DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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 Applicant’s amendment filed on July 17, 2026 was received. Claims 8 and 9 were added. Support for amendment can be found on paragraphs [0061], [0063], [0070], [0073]-[0075], and [0101] of Specification.
The text of those sections of Title pre-AIA 35, U.S.C. code not included in this action can be found in the prior Office Action issued on February 17, 2026.
Claim Rejections - 35 USC § 102
The claim rejections under pre-AIA 35 U.S.C. 103 (a) as being unpatentable over Tokuda et al (US 2020/0002798 A1) on Claims 1-7 are maintained.
Regarding claim 1, Tokuda teaches a hot-dip metallic coated steel sheet (Abstract, [0087]), comprising: a steel material; and a hot-dip plated layer disposed on a surface of the steel material ([0087]), wherein the hot-dip plated layer has a chemical composition containing in terms of mass%, Al: 22%, Mg: 6%, Fe: 0.5%, Si: 0%, Ni: 0%, and Ca: 0.5%, and further containing one or two or more elements La: 0.1%, and B: 0.1%, in an amount of 5% or less in total, and the remainder: Zn and an impurity for example ([0383] Table 1-1-1, example 7A). Tokuda does not explicitly teach the X-ray diffraction intensity ratios as claimed in the formulars as claimed. However, the claimed XRD intensity features of the coated Zn-Al-Mg alloy fully depended by the alloy composition and hot-dipping processes. However, it is the position of the examiner that disclosure the X-ray diffraction intensity ratios as claimed in the formulars, are inherent, given that the two hot-dip metallic coated steel sheet disclosed by Tokuda et al. and the present application having same coated alloy composition and the same hot-dipping process including coating in plating bath ([0295]) with same plating bath temperature (the melting point of a plating bath+20° C.) ([0287]); mist cooling with the mean cooling rate applied to temperature range from 420° C to 250° C in the range of 10 to 20° C/sec ([0289]), which are same hot-dipping process as disclosed in the instant specification (refer to table 2 of the instant specification). A reference which is silent about a claimed invention’s features is inherently anticipatory if the missing feature is necessarily present in that which is described in the reference. Inherency is not established by probabilities or possibilities. In re Robertson, 49 USPQ2d 1949 (1999).
Regarding claim 2, Tokuda teaches wherein the amount of Mg in the chemical composition of the hot-dip plated layer is 6%, in terms of mass% for example ([0383] Table 1-1-1, example 7A).
Regarding claim 3, Tokuda teaches wherein the amount of Mg in the chemical composition of the hot-dip plated layer is 6%, in terms of mass% for example ([0383] Table 1-1-1, example 7A).
Regarding claim 4, Tokuda teaches wherein the chemical composition of the hot-dip plated layer contains Sn: 0.5% in terms of mass%, and the hot-dip plated layer has a result of X-ray diffraction measurement that an Mg2Sn phase is detected for example ([0197], [0383] Table 1-1-1, Table 1-4-1, example 7A).
Regarding claim 5, Tokuda teaches a hot-dip metallic coated steel sheet (Abstract, [0087]), comprising: a steel material; and a hot-dip plated layer disposed on a surface of the steel material ([0087]), wherein the hot-dip plated layer has a chemical composition containing in terms of mass%, Al: 22%, Mg: 6%, Fe: 0.5%, Si: 0%, Ni: 0%, and Ca: 0.5%, and further containing one or two or more elements La: 0.1%, and B: 0.1%, in an amount of 5% or less in total, and the remainder: Zn and an impurity for example ([0383] Table 1-1-1, example 7A). Tokuda does not explicitly teach the X-ray diffraction intensity ratios as claimed in the formulars as claimed. However, the claimed XRD intensity features of the coated Zn-Al-Mg alloy fully depended by the alloy composition and hot-dipping processes. However, it is the position of the examiner that disclosure the X-ray diffraction intensity ratios as claimed in the formulars, are inherent, given that the two hot-dip metallic coated steel sheet disclosed by Tokuda et al. and the present application having same coated alloy composition and the same hot-dipping process including coating in plating bath ([0295]) with same plating bath temperature (the melting point of a plating bath+20° C.) ([0287]); mist cooling with the mean cooling rate applied to temperature range from 420° C to 250° C in the range of 10 to 20° C/sec ([0289]), which are same hot-dipping process as disclosed in the instant specification (refer to table 2 of the instant specification). A reference which is silent about a claimed invention’s features is inherently anticipatory if the missing feature is necessarily present in that which is described in the reference. Inherency is not established by probabilities or possibilities. In re Robertson, 49 USPQ2d 1949 (1999).
Regarding claim 6, Tokuda teaches wherein the amount of Al in the chemical composition of the hot-dip plated layer is 22%, in terms of mass% for example ([0383] Table 1-1-1, example 7A).
Regarding claim 7, Tokuda teaches wherein the chemical composition of the hot-dip plated layer contains Sn: 0.5% in terms of mass%, and the hot-dip plated layer has a result of X-ray diffraction measurement that an Mg2Sn phase is detected for example ([0197], [0383] Table 1-1-1, Table 1-4-1, example 7A).
