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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 8/07/2026 has been entered.
Status of Claims
Claim 2 is canceled. Claims 1, 3, 4 and 5 are pending where claim 1 has been amended.
Status of Previous Rejections
The previous 35 USC § 103 rejections of the claims have been maintained.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 and 3-5 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.
Instant claim 1 recites the limitation “wherein the heat treatment in the online alloying starts before the plating layer is cooled and hardened after hot-dip aluminum plating.” This limitation is indefinite because it is unclear what is meant by the limitation “hardened.” The instant specification at para [0079] states that the spraying of the aluminum particles prior to online alloying necessarily cools the plating layer, and the hardness of a material is inversely proportional to the temperature of said material, thus cooling the material would necessarily an increase in the hardness thereof and thus “harden” the material. If applicant is intending for the limitation to mean that the material stays below a certain hardness level, then said hardness level should be explicitly stated in the claims. If applicant is intending that the temperature stays above a certain level during cooling (e.g. above 640 °C as stated in instant para [0081]), then said minimum temperature should be explicitly stated in the 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.
Claim(s) 1 and 3-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2012255204A to Maki et al (an English language machine translation has been relied upon for examination purposes) in view of KR 1998-049293 to Jang et al (an English language machine translation has been relied upon for examination purposes).
Regarding claim 1, Maki discloses a method of manufacturing an iron-aluminum-based plated steel sheet, the method comprising: preparing a base steel sheet; obtaining an aluminum plated steel sheet through dipping the base steel sheet in an aluminum plating bath including, by wt %, 1.0 wt% Si (within the claimed range of 0.0001% to 7% of silicon), 1.5 wt% Mg (within the claimed range of 1.1% to 15% of magnesium), 48 wt% Fe and a balance (49.5 wt%) of aluminum, and other inevitable impurities to plate the base steel sheet with a coating amount of 11.5 µm per side; and obtaining an iron-aluminum-based plated steel sheet through online alloying of performing a heat treatment by maintaining the aluminum plated steel sheet for 15 seconds (within the claimed range of 1 to 20 seconds) within a heating temperature range of 700 °C (within the claimed range of 670°C to 900°C) after the plating.
(Maki, abstract, para [0007, 0051-0059], Table 2).
Regarding the instantly claimed limitation of a coating amount of 10 to 40 g/m2 per side, the theoretical density of the alloy coating of Maki a8 is calculated to be 3.8878 g/cm3, or 3.8878 x 106 g/m3, which results in a coating amount of 3.8878 x 106 g/m3 x 11.5 x 10-6 m = 44.7 g/m2 per side, which is slightly outside the instantly claimed range. However, Maki more broadly discloses that the ratio total thickness of both sides of the plating layer should be within a range of 0.5% to 3% (Maki, para [0029]). For the 1.6 mm thick steel sheet of Maki a8, this translates to a thickness range of 8-48 µm total, or 4-24 µm per side. A range of 4-24 µm per side is equivalent to a coating amount of 15.6-93.3 g/m2 per side for the alloy coating of Maki a8, overlapping the instantly claimed range of 10 to 40 g/m2 per side. 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 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of Maki including the instantly claimed because Maki discloses the same utility throughout the disclosed ranges. Additionally, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties (See MPEP 2144.05 I). See In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of "less than 6 pounds per cubic feet" and the prior art range of "between 6 lbs/ft3 and 25 lbs/ft3" were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.) In the instant case, the disclosed coating thickness of Maki a8 of 44.7 g/m2 per side is close enough to the instantly claimed range of 10-40 g/m2 that one of ordinary skill in the art would expect them to have the same properties, especially in light of the fact that 40 g/m2 is written by applicant with one significant figure and could be interpreted to allow for values that round to 40 g/m2 per side when rounded to one significant figure, including the disclosed value of Maki a8 of 44.7 g/m2 per side.
Regarding the limitation “for hot press forming,” a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the iron-aluminum-based plated steel sheet of Maki could be used for hot press forming.
Maki does not disclose spraying aluminum powder particles onto a surface of the aluminum plated steel sheet, after obtaining the aluminum plated steel sheet.
Jang discloses that immediately after obtaining a hot dipped aluminum plated steel sheet, aluminum powder particles may be sprayed onto the surface of the plated steel sheet prior to the plating layer finishing solidification in order for the powder to act as a nuclei of solidification on the surface of the plating layer and to absorb heat from the surface of the plating layer thereby improving surface appearance, workability and heat resistance (Jang, abstract, “Disclosure,” pages 2-4 of English translation).
Regarding claim 1, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to cold spray aluminum powder particles onto the surface of the aluminum plated steel sheet immediately after obtaining the aluminum plated steel sheet of Maki as suggested by Jang. The motivation for doing so would be for the powder to act as a nuclei of solidification on the surface of the plating layer and to absorb heat from the surface of the plating layer thereby improving surface appearance, workability and heat resistance (Jang, abstract, “Disclosure,” pages 2-4 of English translation).
