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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3 and 8 of copending Application No. 18/872,028 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other. Claims 3 and 8 encompass area fraction of 10% in at least one section, which renders obvious at least one section being less than 20% of the instant application in Claim 1. This also renders obvious Claims 3 and 6 because the claimed B/A ratio of Claim 1 of the reference application being 20% or more abuts the claimed ratio of less than 20%, rendering it obvious. See MPEP 2144.05. The compositions of Claims 4 and 5 overlap those of Claim 2 of the reference application, rendering them obvious.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Mitsunobu WO 2020/213686 (as translated by Mitsunobu USPA 2022/0145425). Mitsunobu teaches plating layer having 16% Al, 7.5% Mg, 0.1% Ca, and 0.4% Ni (Table 1, Ex. 15). There is no Zn phase in the vertical cross section. It is remarked that a lamellar phase is taught and depicted (Figure 1) that may contain Zn lamellae, but these are not “island like” and having relationship with eutectic which is what the Specification explains is required and also may not even contain any Zn lamellae (paragraph 127). See Specification (paragraph 26). Thus, since these platings contain no Zn phase in vertical cross section, it would be expected that they contain none in the cross-section in plan view as claimed or substantially contain none. Thus, requirements of Claim 1-3, 5, and 6 are satisfied by this example. Regarding Claim 4, in Ex. 19, the composition contains claimed amounts of Si along with other ingredients in claimed range (Table 1, Ex. 19). The reported structure contains lamellar phase and “Al-Zn dendrites”, but neither of these meets requirements of claimed “Zn phase”. Thus, the claimed requirement regarding amount of Zn phase would be expected to be satisfied.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Honda USPA 2004/0258949. Honda teaches plating layer having 15% Al, 5% Mg, 0.05% Ca, and 0.45% Si (Table 4, Ex. 5). Honda reports that there is no Zn phase in the vertical cross section. There is ternary eutectic. Thus, since these platings contain no Zn phase in vertical cross section, it would be expected that they contain none in the cross-section in plan view as claimed or substantially contain none. Thus, requirements of Claim 1-6 are satisfied by this example. There are many other examples meeting composition and absence of Zn phase. See (Tables 4-6, Exs. 7, 54-55, 62, 66, 67, 74, 78, 79, 90, 91, 102, 103, 124, 128, 129, 136, 140, 141, and 145).
Conclusion
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.
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 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
13 June 2026
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