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 I, claims 1-4, in the reply filed on 9 February 2026 is acknowledged.
Claims 5-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 9 February 2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 26 September 2024 was considered by the examiner.
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.
Claim 3 is 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 3, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For the purposes of examination, the Office is interpreting the limitations following the phrase “preferably” to be merely exemplary. Applicant is encouraged to amend the claim to remove the preferably phrases.
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 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over CN 107636200 (CN ‘200).
In regards to independent claim 1, CN ‘200 is directed to a surface treatment liquid having excellent water resistance, solvent resistance, and adhesion to a plated steel sheet. (Lines 15-16) A plated steel sheet, viz an Al-plated steel sheet, to which a high-melting point Al plating layer is applied is considered to be promising as an automotive steel sheet requiring corrosion resistance. (Lines 98-99) ZnO particles and water-soluble resin coat the surface of the Al-plated steel sheet to improve the thermal lubricity and the chemical conversion treatment property after hot pressing. (Lines 100-102) However, since the water-soluble resin does not have sufficient performance as a binder, the water resistance and solvent resistance of the film is poor. (Lines 102-104) The product of CN ‘200 seeks to address this issue.
CN ‘200 sets forth utilizing a surface treatment liquid for a hot-pressed coated steel sheet comprising an aqueous ZnO dispersion(viz. zinc-containing compound) and a water-dispersible organic resin. (Lines 124-125) The ZnO aqueous dispersion comprising ZnO particles having an average diameter of 10 to 300 nm. (Lines 127-128) The average particle of the emulsion of the water-dispersible organic resin is from 5 to 300 nm. (Lines 130) The ZnO aqueous dispersion may also contain an anionic dispersant, viz. aqueous anionic polymer resin. (Lines 159-160)
The surface treatment liquid may include at least one additive selected from the group of B or compounds of elements in Mg, Si, Ca, Ti, V, Zr, W, and Ce. (Lines 148-150) These additives improve corrosion resistance. (Lines 392-393) CN ‘200 sets forth, inter alia, boric acid and tungstates. (Lines 410-419)
Other additives can be provided, including a thickener and leveling agent. (Lines 444-446) This would correspond to the claimed water-soluble thickener E and aqueous surface improvement aid F.
While CN ‘200 sets forth the individual components as set forth in the instant claims, it does not set forth the exact combination as set forth in the instant claims. However, it would have been obvious to one of ordinary skill in the art to have chosen the claimed combination from the finite number of identified, predicable solutions as set forth with CN ‘200 with a reasonable expectation of success. In particular, one of ordinary skill in the art would merely select the components having known effects upon the resulting surface treatment in order to achieve the desired effects based on the intended use of the final product. Additionally, CN ‘200 sets forth the effects of these respective components within the resulting final product.
As to claim 2, the deposition amount is selected to be from 0.3 to 2 g/m2. (Lines 460-464) This range overlaps the claimed range.
As to claim 3, the surface treatment liquid includes a ratio of ZnO particles to solid content of the water-dispersible organic resin of 30/70 to 95/5. (Lines 227-232) The additives constitute 5 to 60% with respect to the mass of ZnO particles in the surface treatment liquid. (Lines 392-396) Other additives are provided to achieve their desired effect without impairing the film performance. (Lines 444-446) Therefore, the amounts of the other additives are cause effective variables. It is well settled that determination of optimum values of cause effective variables such as these process parameters is within the skill of one practicing in the art. In re Boesch, 205 USPQ 21 5 (CCPA 1980). See MPEP 2144.05, Sec. II. It would have been within the skill of one of ordinary skill in the art to have selected the optimum values to achieve the desired effects of the additives within the surface treatment film in amounts that the effects are seen however the film performance is not degraded.
As to claim 4, the steel sheet may contain 0.1 to 0.4% carbon, 0.01 to 0.6% silicon, 0.5 to 3% manganese, 0.01 to 0.1% titanium, 0.0001 to 0.1% boron, and the balance being iron and unavoidable impurities. (Lines 184-186) The plating layer needs only to contain at least Al and the content of Al is at least 10% by mass, and typically 80% by mass or more. (Lines 198-199) The Si addition amount in the Al-containing plating layer is preferably 3 to 15% by mass. (Lines 206-207) These ranges overlap the claimed ranges. Therefore, a prima facie case of obviousness is established.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Daniel Schleis whose telephone number is (571)270-5636. The examiner can normally be reached 10 AM to 4 PM Monday through Friday.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Daniel J. Schleis
Primary Examiner
Art Unit 1784
/Daniel J. Schleis/Primary Examiner, Art Unit 1784