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 .
Response to Amendment
The Applicant’s amendments have overcome the previous Claim Objections. However, additional Claim objections have been provided in the present Office action.
The Applicant’s amendments have overcome the previous 35 USC 112(b) rejection. However, the Applicant’s amendments have provided grounds for an additional 35 USC 112(b) rejection, which has been provided in the present Office action.
Applicant’s arguments, filed 30 April 2025, with respect to the rejection of claim 29 under 35 USC § 103 have been fully considered but were not persuasive. Therefore, the grounds of rejection under 35 USC § 103 still stand.
Status of the Claims
In the amendment dated 19 May 2026, the status of the claims is as follows: Claims 32-33 have been amended. Claims 36-52 are new.
Claims 29-52 are pending.
Claim Objections
Claims 30-31 and 33-52 are objected to because of the following informalities:
Recommend placing commas after the preambles in the dependent claims.
Recommend amending claims 39 and 47 to recite: “wherein the additional coating is an isopropanol…”
Recommend amending claim 46 to recite: “….coating is a zinc based…”
Appropriate correction is required.
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 40-43 and 48-51 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.
Claims 40 and 48 recite: “…wherein the additional coating is one of a carbon-based coating and a nickel-based coating and the metal alloy coating is one of an aluminum based dip coating and a zinc based dip coating.” It is unclear if these limitations are Markush groups of closed alternatives or instead an open-ended list of alternatives (MPEP 2111). Although the phrase “one of” is used and a list of alternatives is provided, the phrase does not include the term “consisting of” (MPEP 2173.05.h). As a result, the claims are indefinite because the metes and bounds (closed or open claim language?) are unclear. For the purpose of the examination, the limitations will be interpreted under their broadest reasonable interpretation as not being Markush groups.
Claims 41-43 and 49-51 are rejected based on their dependency to claims 40 and 48. These rejections are provided based on new claims.
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 29-36, 38, 40-41, 44, 46, 48-49, and 52 are rejected under 35 U.S.C. 103 as being unpatentable over Gu et al. (US-20160332256-A1; hereinafter Gu ‘256) in view of McCay et al. (US-5985056-A) and Gu et al. (US-20170095886-A1; hereinafter Gu ‘886).
Regarding claim 29, Gu ‘256 teaches a method for the fabrication (“fabricated,” para 0023) of a pre-coated steel sheet (fig. 1A) having a steel substrate (steel substrates 102 and 104, fig. 1A) and a metal alloy coating (pre-coat layers 114 and 120, fig. 1A) in contact with a surface of the steel substrate (pre-coat layers 114 and 120 are in contact with steel substrates 102 and 104, fig. 1A), the method comprising:
applying on top of the metal alloy coating (top of layers 114 and 120, fig. 1A) an additional coating (clad layer 110, fig. 1A) at least at a region at a periphery of at least one of opposing faces of the pre-coated sheet (the clad layer 110 is on the edges of the side faces of the steel substrates 102 and 104, fig. 1A; the edges are construed as the claimed “region”), the additional coating having a vaporization temperature greater than the metal alloy coating (Gu ‘256 teaches using “nickel” for the clad layer 110, para 0026 and “aluminum-silicon” for the pre-coat layers, para 0009; similarly, the Specification of the Instant Application discloses that nickel has a higher vaporization temperature than AlSiFe, paras 0032-0033; construed then that in the invention taught by Gu ‘256, the nickel has a higher vaporization temperature than aluminum silicon), the additional coating being a coating which increases the vapor pressure between the metal alloy coating and the additional coating (“the alloying material from the clad layer 110 is, for instance, a nickel rich material,” para 0026; similarly, para 0033 of the Specification discloses using nickel and that as a result, the vapor pressure improves when nickel is used; construed then such the nickel taught by Gu ‘256 would cause increase in the vapor pressure) during a laser butt-welding method (“FIGS. 1-3 are butt welds,” para 0030; the laser butt-welding method takes place in fig. 2A; laser cladding with nickel powder is shown in fig. 1A).
Gu ‘256, fig. 1A
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Gu ‘256 does not explicitly disclose applying by spin coating or spray painting or using a paint brush; a laser butt-welding method up to a pressure, the pre-coating being ejected away from the weld at the pressure.
