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 Status
This office action is in response to amendments/arguments filed 01/01/2026. Claim(s) 1 are currently amended. The amendments are supported by the specification and the original claims, and no new matter has been entered. Claim(s) 5 remain canceled. Claim(s) 2-4 and 6 stand as originally or as previously presented. claim(s) 1-4 and 6 are examined in this office action.
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.
Claims 1-4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over KIM KWANG MIN (KR 20170035374 A) in view of Martines (WO 2014155341 A1, EP 2978879 B1 is used as an equivalent).
Regarding claim 1: KIM KWANG MIN teaches a method for manufacturing a stainless steel for a
polymer electrolyte membrane fuel cell separator (Para. [0003]), the method comprising: performing
alternating current electrolysis by immersing (Para. [0139]), in a sulfuric acid solution, a stainless steel
having a passivation coating on a surface thereof formed by cold rolling and bright annealing (Para. [0059]), wherein the alternating current electrolysis is performed by applying a current density of 10 to 30 A/dm2 (Para. [0024]).
Regarding claim 1, the complete discussion of KIM KWANG MIN as applied to claim 1 is incorporated herein. However, KIM KWANG MIN is silent about the current density of 10 to 30 A/dm2 (Para. [0024]), a duration of 10 seconds, or a frequency of 60-90 Hz.
Martines teaches a method for treating a stainless steel in a sulfuric acid solution [0001], wherein an alternating current is run at a current density between 5 A/dm2 and 60 A/dm2 and a frequency of between 5 Hz and 150 Hz, for a duration of 3-40 seconds (claim 7), encompassing the claimed ranges.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified KIM KWANG MIN current density with Martines’ current density of 5 A/dm2 to 60 A/dm2 (claim 7) as applying such a time period would have provided predictable results, since both KIM KWANG MIN and Martines both pertain to electrolytic treatment of steel. See MPEP 2141 III (A).
Examiner takes note of the fact that the prior art range of 5 A/dm2 to 60 A/dm2 of current density with respect to the current electrolysis overlaps the claimed range of 30 A/dm2 or less. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Cir. 2003). MPEP 2144.05.
KIM KWANG MIN is silent about the current density is within 10 seconds.
Martines teaches a method for treating a stainless steel in a sulfuric acid solution [0001], wherein an alternating current is run at a current density between 5 A/dm2 and 60 A/dm2 and a frequency of between 5 Hz and 150 Hz, for a duration of 3-40 seconds (claim 7), It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified KIM KWANG MIN current density with Martines current density at 3-40 seconds or less (claim 7as applying such a time period would have provided predictable results, since both KIM KWANG MIN and Martines both pertain to electrolytic treatment of steel. See MPEP 2141 III (A).
Martines discloses 3-40 seconds or less which overlaps the instantly claimed range of within 10 seconds and therefore establishes a case of prima facie obviousness. See MPEP 2144.05 I. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to routinely select the claimed range from amongst the overlapping portions of the claimed and broader prior art ranges (see above).
KIM KWANG MIN is silent about the frequency of the alternating current electrolysis, however Martines discloses a frequency of between 5 and 150 Hz, overlapping and encompassing the claimed range. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified KIM KWANG MIN to use the frequency of Martines, as doing so would have yielded predictable results since both KIM KWANG MIN and Martines both pertain to electrolytic treatment of steel. See MPEP 2141 III (A).
After this is done, it would have been obvious to routinely select a frequency from amongst the overlapping portions of the claimed and the prior art ranges because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness (see MPEP 2144.05(1)). This would result in a method according to the frequency of the instant claim 1.
KIM KWANG MIN does not disclose that a process of immersing the stainless steel in a mixed acid bath after the alternating current electrolysis is not performed, as [0024] discloses a third film modification step after electrolysis of immersing in a mixed acid solution containing nitric acid and hydrofluoric acid. However, alternative film modification methods were known in the art before the effective filing date of the claimed invention and would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to implement in the method of KIM KWANG MIN.
For example, Martines, which discloses a similar method for treating a stainless steel in an acid solution with an alternating current (see above), also discloses a finishing step C which occurs after electrolysis involving subjecting the laminate to surface finishing and surface passivation treatment [0022], wherein the finishing step involves immersing the stainless steel in an acid bath containing “at least one mineral acid”, disclosing possible acids including, for example, nitric acid and hydrofluoric acid [0046], acids used by KIM KWANG MIN.
