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 .
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 and 4-6 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, the claim requires that the conversion layer only be provided at the thickest portion, but, when applied, there is impliedly no thickest portion since the thickest portion only impliedly arises due to subsequent cold-rolling. So, it is unclear what is being claimed. Should the claim refer to “region(s) that become the thickest sheet portion”?
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.
Claim 12 is 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. Regarding Claim 12, previous Claim 7 demands providing layer only in thickest region(s), whereas this claim requires “at least” in such region. The claim implies that there could be coverage elsewhere, which Claim 7 precludes or the claim could be understood to repeat the requirement of Claim 7, rendering, in either case, the claim to fail to properly further limit previous Claim 7. 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 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) 7-12, 18, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bohmer DE102015122410A1 in view of Applicant’s Admissions in view of BEIER WO 2018/153755, as translated by USPA 2020/0232057. Bohmer teaches press-form hardening parts from steel sheets formed by TRB and TWB wherein sheets have different thicknesses and qualities/strengths (paragraph 2). Bohmer teaches providing aluminum-based coating thereon (paragraph 15). Moreover, Applicant’s Admissions teach that starting blanks in Bohmer have aluminum-based coating (bottom page 2). Thus, it would have been obvious to one of ordinary skill in the art before the time of filing to provide aluminum-based coating over entirety of starting blank substrate which would include providing on sections of different thicknesses. However, Bohmer does not teach further provision of iron-containing conversion layer. Beier teaches provision of iron-containing conversion layer (paragraph 24) on aluminum-base coated steel (paragraphs 21 and 22) that is to be press-form hardened (paragraph 25) wherein claimed amount of iron is used (paragraph 24). Beier teaches that doing so provides improved press-hardened component performance (paragraph 21). It would have been obvious to one of ordinary skill in the art before the time of filing to provide Beier’s iron-containing conversion layer on the starting blanks in Bohmer in order to obtain improved press-hardened component performance in formed components. Beier does not teach coating only the thickest portion. However, Beier teaches that full coating can be provided or “not necessarily covering top layer” can be provided (paragraph 23). Beier teaches that treatment can be provided on only part of surface (paragraph 42). Beier teaches that only some portion of blank needs to be heated to press-forming temperature (paragraph 25: “at least in regions”). Beier teaches that conversion coating leads to good corrosion resistance in formed product (paragraph 21). It would have been obvious to one of ordinary skill in the art before the time of filing to provide conversion coating on only part of surface as suggested expressly by Beier and to save coating material and costs and coating process time by coating a part of a surface rather than an entire surface. It would have been obvious to one of ordinary skill in the art before the time of filing to provide coating only on thickest portions for several reasons. It would have been obvious to provide coating only on the thickest regions when only the thickest region is in need of best post forming corrosion protection, such as when the thickest region is to be the region exposed to corrosive environment, when only the thickest region is being subject to high press-forming temperatures, or when the thinner regions, were they to be coated, could be deleteriously affected regarding post-forming dimensional tolerance since coating represents greater relative thickness of region as compared to thicker region. KSR(D) also supports the conclusion of obviousness. Bohmer in view of Applicant’s Admissions teaches aluminum coated steel of different thickness portions. Beier teaches conversion coated aluminum steel as base product that can be differentially coated. One of ordinary skill in the art would recognize that coating the thickest portion only would predictably confer the benefit of Beier’s coating only to the thickest portion of the base material which would be acceptable in the circumstances discussed above and which would achieve the savings benefits of partial coatings. See MPEP 2143(D). Regarding Claim 8, Bohmer teaches forming blank from TRB having aluminum-based coating thereon. Bohmer may not teach that the aluminum-based coating was applied before or after rolling, but the resulting article would be expected to be indistinguishable. As well, it would have been obvious to one of ordinary skill in the art before the time of filing to apply the aluminum-based coating after rolling since such coating provision is taught in Bohmer as being needed in oxide-forming environment (paragraph 17), which is understood to mean when press-forming is to occur. Regarding Claim 9, Bohmer teaches forming blank from TWB having aluminum-based coating thereon. Bohmer may not teach that the aluminum-based coating was applied before or after welding, but the resulting article would be expected to be indistinguishable. As well, it would have been obvious to one of ordinary skill in the art before the time of filing to apply the aluminum-based coating after welding since such coating provision is taught in Bohmer as being needed in oxide-forming environment (paragraph 17), which is understood to mean when press-forming is to occur. Regarding Claim 10, Bohmer teaches using 22MnB5 and lower strength ZStE alloys, rendering obvious these combinations (paragraphs 15 and 17). The suggested 22MnB5 has strength of 575 MPa. See Tata Steel, “22MnB5: Ultra high strength after heat treatment for weight reduction of complex parts” (2022, no month), downloaded from https://productstatasteelnederland.com on 30 Sept. 2025 (two pages). ZStE alloys have lower tensile strengths by more than 50 MPa. See Freier USPA 2003/0145919 (Table 2). It also would have been obvious to one of ordinary skill in the art before the time of filing to use any ZStE alloy of lower tensile strength, including those in the claimed range, since Bohmer suggests using lower strength alloys than 22MnB5, which would include those in the claimed range. Regarding Claim 11, Bohmer teaches using these steels (paragraph 15: 22MnB5), rendering their use obvious. Regarding Claims 12, 18, and 19, Beier suggests these ranges as effective (paragraph 24), rendering their use obvious. See MPEP 2144.05.
