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
Claims 7-15 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on June 10, 2026.
Applicant's election with traverse of Group I in the reply filed on June 10, 2025 is acknowledged. Although applicant does not use the word “traverse” their request for reconsideration with arguments is considered a traversal. The traversal is on the ground(s) that lack of undue search burden. This is not found persuasive because the differences between a National Application filed under 35 U.S.C. 111(a) and a National Stage Application submitted under 35 U.S.C. 371 are often subtle, but the differences are important. See MPEP 1896. U.S. National Applications filed under 35 U.S.C. 111(a) are subject to restriction practice in accordance with 37 CFR 1.141-1.146. See MPEP 1896 and MPEP 803. U.S. National Stage Applications are subject to Unity of Invention practice in accordance with 37 CFR 1.475 and 1.499. See MPEP 1896. Under the Unity of Invention standard, demonstrating a serious search burden is not a factor that is considered.
The instant application is a U.S. National Application filed under 35 U.S.C. 371. Therefore, Unity of Invention practice is used. Accordingly, Applicant’s arguments that the application does not place a serious search burden are irrelevant to the determination of Unity of Invention and are not persuasive.
The Examiner directs Applicant’s attention to MPEP 1896, which sets forth the differences between National Applications filed under 35 U.S.C. 111(a) and National Stage Applications submitted under 35 U.S.C. 371. Applicant is encouraged to review this portion of the MPEP to become acquainted with the differences in order to ensure an understanding of these differences and the proper regulations, standards, and procedures associated with each of these types of applications.
The requirement is still deemed proper and is therefore made FINAL.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Status
Claims 1-6 are pending; claim 1 is independent.
Examiner’s Note
Examiner notes “Sr-based oxide layer” is considered using a broadest reasonable interpretation of any amount of Sr included in the oxide layer (Pg. 3 Lns. 14-17 of applicants’ specification allow for 0-1 wt.% Sr in the oxide layer).
Specification
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, “An embodiment of the present invention discloses” is language that can be implied.
Claim Objections
Claim 1 is objected to because of the following informalities: "and other inevitable impurities" should read "and inevitable impurities" ("and other" makes it read like aluminum is an impurity, although it is definitely not). 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 5-6 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 5, claim 5 recites the limitation "the Mg-based interm" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 6, claim 6 is rejected for its incorporation of the above due to its dependence on claim 5.
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.
Claim(s) 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Sengoku et al. (US 2020/0032360 A1), hereinafter Sengoku (of record).
Regarding claims 1-3, Sengoku teaches a base metal and a plated layer formed on a surface of the base metal that is hot stamped ([0014; i.e. for hot pressing) where the base metal balance consists of Fe, a steel material ([0069]) where the plating bath (layer) includes 30-50 mass% Al, 15-30mass% Zn, 0.5-2.0 mass% Mg ([0107]-[0108]), the composition of Cr+Ca+Sr+Ti in the composition plating bath is from 0-3 mass% (Table 2), and the plating further includes impurities ([0104]); 0.1-15 mass% Si ([0088]) and oxide layer including Sr ([0096]) in an oxide layer on the outer side (surface) of the plated layer ([0036]; Fig. 2) and the oxide layer is ≤ 3.0 microns (claim 1).
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.
Claim(s) 1 is additionally/alternately rejected and claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Yoichi et al. (J6715399B1, herein referring to the Google Patents June 18, 2026 translation and original figures), hereinafter Yoichi (original and translation provided herewith).
Regarding claims 1 and 4, Yoichi teaches a plated steel sheet hot-dipped (plated on a surface) with a plating layer of Al: 40-70 mass%, Si: 0.6-5 mass%, Mg: 0.1-10 mass%, Sr: 0.001-1 mass%, balance Zn and impurities (Abstract; Zn includes14 to 59.3 mass% as calculated) and Mg2Si in a cross section in the thickness direction of the plating layer with an area ratio of 50% or more in the thickness from range of 50% or more from the surface of the main layer (a surface layer) and 50% or less area ratio from the main surface to the interface alloy layer (Abstract) and this layer is shown to have Zn phase (Fig. 2). Examiner notes that Zinc rich is subject to broadest reasonable interpretation to any degree of Zinc, as the surface layer is shown to have Mg2Si and zinc in a surface layer, and the prior art teaches potentially all (at least 50%) of the Mg2Si is in the surface layer, which overlaps with the claimed limitations. (Mg2Si is an intermetallic compound of Mg).
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.
With regards to “for hot pressing”, this occurs before the transitional phrase and lacks sufficient structure to further limit the claim and is therefore considered an intended use of the semifinished product. See MPEP 2111.02. Yoichi teaches a substantially identical product as that which is claimed and is considered to meet the claimed intended use.
Claim(s) 1 and 2 are additionally/alternately rejected and claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (US 2011/0052936 A1), hereinafter Liu.
Regarding claim 1, Liu teaches an Al-Zn-Si-Mg coating on a steel strip (plated layer on a base steel) (claim 1) where the alloy of the coating includes 40-60 wt% Al, 40-60 wt% Zn, 0.3-3 wt% Si, 0.3-10 wt% Mg and more than 250 ppm Sr (claims 3 and 6) and unavoidable impurities ([0002]) and the coating is by hot-dipping (plated; claim 15).
Regarding steel strip of the prior arts’ correlation to the claimed steel sheet, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (MPEP 2144.04 IV A). Therefore, a steel sheet is obvious in view of a steel strip.
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.
With regards to “for hot pressing”, this occurs before the transitional phrase and lacks sufficient structure to further limit the claim and is therefore considered an intended use of the semifinished product. See MPEP 2111.02. Yoichi teaches a substantially identical product as that which is claimed and is considered to meet the claimed intended use.
Regarding claim 2, Liu teaches each limitation of claim 1, as discussed above and further teaches oxide on the coating surface (oxide layer) with Sr ([0107]).
Regarding claims 5 and 6, Liu teaches each limitation of claims 1 and 2, as discussed above and further teaches the coating includes Mg2Si particles, and the proportion of Mg2Si particles in the surface region of the coating (surface of the plated layer) is small (claim 1). Liu does not specifically teach phase fraction of 2-10%. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify to Liu to this specific phase fraction as Liu does teach a small proportion of Mg2Si particles in the surface of the coating (claim 1) to lower the risk of mottling ([0025]) and where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (MPEP 2144.04 IV A).
Additionally/alternatively it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify to Liu to this specific phase fraction, because 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 2144.05 II). It would have been obvious to optimize the amount of Mg2Si to adjust the amount of mottling ([0025]), to optimize an aesthetic viewpoint ([0020]).
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.
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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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