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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/21/25 has been entered.
Status of Claims
Claims 1-2 and 5-6 are examined in this office action as claims 3-4 are withdrawn and claim 1 was amended in the reply dated 11/21/25.
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 § 102/103
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 and 5 are rejected under 35 U.S.C. 102((a)(1) or (a)(2)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 5100739 A of Kuruma.
As to claim 1, Kuruma discloses a steel sheet (Kuruma, col 9, line 45), reading upon base steel sheet. Kuruma discloses where the steel sheet has a nickel-phosphorus alloy plating layer as a lower layer (Kuruma, col 9, lines 67-68), reading upon diffusion alloy layer as this is an alloy layer which is capable of diffusing with the base steel sheet and as Kuruma discloses a heat treatment of the plated metal sheet (Kuruma, col 9, lines 14-16) the nickel and iron would naturally diffuse and create a Ni-Fe diffusion layer.
In the alternative, as Kuruma discloses a substantially identical method of forming a diffusion layer, namely providing multiple layers of nickel coating on a steel sheet followed by heat treatment, this matches the method of forming the diffusion layer disclosed by applicant in claim 3 and therefore a person of ordinary skill would expect the same method applied to the same materials to produce the same result. “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).
Kuruma discloses where the steel sheet has a composite nickel plating layer as an upper layer (Kuruma, col 10, lines 18-19), reading upon a Ni-coated layer disposed on the diffusion alloy layer as this is a layer containing Ni. Kuruma discloses where the nickel–phosphorus layer has a Vickers hardness of 700 HV while the composite nickel plating layer has a Vickers hardness of 200 HV (Kuruma, col 10, lines 38-45), thus Kuruma is disclosing where the diffusion layer has a hardness peak of 3.5 times the Ni-coated layer disposed on the diffusion alloy layer, meeting the claim limitation of the peak Vickers hardness of the diffusion layer being 1.50 times or more of the Vickers hardness of the surface layer of the Ni-coated layer.
As to claim 5, Kuruma discloses where the steel sheet has a composite nickel plating layer as an upper layer (Kuruma, col 12, lines 15-18), reading upon a Ni-coated layer disposed on the diffusion alloy layer as this is a layer containing Ni. Kuruma discloses where the nickel–phosphorus layer has a Vickers hardness of 700 HV while the composite nickel plating layer has a Vickers hardness of 400 HV (Kuruma, col 12, lines 38-50), thus Kuruma is disclosing where the diffusion layer has a hardness peak of 1.75 times the Ni-coated layer disposed on the diffusion alloy layer, meeting the claim limitation of the peak Vickers hardness of the diffusion layer being 1.50 times or more and 2.00 times or less of the Vickers hardness of the surface layer of the Ni-coated layer.
Claim 2 is rejected under 35 U.S.C. 102((a)(1) or (a)(2)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 5100739 A of Kuruma with further evidentiary reference to “Nickel Phosphorus Alloy” of American Elements.
As to claim 2, Kuruma discloses where the nickel-phosphorus alloy plating layer has an average thickness of 10 µm (Kuruma, col 9, lines 65-66). Kuruma also discloses 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%.
American Elements evidences that the density of Nickel-Phosphorus Alloy with 10 wt% P is 9.0 g/cm3 (American Elements, pg. 1).
Thus, the coating weight per area can be calculated as follows:
For every cm2 of area of coating there would be 0.001 cm3 of volume of coating as 10 µm = 0.001 cm and 1 cm2 x 0.001 cm = 0.001 cm3
This means for every square centimeter of coating, there would be 0.009 g of Ni-P alloy as 9.0 g/cm3 x 0.001 cm3/cm2 = 0.009 g / cm2
As 1 m2 = 10000 cm2, this means there is 90 g of Ni-P alloy per square meter of coating as 10000 cm2/m2 x 0.009 g/cm2 = 90 g/m2.
Finally, as Ni makes up 90% of the alloy by weight, this means that the Ni coating weight per surface is 81 g/m2 as 90 g/m2 x .9 = 81 g/m2.
Therefore, Kuruma discloses a Ni coating weight of 81 g/m2, meeting the claim limitation of 10 g/m2 or greater.
Claim Rejections - 35 USC § 103
Claims 1-2 and 5-6 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).
As to claims 2 and 6, 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, falling within the claim 6 range of 50g/m2 or less and overlapping the claim 2 range of 10g/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 Arguments
With respect to the 112(a) rejection, it is agreed that applicant’s amendment to remove the composition from the diffusion alloy layer and the layer of Ni coating cures the written description issue and therefore the rejection is withdrawn. However, as this broadens the scope of the claims, Kuruma and Nakajima read upon the instant limitations for the reasons stated in the rejections above.
Conclusion
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/JOSHUA S CARPENTER/Examiner, Art Unit 1733
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733