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 .
Status of Claims
Claim 5 is canceled. Claims 1-4 and 6-12 are pending where claims 1 and 6-8 have been amended.
Status of Previous Rejections
The previous 35 USC § 112 and § 103 rejections of the claims have been withdrawn in view of amendments to the claims.
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.
Claim 9 is 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.
Claim 9 recites the limitation "the at least one alkaline earth metal or transition metal.” There is insufficient antecedent basis for this limitation in the claim.
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) 1-4 and 6-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/020644 A1 to Pohl et al (US 2021/0301364 A1 to Pohl has been relied upon as an English language equivalent) in view of US 2017/0260601 A1 to Banik et al.
Regarding claim 1, Pohl discloses a method for producing a sheet metal component by hot-forming a flat steel product which is provided with an anti-corrosion coating, and which, by flexible cold rolling, is provided with at least one portion which has a different thickness than another adjoining portion of the flat steel product, wherein the transition between the portions of the flat steel product of different thicknesses takes place abruptly, the method comprising the following steps:
a) providing a flat steel product comprising a steel substrate produced from a steel which overlaps the instantly claimed composition as follows:
Element
Claimed wt%
Pohl wt%
Overlaps?
C
0.07-0.4
0.15-0.4
Yes
Mn
1.0-2.5
0.8-2.5
Yes
Si
0.06-0.9
0.1-0.9
Yes
P
0-0.03
0-0.01
Yes
S
0-0.01
0.01
Yes
Al
0-0.1
0-0.1
Yes
Ti
0-0.15
0.01
Yes
Nb
0-0.6
≤impurities
Yes
B
0-0.005
0.002-0.006
Yes
Cr
0-0.5
0.01-1.0
Yes
Mo
0-0.5
≤impurities
Yes
Cr+Mo
0-0.5
0.01-1.0
Yes
Fe
Balance
Balance
Yes
and comprising an anti-corrosion coating applied to the steel substrate, which coating is formed from a composition overlapping the instantly claimed ranges as follows:
Element
Claimed wt%
Pohl wt%
Overlaps?
Si
0-15
0-15
Yes
Fe
0-5
0-5
Yes
Alkaline metal
0.1-5
Or 0-<0.1
0-1.5 Mn, Cr, Ti, Cu, Ni, Nb, Mo, V
No alkaline metal
Yes
Al
Balance
Balance
Yes
c) flexible cold rolling of the flat steel product in order to produce the portions of different thickness on the flat steel product, then
d) heating the flexibly cold-rolled flat steel product to a hot-forming temperature of 750 – 1000 °C (overlapping the instantly claimed range of 800 – 1000 °C) so that, after heating, the surface of the anti-corrosion coating of the flat steel product is coated with a layer consisting of a primary oxide of the at least one transition metal contained in the anti-corrosion layer then
e) hot-forming the flat steel product to form the sheet metal component.
(Pohl, abstract, para [0032-0043])
Pohl does not explicitly disclose the coating contains 0.1% to 5% of at least one alkaline earth metal or “b) in the event that the anti-corrosion coating contains no or less than 0.1 wt% of the at least one alkaline earth metal, applying a solution containing at least one alkaline earth metal to the anti-corrosion coating of the flat steel product.”
Banik discloses that alkaline earth metals and transition metals are known substitutable equivalents known for the same purpose of admixing in an aluminum coating for forming a thin oxide layer on the surface of the protective coating and masking the aluminum situated between it and the steel substrate (Banik, para [0023-0024]).
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 substitute part or all of the Mn, Cr, Ti, Cu, Ni, Nb, Mo and/or V transition metals of Pohl with an alkaline earth metal as suggested by Banik. The motivation for doing so is that alkaline earth metals and transition metals are known substitutable equivalents known for the same purpose of admixing in an aluminum coating for forming a thin oxide layer on the surface of the protective coating and masking the aluminum situated between it and the steel substrate (Banik, para [0023-0024]) and substitution of one known element for another yields predictable results to one of ordinary skill in the art (see MPEP 2144.06 and 2143 B).
Regarding the overlapping ranges of Pohl in view of Banik, 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 Pohl in view of Banik including the instantly claimed because Pohl discloses the same utility throughout the disclosed ranges.
Regarding the limitation “in an atmosphere containing more than 15 vol.% oxygen over a holding period which is sufficient to introduce thermal energy quantity Js of more than 44,000 kJs and at most 400,000 kJs into the flat steel product, so that, after heating, the surface of the anti-corrosion coating of the flat steel product is densely coated with a layer consisting of a primary oxide of the at least one alkaline earth,” this limitation is indefinite as set forth in the above 35 USC 112 rejection. Regardless, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 [R-5]. In the instant case, Pohl forms the oxide layer via heating. It would require little more than routine experimentation by one of ordinary skill in the art to determine the optimal or workable ranges of oxygen content and holding period necessary to produce an optimal or workable oxide layer. Additionally, Pohl discloses a holding time of 4 to 10 minutes (Pohl, para [0042]), which lies within the holding time of instant claim 12 of 100-900 s.
Regarding claim 2, the thickness of the flat steel product provided in step a) of Pohl is 1.0 to 4.0 mm (Pohl, claim 22), within the instantly claimed range of 0.6-7 mm.
Regarding claim 3, 4 and 6-8, the alloy of Pohl overlaps the instantly claimed ranges (Pohl, abstract, para [0032-0043]).
Regarding claim 9, step b) does not need to be performed in the process of Pohl in view of Banik as the coating of Pohl in view of Banik may contain 0.1 wt% or more of alkaline metal.
Regarding claim 10, Pohl discloses a final coating thickness of more than 15 micrometers (Pohl, para [0042]). As the coating of Pohl is predominantly aluminum, the density of the coating should be close to that of aluminum, namely 2.7 g/cm3. A density of 2.7x106 g/m3 multiplied by a coating thickness of more than 15x10-6 m results in a coating thickness of more than 40.5 g/m2, overlapping the instantly claimed range of 30 – 100 g/m2 per coated side of the flat steel product.
Regarding claim 11, the anti-corrosion coating of Pohl may be applied to the steel substrate of the flat steel product by hot dip galvanizing (Pohl, claim 24).
Regarding claim 12, Pohl discloses the heating of the flat steel product in step c) may take place in a continuous furnace (Pohl, para [0020]) by roller hearth furnace heating (Pohl, para [0040]), i.e. radiant heat, and Pohl discloses a holding time of 4 to 10 minutes (Pohl, para [0042]), which lies within the holding time of instant claim 12 of 100-900 s.
Response to Arguments
Applicant’s arguments, see pages 5 and 6, filed 8/29/2025, with respect to the rejection(s) of claim(s) 1-4 and 6-12 under 35 U.S.C. 103 as being unpatentable over WO 2020/020644 A1 to Pohl et al (US 2021/0301364 A1 to Pohl has been relied upon as an English language equivalent) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made under 35 U.S.C. 103 as being unpatentable over WO 2020/020644 A1 to Pohl et al (US 2021/0301364 A1 to Pohl has been relied upon as an English language equivalent) in view of US 2017/0260601 A1 to Banik et al.
.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US-8522586-B2 to Faderl discloses a flexible rolling method relevant to the instant claims.
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 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