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 10 is canceled. Claims 12-20 are newly added. Claims 1-9 and 11-20 are pending where claim 1 has been amended.
Status of Previous Rejections
The previous 35 USC § 112 rejections of the claims have been withdrawn in view of amendments to the claims.
The previous 35 USC § 103 rejections of the claims have been maintained.
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) 1-9 and 11-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR 101406670 B1 to Sohn et al (an English language machine translation has been relied upon for examination purposes) in view of WO 2016/063467 to Nakagawa et al (cited by applicant in IDS, US 2017/0306437 to Nakagawa, also cited by applicant in IDS, has been relied upon as an English language translation).
Regarding claims 1-4 and 9, Sohn discloses a hot press-formed member comprising: a base steel sheet; and a plating layer comprising Zn or Zn alloy on the base steel sheet, wherein a Mn(wt %)/Zn(wt %) content ratio measured in an oxide layer of the plating layer (i.e. a point 1 μm from a surface of the plating layer) is up to 30/70, i.e. up to 0.43 (overlapping the instantly claimed range of 0.1 or more), wherein a maximum crack depth penetrating the base steel sheet from an interface between the base steel sheet and the plating layer is 7 μm or less (within the claimed range of 10 µm or less) (Sohn, abstract, para [0038], Examples, para [0076-0083], Tables 1 and 2).
Sohn does not disclose the instantly claimed microstructure or composition of the base steel sheet, but instead discloses that the base steel sheet applied to the hot press formed article of Sohn in not particularly limited, and any steel sheet applied to general hot press forming is sufficient (Sohn, para [0029]).
Nakagawa discloses a hot press-formed member comprising a base steel sheet and with a Zn-based coating layer comprising the following composition (Nakagawa, abstract, para [0070-0160]) which overlaps the instantly claimed composition as well as numerous examples lying within the instantly claimed composition, such as Example O (Nakagawa, Table 1-1, Example O, para [0161-0173])
Element
Claimed wt%
Nakagawa wt%
Nakagawa O wt%
Overlaps/Lies within?
C
0.08-0.30
0.12-0.18
0.155
Yes
Si
0.01-2.0
0.01-2.5
0.20
Yes
Mn
3.1-8.0
3.5-11.0
6.30
Yes
Al
0.001-0.5
0.005-0.1
0.035
Yes
P
0.001-0.05
0-0.05
0.030
Yes
S
0.0001-0.02
0-0.05
0.002
Yes
N
0-0.02
0-0.01
0.003
Yes
Fe
Balance
Balance
Balance
Yes
Wherein the steel of Nakagawa contains 3.0% to 20.0% of retained austenite (Nakagawa, para [0118-0119]) and Example 15 of steel O comprises martensite and a retained austenite content of 4.5% (Nakagawa, Table 4-1, Example 15), overlapping and lying within the instantly claimed retained austenite contents, respectively.
Regarding claims 1-4 and 9, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ the base steel of Nakagawa as the base steel of the hot-press formed member of Sohn. The motivation for doing so is that the base steel sheet applied to the hot press formed article of Sohn in not particularly limited, and any steel sheet applied to general hot press forming is sufficient (Sohn, para [0029]) and the base steel of Nakagawa is capable of achieving good mechanical properties in the form of a high TS of 1500 MPa or more and a uniform elongation of 6.0% or more (Nakagawa, abstract).
Regarding the overlapping ranges, 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 Sohn in view of Nakagawa including the instantly claimed because Sohn in view of Nakagawa discloses the same utility throughout the disclosed ranges.
Regarding claims 5-7, Nakagawa discloses controlling both composition and processing conditions in order to minimize austenite grain size during annealing (Nakagawa, para [0100-103, 0109, 0130]) and further discloses that a prior austenite grain size of 8 µm or less is readily achievable in conventional steels by conventional means (Nakagawa, para [0010-0012]). “[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, Nakagawa recognizes both composition and processing as result effective variable for minimizing austenite grain size during annealing, and that a prior austenite grain size of 8 µm or less is readily achievable in conventional steels by conventional means. It would require little more than routine experimentation by one of ordinary skill in the art to determine the optimal or workable ranges of composition and processing conditions in order to achieve as small of a prior austenite grain size as possible, including to within the conventional ranges of a prior austenite grain size of 8 µm or less.
