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 § 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.
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 1-3, 5-10 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Tan et al. (CN 109518114) (Tan) in view of Allely et al. (US 2018/0223409) and Schuhmacher et al. (US 2017/0073789) (Schuhmacher) taken in view of evidence by Maki et al. (US 2019/0160519) (Maki).
The examiner has provided a machine translation of CN 109518114, with the Office Action mailed 03/08/2024. The citation of prior art in the rejection refers to the provided machine translation.
In reference to claims 1-2, 7-9 and 23, Tan teaches a hot stamped part ([0008]) (corresponding to a thermoformed component). The part includes a steel plate coated with an aluminum-silicon alloy coating ([0010]). The steel plate coated with the aluminum-silicon alloy coating includes a substrate and an aluminum-silicon alloy coating on at least one surface thereof [0031]) (corresponding to a substrate layer and an aluminum coating coated on at least one surface of the substrate layer).
Tan further teaches the composition weight percentage of the substrate is: C: 0.04-0.8%, Si<1.2%, Mn: 0.1-5%, P<0.3%, S<0.1%, Al<0.3%, Ti<0.5%, B<0.1%, Cr<3%, and the rest are Fe and unavoidable impurities ([0031]) (corresponding to a mass percentage of chemical elements of the substrate layer is: C: 0.01~0.8%, Si: 0.05~1.0%, Mn: 0.1~5%, P≤0.3%, S≤0.1%, Al≤0.3%, Ti≤0.5%, B: 0.0005~0.1%, Cr: 0.01~3%, Nb≤0.5%, V≤0.5%, and a balance of Fe and other unavoidable impurities; the mass percentage of chemical elements of the substrate layer further meets at least one of the following: C: 0.05~0.6%, Si: 0.07~0.8%, Mn: 0.3~4%, P≤0.2%, S≤0.08%, Al≤0.2%, Ti≤0.4%, B: 0.0005~0.08%, Cr: 0.01~2%, Nb≤0.3%, V≤0.3%; the mass percentage of chemical elements of the substrate layer further meets at least one of the following: C: 0.15~0.5%, Si: 0.1~0.5%, Mn: 0.5~3%, P≤0.1%, S≤0.05%, Al≤0.1%, Ti≤0.2%, Cr: 0.01~1%). The substrate is mainly composed of martensite (i.e., greater than 50% martensite) ([0082]) (corresponding to a volume percentage of martensite in a microstructure of the substrate layer of the thermoformed component is ≥95%).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Tan further teaches the aluminum-silicon alloy coating of the hot stamped part includes a surface alloy layer and a diffusion layer. The ratio of the thickness of the diffusion layer to the thickness of the aluminum-silicon alloy coating is 0.08-0.5 ([0035]) (corresponding to the aluminum coating comprises a diffusion layer adjacent the substrate layer and an alloy layer on the surface of the aluminum coating, wherein a ratio of a thickness of the diffusion layer to a total thickness of the aluminum coating is 0.08-0.5). The diffusion layer and the surface alloy layer comprise Al in the aluminum-silicon alloy coating and Fe of the substrate ([0036]).
Given that the hot stamped part is substantially identical to the presently claimed thermoformed component in composition and formed by a substantially identical process as disclosed in the instant application’s Specification at pp. 8-9 (Tan, [0010]-[0030]), the hot stamped part of Tan would inherently include Fe2Al5, FeAl alloy, silicon oxide, aluminum oxide and iron oxide at the surface thereof.
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). See MPEP 2112.01 (I).
Tan does not explicitly teach (1) a mass percentage of chemical elements of the aluminum coating includes Mg: 0.5~10 mass% and (2) the hot stamped part has an average surface roughness Ra of 1.0-3.0 µm, a peak-to-valley height Rt of 18-30 µm and a roughness peak count Rpc ≥ 50/cm, as presently claimed.
With respect to (1), Tan teaches the weight percentage of the components of the aluminum-silicon alloy coating is Si: 4-14%, Fe: 0-4% and the balance is Al and inevitable impurities ([0032]) (corresponding to a mass percentage of chemical elements of the aluminum coating is: Si: 4~14%, Fe: 0~4% and a balance of Al and other unavoidable impurities; the mass percentage of chemical elements of the aluminum coating is: Si: 4~14%, Fe: 2~4% and the balance of Al and other unavoidable impurities).
