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Claims 10-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on March 10, 2026.
Applicant’s election without traverse of species A (zinc-based coating) in the reply filed on March 10, 2026 is acknowledged.
Claims 7-9 are pending, claim 7 is independent.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Examiner Note
Examiner notes, “deterministic arrangement” is defined in the specification (Pg. 5 [1]) as “means recurring surface structures having a defined shape and/or configuration”.
Information Disclosure Statement
The information disclosure statement filed December 09, 2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. Specifically, foreign patent 7 was not provided and as it is struck through on the annotated IDS, it has not been considered.
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
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.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
Specifically, the abstract fails to provide a technical disclosure of the patent and should include that which is new in the art to which the invention pertains, additionally, the language “The invention relates to” is language that can be implied, the abstract is further significantly too short.
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 7-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15-17 of copending Application No. 18871324 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they contain the following overlapping subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Instant claim 7 and claim 15 of ‘324 recite a skin-pass rolled, hot-dip coated steel sheet, that has undergone skin-pass rolling, where at least one of the surfaces of the skin-pass rolled, hot-dip coated steel sheet has embossments in a deterministic arrangement, wherein a cross-correlation function rz,u is used to compare measured height values zi on the steel sheet in the hot dip coated state and measured height values ui on the steel sheet in the decoated state in the different (instant claim, overlaps with “corresponding” of ‘324) regions, where the correlation coefficient r that results from the cross-correlation function rz,u overlap each other (at least 0.50 in the prior art and at 0.40 in the instant claim).
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.
Instant claim 8 and claim 16 of ‘324 both recite, wherein the steel sheet has been hot-dip coated with a zinc-based coating.
Instant claim 9 and claim 17 of ‘324 both recite, wherein the coating comprises, in addition to zinc and unavoidable impurities, additional elements including at least one of aluminum with a content of at least 0.1 % up to 8.0% by weight and magnesium with a content of at least 0.1 % up to 8.0% by weight in the coating.
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 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 7-9 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 7, claim 7 is indefinite for multiple reasons:
-Cross-correlation function rz,u is indefinite, and the correlation coefficient r that results from it is indefinite. Pg. 2 of applicants’ specification provides a calculation for rz,u; however a calculation is not equivalent with a definition and as such it remains indefinite as to what r and rz,u are defined as. Applicant is invited to incorporate further definition into the claim. For purposes of examination any comparison of height values meeting the claimed ratio shall be considered to meet the claim limitation.
-It is indefinite if height values zi on the steel sheet are on the sheet surface or the hot-dip coating surface. For purposes of examination, either shall be considered to meet this limitation.
-Claim 7 recites the limitation "the decoated state" in line 5. There is insufficient antecedent basis for this limitation in the claim. Further, it is indefinite what is considered a “decoated state” (to what degree it has to be decoated, if it can be considered decoated prior to hot dipping, how the coating is removed, etc.). For purposes of examination, any steel sheet area without a coating shall be considered to be broadly “decoated”.
-It is further indefinite if “different regions” refers to a single region of “hot-dip coated state” and a single of “decoated state” or multiple regions of each. For purposes of examination, either or any combination thereof shall be considered to meet this limitation.
Regarding claims 8 and 9, these claims are individually rejected for their incorporation of the above due to their dependencies on claim 7.
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 7 is rejected under 35 U.S.C. 103 as being unpatentable over Thyssenkrupp (DE202020100524U1 herein referring to espacenet translation of April 3, 2026) (original of record).
Regarding claim 7, Thyssenkrupp teaches indentations created by a skin-treating roller (skin-pass rolled) onto a steel sheet substrate to produce a deterministic surface structure with a plurality of raised areas and/or depressions over a surface (embossments) that has an electrolytically deposited tin coating deposited on it (coated state; [0015]). Further, during the deposition of the coating onto the substrate, the deterministic surface structure is preserved ([0045]; i.e. the height values are maintained in a coated and decoated state). Additionally, Thyssenkrupp teaches periodically recurring surface structures on their surface in at least one (selected) direction, wherein an autocorrelation function with a plurality of secondary maxima results from the surface profile and the height of the secondary maxima is at least 20%, preferably at least 30% of the height of the main maximum (“r” is indefinite as noted above, and the autocorrelation function is considered to overlap the correlation coefficient r as it compares secondary (considered “ui”) and main (considered zi) maximums in different regions) ([0029]). Examiner notes “regions” is presently subject to broadest reasonable interpretation and each individual maximum can be considered a “region”.
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.
Regarding “hot-dip” and “decoated” these are product-by process limitations. Product-by-process claims are limited by and defined by the process, however, the determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product by process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. MPEP 2113. In this instance, the patentable distinction structurally of “hot-dip coated” is that of a metal coated substrate and “decoated” is a surface without coating, addressed above.
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Thyssenkrupp in view of Vogt et al. (US 2023/0201899 A1), hereinafter Vogt.
Regarding claims 8-9, Thyssenkrupp teaches each limitation of claim 7, as discussed above. Thyssenkrupp does not teach the hot-dip coating is a zinc-based coating with zinc and unavoidable impurities, additional elements including at least one of Al: 0.01-8.0 wt% and Mg: 0.1-8.0 wt%.
Vogt is in the similar field of endeavor of a steel sheet skin-pass rolled with a deterministic surface structure (Abstract) with a hot-dip zinc coating on it ([0015]). Vogt teaches he steel sheet is coated with a metallic coat, in particular with a zinc-based coat, which is applied by hot-dip coating. The coat may preferably contain, in addition to zinc and unavoidable impurities, additional elements such as aluminum with a content of up to 5% by weight and/or magnesium with a content of up to 5% by weight in the coat ([0015]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Thyssenkrupp to incorporate the coating of Vogt. The motivation for doing so would have been to provide good corrosion properties ([0015]) and thereby meet an objective of Thyssenkrupp (avoid susceptibility to corrosion for the packaging sheet ([0050]).
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.
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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