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
Applicant’s election without traverse of Group I, claims 1-2, in the reply filed on 06 July 2026 is acknowledged. The requirement is still deemed proper and is therefore made FINAL.
Claim 3 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 06 July 2026.
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 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Oh et al. (US 2019/0010595 – cited by applicant).
Considering claim 1, Oh teaches a plated steel material including a plated layer (abstract). The plating layer comprises by weight al: 0.5-14%, Mg: 0.5-5%, balance Zn (i.e. ~81-99%) and inevitable impurities (Paragraph 18) on a base steel (Paragraph 17). The surface of the plated layer has a greater Mg content than the Mg content at half thickness (Paragraph 8) and an example is disclosed where the thickness of the portion having a greater Mg content is about 1.5 µm and the overall layer thickness is about 12 µm (Fig. 1A -reproduced below; Paragraph 66). Oh teaches where the microstructure of the plating a single phase Zn and an intermetallic of a Zn/Al/MgZn2 ternary eutectic structure (Paragraph 28), but does not teach the claimed total area ratio. However, Oh teaches where the plating is formed by immersion in a plating bath at preferably 440-460 °C (Paragraph 34), and undergoes a primary cooling at 5 °/C or less and preferably 3 °/C or less to 380-420 °C (Paragraphs 46-47) and a secondary cooling at 10 °/C or more and preferably 15 °/C or more to a temperature of 320 °C or less (Paragraphs 51-52). These conditions are substantially identical to those set forth in Paragraph 67 of the originally filed specification and therefore one would reasonably expect the steel of Oh to possess the claimed area ratio as substantially identical materials treated in a substantially identical manner are expected to behave the same, absent an objective showing. See MPEP 2112.
PNG
media_image1.png
426
539
media_image1.png
Greyscale
While not expressly teaching a singular example of the claimed coated steel this would have been obvious to one of ordinary skill in the art before the effective filing date in view of the teachings of Oh as the steel, plating composition, and Mg enriched portion overlap the claimed composition and thickness and the courts have held that where claimed ranges overlap or lie inside of those disclosed in the prior art a prima facie case of obviousness exists. See MPEP 2144.05.
Considering claim 2, Fig.1A above depicts a Al-Fe alloy layer from about 7-12 µm from the surface.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Honda et al. (US 6,465,114), Warnecke et al. (US 2010/0024925), Sengoku et al. (US 2020/0032360), and Tokuda et al. (US 2022/0356547) teach plated steels demonstrating the ordinary level of skill in the art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SETH DUMBRIS whose telephone number is (571)272-5105. The examiner can normally be reached M-F 6:00 AM - 3:30 PM.
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.
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.
SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784
Prosecution Insights