Allely teaches a steel sheet coated with a metallic coating suited for the manufacture of automotive vehicles ([0001]). The metallic coating is an aluminum base coating ([0010]). Allely further teaches the coating comprises from 3.0 to 8.0% by weight of magnesium ([0027]). The addition of magnesium in the above range improves the anti-corrosion properties ([0027]).
In light of the motivation of Allely, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to include 3.0 to 8.0% by weight of magnesium in the aluminum-silicon alloy coating of Tan, in order to provide improved anti-corrosion properties.
With respect to (2), Schuhmacher teaches a three-dimensionally shaped steel component from a steel sheet which has a metallic coating and is heated and subsequently formed into the steel component by hot forming ([0001]). The coating has a base roughness Ra of 1-2.2µm and RPC = 100-120 which was very suitable for further processing, in particular painting ([0026]; [0032]). Schuhmacher further teaches that an optimal roughness leads to improved corrosion protection due to a reduced base roughness (Ra, Rz) and gives increased peak count (RPc) as a result of which adhesion of the surface coating applied in an electrophoretic coating process is improved ([0013]).
In light of the motivation of Schuhmacher, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the hot stamped part of Tan have a base roughness Ra of 1-2.2 µm and RPc of 100-120, in order to provide improved corrosion protection, suitability for painting and improved adhesion.
As evidence by Maki, when a material has a surface roughness Ra of 2 µm, Rt becomes about 20 µm for the material ([0018]). Thus, it is clear the hot stamped part of Tan in view of Allely and Schuhmacher having a surface roughness Ra of 1-2.2 µm and RPc of 100-120, will have a Rt within the overlapping range with the presently claimed when Ra is 2-2.2 µm (corresponding to a peak-to-valley height Rt is 18-30 µm).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Given that the hot stamped part of Tan in view of Allely and Schuhmacher is substantially identical to the present claimed thermoformed component in structure (i.e., Ra, Rt and RPc), it is clear that the hot stamped part of Tan in view of Allely and Schuhmacher intrinsically has a coating adhesion guaranteed by an uneven structure of the surface of the hot stamped part, and the coating adhesion of the hot stamped part tested according to GB/T 9286-1998 cross cut test method is Grade 1 or Grade 2.
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). See MPEP 2112.01 (I).
Further, while Tan in view of Allely and Schuhmacher teaches the part is hot stamped (i.e., thermoformed) (Tan, [0008]). However, it is noted the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
In reference to claim 3, Tan in view of Allely and Schuhmacher teaches the limitations of claim 2, as discussed above. Tan further teaches an average weight of the aluminum-silicon alloy coating is 58 to 105 g/m2 per single side ([0033]). Given that the weight of a coating is directly proportional to the coatings thickness, and the instant applications Specification discloses 20~100 g/m2 coating is suitable to produce a coating thickness of ≤ 60 µm, it is clear the aluminum-silicon alloy coating of Tan in view of Allely and Schuhmacher will have a thickness within the presently claimed range.
Further, given that Tan teaches the ratio of the thickness of the diffusion layer to the thickness of the aluminum-silicon alloy coating is 0.08-0.5 ([0035]), it is clear the thickness of the diffusion layer will fall within the presently claimed range (i.e., 100 g/m2 = 60 µm coating thickness and diffusion layer thickness is from 4.8 to 30 µm).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
In reference to claims 5 and 6, Tan in view of Allely and Schuhmacher teaches the limitations of claim 1, as discussed above. Tan further teaches an average weight of the aluminum-silicon alloy coating is 58 to 105 g/m2 per single side ([0033]) (corresponding to an average weight of the aluminum coating is 20~120 g/m2 per single surface; the average weight of the aluminum coating is 30~100 g/m2 per single surface).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
In reference to claim 10, Tan in view of Allely and Schuhmacher teaches the limitations of claim 1, as discussed above. Tan teaches the hot stamping component has a yield strength of 400-1300 MPa, a tensile strength of 500-2000 MPa, and an elongation of ≥4% ([0037]) (corresponding to a yield strength of the thermoformed component is 400~1400 MPa, a tensile strength is 500~2100 MPa, and an elongation is ≥4%).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Claims 1-3, 7-10 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (CN 106466697) (Liu) in view of Allely and Schuhmacher taken in view of evidence by Maki
The examiner has provided the machine translation of CN 106466697 with the Office Action mailed 03/08/2024. The citation of prior art in the rejection refers to the provided machine translations and document.
