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 .
DETAILED ACTION
Status of Claims
Responsive to the amendment filed 16 December 2025, claim 1 is amended and claims 4-5 and 7-8 are cancelled. Claims 1-3,6, and 9-10 are currently under examination.
Status of Previous Rejections
Responsive to the amendment filed 16 December 2025 the rejections based on Otomo are withdrawn. New grounds of rejection are presented.
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 2-3 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.
Claim 2 recites that the substrate has a composition of 0.1-0.8% of C. However independent claim 1 requires that C is present at 0.22-0.25%. Claim 2 is outside the scope of claim 1. The point of infringement of claim 2 cannot be determined, and the claim is indefinite.
Claim 3 recites that the substrate has a composition of 0.01-1.0% of Cr. However independent claim 1 requires that Cr is present at 0.11-0.20%. Claim 3 is outside the scope of claim 1. The point of infringement of claim 3 cannot be determined, and the claim is indefinite.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2-3 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 2 recites that the substrate has a composition of 0.1-0.8% of C. However independent claim 1 requires that C is present at 0.22-0.25%. Claim 2 is outside the scope of claim 1. Claim 2 fails to further limit any claim.
Claim 3 recites that the substrate has a composition of 0.01-1.0% of Cr. However independent claim 1 requires that Cr is present at 0.11-0.20%. Claim 3 is outside the scope of claim 1. Claim 3 fails to further limit any claim.
Allowable Subject Matter
Claims 1, 6, and 9-10 are allowed.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
The following is an examiner’s statement of reasons for allowance: Applicant’s amendment and arguments are sufficient to overcome the rejections based on Otomo. The prior art fails to teach or fairly suggest the method of claim 1, requiring the steel composition, heating temperature, cooling temperature, and cooling rate, along with the claimed coating weight.
In the remarks of 16 December 2025, applicant argues that the prior art Otomo teaches that the amount of Si should be at least 0.5%. Applicant argues that this is outside of the claimed range (pp. 7-8). Applicant argues that the features of the claimed invention are critical in order to achieve a crack-free coating, when the weight of a coating is greater than 50 g/m2. More specifically, applicant argues that the instant Examples 1-3 are not exemplary of the invention as now claimed, having a lower coating thickness.
Applicant’s arguments, in conjunction with the amendment, are persuasive. Other prior art is not considered to be as close to claim 1 as Otomo.
When all of the evidence is considered as a whole, the evidence of obviousness is outweighed by evidence of patentability. Each of claims 6 and 9-10 depends from claim 1 and is also allowable.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 CHRISTOPHER S KESSLER whose telephone number is (571)272-6510. The examiner can normally be reached 9-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curt Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CHRISTOPHER S. KESSLER
Primary Examiner
Art Unit 1734
/CHRISTOPHER S KESSLER/ Examiner, Art Unit 1759
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