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Claims 6-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on March 18, 2026.
Applicant’s election of Group I (claims 1-5) in the reply filed on March 18, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1-5 are pending, claim 1 is independent.
Information Disclosure Statement
Examiner notes that the IDS of January 23, 2025 is a substantial duplicate of that of December 16, 2024, filed to include the correct seventh foreign patent reference number (struck through on the IDS of 12/16/2024 as not provided). Annotated copies of both IDSes are provided herewith.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
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, 1) the abstract is too short
2) the abstract does not sufficiently describe the disclosure
3) the language “The present invention relates to” and “relates to” is language that can be implied.
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 1-5 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 (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, the use of the phrase “two or more valleys” is indefinite as the clear meaning cannot be ascertained as to the metes and bounds of the claim scope. One of ordinary skill in the art considers “valleys” in a steel sheet including depth from the surface, to reference the surface structure (i.e. heights of peaks/valleys with regards to surface roughness). However, in this instance it appears to be in reference to the amount of material over the depth of the steel sheet (specification [0047]: “concentration profiles measured from the surface illustrates a valley in which an amount decreases and a mountain in which an amount increases“). The specification fails to provide an alternate definition beyond this explanation and the claim itself fails to provide sufficient definition. Examiner notes that while [0047] is descriptive it is not a definition and the normal interpretation in the art is also relevant, rendering the phrase indefinite. For purposes of examination, either amounts in physical valleys or valleys on a GDS profile shall be considered to meet this limitation.
Further regarding claim 1, the term “parent material” is also indefinite. [0050] of the specification states “an amount of a parent material may refer to an average amount of a component, corresponding thereto, a steel sheet manufactured by controlling the same during a steelmaking process, and may be representatively used as a value measured at a 1/4 point (1/4*t) of a thickness (t, unit mm) of the steel sheet”. However, this is one example of what the term could mean, failing to rise to the level of a definition, leaving this term indefinite. For purposes of examination the phrase “parent material” shall broadly be considered to refer to the majority of the steel sheet’s composition at a depth of 1 micron or more from the surface (not within the 1 micron from the surface range of claims 1 and 2).
Regarding claim 2, the term “parent material” is indefinite. [0050] of the specification states “an amount of a parent material may refer to an average amount of a component, corresponding thereto, a steel sheet manufactured by controlling the same during a steelmaking process, and may be representatively used as a value measured at a 1/4 point (1/4*t) of a thickness (t, unit mm) of the steel sheet”. However, this is one example of what the term could mean, failing to rise to the level of a definition, leaving this term indefinite. For purposes of examination the phrase “parent material” shall broadly be considered to refer to the majority of the steel sheet’s composition at a depth of 1 micron or more from the surface (not within the 1 micron from the surface range of claims 1 and 2). Claim 2 is further rejected for its incorporation of the above due to its dependence on claim 1.
Regarding claims 3-5, these claims are individually rejected for their incorporation of the above due to their respective dependencies on claim 1.
Claim Rejections - 35 USC § 102
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 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Yamamoto et al. (US-20240117517-A1), hereinafter Yamamoto.
Regarding claim 1, Yamamoto teaches a Si containing steel sheet ([0012]) where an example of the raw data of an intensity profile of emission intensity of Si using glow discharge optical emission spectrometry are shown in Fig. 2A ([0031]). Fig. 2A first portion shows two valleys with intensity of ~ 0.05 at the surface of the steel substrate (line between Fe plating and steel substrate) and a value of ~0.11 intensity at 3 micron depth (3 microns from the 2 microns where the steel substrate starts is 1 micron depth of the steel sheet, considered to be the parent material Si concentration), see annotated Fig. 2A below, valleys noted with arrows; 0.05 noted with line across.
Examiner notes that 0.05/0.11 is ~45%. These approximate values anticipate the claimed range with sufficient specificity per MPEP § 2131.03 as they calculate to values well within the claimed ratios.
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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.
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(s) 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto et al. (US-20240117517-A1), hereinafter Yamamoto.
Regarding claim 4, Yamamoto teaches each limitation of claim 1, as discussed above and further teaches the steel comprises a composition as shown in the below Table in mass percent ([0012]-[0018]).