However, in the same field of endeavor of laser processing aluminum workpieces, McCay teaches applying by spin coating (spin coating is not explicitly disclosed) or spray painting (“….component of a slurry. In a preferred embodiment, the precursor alloy material is a powder which is mixed with a binder, which may be applied to the metal surface by spraying,” column 2, lines 49-52; spraying the slurry powder mixed with a binder is construed as spray painting; “nickel,” column 2, line 40; “sprayed,” column 8, line 30) or using a paint brush (using a paint brush is not explicitly disclosed).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Gu ‘256, in view of the teachings of McCay, by spraying using a slurry component that includes a binder and nickel powder, as taught by McCay, instead of spraying using a nickel powder and performing cladding, as taught by Gu ‘256 in fig. 1A, in order to use a material that includes a binder that causes the material to adhere to the workpiece surface, because unlike cladding where a dry, non-adhesive powder is used, the sprayed slurry material becomes an integral part of the workpiece such that the formed layer does not chip or flake off, and because the binder will eventually burn off during laser processing, such that the binder has no significant effect on the final product (McCay, column 1, lines 17-25, column 1, lines 33-39, column 2, lines 48-56, and column 6, lines 39-44).
Gu ‘256 / McCay do not explicitly disclose laser butt-welding method up to a pressure, the pre-coating being ejected away from the weld at the pressure.
However, in the same field of endeavor of laser processing aluminum workpieces, Gu ‘886 teaches a laser butt-welding method (fig. 3) up to a pressure (“conduit 202 follows behind the laser beam 206 in the scan direction, such that the stream of the gas is directed toward melted material that is formed immediately behind the defocused laser beam 206,” para 0031; the pressure applied by the stream of glass is construed as the claimed “pressure”), the pre-coating being ejected away from the weld at the pressure (“the stream of the gas blows the melted material out of the contiguous surface areas before the melted material re-solidifies,” para 0031; the melted material that is blown away is construed as the claimed pre-coating that is ejected away).
Gu ‘886, fig. 3
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Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Gu ‘256, in view of the teachings of Gu ‘886, by using a conduit 202 to blow away melted material, as taught by Gu ‘886, after the workpieces are laser welded together and before the weld re-solidifies, as taught by Gu ‘256 in fig. 2A, in order to remove undesired intermetallic compounds that result because of the melted coating in the weld joint, which can cause severe cracking in the weld joint if not removed (Gu ‘886, paras 0009 and 0031).
Regarding claim 30, Gu ‘256 teaches wherein the additional coating comprises gammagene elements (“nickel,” para 0026).
Regarding claim 31, Gu ‘256 teaches wherein the additional coating includes carbon (not explicitly disclosed) or nickel (“nickel,” para 0026).
Regarding claim 32, Gu ‘256 teaches a method for the fabrication (“fabricated,” para 0023) of a steel part (fig. 1A) comprising:
laser butt-welding (fig. 2A) of first and second pre-coated steel sheets (“pre-coated steel sheet plates,” para 0023), each comprising a steel substrate (steel substrates 102 and 104, fig. 2A) and a metal alloy coating (pre-coat layers 114 and 120, fig. 2A) in contact with a surface of the steel substrate (pre-coat layers 114 and 120 are in contact with steel substrates 102 and 104, fig. 2A), wherein at least a region at the periphery of at least one of opposing faces of the first and the second pre-coated steel sheets (the edges of the side faces of the steel substrates 102 and 104 are construed as the claimed “region,” figs. 1A and 2A) has been previously coated with an additional coating (as shown in fig. 1A, the edges are coated with a clad layer 110 prior to the laser welding that occurs in fig. 2A; the welding is a “two-step process,” para 0016) applied on top of the metal alloy coating (top of layers 114 and 120, fig. 1A), the additional coating having a vaporization temperature greater than the metal alloy coating (Gu ‘256 teaches using “nickel” for the clad layer 110, para 0026 and “aluminum-silicon” for the pre-coat layers, para 0009; the melting temperature for nickel is 1,455°C; “an aluminum-silicon alloy coating has a melting temperature lower than 600° C,” para 0024; construed such that if the melting temperature of nickel is greater than the aluminum silicon alloy, then the vaporization temperature must also be greater; similarly, the Specification of the Instant Application also discloses that nickel has a higher vaporization temperature than AlSiFe, paras 0032-0033) the additional coating being a coating which increases the vapor pressure between the metal alloy coating and the additional coating (“the nickel in the alloying material is a martensitic promoter, and as such the presence of nickel in the melt pool 136 at least partially compensates for the adverse effects of the aluminum,” para 0026; similarly, para 0033 of the Specification discloses that the vapor pressure improves when nickel is used) during the laser butt-welding method (“FIGS. 1-3 are butt welds,” para 0030; the laser butt-welding method takes place in fig. 2A; laser cladding with nickel powder is shown in fig. 1A).
