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 .
Status of Claims
As such, claims 1 and 5 are examined in this office action as claim 3 is withdrawn as directed to a non-elected invention, claims 2, 4, and 6 were canceled and claim 1 was amended in the reply dated 4/30/26.
Claim Interpretation
Claim 1 recites the limitation “diffusion alloy layer” in line 4. As paragraph [0022] defines a diffusion alloy layer as a Ni-Fe alloy region formed by interdiffusion between a Ni coating and the base steel sheet this definition will be used to interpret the claims in the rejections below.
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.
Claims 1 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over US 2013/0122322 A1 of Nakajima.
As to claims 1 and 5, Nakajima discloses a steel sheet for hot pressing -- reading upon base steel sheet – and having sequentially on a surface of a base steel sheet: a plating layer I containing 60% by mass or more of Ni and the remainder consisting of Zn and inevitable impurities (Nakajima, paragraph [0014])– reading upon a diffusion alloy layer as this alloy is capable of diffusing and Nakajima discloses where the coated sheet is subjected to a heat treatment in a temperature range of Ac.sub.3 transformation point to 1000.degree. C (Nakajima, paragraph [0017]) and this would result in diffusion between the nickel and iron to create a Ni-Fe diffusion layer. Nakajima discloses on a steel sheet for hot pressing a plating layer II containing 10 to 25% by mass of Ni and the remainder consisting of Zn and inevitable impurities – reading upon a Ni-coated layer as this layer comprises nickel (Nakajima, paragraph [0014]).
However, Nakajima is silent concerning the diffusion alloy layer having a peak Vickers Hardness of 1.50 times of more a Vickers hardness of the surface layer of the Ni-coated layer nor does Nakajima disclose where the diffusion alloy layer having a peak Vickers Hardness of 2.00 times of less a Vickers hardness of the surface layer of the Ni-coated layer as required by claim 5.
Nevertheless, Nakajima discloses a substantially identical method of forming these layers where both the first and second plating layers are formed using a current density of 5 to 100 A/dm2 (Nakajima, paragraph [0059]) overlapping the disclosed ranges in claim 3 of 60 to 100 A/dm2 and 40 A/dm2. Nakajima discloses where coating mass of the first plating layer is 0.01 to 5 g/m2 and the coating mass of the second plating layer is 10 to 90 g/m2 (Nakajima, paragraph [0014]). As Nakajima discloses that the first plating layer is 60% or more Ni this means that the range of Ni coating mass is 0.006 to 5 g/m2. Likewise, as Nakajima discloses the second plating layer is 10-25% mass Ni, this means the range of Ni coating mass for the second layer is 1 to 22.5 g/m2 overlapping the disclosed coating weights of 1 to 10 g/m2 and 2 g/m2 or more respectively. Nakajima also discloses a heat treatment in a temperature range of Ac.sub.3 transformation point to 1000.degree. C (Nakajima, paragraph [0017]) reading upon annealing the base steel sheet after coating. As Nakajima discloses a substantially identical method of making a sheet with two nickel coatings, one of ordinary skill would expect the same method applied to the same materials to produce a diffusion alloy layer with the same properties of having a hardness of 1.5 times of more and 2.0 times or less of the hardness of the Ni-coated layer. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (emphasis added), see MPEP § 2112.01(I).
Nakajima discloses where coating mass of the first plating layer is 0.01 to 5 g/m2 and the coating mass of the second plating layer is 10 to 90 g/m2 (Nakajima, paragraph [0014]). As Nakajima discloses that the first plating layer is 60% or more Ni this means that the range of Ni coating mass is 0.006 to 5 g/m2. Likewise, as Nakajima discloses the second plating layer is 10-25% mass Ni, this means the range of Ni coating mass for the second layer is 1 to 22.5 g/m2. Therefore the overall mass of Ni per a surface is 1.006 to 27.5 g/m2, overlapping the range of 50g/m2 or less and 12g/m2 or more. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed Ni coating weight over the prior art disclosure since the prior art teaches this amount of coating produces corrosion resistance (Nakajima, paragraph [0022]) throughout the disclosed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) . See MPEP § 2144.05 I.
Response to Declaration under 37 C.F.R. 1.132
The declaration under 37 CFR 1.132 filed 4/30/26 is insufficient to overcome the rejection of claims 1 and 5 based upon 35 USC § 103 as set forth in the last Office action for the following reasons..
The Declarant is one of the named inventor in the instant application and argues that the Zn-Ni alloying system in Nakajima and the claimed Ni-Fe diffusion layer are metallurgically distinct as evidenced by the included Hall and Sadananda references (Declaration 4/30/26, pg. 3, 3rd paragraph). Declarant argues that Hall discloses that a Zn-Ni alloy coating is not merely a metal layering process but an independent metallurgical system involving the formation of alloy phases and Hall does not disclose or suggest the concept of utilizing mechanical hardness distribution in the diffusion layer (Declaration 4/30/26, pg. 2, 3rd paragraph).
However, while Hall relates to Zinc-Nickel coatings and does show the differences in the metallurgical structure of the coatings, there is nothing that teaches away from diffusion of the elements into the base steel sheet thereby forming a diffusion alloy layer. There is nothing in Hall that relates to the instant disclosed method of forming the coating in the instant application and the matching method disclosed in Nakajima of two stages of Ni coating with differing current densities followed by annealing after the second coating. Thus, Hall fails to demonstrate that this substantially identical method in Nakajima would not produce a coated steel sheet with the same properties.
