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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 13, 2025 has been entered.
Claims 1-5 are pending, claim 1 is independent. Any rejections and/or objections, made in the previous Office Action, and not repeated below, are hereby withdrawn.
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.
Claims 1-5 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Regarding claim 1, it is indefinite if “a steel sheet” in line 12, is the same “steel sheet” as introduced in line 6, or a new and different steel sheet.
Regarding claims 2-5, claims 2-5 are rejected for their incorporation of the above due to their respective dependencies on claim 1.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Dobrzynski et al. (“Surface Texture after Turning for Various Workpiece Rigidities”), hereinafter Dobrzynski in view of Fujita et al. (US 2021/0164080 A1), hereinafter Fujita, as evidenced by Goritskii et al. (“Nature of Anistoropy of Impact Toughness of Structural Steels with Ferrite-Pearlite Structure”), hereinafter Goritskii (all of record in the application).
Regarding claims 1-5, Dobrzynski teaches studies carried out on steel (Abstract), including a P#4 Rt of an S355JR steel of 19.26 (Table 6), a mean Rdq value of S55JR P#4 of 0.149 (Table 6, these calculate to Relationship 1 of 1.6826) and mean and Median Ra values for the same sample of 3.16 (Table 4). Examiner notes that throughout Dobrzynski they refer to them as S355 samples, and there is a typo in the charts listing it as 255. Goritskii provides evidence that S355 steel has a composition in weight % of C: 0.16, Si: 0.22, Mn: 1.49, S: 0.004, P: 0.014, Cr: 0.03, Ni: 0.01, Nb: 0.024, Ti: traces (Table 1; one of ordinary skill in the art reasonably understands that steels have a balance of iron and inevitable impurities) and a ferrite and pearlite structure where pearlite is 19.0% (Table 2, absent a teaching to the contrary pearlite fractions are understood to be area fraction or an equivalent). Goritskii teaches a low threshold of elements (“traces” in Table 1), and any element not listed is reasonably understood to be absent (i.e. N, Mo and B).
Dobrzynski does not teach the steel material is in the form of a steel sheet, nor the roughness measurements on a surface of the steel sheet, nor the steel material further comprises a plating layer of the claimed composition. Fujita is in a similar field of endeavor, steel sheets with an overlapping composition to that claimed (claim 1) with an aluminum-based plating layer above the base material (claim 1) where the plating layer includes 3-15 mass% Si, 0-5 mass%, impurities and 80-97mass% Al (overlaps balance of Al) (claim 1) and a roughness Ra of the base material is 0.5-5 microns ([0158]). Fujita teaches an aluminum-based plating layer above the base material (claim 1) where the plating layer includes 3-15 mass% Si, 0-5 mass%, impurities and 80-97mass% Al (overlaps balance of Al) (claim 1) and a roughness Ra of the base material is 0.5-5 microns ([0158]). One of ordinary skill in the art reasonably understands impurities are inevitable.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Dobrzynski to incorporate the aluminum alloy coating and steel sheet of Fujita. The motivation for doing so would have been combining prior art elements according to known methods to yield predictable results (MPEP 2143 IA). As cited above the prior art contains each element claimed although not combined in a single reference (finding 1). One of ordinary skill in the art would have combined the elements by known methods to combine steel materials of overlapping compositions and Ra roughness values (cited above) and the aluminum coating would maintain its resistance to corrosion during hot stamping (Fujita [0020])) and steel would act as steel (finding 2). One of ordinary skill in the art readily understands the results of coating a steel sheet with aluminum are predictable (finding 3).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Regarding “for hot forming”, this occurs before the transitional phrase and lacks sufficient structure to further limit the claim and is therefore considered an intended use of the semifinished product. See MPEP 2111.02. Dobrzynski in view of Fujita, as evidenced by Goritskii teaches a substantially identical product as that which is claimed and is considered to meet the claimed intended use.
Response to Arguments
Applicants’ amendment and related arguments, see Pgs. 5 and 6, filed December 31, 2025, with respect to claim rejections have been fully considered and are persuasive. Therefore, the rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Dobrzynski in view of Fujita as evidenced by Goritskii. Applicants argument that a modification of Dobrzynski to a sheet would be incompatible with machining shafts is noted; however, the present motivation to combine (above) is not addressed by this argument and is not persuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE CHRISTY whose telephone number is (303)297-4363. The examiner can normally be reached Monday-Thursday, 7am-4pm MT.
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/KATHERINE A CHRISTY/Primary Examiner, Art Unit 1784