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 .
In view of the Appeal Brief filed on 10/03/2025, PROSECUTION IS HEREBY REOPENED. New grounds of rejection are set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below.
Status of Claims
Claims 1-2, 4, 7-12 are pending and are presented for this examination.
Priority
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 10/03/2024, 04/18/2025, 09/15/2025, 11/06/2025 and is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Interpretation
Instant claims 1, 7 and 11 required “average content of Fe is a value calculated by integrating a curve representing the Fe content across a [emphasis added] thickness of the plating layer to obtain integral and dividing the integral by the thickness of the plating layer”. Hence, the term “a thickness of the plating layer” and “the thickness of the plating layer” is interpreted as a particular thickness of the plating layer.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1-2, 4, 7-12 are rejected under 35 U.S.C. 103(a) as being unpatentable over over FAT (NPL document “FAT 273” with entire English translation provided) in view of Liang (NPL document “Influence of heating parameters on properties of the Al-Si coating applied to hot stamping” published on 5/3/2017)
As for claims 1-2, 4, 7-12, FAT discloses a pressed hardened (Section 3.1.2) steel 22MnB5 with Al-Si coating. Hence, instant claims 1, 7 and 11 required hot press formed member comprising a steel sheet and a plating layer on the steel sheet.
Figure 5 below illustrates the content profile wt% as a function of diffusion depth measured by glow discharge spectroscopy (DGODS). From the Figure 5, it can be seen that the concentration gradient in an area with a Fe content of 45% to 80% in the plating layer is in one thickness direction from a surface of the plating layer according to a result of GDS analysis is calculated to be 3.26wt%/µm. Hence, 3.26wt%/ µm is within claimed 7wt%/ µm or less as required by instant claims 1, 7 and 11. It is also within claimed 5wt% or less as required by instant claim 2.
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Table 1 below illustrates compositions of FAT’s section 3.1.1.1 are within or close to instant claims 9-10 and 11-12 ranges.
Table 1
Element
Applicant
(weight %)
FAT et al.
(weight %)
Within
(weight %)
C
0.04-0.5
0.246
0.246
Si
0.01-2
0.284
0.284
Mn
0.01-10
1.201
1.201
Al
0.001-1
0.027
0.027
P
<=0.05
0.0169
0.0169
S
<=0.02
0.0033
0.0033
N
<=0.02
<=0.005
<=0.005
B (Claims 10 and 12)
0.0001-0.01
0.00248
0.00248
Regarding instant claims 1, 7 and 11 required number of voids, Liang discloses the effect of heating parameters on properties of the Al-Si coating applied to hot stamping in particular on the formation of Kirkendall void (Abstract), which reads on claimed required number of voids.
Liang explicitly discloses more and more Kirkendall voids and cracks appeared in the Al-Si coating when the heating temperature exceeded 600 degree C. (Abstract) In addition, number and size of Kirkendall voids also gradually increase in the coating with the prolonged hot stamping dwell time (Page 1095 Col 2 lines 2-3)
That is, Liang suggests number of voids is a result effective variable that can be controlled by short hot stamping dwell time and heating temperature<=600 degree C.
If a particular parameter is recognized as a result-effective variable, then the determination of the optimum or workable ranges of said parameter might be characterized as routine experimentation. MPEP 2144.05 II
Hence, it would have been obvious to one skill in the art, at the time the inventio is made to shorten hot stamping dwell time and lower heating temperature to below 600 degree C as suggested by Liang, in the hot press formed member of FAT for the benefit of avoiding cracks because Liang discloses formation of Kirkendall voids lead to cracks.
Regarding instant claims 1, 7 and 11 “wherein an average content of Fe of the plating layer is 40% or more”.
Figure 2 below shaded area (in blue) illustrates minimum Fe content is 45% at a depth of 35 µm and maximum Fe content is 60% at a depth of 40 µm across a thickness of 5 micron of the plating layer. Hence, average Fe content 50% or more is expected, which reads on claims 1, 4, 7, 8 and 11 required average content of Fe.
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Figure 2
Response to Argument
Applicant’s brief filed on 10/03/2025 is considered but is unpersuasive for the following reasons:
In response to argument that claims are not indefinite, argument is moot because 112 2nd paragraph rejection is withdrawn.
In response to argument that Fe content at a particular thickness cannot represent the average Fe content of the plating layer as presented in instant claims 1, 7 and 11, argument is incommensurate in scope of claims 1, 7 and 11 which does not recite “average Fe content of the entire plating layer”. Hence, Fe content at a particular thickness of the plating layer reads on average Fe content of the plating layer as claimed.
In response to argument that FAT does not disclose a plating layer (an Al-Si coating) having an average content of Fe over 40wt% or more, argument is not persuasive for the following reasons:
First, applicant merely recites “average Fe content of the plating layer” in which Fe content at a particular thickness of the plating layer reads on it. Applicant also recites “the Fe content across a thickness of the plating layer” in which a thickness can be a particular thickness of the plating layer.
Second, since a particular thickness of the 40µm plating layer in FAT reads on claimed “a thickness of the plating layer”, Figure 2 above shaded area (in blue) illustrates minimum Fe content is 45% and maximum Fe content is 60% across a thickness of 5 micron of the plating layer.
In response to argument that section 3.1.1.3 of FAT describes the thickness of the plating layer as 40µm and Fe content at a depth of 40µm represents its maximum value and the Fe content in the other regions in FAT’s plating layer is significantly lower, argument is incommensurate in scope of claim 1 which merely requires “average content of Fe of the plating layer” and “Fe content across a thickness of the plating layer”, not “average content of Fe of the entire plating layer” and not “Fe content across an entire thickness of the plating layer”. Figure 2 above illustrates at a depth of 35 µm, Fe content is 45%; and at a depth of 40 µm, Fe content is 60%. Hence, average Fe content across a thickness (of 5 µm) of the plating layer is expected to be 50% or more.
In response to argument that FAT does not seem to disclose or suggest that the steel is formed by hot press forming, argument is not persuasive because FAT’s steel member is formed by press hardening (see entire English translation of FAT), which suggest hot forming.
In response to argument that Liang discloses the characteristic of the Al-Si coating after
heat treatment and hence Lian and FAT are not combinable, argument is incommensurate in
scope of claimed invention which is directed to a product, not how the product is heat treated.
Hence, how the product is heated treated is irrelevant to the scope of claimed invention.
Both Liang and FAT are in same field of endeavor which is hot stamped formed steel member.
FAT is concerned with cracks (voids) and Liang provides a solution to avoid voids. Hence,
FAT and Liang are properly combinable.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNY R WU whose telephone number is (571)270-5515. The examiner can normally be reached on 8:30 AM-5:00 PM.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/JENNY R WU/Primary Examiner, Art Unit 1733