DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 12/811,213, filed on 13 October 2010.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 20 February 2025 and 12 August 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 27-46 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.
Dependent claims 29, 31-35, 42-46 depend from cancelled claim 1. Accordingly, the metes and bounds of these claims cannot be determined. For the purposes of examination the Office is interpreting these claims to properly depend from claim 27.
Dependent claim 30 depends from cancelled claim 3. Accordingly, the metes and bounds of this claim cannot be determined. For the purposes of examination the Office is interpreting this claim to properly depend from claim 29.
Dependent claims 36-41 depend from cancelled claim 9. Accordingly, the metes and bounds of these claims cannot be determined. For the purposes of examination the Office is interpreting these claims to properly depend from claim 35.
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 27, 28-35, 42-46 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11,840,763. Although the claims at issue are not identical, they are not patentably distinct from each other.
Instant claim 27 sets forth a hot-dip coating method including passing a steel strip through a hot dip coating bath that contains aluminum, zinc, silicon, and magnesium, in particular amounts, controlling a short range coating thickness, cooling the coated steel strip within particular ranges, and resulting in particular microstructures. Claim 1 of the reference patent also sets forth these features with the same composition of the coating bath or coating, controlling the short range thickness values that are the same, cooling the coated steel strip within particular ranges, and having the same particular microstructure.
Similarly, the methods and parameters set forth within instant claims 28-30, 35, 42, 43, 44, and 46 are also recited in claims 1-8 of the reference patent. Both the instant claims and reference patent set forth identical claim limitations in regards to the cited parameters. In particular as to claim 29, claim 1 of the reference patent sets forth controlling the coating thickness of the alloy coating to an identical range as that set forth in the instant claims. In particular as to claim 45, claim 1 of the reference patent sets forth utilizing a coating thickness control station to control the short range coating thickness variation.
As to instant 31-33, the amounts of the cited elements fall within the claimed ranges set forth in claim 1 of the reference patent. Therefore, these values are included within the scope of the reference patent.
As to instant claims 34, 37, and 41, strontium is not included as a mandatory element of claims 1 and 4 of the reference application. Therefore, the reference patent would not necessarily include any strontium. A zero value of strontium would also be less than 3000 ppm in both the bath and the coating. Accordingly, the scope of these instant claims would be included within the scope of claims 1 and 4 of the reference patent.
Claims 27-46 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,180,594. Although the claims at issue are not identical, they are not patentably distinct from each other.
Instant claim 27 sets forth a hot-dip coating method including passing a steel strip through a hot dip coating bath that contains aluminum, zinc, silicon, and magnesium, in particular amounts, controlling a short range coating thickness, cooling the coated steel strip within particular ranges, and resulting in particular microstructures. Claim 1 of the reference patent also sets forth these features with the same composition of the coating bath or coating, controlling the short range thickness values that are the same, cooling the coated steel strip within particular ranges, and having the same particular microstructure.
As to instant claims 28-43 and 45-46, the limitations set forth therein are set forth in the corresponding claims 2-19 of the reference patent.
As to instant claim 44, the limitations set forth therein are set forth in claim 1 of the reference patent.
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.
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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Daniel J. Schleis
Primary Examiner
Art Unit 1784
/Daniel J. Schleis/Primary Examiner, Art Unit 1784