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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-7 and 14-19, in the reply filed on 09/02/2025 is acknowledged.
Claims 8-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/02/2024.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/19/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claims 1, 3-5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Lao et al. (CN106048519A) [IDS dated 01/19/2024], herein Lao.
The Examiner has provided a machine translation of (CN106048519A). The citation of the prior art in this rejection refers to the machine translation.
In regards to claims 1, 3-4 and 7, Lao teaches a steel component with a barrier coating comprising a Fe-Al diffusion layer and an alumina formed directly on the surface of the diffusion layer [lines 96-100]. The diffusion layer has a thickness of 2 to 14 microns [104-105, 130-136]. Luo does not teach the aluminum content in the diffusion layer starts at 10% by weight above the aluminum content of the steel up to the maximum concentration, and the maximum concentration is 11 – 60% by weight. However, it is expected to meet the limitation as the materials and processes used to form the layer are substantially similar to that of the claimed layer, i.e., application of an aluminum layer and heat treatment [lines 123-133], see In re Best.
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. [citation omitted] Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art.
Lao teaches the component is a steel, but does not expressly teach that the steel is heat-treatable, low-alloy or unalloyed steel.
However, it would have been obvious of ordinary skill in the art before the effective filing date of the invention to have employed any steel including heat-treatable, low-alloy or unalloyed steel that would benefit from the barrier coating. The motivation for doing so is that the “selection of a known material based on its suitability for its intended use [supports] a prima facie obviousness determination.” See MPEP 2144.07.
In regards to claim 5, Lao teaches the diffusion layer comprises intermetallic phases such as FeAl [lines 294-296, 342-352].
Claims 2 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Lao et al. (CN106048519A) [IDS dated 01/19/2024], herein Lao, as applied to claim 1 above, and further in view of Brahimi et al. (Alloy and composition dependence of hydrogen embrittlement susceptibility in high-strength steel fasteners), herein Brahimi.
In regards to claims 2 and 6, Lao does not expressly teach the coated steel is a fastener or screw.
Brahimi teaches steel fasteners such as screws having a threaded area [Title, Abstract, Pg. 10].
Brahimi teaches the steel suffers from hydrogen embrittlement [Abstract].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have used the steel screw of Brahimi as the steel component of Lao. One would have been motivated to do so as the barrier coating of Luo is applicable to steel and would protect the fastener from hydrogen embrittlement.
Claims 14-19 are rejected under 35 U.S.C. 103 as being unpatentable Brahimi et al. (Alloy and composition dependence of hydrogen embrittlement susceptibility in high-strength steel fasteners), herein Brahimi, in view of Lao et al. (CN106048519A) [IDS dated 01/19/2024], herein Lao.
The Examiner has provided a machine translation of (CN106048519A). The citation of the prior art in this rejection refers to the machine translation.
IN regards to claims 14-16 and 18, Brahimi teaches high-strength steel fasteners such as screws having a threaded area [Title, Abstract, Pg. 10]. Brahimi teaches the steel suffers from hydrogen embrittlement [Abstract]. Brahimi does not teach the formation of an aluminum diffusion layer or a further alumina coating.
Lao teaches a steel component with a barrier coating comprising a Fe-Al diffusion layer and an alumina formed directly on the surface of the diffusion layer [lines 96-100]. The diffusion layer has a thickness of 2 to 14 microns [104-105, 130-136]. Luo does not teach the aluminum content in the diffusion layer starts at 10% by weight above the aluminum content of the steel up to the maximum concentration, and the maximum concentration is 11 – 60% by weight. However, it is expected to meet the limitation as the materials and processes used to form the layer are substantially similar to that of the claimed layer, i.e., application of an aluminum layer and heat treatment [lines 123-133], see In re Best.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have applied the barrier coating of Lao to the steel screw of Brahimi. One would have been motivated to do so based on the protective properties afforded by the barrier coating. Additionally, as the screw is steel one would have had a reasonable expectation of success.
In regards to claim 17, Lao further teaches the diffusion layer comprises intermetallic phases such as FeAl [lines 294-296, 342-352].
In regards to claim 19, Brahimi teaches steel fasteners, but does not expressly teach that the steel unalloyed steel [Abstract].
However, it would have been obvious of ordinary skill in the art before the effective filing date of the invention to have employed any steel fastener including an unalloyed steel fastener that would benefit from the barrier coating. The motivation for doing so is that the “selection of a known material based on its suitability for its intended use [supports] a prima facie obviousness determination.” See MPEP 2144.07.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH A COLLISTER whose telephone number is (571)270-1019. The examiner can normally be reached Mon.-Fri. 9 am-5 pm.
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/ELIZABETH COLLISTER/Primary Examiner, Art Unit 1784