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 .
Specification
The substitute specification filed 28 January 2025 has been entered.
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 1-4 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.
Regarding Claim 1, it is unclear whether the claimed “washing and drying” is necessarily to occur subsequent to the “immersing” step. Should the claim read “that had been immersed”?
Regarding Claim 2, it is unclear what is required by “inevitably added to the plating bath being suppressed to a content of 0.01 % or less (including 0%)”. It is unclear whether this “%” is also necessarily “by weight%”. It is unclear whether this necessarily means that the content of Ce in the plating bath must be 0.01% by weight or less. Could it have any other meaning due to “inevitably added . . . being suppressed” qualification? For example, is some kind of filtering or removal step implied by “being suppressed”?
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shigeaki JP 2001-158973. Shigeaki discloses providing Zn-Al-Mg plated steel sheet (paragraphs 18 and 30), preparing cerium nitrate solution (paragraph 32: cerium nitrate hexahydrate), immersing the plated steel sheet in the solution (paragraph 34: 40oC for 5 sec), and washing and drying the treated plated steel sheet (paragraph 34). It would have been obvious to one of ordinary skill in the art at the time of filing to prepare a steel sheet in this manner since Shigeaki teaches that white rust prevention can be effectively achieved by doing so.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shigeaki JP 2001-158973 in view of Kim et al. USPA 2013/0183541. Shigeaki is relied upon as set forth above in the section 103 rejection over Shigeaki. Shigeaki does not teach claimed Zn-Mg-Al alloy composition. Kim teaches steel sheet coated with molten Zn-Al-Mg plating layer formed by plating bath having claimed composition (paragraph 18), including minimizing Ce content to less than 0.01 wt. % (paragraph 27), so as to form coated steel having good corrosion resistance. It would have been obvious to one of ordinary skill in the art before the time of filing to prepare molten Zn-Mg-Al plating layer on steel sheet of Shigeaki since Shigeaki teaches that such layers benefit from cerium nitrate treatment of Shigeaki. It would have been obvious to one of ordinary skill in the art before the time of filing to prepare the molten plating layer using known technique for applying Zn-Mg-Al to underlying steel, such as the molten layers suggested by Kim, with the expectation that the applied layer would be suitable for Shigeaki’s treatment since it is the type of plating layer Shigeaki teaches would benefit from Shigeaki’s treatment. Kim teaches range of compositions that overlap those claimed, rendering them obvious. See MPEP 2144.05.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shigeaki JP 2001-158973 in view of Song USPA 2006/0257682. Shigeaki is relied upon as set forth above in the section 103 rejection over Shigeaki. While Shigeaki teaches treatment temperature (paragraph 34: 40oC for 5 sec), the treatment time is not in the claimed range. Shigeaki teaches layers formed at 5 sec have thickness on the order of 20 to 30 nm (Table 1) and expressly suggests that thickness can be up to 100 nm (paragraph 27). Song teaches treatment solutions of comparable Ce concentration and treatment temperatures and times (paragraphs 55 and 58; Table 1; and Claims 4 and 12: 10 to 20 mM; room temperature; 60 seconds or less) to those of Shigeaki (Table 1: 10 to 50 mM). It would have been obvious to one of ordinary skill in the art before the time of filing to subject Zn-Al-Mg coated steel in Shigeaki to longer treatment times in order to obtain thicker coatings since longer treatment would be expected to lead to thicker coatings and since Shigeaki teaches that thicker coatings are desirable, as mentioned above. It would have been obvious to one of ordinary skill in the art before the time of filing to be guided by times disclosed as effective in Wong because the treatment solutions are comparable in terms of Ce concentration and other ingredients and temperature between Shigeaki and Wong. Thus, it would be expected that effective coatings would be obtained by using immersion times in excess of disclosed 5 seconds and in the ranges disclosed as effective in Wong, which overlap those being claimed, including, e.g., 10 seconds.
Allowable Subject Matter
Claim 3 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Regarding Claim 3, the reviewed prior art does not teach or suggest the subject matter of this claim. Particularly, the reviewed prior art does not teach or suggest preparing cerium nitrate in the claimed manner in terms of pH, use of titrating nitric acid, and dissolution concentration, in the claimed context. For example, while Shigeaki JP 2001-158973 may teach or suggest immersion treatment using cerium nitrate solution, Shigeaki fails to expressly teach or suggest claimed preparation method. See Shigeaki (entire document).
EXAMINER’S COMMENT
A machine translation of Song KR 10-0742844 B1 is cited. It teaches or suggests immersion treatment of galvanized steel in cerium nitrate treatment solution. Song ‘844 does not expressly teach washing and drying after immersion treatment. See Song ‘844 (entire document).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL E. LA VILLA whose telephone number is (571)272-1539. The examiner can normally be reached Mon. through Fri. from 9:00 a.m. ET to 5:30 p.m. ET.
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 N. 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL E. LA VILLA/Primary Examiner, Art Unit 1784
23 December 2025