In reference to claims 1, 7-9 and 23, Liu teaches a steel hot-stamped product with an aluminum alloy plating layer ([0002]) (corresponding to a thermoformed coating, comprising a substrate layer and aluminum coating coated on at least one surface of the substrate layer). The coating includes an alloy layer comprising Si: 0-6%, Fe: 75-96% and Al: 2-12% and an Al-rich intermetallic compound layer comprising Si: 0-2%, Fe: 30-50% and Al: 40-60% ([0041]) (corresponding to the surface of the thermoformed component comprises Fe2Al5 and FeAl alloy).
Liu further teaches the weight percentage of the steel plate components is C: 0.08~0.8%, Si:0.05~1.0%, Mn:0.1~5%, P<0.3%, S<0.1%, Al<0.3%, Ti<0.5%, B: 0.0005~0.1%, Cr: 0.01~3%, the rest are Fe and unavoidable impurities ([0037]-[0039]) (corresponding to a mass percentage of chemical elements of the substrate layer is: C: 0.01~0.8%, Si: 0.05~1.0%, Mn: 0.1~5%, P≤0.3%, S≤0.1%, Al≤0.3%, Ti≤0.5%, B: 0.0005~0.1%, Cr: 0.01~3%, Nb≤0.5%, V≤0.5%, and a balance of Fe and other unavoidable impurities; the mass percentage of chemical elements of the substrate layer further meets at least one of the following: C: 0.05~0.6%, Si: 0.07~0.8%, Mn: 0.3~4%, P≤0.2%, S≤0.08%, Al≤0.2%, Ti≤0.4%, B: 0.0005~0.08%, Cr: 0.01~2%, Nb≤0.3%, V≤0.3%; the mass percentage of chemical elements of the substrate layer further meets at least one of the following: C: 0.15~0.5%, Si: 0.1~0.5%, Mn: 0.5~3%, P≤0.1%, S≤0.05%, Al≤0.1%, Ti≤0.2%, Cr: 0.01~1%). The microstructure of the steel plate is martensitic structure accounting from more than 95% ([0043]) (corresponding to the volume percentage of martensite in the microstructure of the substrate layer of the thermoformed component having excellent coating adhesion is ≥ 95%).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Liu does not explicitly teach (1) the coating includes Mg: 0.5~10 mass% and (2) an average roughness Ra of a surface of the product is 1.0-3.0 µm, a peak-to-valley height Rt is 18-30 µm and a roughness peak count Rpc is ≥ 50, as presently claimed.
With respect to (1), Liu teaches the hot dip plating solution used for coating the steel plate comprises Si: 5-11%, Fe: 0-4% and the balance is aluminum and inevitable impurities ([0020]) (corresponding to the mass percentage of chemical elements of the aluminum coating is: Si: 4~14%, Fe: 0~4% and a balance of Al and other unavoidable impurities; the mass percentage of chemical elements of the aluminum coating is: Si: 4~14%, Fe: 2~4% and a balance of Al and other unavoidable impurities). It is noted the coating composition is interpreted as the aluminum coating applied prior to further processing (i.e., coating bath composition).
Allely teaches a steel sheet coated with a metallic coating suited for the manufacture of automotive vehicles ([0001]). The metallic coating is an aluminum base coating ([0010]). Allely further teaches the coating comprises from 3.0 to 8.0% by weight of magnesium ([0027]). The addition of magnesium in the above range improves the anti-corrosion properties ([0027]).
In light of the motivation of Allely, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to include 3.0 to 8.0% by weight of magnesium in the plating solution of Liu, in order to provide improved anti-corrosion properties.
