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 the first paragraph of 35 U.S.C. 112(a):
IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 12 and 15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
As assessed by the Wands Factors and the evidence as a whole, the claims are not enabled. See MPEP 2164.01(a).
Wands Factors include (A)-(H): (A) The breadth of the claims: All claims relate to galvanized steel sheet of specific composition and surface layer structure; (B) The nature of the invention: The invention relates to manner of forming surface layer structure with claimed steel composition in order to achieve improved LME performance; (C) The state of the prior art: The reviewed prior art recognizes problem of improved LME performance and generally using identified steps in general sense for affecting surface layer structure to obtain aspects of features claimed; (D) The level of one of ordinary skill: One of ordinary skill in the art would be familiar with techniques used by applicant for treating steel; (E) The level of predictability in the art: The level of predictability is limited; compositional and structural features in steel articles are recognized as being very sensitive to steel bulk compositions and ingredients and to specific processing steps applied to such bulk steel materials, including often in terms of the sequence of application of steps; Yasui USPA 2018/0312954 is example of demonstrating some aspects of claimed article features and steps to be used; (F) The amount of direction provided by the inventor: Applicant has identified a single steel composition to be used, aside from the characterization of steels in the claims; applicant has identified a series of steps to be performed in order so as to achieve claimed structures; however, some claimed steps are broader than the disclosure and some disclosed steps are not particularly specified; (G) The existence of working examples: Applicant has provided single example of steel composition and some details on exact steps to be used; AND (H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure: The quantity of experimentation would be expected to be vast because there is no basis for expecting process steps that are outside the disclosed requirements would achieve the claimed articles, as required. Specifically, the Specification mentions that dew points are to be above 0oC, not including 0oC (paragraph 25) and that soaking is to be done at least at 800oC (paragraph 26). Without these requirements, there would not be expected to be enablement without undue experimentation as applicant self-characterizes.
Claims 7 and 9-18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding Claim 7, it is unclear where there is support for decarburized layer as now broadly claimed in combination with elements “b)” and “c)”. The examples identify only decarburized layer having carbon content below 0.1 wt. % at a depth of 20 microns as being inventive and demonstrate decarburized layer not meeting this requirement as not being able to achieve elements “b)” and “c)” and/or not being able to achieve spot welding performance metric. See Specification (Tables 3 and 4). One example (Tr. 4 in Table 3) meets elements “b)” and “c)” with C content above 0.1 wt. %, but the example is characterized as non-inventive, provides a specific C content at 20 microns, not any concentration, is limited to one base steel C concentration of 0.19 wt. %, and, nevertheless, fails to meet spot welding requirements claimed in dependent claims. Rejection applies to Claims 7 and 9-16. Rejection applies to Claim 11 with respect to both sheets.
Regarding Claim 16, it is unclear where there is support for decarburized layer that has more C content than the base steel has.
Regarding Claim 17, it is unclear where there is support for depth of 20 microns, as opposed to depth as measured from interface with the plated layer. Analogous rejection applies to Claim 18.
The following is a quotation of 35 U.S.C. 112(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 16-18 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 16, it is unclear what “depth” is being claimed. Is this with respect to the outer galvanized surface or with respect to the interface with the plated layer? Analogous rejection applies to Claims 17 and 18.
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.
Claim 16 is 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 Claim 16, since the decarburized layer of a steel base should have a carbon content less than that of the base steel in order to be a decarburized layer and since the claimed base steel can maximally have 0.3 wt. % C, the claimed decarburized layer fails to further limit previous Claim 7 since it could have more than the claimed maximal amount including 0.8 wt. % C. 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
Regarding Claims 7 and 9-18, the reviewed prior art does not teach or suggest the claimed articles and methods of making such articles. Particularly, the reviewed prior art does not teach or suggest steels having claimed compositions with claimed decarburized layer structure as claimed, in the claimed context. For example, Yasui USPA 2018/0312954 expressly suggests claimed compositions and discloses aspects of claimed decarburized layer features, but Yasui fails to expressly teach or suggest the claimed compositions in combination with decarburized layer structure including claimed carbon content layer requirements of the decarburized layer structure, where claimed, in the claimed context and fails to otherwise provide basis for establishing inherency of these features not expressly taught or suggested. See Yasui (entire document).
Response to Amendment
In view of applicant’s amendments and arguments, applicant traverses the claim objections of the Office Action mailed on 1 October 2025. Objections are withdrawn.
In view of applicant’s amendments and arguments, applicant traverses the section 112, paragraph (a), enablement, rejections of the Office Action mailed on 1 October 2025. Rejections not repeated above are withdrawn. With respect to maintained rejections, applicant recognizes that the Specification requires dew point above 0oC at step (ii) and (iii), but claims encompass 0oC. Applicant recognizes the Specification explains that soaking is to be at least at 800oC, but step (iii) does not specify this temperature.
In view of applicant’s amendments and arguments, applicant traverses the section 112, paragraph (b) rejections of the Office Action mailed on 1 October 2025. Rejection is withdrawn.
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 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.
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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 7 May 2026
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