DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 19, 2026 has been entered.
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 .
Priority
This application, App. No. 18/385,162, filed October 30, 2023 is a divisional of App. No. 16/064,785 filed June 21, 2018.
Receipt is acknowledged of a certified copy of KR 10-2015-0186107 filed December 24, 2025 as required by 37 CFR 1.55 in App. No. 16/064,785. Receipt is also acknowledged of WO 2017/111442, the WIPO publication of PCT/KR2016/014963 filed December 21, 2016, in App. No. 16/064,785.
Claim Status
This Office Action is in response to Applicant’s Remarks and Claim Amendments filed March 19, 2026.
Claims Filing Date
March 19, 2026
New
8
Cancelled
7
Under Examination
1-6, 8
Withdrawn Abstract Objection
The following abstract objections are withdrawn due to the February 18, 2026 amendment:
Line 1 “A hot-press formed manufactured by”.
Lines 3 and 7 “consisting of”.
Withdrawn Claim Rejections - 35 USC § 112
The following 112(b) rejection is withdrawn due to claim cancellation:
Claim 7 lines 1-2 “the alloyed zinc-based plated layer includes Bi”.
Response to Remarks filed March 19, 2026
Dreulle in view of Imai; Nishimura in view of Imai; Ogawa in view of Pistofidis and Imai
Applicant's arguments filed March 19, 2026 with respect to Imai have been fully considered but they are not persuasive.
The applicant argues the claimed invention may be processed by considerably narrow ranges relative to the broad heating rate and temperature conditions of the prior art (p. 7 para. 4) by primarily heating at a rate of 3.5 to 4.2°C/sec to 640 to 680°C, where the heating rate upper limit prevents zinc on the surface from melting earlier than alloying (p. 5 para. 5) and by secondarily heating at a rate of 1.1 to 1.6°C/sec to 900 to 930°C, where the heating rate upper limit may prevent partial plated layer liquefaction (p. 6 para. 1) and the prior art lacks sufficient guidance to lead one of ordinary skill in the art to the claimed article (p. 7 para. 5).
The process conditions of the first heating step in Imai overlap with those of the primary heating step recited in applicant’s specification used to manufacture the claimed “hot press-formed article”. The purpose of the primary (i.e. first) heating rate and temperature in Imai is also substantially similar to that in applicant’s specification. See the below table. “Expected beneficial results are evidence of obviousness of a claimed invention”. MPEP 716.02(c)(II).
Applicant ‘s Specification
Imai
Primary Heating Rate 13:3-11
First Heating Rate [0020]-[0024]
3.5 to 4.2°C/sec
More preferably at most 10°C/sec
-Prevents excessive zinc oxidation
-Prevents melting of zinc earlier than alloying material, which increases oxidation of the surface of the plated layer
-Forms a zinc oxide layer
-Diffusion between zinc and iron (i.e. alloying)
-Suppresses evaporation or loss of zinc
Primary Heating Temperature 13:12-19
First Heating Temperature [0025]
640 to 680°C
More preferably at least 650 and at most 700°C
-Diffusion coefficient in the plated layer is not too low due to low temperature
-Prevents nonuniform alloying
-Prevents liquefying and vaporizing zinc, causing loss of the plated layer
-Forms a zinc oxide layer
-Suppresses vaporization of zinc (i.e. prevents nonuniform alloy and loss of plated layer)
Similarly, the process conditions of the second heating step in Imai overlap with those of the secondary heating step taught in applicant’s specification used to manufacture the claimed “hot press-formed article”. The purpose of the second heating rate and temperature in Imai is also substantially similar to that in applicant’s specification. See the below table. “Expected beneficial results are evidence of obviousness of a claimed invention”. MPEP 716.02(c)(II).
Applicant ‘s Specification
Imai
Secondary Heating Rate 14:1-10
Second Heating Rate [0036]
1.1 to 1.6°C/sec
At most 50°C/sec
-Controls the heating rate for alloying
-Prevents grain boundary oxidation
-Prevents liquefaction of the plating layer, deteriorating quality due to non-uniform surface
-Allows mutual diffusion (i.e. alloying) of Fe and Zn
Secondary Heating Temperature 14:11-18
Second Heating Temperature [0034], [0036]
900 to 930°C
More preferred 880 to 1000°C
-Achieves austenite transformation to secure strength of a final product
-Does not entirely liquefy the plating layer
-Stabilizes mechanical properties after quench hardening
-Does not form a liquid phase on the steel sheet surface
Further, regarding the heating temperatures and cooling rates of the primary and secondary heatings, in the parent application, 16/064,785, the Patent Trial and Appeal Board (PTAB) with respect to the first and second heating steps of Imai (16/064,785 PTAB Decision p. 5 para. 1) stated “the Examiner has shown substantial identity between the Imai’s process and the process recited in the Specification” and that overlapping ranges are prima facie obvious (16/064,785 PTAB Decision para. spanning pp. 5-6).