Gu ‘256 does not explicitly disclose an additional coating applied by spin coating, or spray painting or using a paint brush; laser butt-welding method up to a pressure, the laser-but welding ejecting the pre-coating away from the weld at the pressure.
However, in the same field of endeavor of laser processing aluminum workpieces, McCay teaches an additional coating (“nickel,” column 2, line 40; “component of a slurry,” column 2, line 49; “binder,” column 2, line 51; the precursor alloy material that is a slurry material, which includes binder and nickel, is construed as the claimed “additional coating”) applied by spin coating (spin coating is not explicitly disclosed) or spray painting (“In a preferred embodiment, the precursor alloy material is a powder which is mixed with a binder, which may be applied to the metal surface by spraying,” column 2, lines 49-52; spraying the slurry powder mixed with a binder is construed as spray painting; “sprayed,” column 8, line 30) or using a paint brush (using a paint brush is not explicitly disclosed).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Gu ‘256, in view of the teachings of McCay, by spraying using a slurry component that includes a binder and nickel powder, as taught by McCay, instead of spraying using a nickel powder and performing cladding, as taught by Gu ‘256 in fig. 1A, in order to use a material that includes a binder that causes the material to adhere to the workpiece surface, because unlike cladding where a dry, non-adhesive powder is used, the sprayed slurry material becomes an integral part of the workpiece such that the formed layer does not chip or flake off, and because the binder will eventually burn off during laser processing, such that the binder has no significant effect on the final product (McCay, column 1, lines 17-25, column 1, lines 33-39, column 2, lines 48-56, and column 6, lines 39-44).
Gu ‘256 / McCay do not explicitly disclose laser butt-welding method up to a pressure, the pre-coating being ejected away from the weld at the pressure.
However, in the same field of endeavor of laser processing aluminum workpieces, Gu ‘886 teaches a laser butt-welding method (fig. 3) up to a pressure (“conduit 202 follows behind the laser beam 206 in the scan direction, such that the stream of the gas is directed toward melted material that is formed immediately behind the defocused laser beam 206,” para 0031; the pressure applied by the stream of glass is construed as the claimed “pressure”), the pre-coating being ejected away from the weld at the pressure (“the stream of the gas blows the melted material out of the contiguous surface areas before the melted material re-solidifies,” para 0031; the melted material that is blown away is construed as the claimed pre-coating that is ejected away).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Gu ‘256, in view of the teachings of Gu ‘886, by using a conduit 202 to blow away melted material, as taught by Gu ‘886, after the workpieces are laser welded together and before the weld re-solidifies, as taught by Gu ‘256 in fig. 2A, in order to remove undesired intermetallic compounds that result because of the melted coating in the weld joint, which can cause severe cracking in the weld joint if not removed (Gu ‘886, paras 0009 and 0031).
Regarding claim 33, Gu ‘256 teaches the invention as described above but does not explicitly disclose in the figs. 1-2 embodiment wherein said laser butt welding is performed on the region after the region is coated with the additional coating and simultaneously with a second region at the periphery of at least one of opposing faces of the first and the second pre-coated steel sheets being coated with the additional coating.
However, in the fig. 3 embodiment, Gu ‘256 teaches wherein said laser butt welding (“a one-step process, according to an embodiment of the invention, in which an alloying material in powdered form is directed into a melt pool that is formed when pre-coated sheet metal plates are being laser welded together.,” para 0018) is performed on the region (area between the faces of the substrates where the welding takes place; annotated in fig. 3B below) after the region is coated with the additional coating (the laser beam proceeds in the direction 150, fig. 3B; the laser beam 134 follows the conduit 108 that sprays the powder 100, fig. 3B) and simultaneously with a second region (annotated in fig. 3B below) at the periphery of at least one of opposing faces of the first and the second pre-coated steel sheets being coated with the additional coating (edges between plates 102 and 104, fig. 3A).