Element
From instant Claims 1, 2,3 and 5, 6 (Mass%)
Example #7A in table 1-1-1 of Tokuda (mass%)
within range
(mass%)
Al
10.0-30.0 (cl.1)
15.0-30.0 (cl.5)
22
22
22 (cl.1)
22 (cl.5)
Mg
4.0-15.0 (cl.1)
5.0-10.0 (cl.5)
6
6
Fe
0.01-15.0
0.5
0.5
Si
0-10.0
0
0
Ni
0-1.0
0.1
0.1
Ca
0-4.0
0.5
0.5
One or two or more selected form group consisting of
Sb: 0 to 0.5, Pb: 0 to 0.5, Cu: 0 to 1.0, Sn: 0 to 2.0, Ti: 0 to 1.0, Cr: 0 to 1.0, Nb: 0 to 1.0, Zr: 0 to 1.0, Mn: 0 to 1.0, Mo: 0 to 1.0, Ag: 0 to 1.0, Li: 0 to 1.0, La: 0 to 0.5, Ce: 0 to 0.5, B: 0 to 0.5, Y: 0 to 0.5, P: 0 to 0.5, Sr: 0 to 0.5, Co: 0 to 0.5, Bi: 0 to 0.5, In: 0 to 0.5, V: 0 to 0.5, and W: 0 to 0.5,
in an amount of 5 or less in total
B: 0.1,
La: 0.1,
Cr: 0.1,
Sb: 0.2;
Sn: 0.5
Total: 1.0
B: 0.1,
La: 0.1,
Cr: 0.1,
Sb: 0.2;
Sn: 0.5
Total: 1.0
Zn
Balance + impurities
Balance + impurities
Balance + impurities
X-Ray features
Formulas (1a)-(2a) (cl.1)
Formulas (1b)-(2b) (cl.5)
Depended on the alloy composition and manufacturing process
MPEP 2112 01 and 2145 II.
From Claim 4 and 7
Sn
0.05-0.5
0.5
0.5
Mg2Sn phase
detected
Sn compound 1 area%
Table 1-4-1
Reads on
Claim Rejections - 35 USC § 103
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.
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Tokuda et al (US 2020/0002798 A1) as applied to Claims 1-7 in view of Ma (US2021/0293425 A1).
Regarding claim 8, Tokuda teaches the hot-dip metallic coated steel sheet as disclosed above, and the hot-dip plated layer is cooled by mist cooling ([0278] and [0342]). Tokuda does not explicitly teach vibrated by mist-spraying in an amount of 1.0 to 30 [L/(mm2-min)] for 1 to 60 seconds. However, an analogous art, Ma teaches a cooling method comprising cooling and vibrated by mist-spraying ([0033]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the cooling system to the method of cooling in Tokuda, because Ma disclosed the use of cooling method or system to achieve and effected taking away heat via water evaporation so as to cooling the blown air ([0033]). Tokuda recognizes the amount of mist-spraying is adjusted by changing the spray rate ([0278] and [0342]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the amount of the mist-spraying to yield a desired cooling temperature ([0278] and [0342]). Discovery of optimum value of result effective variable in know process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Regarding claim 8, Tokuda teaches the hot-dip metallic coated steel sheet as disclosed above, and the hot-dip plated layer is cooled by mist cooling ([0278] and [0342]). Tokuda does not explicitly teach vibrated by mist-spraying in an amount of 1.0 to 30 [L/(mm2-min)] for 1 to 60 seconds. However, an analogous art, Ma teaches a cooling method comprising cooling and vibrated by mist-spraying ([0033]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the cooling system to the method of cooling in Tokuda, because Ma disclosed the use of cooling method or system to achieve and effected taking away heat via water evaporation so as to cooling the blown air ([0033]). Tokuda recognizes the amount of mist-spraying is adjusted by changing the spray rate ([0278] and [0342]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the amount of the mist-spraying to yield a desired cooling temperature ([0278] and [0342]). Discovery of optimum value of result effective variable in know process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Response to Arguments
Applicant's arguments filed on July 17, 2026 have been fully considered but they are not persuasive.
Applicant’s principal arguments are
ToKuda doesn’t teach the claimed X-ray diffraction intensity ratios and the vibration process.
In response to Applicant’s arguments, please consider the following comments.
In response to Applicant’s arguments, the examiner respectfully disagrees. As an initial matter, the recited independent claims do not require the vibration process. Additionally, it is the position of the examiner that disclosure the X-ray diffraction intensity ratios as claimed in the formulars, are inherent, given that the two hot-dip metallic coated steel sheet disclosed by Tokuda et al. and the present application having same coated alloy composition and the same hot-dipping process including coating in plating bath ([0295]) with same plating bath temperature (the melting point of a plating bath+20° C.) ([0287]); mist cooling with the mean cooling rate applied to temperature range from 420° C to 250° C in the range of 10 to 20° C/sec ([0289]), which are same hot-dipping process as disclosed in the instant specification (refer to table 2 of the instant specification). A reference which is silent about a claimed invention’s features is inherently anticipatory if the missing feature is necessarily present in that which is described in the reference. Inherency is not established by probabilities or possibilities. In re Robertson, 49 USPQ2d 1949 (1999). Therefore examiner believes Applicant is arguing some elements that are not in the scope of the recited independent claims.
Affidavit or Declaration Under 37 CFR 1.132
The declaration under 37 CFR 1.132 filed on July 17, 2026 is insufficient to overcome the rejection of claims 1-9 based upon pre-AIA 35 U.S.C. 103(a) as set forth in the last Office action because: it refer(s) only to the system described in the above referenced application and not to the individual claims of the application. Thus, there is no showing that the objective evidence of nonobviousness is commensurate in scope with the claims. See MPEP § 716.
Conclusion
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. 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 extension fee 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 HAI YAN ZHANG whose telephone number is (571)270-7181. The examiner can normally be reached on MTTHF.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAH-WEI YUAN can be reached on 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HAI Y ZHANG/ Primary Examiner, Art Unit 1717
Prosecution Insights