Regarding claim 8, Sohn discloses that the hot press-formed member comprises a metal coating comprising Fe between the base steel sheet and plating layer (Sohn, para [0033])
Regarding claim 11, Nakagawa discloses numerous examples lying within the instantly claimed ranges, such as example AP with 0.03% Ti and example AQ containing 0.03% Nb (Nakagawa, Table 1-2, Examples AP and AQ).
Regarding claims 12 and 13, Sohn discloses a Mn(wt %)/Zn(wt %) content ratio measured at measured in an oxide layer of the plating layer (i.e. a point 0.5-1.2 μm in a thickness direction from a surface of the plating layer) is up to 30/70, i.e. up to 0.43 (Sohn, abstract, para [0038], Examples, para [0076-0083], Tables 1 and 2)., overlapping the instantly claimed range of 0.1-2.0. Regarding the overlapping ranges, 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 Sohn in view of Nakagawa including the instantly claimed because Sohn in view of Nakagawa discloses the same utility throughout the disclosed ranges.
Regarding claim 14, Nakagawa discloses a TS of 1500 MPa or more (Nakagawa, abstract).
Regarding claim 15, Sohn discloses the plating layer may be a zinc or zinc alloy plating layer (Sohn, para [0032-0033]).
Regarding claims 16-18 and 20, steel O of Nakagawa lies within the instantly claimed composition ranges (Nakagawa, Table 1-1, Example O, para [0161-0173]).
Regarding claim 19, steel AT of Nakagawa lies within the instantly claimed composition ranges (Nakagawa, Table 1-2, Example AT, para [0161-0173]).
Response to Arguments
Applicant's arguments filed 7/28/2026 have been fully considered but they are not persuasive.
Applicant argues that Sohn does not disclose “a Mn(wt%)/Zn(wt%) content ratio measured at a point 1 µm from a surface of the plating layer is 0.1 or more.” This is not found persuasive because Sohn discloses a hot press-formed member comprising: a base steel sheet; and a plating layer comprising Zn or Zn alloy on the base steel sheet, wherein a Mn(wt %)/Zn(wt %) content ratio measured in an oxide layer of the plating layer (i.e. a point 1 μm from a surface of the plating layer) is up to 30/70, i.e. up to 0.43 (overlapping the instantly claimed range of 0.1 or more) (Sohn, abstract, para [0038], Examples, para [0076-0083], Tables 1 and 2). Regarding the overlapping ranges, 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 Sohn in view of Nakagawa including the instantly claimed because Sohn in view of Nakagawa discloses the same utility throughout the disclosed ranges.
Applicant argues that Sohn does not disclose “a maximum crack depth penetrating the base steel sheet from an interface between the base steel sheet and the plating layer is 10 µm or less.” This is not found persuasive because Sohn discloses a maximum crack depth penetrating the base steel sheet from an interface between the base steel sheet and the plating layer is 7 μm or less, within the claimed range of 10 µm or less (Sohn, abstract, para [0038], Examples, para [0076-0083], Tables 1 and 2).
Applicant argues that the instant specification demonstrates the criticality of the instantly claimed Mn/Zn content ratio of 0.1 or more for achieving a maximum crack depth of 10 µm or less. This is not found persuasive because an affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. See MPEP 716.02(e) [R-2]. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.”). In the instant case, the closest prior art, Sohn demonstrates a maximum crack depth of 7 µm or less (Sohn, abstract, para [0038], Examples, para [0076-0083], Tables 1 and 2), which is well within applicant’s alleged unexpected result of a maximum crack depth of 10 µm or less.
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 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