Gu ‘256, fig. 3B (annotated)
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Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention, as taught by Gu ‘256, by combining the two-step process, as taught in the figs. 1-2 embodiment, into a one-step process, as taught in the fig. 3 embodiment, in order to perform the two-steps at a single workstation, for the advantages of expediting the process and because the welds that are produced using the one-step process have improved corrosion resistance in comparison to the welds from the two-step process (Gu ‘256, para 0029).
Regarding claim 34, Gu ‘256 teaches wherein the additional coating comprises gammagene elements (“nickel,” para 0026).
Regarding claim 35, Gu ‘256 teaches wherein the additional coating includes carbon (not explicitly disclosed) or nickel (“nickel,” para 0026).
Regarding claim 36, Gu ‘256 teaches wherein the metal alloy coating is an aluminum based dip coating (“dip-coating the substrates 112 and 118 in a bath of molten aluminum or molten aluminum alloy,” para 0023).
Regarding claim 38, Gu ‘256 teaches the invention as described above but does not explicitly disclose wherein the metal alloy coating is a zinc based dip coating.
However, in the same field of endeavor of laser processing aluminum workpieces, Gu ‘886 teaches wherein the metal alloy coating is a zinc based dip coating (“Optionally, the pre-coat layer 106 is formed using another suitable material, such as for instance by dip-coating the substrates 102 and 104 in a bath of molten zinc or molten zinc alloy,” para 0028; construed such that if the dip coating is done in a bath of molten zinc then the pre-coat layer 106 will be a “zinc based dip coating”).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Gu ‘256, in view of the teachings of Gu ‘886, by using a bath of molten zinc, as taught by Gu ‘886, instead of a bath of molten aluminum or molten aluminum alloy, because this amounts to a simple substitution of one pre-coating known in the art for another with predictable results. The change of using the zinc pre-coating instead of the aluminum pre-coating is an identified alternative known in the art for forming a pre-coating, which one of ordinary skill in the art would have performed with a reasonable expectation of success (Gu ‘886, para 0028; McCay teaches using “zinc” coatings, column 2, line 41).
Regarding claim 40, the combination of Gu ‘256 in view of McCay and Gu ‘886 as set forth above regarding claim 32 teaches the invention of claim 40. Specifically, Gu ‘256 teaches wherein the additional coating is one of a carbon-based coating (not explicitly disclosed) and a nickel-based coating (“nickel” for the clad layer 110, para 0026) and the metal alloy coating is one of an aluminum based dip coating (“dip-coating the substrates 112 and 118 in a bath of molten aluminum or molten aluminum alloy,” para 0023) and a zinc based dip coating (not explicitly disclosed). Additionally, McCay teaches wherein the additional coating is one of a carbon-based coating (not explicitly disclosed) and a nickel-based coating (“nickel,” column 2, line 40).
Regarding claim 41, the combination of Gu ‘256 in view of McCay and Gu ‘886 as set forth above regarding claim 32 teaches the invention of claim 41. Specifically, McCay teaches wherein the additional coating consists of nickel (“nickel,” column 2, line 40; “component of a slurry,” column 2, line 49; “binder,” column 2, line 51; “the binder is burned off during processing and is, therefore, not present to any significant degree in the final product,” column 2, lines 54-56; construed such that when the binder burns off, all that is left is nickel, and the additional coating is limited to nickel).
Regarding claim 44, Gu ‘256 teaches wherein the metal alloy coating is an aluminum based dip coating (“dip-coating the substrates 112 and 118 in a bath of molten aluminum or molten aluminum alloy,” para 0023).
Regarding claim 46, Gu ‘256 teaches the invention as described above but does not explicitly disclose wherein the metal alloy coating is a zinc based dip coating.