Regarding the limitation “wherein the heat treatment in the online alloying starts before the plating layer is cooled and hardened after hot-dip aluminum plating,” this limitation is indefinite as set forth in the above 35 USC 112 rejection. Regardless, Maki states that the cooling temperature prior to alloying treatment is 300 °C or higher (Maki, para [0049]). As stated in the above 35 USC 112 rejection it is unclear at what temperature level and/or hardness applicant considers the plating layer “hardened,” but applicant allows for cooling to above 640 °C as stated in instant para [0081] of the instant specification. The temperature range of Maki of 300 °C or higher overlaps the disclosed temperature range of above 640 °C. 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 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of Maki including the instantly claimed because a prima facie case of obviousness exists in the case of overlapping ranges.
Regarding claim 3, the aluminum powder particles of Jang range from 1 to 15 µm (Jang, page 3 of English translation), overlapping the instantly claimed range of 5 µm to 40 µm. 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 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of Maki in view of Jang including the instantly claimed because Maki in view of Jang discloses the same utility throughout the disclosed ranges.
Regarding claims 4 and 5, Maki discloses the base steel sheet comprises the following composition (Maki, Table 1) which lies within the instantly claimed composition as follows:
Element
Claimed wt%
Maki wt%
Lies within?
C
0.04-0.5
0.20
Yes
Si
0.01-2
1.7
Yes
Mn
0.01-10
2.5
Yes
Al
0.001-1.0
0.033
Yes
P
0-0.05
0.004
Yes
S
0-0.02
0.002
Yes
N
0-0.02
0.0025
Yes
Cr+Mo+W
0.01-4.0 total
Cr: 0.02
Yes
Fe
Balance
Balance
Yes
Response to Arguments
Applicant's arguments filed 8/07/2026 have been fully considered but they are not persuasive.
Applicant argues that Maki does not disclose the instantly claimed limitation of “wherein the heat treatment in the online alloying starts before the plating layer is cooled and hardened after hot-dip aluminum plating. This is not found persuasive because regarding the limitation “wherein the heat treatment in the online alloying starts before the plating layer is cooled and hardened after hot-dip aluminum plating,” this limitation is indefinite as set forth in the above 35 USC 112 rejection. Regardless, Maki states that the cooling temperature prior to alloying treatment is 300 °C or higher (Maki, para [0049]). As stated in the above 35 USC 112 rejection it is unclear at what temperature level and/or hardness applicant considers the plating layer “hardened,” but applicant allows for cooling to above 640 °C as stated in instant para [0081] of the instant specification. The temperature range of Maki of 300 °C or higher overlaps the disclosed temperature range of above 640 °C. 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 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of Maki including the instantly claimed because a prima facie case of obviousness exists in the case of overlapping ranges.
Applicant argues that Jang teaches cooling should continue, preferably to 400 °C or less. This is not found persuasive because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (see MPEP 2123 [R-5]).
Applicant argues that Maki does not disclose the coating bath composition but rather the plating layer composition. This is not found persuasive because the plating layer composition would be substantially similar to that of the coating bath composition.
Applicant argues that the coating amount of Maki of 44.7 g/m2 is outside of the instantly claimed range of 10 to 40 g/m2. This is not found persuasive because regarding the instantly claimed limitation of a coating amount of 10 to 40 g/m2 per side, the theoretical density of the alloy coating of Maki a8 is calculated to be 3.8878 g/cm3, or 3.8878 x 106 g/m3, which results in a coating amount of 3.8878 x 106 g/m3 x 11.5 x 10-6 m = 44.7 g/m2 per side, which is slightly outside the instantly claimed range. However, Maki more broadly discloses that the ratio total thickness of both sides of the plating layer should be within a range of 0.5% to 3% (Maki, para [0029]). For the 1.6 mm thick steel sheet of Maki a8, this translates to a thickness range of 8-48 µm total, or 4-24 µm per side. A range of 4-24 µm per side is equivalent to a coating amount of 15.6-93.3 g/m2 per side for the alloy coating of Maki a8, overlapping the instantly claimed range of 10 to 40 g/m2 per side. 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 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of Maki including the instantly claimed because Maki discloses the same utility throughout the disclosed ranges. Additionally, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties (See MPEP 2144.05 I). See In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of "less than 6 pounds per cubic feet" and the prior art range of "between 6 lbs/ft3 and 25 lbs/ft3" were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.) In the instant case, the disclosed coating thickness of Maki a8 of 44.7 g/m2 per side is close enough to the instantly claimed range of 10-40 g/m2 that one of ordinary skill in the art would expect them to have the same properties, especially in light of the fact that 40 g/m2 is written by applicant with one significant figure and could be interpreted to allow for values that round to 40 g/m2 per side when rounded to one significant figure, including the disclosed value of Maki a8 of 44.7 g/m2 per side.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN D WALCK whose telephone number is (571)270-5905. The examiner can normally be reached Monday-Friday 10 AM - 6:30 PM.
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/BRIAN D WALCK/Primary Examiner, Art Unit 1738
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