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 .
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 8-9 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 (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 8-9 recite “the component” in line 1 of each claim and this phrase lacks antecedent basis and it is unclear if “the component” is the fastener or the steel component. Further, claim 8 is considered indefinite as it recites components that do not directly appear to be the fastener of claim 1 with threaded area and/or shank area and it is unclear how the claimed components related to the fastener. Claim 9 is considered indefinite as it recites springs, leaf springs, disc springs, and chain drives which are not fasteners with threaded area and/or shank area and it is unclear how the claimed components related to the claimed fastener. As such, the public is not appropriately appraised of the scope of the subject matter of these claims.
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.
Claims 1-4, 6, and 8-9 are rejected under 35 U.S.C. 103 as obvious over Nakada et al. (US 2014/0030635).
Considering claims 1 and 4, Nakada teaches a highly corrosion-resistant alloy coating film on a metallic surface (abstract) and where the coated article may be a screw, bolt, or nut (Paragraph 21) (e.g. a fastener comprising at least a threaded area). Examples are taught using carbon steel JIS S45C (Paragraphs 76 and 78-80) which is evidenced by Steel JIS to comprise by weight C: 0.42-0.48%, Si: 0.15-0.35%, Mn: 0.6-0.9%, P: max 0.03%, S: max 0.035%, Ni: max 0.2%, Cr: max 0.2%, Cu: max 0.3% (NPL – p.1) which overlaps applicants disclosure in Paragraph 30 of the originally filed specification as low-alloy steel. The article is coated with a Ni-alloy coating film with a diffusion layer between the article and Ni-alloy coating thereon formed by subjecting to heating at 600 °C or higher (Paragraph 21) (e.g. fully coated on all surfaces including necessary threads). Examples are taught where the heating is done at 2.5 hours at 900 °C (Paragraph 106) and 2 hours at 900 °C (Paragraph 107), etc. to form an interdiffusion coating between the substrate and Ni-alloy coating with a thickness of the interdiffusion coating being 3-15 µm with a Ni content in the film being 28-74% (Table 1). Nakada does not expressly teach the claimed diffusion increasing continuously in the direction of a surface of the Ni diffusion layer, or perpendicularity thereof, from 2% by weight above the Ni content of the steel component to the maximum concentration.
However, applicant discloses where the claimed component is formed from a steel component by applying a ≥30 wt.% Ni layer, heating the Ni layer from 750-950 °C for at least 10 minutes (Specification Paragraphs 12 and 42).
As Nakada teaches a substantially identical Ni-coated steel component with Ni-layer thickness and concentration heated to a substantially identical temperature with a substantially identical timeframe as that which applicant discloses one would reasonably expect the Ni-coated component of Nakada to possess the claimed continuous Ni diffusion in the direction of the surface, and perpendicularity thereof, as claimed as substantially identical materials treated in a substantially identical manner are expected to behave the same, absent an objective showing. See MPEP 2112.02.
As such, the instantly claimed fastener would have been obvious to one of ordinary skill in the art before the effective filing date in view of the teachings of Nakada as this is considered a conventionally known combination of fastener and coating known to afford corrosion resistance and one would have had a reasonable expectation of success. Further, the thickness and Ni content disclosed by Nakada overlap those which are claimed and the courts have held that where claimed range overlap or lie inside of those disclosed in the prior art a prima facie case of obviousness exists. See MPEP 2144.05.
Considering claim 2, Nakada teaches where the article is a screw (Paragraph 21), but does not expressly teach the claimed high-strength material for the screw. However, as outlined above, this material strength is expected to be present as Nakada teaches a substantially identical material as that which is claimed and a material and its properties are inseparable, absent an objective showing. See MPEP 2112.01.
Considering claim 3, Nakada teaches where the Ni content in the Ni-alloy plating is in the range of 10-98 wt.% (Paragraph 68). See MPEP 2144.05.
Considering claim 6, Nakada teaches where the Ni-alloy coating is formed on the interdiffusion layer with a Ni content up to 98% by weight (Figure 1; Paragraph 62). See MPEP 2144.05.
Considering claims 8-9, Nakada teaches where the component maybe a bolt, nut, or screw (Paragraph 21) (i.e. a formed component or screw).
Response to Arguments
Applicant’s arguments, see remarks p.8, 1st – 2nd sections, filed 11 July 2025, with respect to objections to the specification and drawings have been fully considered and are persuasive. The objections of the specification and drawings have been withdrawn. Applicant has corrected the informalities.
Applicant’s arguments, see remarks pp.8-10, filed 11 July 2025, with respect to 35 USC 102/103 rejections in view of Jansen and 35 USC 103 rejections in view of Mori have been fully considered and are persuasive. The rejections of claims 1-9 have been withdrawn. Applicant has amended the claims to recite steel materials outside of the scope of Jansen and a fastener outside the scope of Mori. However, upon further consideration, a new ground(s) of rejection is made in view of Nakada as outlined above.
Conclusion
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 SETH DUMBRIS whose telephone number is (571)272-5105. The examiner can normally be reached M-F 6:00 AM - 3:30 PM.
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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784