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 .
Claim Status
Applicants’ June 30, 2026 response to the April 08, 2026 Non-Final Rejection is acknowledged. Claims 7-9 and 13-22 are pending, claim 7 is independent. Any rejections and/or objections, made in the previous Office Action, and not repeated below, are hereby withdrawn.
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 language “is provided” is language that can be implied.
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 (chemically does is a product-by process limitation that does not differentiate the physical structure of the claim) state in different non-overlapping (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). Examiner further notes that the specification of ‘324 teaches overlapping zi and ui measurement locations (Pg. 4 [2]) with those 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.
Allowable Subject Matter
Claims 13-22 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the closest prior art to the instant claims is (DE202020100524U1 herein referring to espacenet translation of April 3, 2026) (of record). 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.
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.
Thyssenkrupp does not specifically teach or suggest, alone or in combination with the prior art, 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 chemically decoated state, wherein the measured height values Zi and Ui are obtained from different non-overlapping regions of the steel sheet; where the correlation coefficient r that results from the cross-correlation function rz,u overlap is at least 0.40.
Response to Arguments
Applicants’ amendment and arguments, filed June 30, 2026, with respect to objections have been fully considered and are persuasive. The objections of April 08, 2026 have been withdrawn.
Applicants’ amendment and arguments, filed June 30, 2026, with respect to 35 U.S.C. 112(b) rejections have been fully considered and are persuasive. The 35 U.S.C. 112(b) rejections of April 08, 2026 have been withdrawn. Specifically, applicants’ have made of record their meaning of 35 U.S.C. 112(b) rejections, where the zi heights are measured and added separate defining language to claim 7.
Applicants’ amendment and arguments, filed June 30, 2026, with respect to 35 U.S.C. 103 rejections have been fully considered and are persuasive. The 35 U.S.C.103rejections of April 08, 2026 have been withdrawn. Specifically, overcoming the 35 U.S.C. 112(b) rejections for record have defined the invention over the prior art of record.
Regarding the double patenting rejections; applicant has stated their intent to file a terminal disclaimer, but as one has not been submitted, the rejections are maintained herein.
For these reasons, and for those reasons as advanced in the rejections above, the present claims are not found to distinguish over the prior art and this action is made FINAL.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 KATHERINE CHRISTY whose telephone number is (303)297-4363. The examiner can normally be reached Monday-Thursday, 7am-4pm MT.
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.
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/KATHERINE A CHRISTY/Primary Examiner, Art Unit 1784
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