Martines however, discloses favorable alternatives to a mixed acid bath. For example, [0048] discloses that the acids to be used in the finishing step is selected as a function of the type of steel of the laminate. For example, [0056] discloses an embodiment which uses sulfuric acid and Fe3+ and Fe2+ ions, and discloses that hydrofluoric acid is only optionally used (in other words, there is an embodiment where only sulfuric acid and Fe ions are present, and there is an embodiment where Sulfuric acid, Fe ions, and hydrofluoric acid is present. When only sulfuric acid and Fe ions are present, a single acid bath is used and not a mixed acid bath, fulfilling the claim limitations). [0060] and [0066] discloses that the process is compatible with cold rolled ferritic steels, which is the laminate used by KIM KWANG MIN (see [0114]), and discloses favorable concentrations of sulfuric acid and Fe ions for such laminates (and concentrations for hydrofluoric acid, in the cases where it is used). [0069] discloses that finishing solutions that do not comprise nitric acid are particularly preferred, as this reduces the environmental impact of polluting gas caused by the use of nitric acid. Additionally, [0067] discloses an embodiment wherein nitric acid is used as a single acid alongside Fe ions, with [0067] disclosing that this process is particularly preferred in the case of ferritic cold rolled laminates (which is the laminate used by KIM KWANG MIN, see above).
As a result, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use a single acid rather than a mixed acid for the acid bath for the finishing surface modifying step after alternating current electrolysis is performed, either using a solution of sulfuric acid with Fe ions or nitric acid with Fe ions. A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to do this to obtain a method which favorably avoids the use of nitric acid, reducing environmental impact, or which is particularly preferable for the type of laminate used by KIM KWANG MIN, as taught by Martines, which would result in a method according to the instant claim 1.
Regarding claim 2: KIM KWANG MIN teaches the stainless steel comprises, in percent by weight (wt.%) (Para. [0041]), more than 0% and not more than 0.10% of C (Para. [0043]), more than 0% and not more than 0.3% of N (Para. [0043]), more than 0% and not more than 0.7% of Si (Para. [0044]), more than 0% and not more than 10% of Mn (Para. [0045]), more than 0% and not more than 0.04% of P (Para. [0046]), more than 0% and not more than 0.02% of S (Para. [0047]), 15 to 34% of Cr (Para. [0048]), 25% or less of Ni (Para. [0054]), and the remainder of Fe and other inevitable impurities (Para. [0048]).
Regarding claim 3: KIM KWANG MIN teaches a concentration of the sulfuric acid solution is from 50 to 300 g/l (Para. [0028]).
Regarding claim 4: KIM KWANG MIN teaches a temperature of the sulfuric acid solution is from 40 to 80 deg C (Para. [0028]).
Regarding claim 6: KIM KWANG MIN teaches a contact resistance under a contact pressure of 100 N/cm2 is 12 mΩ·cm2 or less (Para. [0031]).
Response to Arguments
Applicant's arguments filed 07/21/2026 have been fully considered but they are not persuasive. This is because applicant claims that neither KIM KWANG MIN nor Martines suggests “wherein the method does not include immersing the stainless steel in a mixed-acid bath after the alternating current electrolysis”. However, as discussed in the claim 1 rejection above, Martines does disclose embodiments wherein the acid bath the stainless steel is immersed in after the alternating current electrolysis is a single acid bath, thus satisfying the claimed limitation, as well as reasons/motivations to use said single acid baths in the laminate of KIM KWANG MIN which would have been easily recognizable to a person of ordinary skill in the art before the effective filing date of the claimed invention. Further, a person of ordinary skill would have had a reasonable expectation of success when adapting the single acid bath of Martines for the laminate of KIM KWANG MIN because Martines discloses these single acid baths as preferable options for the type of laminate (cold-rolled ferritic steel) used by KIM KWANG MIN. As a result, applicant’s arguments, which are directed at attempting to establish that the combination of KIM KWANG MIN and Martines is improper for rendering obvious the limitations of the instant claim 1, are not found persuasive.
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 ZACKARY R COCHENOUR whose telephone number is (703)756-1480. The examiner can normally be reached 1-9:00PM ET.
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/ZACKARY RICHARD COCHENOUR/Examiner, Art Unit 1752
/NICHOLAS A SMITH/Supervisory Primary Examiner, Art Unit 1752
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