DETAILED ACTION
Claims 1-3 are pending, and claim 1 is currently under review.
Claims 2-3 are withdrawn.
Claims 4-5 are cancelled.
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 amendment filed 8/07/2025 has been entered. Claims 1-3 remain(s) pending in the application.
Notes
In response to the preliminary matter noted by applicant on p.4 of the remarks filed 8/07/2025, an updated PTO-892 form has been provided with a corrected recitation of the Shigeru reference.
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Speer et al. (US 2021/0180172) in view of Shigeru et al. (JP2006265706, machine translation referred to herein).
Regarding claim 1, Speer et al. discloses a coated steel material comprising a base steel alloy having a Zn-base coating [abstract, 0003]. Said Zn-base coating includes about 3.35 to 13.4 weight percent Al and up to 10.05 weight percent Mg [0063].
Speer et al. does not expressly teach that the coating layer further includes Fe, an oxide layer composition, or alpha and gamma phases and a ratio Igamma/Ialpha of the coating layer as claimed. However, the instant specification teaches obtaining these features by merely providing a steel sheet precoated with a Zn-based alloy coating containing 3 to 10 weight percent Al and 0.2 to 0.8 weight percent Mg and having a liquidus temperature lower than 400 degrees C, followed by heating said precoated steel sheet to AC3 to 1000 degrees C and performing hot press forming [0038].
As stated previously, Speer et al. discloses a steel sheet having an overlapping Zn-base alloy coating, said Zn-base alloy coating having a liquid temperature of less than 419 degrees C [0009]; wherein the only feature missing in Speer et al. is a step of hot press forming. Accordingly, the examiner submits that a step of hot press forming would have been obvious in view of the prior art. Shigeru et al. teaches that it is well known to perform hot press forming on Zn-coated steel sheets and further teaches a method of desirably hot press forming Zn-coated sheets to achieve good properties by heating to above Ac1 (or at 900 degrees C in a particular embodiment) and performing hot press forming which forms an oxide film to avoid Zn evaporation [0010-0011, 0014, 0026]. Therefore, it would have been obvious to one of ordinary skill to modify the coated steel of Speer et al. by performing hot press forming as disclosed by Shigeru et al. for the aforementioned benefit. As noted above, the examiner notes that the combined disclosure of Speer et al. and Shigeru et al. suggests providing the coated steel sheet of Speer et al. and performing hot press forming according to the parameters of Shigeru et al., which would naturally result in the claimed alpha and gamma phases and a ratio Igamma/Ialpha of the coating layer, Fe in the coating layer, and oxide layer parameters as claimed.
Response to Arguments
Applicant's arguments, filed 8/07/2025, have been fully considered but they are not persuasive.
Applicant argues that the aforementioned features (ie. providing a steel precoated with a Zn-based alloy coating containing 3 to 10 weight percent Al and 0.2 to 0.8 weight percent Mg and having a liquidus temperature lower than 400 degrees C, followed by heating said precoated steel sheet to AC3 to 1000 degrees C and performing hot press forming) are necessary but not sufficient to achieve the claimed limitations. It is not entirely clear to the examiner as to what argument applicant is trying to make. [0038 instant spec.] expressly teaches that the above features are sufficient to achieve the hot-pressed member of the instant claims. If applicant is of the position that the aforementioned parameters are not sufficient to achieve the claims, further rejections under 112a for lack of enablement are required because the specification does not sufficiently describe how to make the claimed invention. See MPEP 2164. If applicant is of the position that some other parameters/steps disclosed in the specification are required to achieve the instant claim, the examiner cannot concur absent concrete evidence to the contrary which has not been provided. The examiner notes that evidence to the contrary would appear to overcome the current rejections.
Applicant further argues that Speers et al. does not teach the Mg range of 0.2 to 0.8 weight percent and liquidus temperature of 400 degrees C or lower that are necessary to achieve the claimed limitations. The examiner cannot concur. Speers et al. expressly teaches an Mg amount of up to 10.05 weight percent Mg and a liquidus temperature of less than 419 degrees C of the coating layer [0009, 0063]. These parameters overlap with and are therefore substantially similar to those disclosed in the instant specification, which would result in overlapping, substantially similar features relative to those as claimed absent concrete evidence to the contrary which has not been provided. See MPEP 2112. The examiner notes that evidence to the contrary would appear to overcome the current rejections.
Applicant argues that the prior art does not teach advantageous effects such as improved coating adhesion and corrosion resistance. It is noted that the features upon which applicant relies (i.e., coating adhesion, corrosion resistance, etc.) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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 NICHOLAS A WANG whose telephone number is (408)918-7576. The examiner can normally be reached usually M-Th: 7-5.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734