With respect to (2), Schuhmacher teaches a three-dimensionally shaped steel component from a steel sheet which has a metallic coating and is heated and subsequently formed into the steel component by hot forming ([0001]). The coating has a base roughness Ra of 1-2.2µm and RPC = 100-120 which was very suitable for further processing, in particular painting ([0026]; [0032]). Schuhmacher further teaches that an optimal roughness leads to improved corrosion protection due to a reduced base roughness (Ra, Rz) and gives increased peak count (RPc) as a result of which adhesion of the surface coating applied in an electrophoretic coating process is improved ([0013]).
In light of the motivation of Schuhmacher, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the hot-stamped product of Liu in view of Allely have a base roughness Ra of 1-2.2 µm and RPc of 100-120, in order to provide improved corrosion protection, suitability for painting and improved adhesion.
As evidence by Maki, when a material has a surface roughness Ra of 2 µm, Rt becomes about 20 µm for the material ([0018]). Thus it is clear the hot stamped part of Liu in view of Allely and Schuhmacher will have a Rt within the overlapping range with the presently claimed when Ra is 2-2.2 µm (corresponding to a peak-to-valley height Rt is 18-30 µm).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Given that the hot-stamped product of Liu in view of Allely and Schuhmacher is substantially identical to the present claimed thermoformed component in structure (i.e., Ra, Rt and RPc), it is clear that the hot stamped part of Tan in view of Allely and Schuhmacher intrinsically has a coating adhesion guaranteed by an uneven structure of the surface of the hot stamped part, and the coating adhesion of the hot stamped part tested according to GB/T 9286-1998 cross cut test method is Grade 1 or Grade 2.
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). See MPEP 2112.01 (I).
Further, while Liu in view of Allely and Schuhmacher teaches the product is hot-stamped (i.e., thermoformed) (Liu, [0002]). However, it is noted the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
In reference to claim 2, Liu in view of Allely and Schuhmacher teaches the limitations of claim 1, as discussed above. Liu further teaches the coating microstructure of the coated steel plate is divided into an alloy layer and a surface layer, wherein the alloy layer is a transition layer adjacent the substrate and is highly alloyed with the iron of the substrate ([0044]) (corresponding to the aluminum coating comprises a diffusion layer adjacent to the substrate layer and an alloy layer on the surface of the aluminum coating). In examples 1-10 a ratio of the thickness of the alloy layer to the total thickness of the coating is about 0.2-0.3 (i.e., 15/50 = 0.3; 8/40 = 0.2) ([0065]-[0084]) (corresponding to the ratio of the thickness of the diffusion layer to the total thickness of the aluminum coating is 0.08-0.5).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
In reference to claim 3, Liu in view of Allely and Schuhmacher teaches the limitations of claim 1, as discussed above. Liu further teaches the plating layer after stamping includes an alloy layer and a surface layer, the thickness of the alloy layer does not exceed 16 µm and the total thickness of the plating layer does not exceed 50 µm ([0036]) (corresponding to the thickness of the diffusion layer is ≤ 16 µm, and the total thickness of the aluminum coating is ≤ 60 µm).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
In reference to claim 10, Liu in view of Allely and Schuhmacher teaches the limitations of claim 1, as discussed above. Liu further teaches the tensile strength is greater than 1300 MPa ([0035]) (corresponding to the tensile strength is 500~2100 MPa).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Given that the plated steel of Liu in view of Allely and Schuhmacher is substantially identical to the presently claimed thermoformed component in structure, composition and formed by a substantially identical process as disclosed in the instant application’s Specification at pp. 8-9 (Liu, [0013]-[0016]; [0023]-[0034]; [0066]; [0068]; [0070]; [0072]; [0074]; [0076]; [0078]; [0080]; [0082]; [0084]), the plated steel of Liu in view of Allely and Schuhmacher would intrinsically have a yield strength of 400~1400 MPa and an elongation of ≥ 4%.
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). See MPEP 2112.01 (I).
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Liu in view of Allely and Schuhmacher as applied to claim 1 above, and further in view of Maki.
In reference to claims 5 and 6, Liu in view of Allely and Schuhmacher teaches the limitations of claim 1, as discussed above.
Liu in view of Allely and Schuhmacher does not explicitly teach the average weight of the aluminum alloy coating is 20~120 g/m2 per single surface, as presently claimed.
