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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 18 December 2024, 15 April 2025, and 29 October 2025 were 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.
Claims 1-15 are 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.
In regards to independent claim 1, this claim sets forth the limitation that the chemical composition of the plated layer with the phrase “further containing one or two selected from the group consisting of the following group A and group B” in the ninth and tenth lines of the claim. The metes and bounds of this particular limitation cannot be determined.
First, the groups each contain ranges that have zero values. It is not clear if the ranges are inclusive of the zero value or if the value is more than zero. For example, it is not clear if a composition that does not contain a further element would mean that the composition further contains groups A and group B even though it does not contain an additional component.
Second, it is not clear if the further elements must satisfy both groups if elements from both groups are present. For example, If Group B is present in an appropriate amount, it is not clear if this limitation is still satisfied if nickel is present in amounts greater than 1.0%. In such a case Group B is satisfied but Group A is not.
For the purposes of examination, the Office is construing the ranges as being inclusive of zero. The Office is also interpreting the groups such that so long as either group A and/or group B is satisfied, even if the other group is outside of the claimed ranges, this particular limitation is met.
As to claims 2-15, these claims depend from independent claim 1 and incorporate the limitations therein. Accordingly, these claims are rejected for the reasons set forth above in regards to independent claim 1.
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 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over WIPO Publication Number 2021/171514A1 (For ease of reference, U.S. Patent Application Publication 2023/0193443 will be utilized as a translation and cited herein as “Mitsunobu”).
In regards to independent claim 1 and dependent claims 7-8, Mitsunobu is directed to a plated steel material. (¶1) Mitsunobu sets forth a plated steel material comprising a steel base material and a plating layer formed on a surface of the steel base material. (¶16)
The plating layer has a chemical composition comprising, in mass %, the following:
Claim 1
Mitsunobu
(¶16-30, ¶96)
Aluminum
10.0-30.0%
25.00-75.00%
Magnesium
3.0-15%
7.00-20.00%
Iron
0.01-2.0%
0-5.0%
Silicon
More than 0 to 2.0%
0.10-5.00%
Calcium
0.05-2.0%
0.05-5.00%
Group A
Nickel
0-1.0%
0-1.0%
Group B
Antimony, Lead, Copper, Tin, Titanium, Chromium, Niobium, Zirconium, Manganese, Molybdenum, Silver, Lithium, Lanthanum, Cerium, Boron, Yttrium, Phosphorus, Strontium, Cobalt, Bismuth, Indium, Vanadium, Tungsten
0-5% in total
Sb: 0 to 0.50%
Pb: 0 to 0.50%
Cu: 0 to 1.00%
Sn: 0 to 1.00%
Ti: 0 to 1.00%
Sr: 0 to 0.50%
Cr: 0 to 1.00%
Mn: 0 to 1.00%
Zinc
Remainder
Remainder
Mitsunobu sets forth ranges that overlap the claimed ranges, including for values that fall within claimed group A and/or group B. Therefore, a prima facie case of obviousness exists.
The plating layer is provided on at least one surface of a base steel material. (¶116) The base steel material is diffed in a plating bath and then the amount of the deposition is adjusted to within a predetermined range by immediately blowing nitrogen gas or air by the gas wiping method. (¶117) Mitsunobu sets forth that the amount of deposition of the plating layer is not particularly limited, and may be 10 to 170 g/m2 per surface. (¶98) The material is then cooled. (¶122) More particularly, the specific value of the cooling speed can change according to the chemical composition of the plating layer, etc., but in order to make the acicular Al—Zn—Si—Ca phase reliably form in a predetermined amount, it is effective that the steel base material on which the plating layer is deposited first be cooled by a 14° C./sec or more, preferably a 15° C./sec or more, average cooling speed from the bath temperature (in general, 500 to 700° C.) to 450° C., then be cooled by a 5.5° C./sec or less, preferably 5° C./sec or less average cooling speed from 450° C. to 350° C. (¶122) By using such cooling conditions, i.e., two-stage cooling of fast cooling and slow cooling, a supersaturated state is created at the time of the initial fast cooling to render the material a state in which nuclei of the acicular Al—Zn—Si—Ca phase is easily formed and cause the formation of a large amount of nuclei, then, at the time of the slow cooling, those nuclei slowly grow, whereby in the surface structure of the plating layer, an area ratio of 2.0% or more of the acicular Al—Zn—Si—Ca phase is formed, in particular, is formed dispersed. (¶122)
Where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the Office can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. Whether the rejection is based on “inherency” under 35 USC 102, on “prima facie obviousness” under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the Office’s inability to manufacture products or to obtain and compare prior art products. In re Best, Bolton and Shaw, 195 USPQ 430 (CCPA 1977).
The instant application sets forth the method of producing the claimed product including having a steel sheet that is immersed in a hot-dip plating bath and then pulled up to form a plated layer on the surface of the steel sheet. (¶63 of Specification) Subsequently, cooling is performed until the temperature reaches 300 C or lower. Id. The cooling condition at less than 300 C is not particularly limited. (¶70 of Specification) The controlled cooling temperature is a temperature within the range of -10C to 80C with respect to the crystallization temperature of Al-Si-Zn-Ca phase. (¶64 of Specification)
The method taught by the prior art appears to be the same or substantially similar method used by applicants to produce the claimed product. Consequently, absent a showing to the contrary, it appears that the product in the prior art necessarily or inherently possesses the characteristics of the claimed product, including the claimed number densities of the particular phases as set forth within the instant claims.
As to claims 2-6 and 9-15, the composition of the prior art overlap the claimed ranges. Therefore, a prima facie case of obviousness exists. (¶16-30, ¶96) Additionally, as set forth above in regards to independent claim 1, the process of the prior art appears identical or substantially identical as set forth in the instant application for producing the claimed properties. Therefore, it would be expected that the prior art would have the phases as set forth in the instant claims, including the number density, size, and presence.
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.
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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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Daniel J. Schleis
Primary Examiner
Art Unit 1784
/Daniel J. Schleis/ Primary Examiner, Art Unit 1784
Prosecution Insights