However, in the same field of endeavor of laser processing aluminum workpieces, Gu ‘886 teaches wherein the metal alloy coating is a zinc based dip coating (“Optionally, the pre-coat layer 106 is formed using another suitable material, such as for instance by dip-coating the substrates 102 and 104 in a bath of molten zinc or molten zinc alloy,” para 0028; construed such that if the dip coating is done in a bath of molten zinc then the pre-coat layer 106 will be a “zinc based dip coating”).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Gu ‘256, in view of the teachings of Gu ‘886, by using a bath of molten zinc, as taught by Gu ‘886, instead of a bath of molten aluminum or molten aluminum alloy, because this amounts to a simple substitution of one pre-coating known in the art for another with predictable results. The change of using the zinc pre-coating instead of the aluminum pre-coating is an identified alternative known in the art for forming a pre-coating, which one of ordinary skill in the art would have performed with a reasonable expectation of success (Gu ‘886, para 0028; McCay teaches using “zinc” coatings, column 2, line 41).
Regarding claim 48, the combination of Gu ‘256 in view of McCay and Gu ‘886 as set forth above regarding claim 29 teaches the invention of claim 48. Specifically, Gu ‘256 teaches wherein the additional coating is one of a carbon-based coating (not explicitly disclosed) and a nickel-based coating (“nickel” for the clad layer 110, para 0026) and the metal alloy coating is one of an aluminum based dip coating (“dip-coating the substrates 112 and 118 in a bath of molten aluminum or molten aluminum alloy,” para 0023) and a zinc based dip coating (not explicitly disclosed). Additionally, McCay teaches wherein the additional coating is one of a carbon-based coating (not explicitly disclosed) and a nickel-based coating (“nickel,” column 2, line 40).
Regarding claim 49, the combination of Gu ‘256 in view of McCay and Gu ‘886 as set forth above regarding claim 29 teaches the invention of claim 49. Specifically, McCay teaches wherein the additional coating consists of nickel (“nickel,” column 2, line 40; “component of a slurry,” column 2, line 49; “binder,” column 2, line 51; “the binder is burned off during processing and is, therefore, not present to any significant degree in the final product,” column 2, lines 54-56; construed such that when the binder burns off, all that is left is nickel, and the additional coating is limited to nickel).
Regarding claim 52, the combination of Gu ‘256 in view of McCay and Gu ‘886 as set forth above regarding claim 32 teaches the invention of claim 52. Specifically, Gu ‘256 and McCay teach wherein the additional coating has a vaporization temperature greater than 2720 °C (Gu ‘256 teaches “nickel” for the clad layer 110, para 0026; McCay also teaches “nickel,” column 2, line 40; the Specification of the Instant Application discloses that nickel has a vaporization temperature of about “2913° C”).
Claims 37, 42-43, 45, and 50-51 are rejected under 35 U.S.C. 103 as being unpatentable over Gu et al. (US-20160332256-A1; hereinafter Gu ‘256) in view of McCay et al. (US-5985056-A) and Gu et al. (US-20170095886-A1; hereinafter Gu ‘886) as applied to claims 29, 32, 40-41, and 48-49 above and further in view of Sanadres et al. (US-20170016086-A1).
Regarding claim 37, Gu ‘256 teaches the invention as described above but does not explicitly disclose wherein the metal alloy coating is an aluminum based dip coating comprised of between 8 and 11% silicon, between 2 and 4% iron, and a remainder being aluminum.
However, in the same field of endeavor of laser processing workpieces that include aluminum, Sanadres teaches wherein the metal alloy coating (metallic pre-coating 2, fig. 1) is an aluminum based dip coating (para 0072) comprised of between 8 and 11% silicon, between 2 and 4% iron, and a remainder being aluminum (“9% Si and 3% Fe, the balance being aluminum,” para 0120).
Sanadres, fig. 1
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Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Gu ‘256, in view of the teachings of Sanadres, by using continuous hot dip process, as taught by Sanadres, to obtain the pre-coat layers, as taught by Gu ‘256, in order to use a composition for a pre-coating that is within a certain range of percentages for a pre-coating, which has been found to be advantageous for an aluminum-silicon alloy (Sanadres, para 0072).
Regarding claim 42, Gu ‘256 teaches the invention as described above but does not explicitly disclose wherein the additional coating has a thickness of from 15 microns to 40 microns.
However, in the same field of endeavor of laser processing workpieces that include aluminum, Sanadres teaches wherein the additional coating (polymer layer 3, fig. 1) has a thickness of from 15 microns to 40 microns (“a polymerized layer having a thickness between 2 and 30 μm,” abstract; construed as overlapping with the claimed range).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Gu ‘256, in view of the teachings of Sanadres, by using a thickness between 2 and 30 μm, as taught by Sanadres, for the slurry, as taught by McCay, because a thickness of less than 2 μm does not make it possible to obtain a sufficient rate of coverage and a thickness greater than 30 μm leads to an increased risk of contamination, in the method for applying a coating layer (Sanadres, para 0080) and since it has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05 I).