Maki teaches an automotive part including a formed steel sheet ([0022]-[0023]). The steel sheet is an Al plated steel sheet having an Al plating layer formed on a surface of the steel sheet serving as a base metal ([0030]). An amount of the Al plating layer is 30 g/m2 or more and 110 g/m2 or less for one surface ([0033]; [0092]-[0093]) (corresponding to the average weight of the aluminum coating is 20~120 g/m2 per single surface; 30~100 g/m2 per single surface).
In light of the disclosure of Maki, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the average weight of the aluminum alloy plating layer of Liu in view of Allely and Schuhmacher be 30 to 110 g/m2 for one side, in order to provide a plating having sufficient thickness to coat the steel, and thereby arriving at the presently claimed invention.
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Response to Arguments
In response to amended claim 2, the previous Claim Objections of record are withdrawn.
In response to amended claim 1, which no requires a volume percentage of martensite in a microstructure of the substrate layer of the thermoformed component be ≥ 95%, it is noted that Maki et al. (US 2019/0160519) (Maki) and Irie et al. (JP H10-130803) (Irie), either alone or in combination, no longer meet the presently claimed limitations. Therefore, the previous 35 U.S.C. 103 rejection over Maki in view of Irie are withdrawn from record.
Applicants primarily argue:
“Regarding Allely, Applicant respectfully submits that the purpose of adding Mg in Allely's is to enhance the corrosion resistance of metallic coating based on aluminum by altering the surface potential. Allely does not disclose the control of the surface roughness of metallic coating based on aluminum, nor does it involve the improvement of coating adhesion. The principle of the instant application is based on the composition of the surface aluminum coating: by controlling the surface roughness, the coating adhesion is improved, thereby enhancing the corrosion resistance. Therefore, Allely discloses substantially different principles for improving corrosion resistance.”
Remarks, p. 7
The examiner respectfully traverses as follows:
One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Allely is only used as a teaching reference in order to teach adding 3.0 to 8.0% by weight of magnesium to an aluminum based coating. Allely is not relied on to teach a surface roughness or improved coating adhesion. As discussed in the rejection set forth above, Schuhmacher is relied on to teaches the surface roughness.
The fact remains, Tan, Allely and Schuhmacher are all drawn to steel substrates having aluminum based coatings. Further, Allely provides proper motivation to combine, namely the addition of magnesium in the above range improves the anti-corrosion properties. Additionally, as set forth in the rejection above, Tan in view of Allely and Schuhmacher teaches a surface roughness overlapping the presently claim surface roughness parameters (i.e., Ra, Rt and RPc) which provides improved corrosion protection, improved adhesion and suitability for painting. Therefore, it is clear that the by controlling the surface roughness, the coating adhesion is improved, thereby further enhancing the corrosion resistance.
Applicants further argue:
“Regarding Schuhmacher, Applicant respectfully submits that Schuhmacher cannot provide such motivation for at least the following reason.
The thermoformed component of Tan includes a substrate and an aluminum-silicon alloy coating on at least one surface thereof (see paragraph [0031] of Tan), and the aluminum-silicon alloy coating of Tan has the components in weight percentage as following: Si: 4-14%, Fe: 0-4% and the balance is Al and inevitable impurities (see paragraph [0032] of Tan).
Schuhmacher, on the other hand, discloses that a metallic coating containing about 55% by weight of Fe, about 42% by weight of Al and about 3% by weight of magnesium, and also an aluminum oxide and magnesium oxide layer having a thickness of about 1 µm was formed, and the coating had a base roughness of Ra =1-2.2 µm and RPC=100-120 which was very suitable for further processing, in particular painting (see paragraph [0026] of Schuhmacher).
Therefore, the composition of the coating on the steel component of Schuhmacher is very different from that of the coating on the thermoformed component of Tan. For example, the coating in Schuhmacher comprises up to 55% by weight of Fe, and the coating in Tan only comprises 0-4% by weight of Fe. There is no reasonable expectation that coatings with different compositions can all achieve good coating performance under the same surface roughness.
Therefore, one of ordinary skill in the art would not have been motivated to adjust the surface roughness of the aluminum-silicon coating of Tan based on the content disclosed by Schuhmacher, and thus come up with the claimed thermoformed component comprising a substrate layer and an aluminum coating with the features as now recited in claim 1.”
