumenau teaches each limitation of claims 12 and 16, as rejected above and further teaches the flat steel product painted in an uncoated state ([0046]) and the flat steel product may be a steel sheet ([0003].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE CHRISTY whose telephone number is (303)297-4363. The examiner can normally be reached Monday-Thursday, 7am-4pm MT.
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 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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/KATHERINE A CHRISTY/Primary Examiner, Art Unit 1784
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