Regarding claim 43, Gu ‘256 teaches the invention as described above but does not explicitly disclose wherein the additional coating is a carbon based coating and has a thickness of from 30 microns to 85 microns.
However, in the same field of endeavor of laser processing workpieces that include aluminum, Sanadres teaches wherein the additional coating (polymer layer 3, fig. 1) is a carbon based coating (“The content by weight of carbon pigments, expressed in relation to the polymerized layer 3, is between 3 and 30%,” para 0085; “The carbon pigments can be in the form of graphite or activated carbon,” para 0086) and has a thickness of from 30 microns to 85 microns (“a polymerized layer having a thickness between 2 and 30 μm,” abstract; construed as overlapping with the claimed range).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Gu ‘256, in view of the teachings of Sanadres, by using a thickness between 2 and 30 μm, as taught by Sanadres, for the slurry, as taught by McCay, and by adding carbon pigments, as taught by Sanadres, to the slurry, as taught by McCay, because a thickness of less than 2 μm does not make it possible to obtain a sufficient rate of coverage and a thickness greater than 30 μm leads to an increased risk of contamination, in the method for applying a coating layer, and because the addition of carbon pigments of between 3 and 30% by weight in an outer layer have been found to obtain excellent resistance to cracking in workpieces (Sanadres, paras 0008-0011 and 0080) and since it has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05 I).
Regarding claim 45, Gu ‘256 teaches the invention as described above but does not explicitly disclose wherein the metal alloy coating is an aluminum based dip coating comprised of between 8 and 11% silicon, between 2 and 4% iron, and a remainder being aluminum.
However, in the same field of endeavor of laser processing workpieces that include aluminum, Sanadres teaches wherein the metal alloy coating (metallic pre-coating 2, fig. 1) is an aluminum based dip coating (para 0072) comprised of between 8 and 11% silicon, between 2 and 4% iron, and a remainder being aluminum (“9% Si and 3% Fe, the balance being aluminum,” para 0120).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Gu ‘256, in view of the teachings of Sanadres, by using continuous hot dip process, as taught by Sanadres, to obtain the pre-coat layers, as taught by Gu ‘256, in order to use a composition for a pre-coating that is within a certain range of percentages for a pre-coating, which has been found to be advantageous for an aluminum-silicon alloy (Sanadres, para 0072).
Regarding claim 50, Gu ‘256 teaches the invention as described above but does not explicitly disclose wherein the additional coating is a carbon based coating and has a thickness of from 30 microns to 85 microns.
However, in the same field of endeavor of laser processing workpieces that include aluminum, Sanadres teaches wherein the additional coating (polymer layer 3, fig. 1) is a carbon based coating (“The content by weight of carbon pigments, expressed in relation to the polymerized layer 3, is between 3 and 30%,” para 0085; “The carbon pigments can be in the form of graphite or activated carbon,” para 0086) and has a thickness of from 30 microns to 85 microns (“a polymerized layer having a thickness between 2 and 30 μm,” abstract; construed as overlapping with the claimed range).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Gu ‘256, in view of the teachings of Sanadres, by using a thickness between 2 and 30 μm, as taught by Sanadres, for the slurry, as taught by McCay, and by adding carbon pigments, as taught by Sanadres, to the slurry, as taught by McCay, because a thickness of less than 2 μm does not make it possible to obtain a sufficient rate of coverage and a thickness greater than 30 μm leads to an increased risk of contamination, in the method for applying a coating layer, and because the addition of carbon pigments of between 3 and 30% by weight in an outer layer have been found to obtain excellent resistance to cracking in workpieces (Sanadres, paras 0008-0011 and 0080) and since it has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05 I).
Regarding claim 51, Gu ‘256 teaches the invention as described above but does not explicitly disclose wherein the additional coating is a carbon based coating and has a thickness of from 30 microns to 85 microns.