Table
Instant claim 4
Yamamoto [0012]-[0018]
C
0.02-0.6
≤ 0.8
Si
0.001—2
0.1-3.0
Al
0.001-1
< 1.0
Mn
0.1-4
1.0-12.0
P
≤ 0.05
≤ 0.1
S
≤ 0.02
≤ 0.03
Cr
≤ 1
≤ 1.0
N
≤ 0.02
≤ 0.010
Ti
≤ 0.1
≤ 0.2
B
0.0001-0.01
≤ 0.005
Cu
≤ 1.00
≤ 1.0
Mo
≤ 1.00
≤ 1.0
Cr
≤ 1.00
≤ 1.0
Ni
≤ 1.00
≤ 1.0
V
≤ 1.00
≤ 0.5
Ca
≤ 0.01
≤ 0.005
Nb
≤ 0.1
≤ 0.20
Sn
≤ 1
≤ 0.20
W
≤ 1
≤ 0.5
Sb
≤ 1
≤ 0.020
Mg
≤ 0.1
≤ 0.005
Co
≤ 1
As
≤ 1
Zr
≤ 1
≤ 0.1
Bi
≤ 1
REM
≤ 0.3
≤ 0.005
Fe & unavoidable impurities
remainder
balance
Regarding As, Co, and Bi in the steel, Yamamoto is silent to the presence of these elements in the steel, such that they are not considered to be present in an appreciable amount, also note examples. If these elements are not listed it is understood to one of ordinary skill in the art that it is reasonable that they are not present. Therefore the elements are considered to be present in an amount within, or at least overlapping, applicant’s claimed proportions (which include 0%).
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 claim 5, Yamamoto teaches each limitation of claim 1, as discussed above and further teaches the part made from the steel sheet includes a hot-dip galvanized steel sheet (galvanized layer formed on a surface; [0146]).
Claim(s) 1-3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Soo et al. (KR20130077907 A, herein referring to the Google Patents machine translation printed on April 3, 2026, provided herewith), hereinafter Soo (original of record).
Regarding claims 1-3, Soo teaches a base steel sheet with Mn or Si in it (Pg. 4 [4]), but does not specifically teach wherein, in a GDS profile, in which one or two components of Mn and Si are observed in a depth direction from a surface of the steel sheet, the steel sheet comprises two or more valleys in which amounts of the one or two components of Mn and Si are 60^ or less of an amount of a parent material within 1 micron from the surface of the steel sheet, nor wherein amounts of the one or two of Mn and Si included in a grain or a grain boundary within 1 micron in the depth direction from the surface are 40% or more of each of the components in the parent material, nor the steel sheet comprises an oxide formed of one or two or more of Mn, Si, Al, Cr and B is included in a grain boundary within 10 microns from the surface in the depth direction (hereinafter “claimed properties”).
One of ordinary skill in the art, before the effective filing date of the invention, would have expected substantially identical materials treated in a substantially identical manner as applicants to have substantially identical properties (including the claimed properties). Applicant teaches the present disclosure is not particularly limited to the alloy composition of the steel sheet ([0055]).
Applicant teaches forming an Fe plating layer on a surface of the bases steel sheet of 0.5-3 g/m2 and annealing it at 600-950⁰C at a dew point of 10⁰C or less (claim 6). The examiner notes that these are the only parameters noted in Table 1 of the specification, and as such they are considered the parameters critical to the formation of claimed properties. Soo teaches plating a layer of Fe on the steel sheet at 0.2-3 g/m2 (Pg. 4 [7]-[8]), then heating it at -30 to 10⁰C dew point (Pg. 5 [2]) to 750-850⁰C and holding it for 10-70 seconds for sufficient annealing (Pg. 5 [4]-[5). These parameters overlap those taught by applicant; where the taught ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP 2144.05 I).
Given substantially identical materials and processing parameters, (as discussed above), one of ordinary skill in the art before the effective filing date of the invention would have expected the product of the prior art to have substantially identical properties to that of applicant; including the claimed properties, meeting applicant’s claimed requirements.
The examiner has provided a basis in technical reasoning that the processing and compositions are substantially identical in support of the determination that the inherent characteristic of the claimed properties necessarily flows from the teachings of the prior art (MPEP 2112 IV).
As the prior art teaches a substantially identical product, produced by a substantially identical process as that which applicant discloses in their specification as producing the claimed properties, one of ordinary skill in the art, before the effective filing date of the invention, would expect the product of the prior art to possess the claimed limitations, absent an objective showing (MPEP 2112). The PTO can require an applicant to prove that the prior art products do not necessarily possess the characteristics of the claimed product, whether the rejection is based on inherency under 35 U.S.C. 102 or prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same (MPEP 2112 V).
Regarding claim 5, Soo teaches each limitation of claim 1, as discussed above and further teaches the steel sheet that is plated is then immersed in a hot dip galvanizing bath (Pg. 3 [11] to Pg. 4 [1]; hot dip galvanized layer formed on a surface of the steel sheet).
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.
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