Remarks, p. 7-8
The examiner respectfully traverses as follows:
Schuhmacher is only used as teaching reference in order to teach a base roughness. It is noted that the ‘test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference...Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art”, In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that “combining the teachings of references does not involve an ability to combine their specific structures”, In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
The fact remains, Tan, Allely and Schuhmacher are all drawn to steel substrates having aluminum based coatings. While Schuhmacher teaches a different coating composition than Tan, Schuhmacher explicitly teaches an optimal roughness which firstly leads to improve corrosion protection due to a reduced base roughness and secondly gives an increased peak count as a result of which adhesion of the surface coating applied in the coating process is improved ([0013]). The base roughness of Ra = 1-2.2 µm and RPC = 100-120 is very suitable for further processing, in particular painting ([0026]; [0032]). Thus, it is clear from the teachings of Schuhmacher the roughness, not the composition of the coating, leads to improved corrosion protection, improved coating adhesion and suitability for further processing such as painting.
Given that Tan, Alley and Schuhmacher are all drawn to coated steel substrates and Schuhmacher provides proper motivation to combine, namely to provide improved corrosion protection, suitability for painting and improved adhesion. It is the examiner’s position, absent evidence to the contrary, that one of ordinary skill in the art would be motivated to combine the references and there would be a reasonable expectation of success when combing the references.
Applicants further argue:
“Further, Schuhmacher applies a metallic coating to the steel surface through a composite rolling method, with the roughness being controlled during the rolling process. In contrast, the instant application disclose a method that does not involve a composite rolling process, and the roughness of the aluminum coating is entirely formed naturally during the heating process.”
Remarks, p. 8
The examiner respectfully traverses as follows:
The claims do not require the roughness of the aluminum coating be entirely formed naturally during a heating process. Even if the claims did require this, it is noted the claims are drawn to a product and not a method of making, and the claim would be a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. The claimed structure is taught by Tan in view of Allely and Schumacher, as discussed in the rejection set forth above.
Applicants further argue:
“Liu teaches a steel hot-stamped product with a coating, wherein starting from the steel substrate and moving outward, the coating comprising an alloy layer, an Al-rich intermetallic compound layer, an intermediate layer, and a surface layer, the alloy layer has the main components in weight percentage as following: Si: 0-6%, Fe: 75-96%, and Al: 2-12%, the Al-rich intermetallic compound layer has the main components in weight percentage as following: Si: 0-2%, Fe: 30-50%, and Al: 40-60%, the intermediate layer has the main components in weight percentage as following: Si: 2-6%, Fe: 50-65%, and Al: 20-35%, and the surface layer has the main components in weight percentage as following: Si: 2-6%, Fe: 50-65%, and Al: 20-35% (see paragraph [0038] of Liu).
However, Alley discloses a steel sheet coated with a metallic coating comprising from 2.0-24.0% by weight of zinc, from 7.1 to 12.0% by wight of silicon, optionally from 1.1 to 8.0% by weight of magnesium and optionally additional elements chosen from Pb, Ni, Zr or Hf, the content by weight of each additional element being less than 0.3% by weight, the balance being aluminum and optionally unavoidable impurities and residual elements.
It can be seen that the composition of the coating of Liu is totally different from that of the coating of Alley. For example, the coating of Liu comprises at least 30% of Fe and at most 6% of Zn, while the coating of Alley comprises no Fe and at least 7.1% of silicon. Due to the significant difference in composition between the two coatings, one of ordinary skill in the art would have no motivation to introduce Mg into Liu's coating based on Alley's.
Even if, for the sake of argument, one of ordinary skill in the art would have introduced Mg into Liu's coating, the resulting aluminum coating would still be substantially different from that as now defined in claim 1. That is because the aluminum coating as now defined in claim 1 comprises 0-4% of Fe, while the coating of Liu comprises at least 30% of Fe.”