However, in the same field of endeavor of laser processing workpieces that include aluminum, Sanadres teaches wherein the additional coating (polymer layer 3, fig. 1) is a carbon based coating (“The content by weight of carbon pigments, expressed in relation to the polymerized layer 3, is between 3 and 30%,” para 0085; “The carbon pigments can be in the form of graphite or activated carbon,” para 0086) and has a thickness of from 30 microns to 85 microns (“a polymerized layer having a thickness between 2 and 30 μm,” abstract; construed as overlapping with the claimed range).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Gu ‘256, in view of the teachings of Sanadres, by using a thickness between 2 and 30 μm, as taught by Sanadres, for the slurry, as taught by McCay, and by adding carbon pigments, as taught by Sanadres, to the slurry, as taught by McCay, because a thickness of less than 2 μm does not make it possible to obtain a sufficient rate of coverage and a thickness greater than 30 μm leads to an increased risk of contamination, in the method for applying a coating layer, and because the addition of carbon pigments of between 3 and 30% by weight in an outer layer have been found to obtain excellent resistance to cracking in workpieces (Sanadres, paras 0008-0011 and 0080) and since it has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05 I).
Allowable Subject Matter
Claims 39 and 47 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Reasons for Allowance
The following is an examiner’s statement of reasons for allowance:
The prior art does not anticipate nor render obvious the combination set forth in the independent claims, and specifically does not show “wherein the additional coating is a isopropanol based graphite resistive and dry film lubricant coating.” The closest prior art of record (Sanadres/ US-20170016086-A1) teaches using graphite pigments in a polymer layer that is roll coated onto a coating. However, graphite pigments are bonded in an acrylic-phenoxy resin that is a solid. In contrast, the claims require an “isopropanol based graphite resistive,” which is a liquid.
Additional references teaching graphite were considered (von der Heydt/ US-20200189035-A1 and Briand/ US-93211132-B2). However, neither of these references teach an “additional coating is a isopropanol based graphite resistive” that is applied “on top of the metal alloy coating by spin coating or spray painting or using a paint brush, an additional coating,” as required in the independent claims.
Moreover, although another reference (Nakajima/ US-20040241488-A1) teaches applying a “dry film lubricant” to a zinc-coated steel sheet, this reference does not teach applying graphite in combination with this lubricant.
Thus, for at least the foregoing reasons, the prior art of record neither anticipates nor renders obvious the present invention as set forth in the independent claims.
Response to Argument
Applicant's arguments filed 19 May 2026 have been fully considered but they are not persuasive.
Rejections under 35 USC 103
The primary reference for the 35 USC 103 rejection is Gu ‘256 (US20160332256A1). The examiner agrees with the Applicant’s description of Gu ‘256 on page 8 of the arguments. Specifically, Gu ‘256 teaches a “two step process.” The first step in Gu ‘256 is forming a clad layer, where nickel is used to compensate for the effects of aluminum in the pre-coat layers (paragraph 0028). The second step in Gu ‘256 is welding the edges of the plates together along the weld seam, where the cladded layer is mixed into the melt pool (paragraph 0026).
Gu ‘256 does not explicitly disclose “applying by spin coating or spray painting or using a paint brush; a laser butt-welding method up to a pressure, the pre-coating being ejected away from the weld at the pressure.” As a result, two references are used to show why modifying Gu’256 to meet these limitations would be obvious to one of ordinary skill in the art.
The first modifying reference is McCay (US-5985056). McCay teaches spraying a nickel powder with a binder onto a metallic surface of a workpiece. This teaching is used for the limitation “applying by spin coating or spray painting or using a paint brush” (McCay is construed as teaching the claimed “spray painting”). McCay teaches that there are advantages to spraying the nickel powder with an adhesive binder instead of laser cladding the nickel powder onto the workpiece (page 7 of the Office action filed 19 Feb 2026). Thus, McCay is used as modifying reference for the first step taught by Gu ‘256, where the clad layer is formed.
The second modifying reference is Gu ‘886 (US-20170095886). Gu ‘886 teaches using a stream of gas to blow the melted material off of the surface of the weld in order to remove undesired aluminum compounds that form during the welding process (pages 7-8 of the Office action filed 19 Feb 2026). This teaching is used to cover the limitation: “a laser butt-welding method up to a pressure, the pre-coating being ejected away from the weld at the pressure.” As a result, Gu ‘886 is used as a modifying reference for the second step taught by Gu ‘256, where the edges of the plates are welded together.