Further, Hall also notes that lower amounts of Ni in the Ni-Zn coating results in lower hardness values for the coating (Hall, pg. 62, Fig. 3). Thus, this supports the finding in the rejection that the secondary nickel coating in Nakajima with it’s lower Ni concentration would have a peak Vickers hardness of 1.50 times or more a Vickers hardness.
Declarant argues that Sadananda distinguishes Zn-Ni-based coatings from Ni-based coatings as metallurgically distinct systems and this article does not teach or suggest the concept of using localized mechanical hardness peaks formed inside the diffusion layer as a design criterion for material properties (Declaration 4/30/26, pg. 2, 4th paragraph).
However, the claims are not directed to a Ni-based coating nor is there definition for Ni coating the in claims or specification in the instant specification that excludes a nickel coating that includes zinc as a component. While paragraph [0038] of the specification has an optional composition for the coating, the disclosure does not disclose whether the percentage is in weight, volume, atomic or some other percentage. While art such as Sadananda may group coatings into different areas, this does not apply to the instant disclosure (and associated method claims) which do not disclose a required composition for the Ni coated layer nor do they exclude the inclusion of zinc.
Further, there is nothing specific in the Sadananda reference which relates to the instant disclosed method of forming the coating in the instant application and the matching method disclosed in Nakajima of two stages of Ni coating with differing current densities followed by annealing after the second coating. All that is mentioned in Sadananda is that electroplating is used and there is no reference to a multistage process followed by annealing (Sadananda, pg. 492, section 2.4). As such there is nothing of record in Sadananda to show that the substantially identical method disclosed in Nakajima would produce patentably indistinct properties.
Thus while Declarant argues that Hall and Sadananda would recognize the Zn-Ni coating system in Nakajima to be metallurgically distinct from the instantly claimed Ni-Fe diffusion alloy layer system and thus would not arrive where this diffusion alloy layer forms a hardness peak of 1.5 times ore more than a surface of the Ni-coating layer (Declaration 4/30/26, pg. 3, 3rd – 4th paragraphs), this is not borne out by the references. Neither reference relates to a method of plating involving a two stage electrodeposition with differing current densities followed by annealing. Further the Hall reference also teaches that lower amounts of Ni in a Ni-Zn coating layer reduces the hardness of the coating. As such, there is no evidence of record that the substantially identical method disclosed in Nakajima would not produce the same properties as instantly claimed. Thus, in view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Response to Arguments
With respect to the 102/103 rejection over Kuruma, it is agreed that Kuruma discloses where the nickel-phosphorus alloy plating layer has an average thickness of 10 µm (Kuruma, col 9, lines 65-66) and where the nickel-phosphorus alloy is 10 wt% P (Kuruma, col 10, lines 34-37), meaning the remainder of the alloy is Ni at 90 wt%. As such Kuruma is disclosing a Ni coating weight of 81 g/m2, falling outside the instant claimed range for Ni coating weight of 12 to 50 g/m2. Therefore the rejection is withdrawn.
With respect to the 103 rejection over Nakajima, applicant argues that the maximum amount of coating in the Nakajima examples is 10.85 g/m2 and neither discloses any examples with 12 g/m2 or more, nor any superior effects from this higher coating amount (Applicant’s remarks, pg. 5, 3rd paragraph).
However, "the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004), see MPEP § 2141.02(VI). "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)), see MPEP § 2123(I). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971), see MPEP§ 2123(II). In the instant case, as Nakajima discloses an overlapping range for the Ni coating amount, it is obvious to select within these overlapping ranges to reach the claimed invention. The disclosure mere disclosure of examples that do not fall within the claimed ranges do not teach away from the broader disclosure in Nakajima which overlaps the claimed invention.
Applicant also argues that the coating layer in Nakajima is a Ni-Zn plating whereas the instant claims are directed to a Ni-coated steel sheet which is metallurgically distinct for the reasons stated in the Rule 132 declaration (Applicant’s remarks, pg. 5, last two paragraphs). Applicant argues that Nakajima does not disclose the concept of controlling the hardness distribution inside the diffusion layer (Applicant’s remarks, pg. 6, 1st paragraph). Applicant argues that a person of ordinary skill would understand that a Zn-Ni alloy coating system would be metallurgically distinct from the claimed Ni-Fe diffusion layer as shown by Hall and Sadananda and as such a person of ordinary skill would not expect the coating in Nakajima to exhibit the same properties as the claimed invention (Applicant’s remarks, pg. 6, 2nd – 4th paragraphs).
However, as addressed above in the response to the 37 C.F.R. 1.132 Declaration, the disclosed method of making the claimed invention is not directed to a Ni-based coating, but merely to a coating which contains nickel and neither of the cited references relates to the method outlined in the instant application and substantially mirrored in Nakajima. As Nakajima discloses a coating material which matches the disclosed method of production and applies the substantially identical method thereto, one of ordinary skill would expect the same method applied to the same material to produce a product with the same properties. Thus, applicant’s arguments are not persuasive and the rejection is maintained.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Joshua S Carpenter whose telephone number is (571)272-2724. The examiner can normally be reached Monday - Friday 8:00 am - 5:30 pm.
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/JOSHUA S CARPENTER/Examiner, Art Unit 1733
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
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