Remarks, p. 9-10
The examiner respectfully traverses as follows:
As set forth in the rejection above, the mass percentage of chemical elements of the aluminum coating is interpreted as the aluminum coating applied prior to further processing (i.e., coating bath composition). This interpretation is supported by the instant applications disclosures of the plating bath composition at p. 7, lines 6-18 and the disclosure that:
“in the heating process, the aluminum in the aluminum coating diffuses to the substrate layer, and the iron in the substrate layer diffuses to the aluminum coating to form Al8Fe2Si phase. The formation of new phase leads to significant increase in surface roughness. With the further diffusion of iron and aluminum, Fe2Al-5 phase is formed, and the surface roughness is basically maintained. Finally, FeAl alloy is completely formed in the aluminum coating, while the surface roughness decreases slightly.
The surface of thermoformed components after heat treatment mainly consists of Fe2Al5 and FeAl alloy.” (p. 2, line 26- p. 3, line 2).
Further, the Specification discloses the aluminum coating solution is plated on the substrate to form the aluminum coating before heat treatment and hot stamping is preformed p. 6, lines 14-27.
Therefore, while the examiner agrees that the thermoformed component of Lui includes an alloy layer and a surface layer having values of silicon and iron outside the claimed aluminum coating, these layers are not relied on to meet the claimed aluminum coating. Rather, the plating bath composition taught by Lui in view of Allely is used to meet the claimed aluminum coating.
Lui, like Allely, teaches a plating solution containing silicon, iron and aluminum. Allely provides proper motivation to include 3-8 wt% magnesium in the plating solution, namely to provide improved anti-corrosion properties. Therefore, absent evidence to the contrary, it is the examiner’s position one of ordinary skill in the art would be motivated to combine Lui and Allely to arrive at a steel substrate having a coating composition as presently claimed.
Applicant further argues:
“Schuhmacher discloses that a metallic coating containing about 55% by weight of Fe, about 42% by weight of Al and about 3% by weight of magnesium, and also an aluminum oxide and magnesium oxide layer having a thickness of about 1 µm was formed, and the coating had a base roughness of Ra=1-2.2 µm and RPC=100-120 which was very suitable for further processing, in particular painting (see paragraph [0026] of Schuhmacher).
It can be seen that the composition of the coating on the steel component of Schuhmacher is substantially different from that of the surface layer of the coating on the thermoformed component of Liu. For example, the coating in Schuhmacher comprises up to 42% by weight of Al, and the surface layer of the coating in Liu only comprises 20-35% by weight of Al. There is no reasonable expectation that coatings with different compositions can all achieve good coating performance under the same surface roughness.
Therefor, one of ordinary skill in the art would not and cannot be motivated to adjust the surface roughness of the aluminum-silicon coating of Liu's based on the content disclosed by Schuhmacher, and thus would not and cannot be able to obtain the coating as now defined in claim 1.”
Remarks, p. 10
The examiner respectfully traverses as follows:
Schuhmacher is only used as teaching reference in order to teach a base roughness. It is noted that the ‘test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference...Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art”, In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that “combining the teachings of references does not involve an ability to combine their specific structures”, In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
The fact remains, Liu, Allely and Schuhmacher are all drawn to steel substrates having aluminum based coatings. While Schuhmacher teaches a different coating composition than Lui, Schuhmacher explicitly teaches an optimal roughness which firstly leads to improve corrosion protection due to a reduced base roughness and secondly gives an increased peak count as a result of which adhesion of the surface coating applied in the coating process is improved ([0013]). The base roughness of Ra = 1-2.2 µm and RPC = 100-120 is very suitable for further processing, in particular painting ([0026]; [0032]). Thus, it is clear from the teachings of Schuhmacher the roughness, not the composition of the coating, leads to improved corrosion protection, improved coating adhesion and suitability for further processing such as painting.
Given that Liu, Alley and Schuhmacher are all drawn to coated steel substrates and Schuhmacher provides proper motivation to combine, namely to provide improved corrosion protection, suitability for painting and improved adhesion. It is the examiner’s position, absent evidence to the contrary, that one of ordinary skill in the art would be motivated to combine the references and there would be a reasonable expectation of success when combing the references.
Therefore, Applicant's arguments filed 11/24/2025 have been fully considered but they are not 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 Mary I Omori whose telephone number is (571)270-1203. The examiner can normally be reached M-F 8am-4pm.
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/MARY I OMORI/Primary Examiner, Art Unit 1784