Claim(s) 3 and 23-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bohmer DE102015122410A1 in view of Applicant’s Admissions in view of BEIER WO 2018/153755, as translated by USPA 2020/0232057, in view of Vila I Ferrer USPA 2018/0236600. Bohmer teaches press-form hardening parts from steel sheets formed by TRB and TWB wherein sheets have different thicknesses and qualities (paragraph 2). Bohmer teaches providing aluminum-based coating thereon (paragraph 15). Moreover, Applicant’s Admissions teach that starting blanks in Bohmer have aluminum-based coating (bottom page 2). However, Bohmer does not specify that aluminum-based coating is applied prior to welding. Vila I Ferrer teaches, in TWB, the aluminum coating can be applied before welding (paragraph 20; and Claim 1). Thus, it would have been obvious to one of ordinary skill in the art before the time of filing to provide aluminum-based coating over each starting blank to be joined by welding as an effective means of forming a TWB which would include providing on sections of different thicknesses. However, Bohmer does not teach further provision of iron-containing conversion layer. Beier teaches provision of iron-containing conversion layer (paragraph 24) on aluminum-base coated steel (paragraphs 21 and 22) that is to be press-form hardened (paragraph 25) wherein claimed amount of iron is used (paragraph 24). Beier teaches that doing so provides improved press-hardened component performance (paragraph 21). It would have been obvious to one of ordinary skill in the art before the time of filing to provide Beier’s iron-containing conversion layer on the starting blanks in Bohmer in view of Vila I Ferrer order to obtain improved press-hardened component performance in formed components. Beier does not teach coating only the thickest portion. However, Beier teaches that full coating can be provided or “not necessarily covering top layer” can be provided (paragraph 23). Beier teaches that treatment can be provided on only part of surface (paragraph 42). Beier teaches that only some portion of blank needs to be heated to press-forming temperature (paragraph 25: “at least in regions”). Beier teaches that conversion coating leads to good corrosion resistance in formed product (paragraph 21). It would have been obvious to one of ordinary skill in the art before the time of filing to provide conversion coating on only part of surface as suggested expressly by Beier and to save coating material and costs and coating process time by coating a part of a surface rather than an entire surface. It would have been obvious to one of ordinary skill in the art before the time of filing to provide coating only on thickest portions for several reasons. It would have been obvious to provide coating only on the thickest regions when only the thickest region is in need of best post forming corrosion protection, such as when the thickest region is to be the region exposed to corrosive environment, when only the thickest region is being subject to high press-forming temperatures, or when the thinner regions, were they to be coated, could be deleteriously affected regarding post-forming dimensional tolerance since coating represents greater relative thickness of region as compared to thicker region. KSR(D) also supports the conclusion of obviousness. Bohmer in view of Applicant’s Admissions teaches aluminum coated steel of different thickness portions. Beier teaches conversion coated aluminum steel as base product that can be differentially coated. One of ordinary skill in the art would recognize that coating the thickest portion only would predictably confer the benefit of Beier’s coating only to the thickest portion of the base material which would be acceptable in the circumstances discussed above and which would achieve the savings benefits of partial coatings. See MPEP 2143(D). Regarding Claim 23, Beier’s suggested range overlaps the claimed range, rendering it obvious (paragraph 24). See MPEP 2144.05. Regarding Claim 24, Beier teaches provision of iron-containing conversion layer (paragraph 24) wherein layer is formed by solution of iron as claimed (paragraph 34) in Claim 24, rendering obvious this product-by-process limitation.
Claim(s) 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bohmer DE102015122410A1 in view of Applicant’s Admissions in view of BEIER WO 2018/153755, as translated by USPA 2020/0232057, in view of Vila I Ferrer USPA 2018/0236600 in view of Palzer WO 2018/050637, as translated by Palzer USPA 2021/0140008. Bohmer in view of Applicant’s Admissions in view of BEIER in view of Vila I Ferrer in view of Palzer is relied upon as above. The combination does not teach thickness relationship of Claim 25. Palzer teaches that effective TRB can have 50 % thickness (paragraph 2). It would have been obvious to one of ordinary skill in the art before the time of filing to form TRB with anywhere from 50 % or greater, which substantially covers the claimed range, thickness differences since they are characterized as being effective respective portions of thickness for blank as taught by Palzer.