Page 8 of the arguments states that the use of McCay is a modifying reference is “completely speculative” because “McCay does not at all mention welding two steel substrates together.” However, the examiner does not rely on McCay for teaching the welding step but instead relies on Gu ‘256 (the main reference), who teaches welding as the second step in a two-step process. Furthermore, the Applicant’s arguments regarding claim 29 do not appear to be commensurate with the scope of the claim, because claim 29 is not directed to a method for welding but is instead directed to a “method for the fabrication of a pre-coated steel sheet” that includes a step for “applying on top of the metal alloy coating by spin coating or spray painting or using a paint brush, an additional coating.” In other words, claim 29 does not does not actually include a method step of welding two sheets of metal together.
Page 8 of the arguments states that “the purpose of the two step laser process” in Gu ‘256 is to “form a stable compound of nickel and aluminum.” The examiner agrees that Gu ‘256 teaches forming a stable compound of nickel and aluminum. However, the examiner disagrees that forming this compound is the intended purpose of Gu ‘256. Instead, Gu ‘256 teaches forming this compound in order to “at least partially compensate for the adverse effects of the aluminum that is introduced from the pre-coat layers” (paragraph 0028).
Page 8 mistakenly assumes that the purpose of Gu ‘256 is to form this compound and then references Gu ‘886, stating that “to eject the molten aluminum away from the weld….would run counter to the teaching of Gu ‘256,” which “would have changed the principle of operation of Gu ‘256,” which is to form a stable compound on the workpiece. The examiner respectfully disagrees and submits that the actual intended purpose of Gu ‘256 is to compensate for the adverse effects of aluminum (paragraph 0028). Based on this purpose, the ejection of molten aluminum that is taught by Gu ‘886 would not “change the principle of operation” in Gu ‘256. Instead, the purpose of Gu ‘256 and the purpose of Gu ‘886 are the same—to counter the adverse effects caused by aluminum in the weld joint (in paragraph 0009, Gu ‘886 teaches that “the formation of brittle, intermetallic compounds in welded joints is a problem” that occurs when welding a “pre-coated aluminum-silicon steel sheet”). One of ordinary skill would have modified Gu ‘256 based on Gu ‘886 to ensure that any molten aluminum that forms on the surface is blown away from the weld.
Page 9 of the arguments states and asks the following:
“The Office Action states that to the motivation for modifying Gu '256 in view of McCay is so the ‘sprayed slurry material becomes an integral part of the workpiece such that the formed layer does not chip or flake off' and then suggests that the motivation for modifying Gu '256 / McCay is to ‘blow away melted material.’ This is unreasonable. Why would one provide a layer that does not chip or flake off, then blow it away? This reasoning lacks a rational underpinning.”
The Applicant’s Specification provides an answer to this rhetorical question:
“When the pre-coating 2 is of the AlSiFe type, its ejection from the welding zone leads to avoid or at least limit the aluminum content in the weld metal zone, as it will be further detailed.”
In other words, the purpose of blowing the away the metal material according to the Specification of the Instant Application is to “limit the aluminum content in the weld metal zone.” Similarly, Gu ‘886 teaches this same purpose. Specifically, Gu ‘886 teaches the following purpose for why “a stream of a gas is used to blow the melted pre-coat material out of the irradiated areas of the two plates” (abstract):
“In order to avoid the need to provide a controlled furnace atmosphere during hot forming of the welded blanks, and to provide corrosion resistance, it is common to fabricate such blanks using coated sheet metal materials, such as for instance boron steels with an aluminum-silicon pre-coating. Unfortunately, the process of laser welding such pre-coated sheet metal materials results in some of the pre-coat material being transferred into the molten area that is created during the welding operation” (paragraph 0005).
Thus, respectfully submit that blowing the melted material off of the weld zone in order to limit the effects of the aluminum-silicon materials in the weld is a method that is already known in the art.
For the above reasons, the rejections to the pending claims are respectfully sustained by the examiner.
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 ERWIN J WUNDERLICH whose telephone number is (571)272-6995. The examiner can normally be reached Mon-Fri 7:30-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Edward Landrum can be reached on 571-272-5567. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERWIN J WUNDERLICH/Examiner, Art Unit 3761 6/22/2026
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