Claim(s) 1, 2, 4, and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bohmer DE102015122410A1 in view of Applicant’s Admissions in view of BEIER WO 2018/153755, as translated by USPA 2020/0232057, in view of Schneider USPA 2018/0243808. Bohmer teaches press-form hardening parts from steel sheets formed by TRB and TWB wherein sheets have different thicknesses and qualities (paragraph 2). Bohmer teaches providing aluminum-based coating thereon (paragraph 15). Moreover, Applicant’s Admissions teach that starting blanks in Bohmer have aluminum-based coating (bottom page 2). Bohmer teaches that steel strip is cold-rolled to form TRB (paragraph 2). However, Bohmer does not specify that the aluminum coating is provided before forming TRB or that aluminum coating and iron-based coating are applied before forming TRB. Schneider teaches that protective coatings can be applied before forming TRB (paragraphs 20 and 65). Thus, it would have been obvious to one of ordinary skill in the art before the time of filing to provide aluminum-based coating over entirety of starting blank substrate to be rolled to form TRB. However, Bohmer does not teach further provision of iron-containing conversion layer. Beier teaches provision of iron-containing conversion layer (paragraph 24) on aluminum-base coated steel (paragraphs 21 and 22) that is to be press-form hardened (paragraph 25) wherein claimed amount of iron is used (paragraph 24) and wherein layer is formed by solution of iron as claimed (paragraph 34) in Claim 5. Beier teaches that doing so provides improved press-hardened component performance (paragraph 21). It would have been obvious to one of ordinary skill in the art before the time of filing to provide Beier’s iron-containing conversion layer on the aluminum coating of the strip to be rolled to form TRB in Bohmer or on the aluminum coating after forming by TRB since Schneider teaches providing protective coating can be performed at either stage and since Beier teaches that layer improves corrosion protection for improved press-hardened component performance in formed components. Beier does not teach coating only the thickest portion. However, Beier teaches that full coating can be provided or “not necessarily covering top layer” can be provided (paragraph 23). Beier teaches that treatment can be provided on only part of surface (paragraph 42). Beier teaches that only some portion of blank needs to be heated to press-forming temperature (paragraph 25: “at least in regions”). Beier teaches that conversion coating leads to good corrosion resistance in formed product (paragraph 21). It would have been obvious to one of ordinary skill in the art before the time of filing to provide conversion coating on only part of surface as suggested expressly by Beier and to save coating material and costs and coating process time by coating a part of a surface rather than an entire surface. It would have been obvious to one of ordinary skill in the art before the time of filing to provide coating only on thickest portions for several reasons. It would have been obvious to provide coating only on the thickest regions when only the thickest region is in need of best post forming corrosion protection, such as when the thickest region is to be the region exposed to corrosive environment, when only the thickest region is being subject to high press-forming temperatures, or when the thinner regions, were they to be coated, could be deleteriously affected regarding post-forming dimensional tolerance since coating represents greater relative thickness of region as compared to thicker region. KSR(D) also supports the conclusion of obviousness. Bohmer in view of Applicant’s Admissions teaches aluminum coated steel of different thickness portions. Beier teaches conversion coated aluminum steel as base product that can be differentially coated. One of ordinary skill in the art would recognize that coating the thickest portion only would predictably confer the benefit of Beier’s coating only to the thickest portion of the base material which would be acceptable in the circumstances discussed above and which would achieve the savings benefits of partial coatings. See MPEP 2143(D). Regarding “cutting” step, both Bohmer and Schneider explain that the blank with different thickness parts is what is to be press-formed, and so cutting as claimed is what is needed to obtain suitable blank for press-forming, thereby rendering obvious the “cutting” step. See Schneider (Figures 1-5: Element “2”). Regarding Claim 4, Beier suggests these ranges as effective (paragraph 24), rendering their use obvious. See MPEP 2144.05.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bohmer DE102015122410A1 in view of Applicant’s Admissions in view of BEIER WO 2018/153755, as translated by USPA 2020/0232057, in view of Schneider USPA 2018/0243808 in view of Palzer WO 2018/050637, as translated by Palzer USPA 2021/0140008. Bohmer in view of Applicant’s Admsission in view of Beier in view of Schneider is relied upon as immediately above. These teachings do not define thickness relationship of Claim 6. Palzer teaches that effective TRB can have 50 % thickness (paragraph 2). It would have been obvious to one of ordinary skill in the art before the time of filing to form TRB with anywhere from 50 % or greater, which substantially covers the claimed range, thickness differences since they are characterized as being effective respective portions of thickness for blank as taught by Palzer.
Response to Amendment
In view of applicant’s amendments and arguments, applicant traverses the section 103 rejection over Bohmer in view of Applicant’s Admissions in view of Beier, the section 103 rejection over Bohmer in view of Applicant’s Admissions in view of Beier in view of Vila I Ferrer, the section 103 rejection over Bohmer in view of Applicant’s Admissions in view of Beier in view of Schneider, and the section 103 rejection over Bohmer in view of Applicant’s Admissions in view of Beier in view of Schneider in view of Palzer of the Office Action mailed on 2 October 2025. Applicant argues that Beier teaches applying conversion coating with uniform thickness, which would not result in a conversion coating only applied to the thickest portion, as now claimed. Beier also teaches partial coating (paragraph 42). Rejections are maintained as revised so as to address applicant’s amendments.
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 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.
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/MICHAEL E. LA VILLA/Primary Examiner, Art Unit 1784 23 May 2026
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