Therefore, the process of the prior art is substantially similar to that claimed (16/064,784 PTAB Decision p. 5 para. 2, para. spanning pp. 5-6) and so is the composition (zinc-plating) (Dreulle 2:26-49, 3:62 to 4:54; Nishimura [0009]; Ogawa p. 2 para. 2), such that the product of the process of the prior art is substantially similar to that claimed, including at least 70 wt% of the at least one element selected from the group consisting of Sb, Sn, and Bi being concentrated in a region within 3 um or less from a surface of the alloyed zinc-based plated layer in a thickness direction.
Furthermore, Nishimura discloses that Sn is excreted near the grain boundaries of the plating during the solidification process of the plating and Sn has a low melting point, such that it remains in the molten state for a long time as the dendrite crystals of the plating layer continue to grow (Nishimura [0009]). This reads on the Sn being concentrated on a surface of the alloyed zinc-based plated layer in a thickness direction thereof.
Similarly, Pistofidis discloses in an article of steel with an alloyed zinc-based plated layer (Pistofidis 2. Experimental procedure) Bi does not dissolve in the coating and forms inclusions that concentrate in the outer part of the coating (Pistofidis 3. Results paras. 4-5, 4. Conclusions).
The general conditions of the at least one element concentrating in a surface of the alloyed zinc-based layer in a thickness direction are disclosed by Nishimura and Pistofidis. MPEP 2144.05(II)(A).
The applicant argues Imai has a first heating step followed by a first cooling step to 550°C or below, which is essential to Imai to obtain good post-painting corrosion resistance (p. 6 paras. 2-3) as evidenced by Imai’s inventive examples and lack of cooling in comparative example Nos. 15 and 16 (para. spanning pp. 6-7).
Imai teaches the cooling step “makes it easier to stabilize the surface condition” ([0029]). It does not change or impart additional surface structure to the steel sheet after the first heating. According to the PTAB, “Imai teaches the cooling step does not change or impart additional surface structure to the steel sheet after the first heating” and that “Appellant has not submitted any evidence that such a cooling step is a material difference in the process that would have resulted in a product different than as recited in claim 1” (16/064,785 PTAB Decision p. 6 para. 3).
With respect to the argued comparative examples, Imai’s comparative example No. 15 first heats to 700°C then first cools to 580° for 10 sec. Similarly, Imai’s comparative example No. 16 first heats to 750°C then first cools to 630° for 10 sec. Therefore, contrary to applicant’s argument, these two examples do not lack cooling.
For the above cited reasons the rejections of Dreulle in view of Imai; Nishimura in view of Imai; and Ogawa in view of Pistofidis and Imai are maintained.
Claim Rejections - 35 USC § 103
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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Dreulle (US 4,168,972) in view of Imai (US 2012/0325377).
Regarding claim 1, Dreulle discloses an article (1:5-8, 2:17-19) comprising:
a base steel sheet (2:20-23, 5:13-14); and
an alloyed zinc-based plated layer (alloy) formed on a surface of the base steel sheet (galvanisation) (2:23-26), wherein the alloyed zinc-based plated layer includes: at least one element selected from the group consisting of Sb, Sn, and Bi in a total amount of 0.7 to 2.0 wt% (300 to 20000 ppm of tin, 0.03 to 2 wt% Sn), and a balance of Zn and inevitable impurities (2:26-49, 3:62 to 4:54).
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).
Dreulle discloses tin greatly reduces the number of bare patches in the resultant coating of zinc alloy (2:34-42).
Dreulle is silent to the article being hot press-formed and comprising at least 70 wt% of the at least one element (tin) concentrated in a region within 3 um or less from a surface of the alloyed zinc-based plated layer in a thickness direction thereof.
Imai discloses a hot press-formed article ([0001]) manufactured by subjecting a zinc-based plated steel sheet to a heat treatment by heating to 600 to 750°C at a rate of more preferably at most 10°C/sec ([0022]-[0026]) then heating to a temperature of at least Ac3 point of the steel, preferably 800 to 1000°C/sec at a heating rate of at most 50°C/sec, holding for 30 seconds to 5 minutes, then hot-press forming and quenching ([0034]-[0040]) ([0013], [0016]).
It would have been obvious to one of ordinary skill in the art to perform the heat treatment and hot-press forming process of Imai on the hot-dip galvanized steel of Dreulle to obtain high-strength steel parts of complicated shapes (Imai [0003]), suppress the formation of scale in hot press forming (Imai [0005]), stably and reliably produce hot press-formed members having corrosion resistance (Imai [0011], [0012], [0014], [0016]), and minimize the occurrence of find cracks on the surface (Imai [0041]). Further, using the hot dip galvanizing bath of Dreulle in the process of Imai advantageously greatly reduces the number of bare patches in the resultant coating of zinc alloy making it possible to obtain coatings entirely without bare patches (Dreulle 2:34-42).
Applicant’s Specification 12:23 to 15:1
Imai [0013], [0016], [0022]-[0026], and [0034]-[0040]
Primary Heating (Fe alloying)
Heating rate 3.5 to 4.2°C/sec
End Temperature 640 to 680°C
First Heating (Fe alloying)
Heating rate more preferably at most 10°C/sec
Temperature 600 to 750°C
Secondary Heating (Sb, Sn, and/or Bi segregation)
Heating rate 1.1 to 1.6°C/sec
End Temperature 900 to 930°C
Holding Time 1 to 5 minutes
Second Heating
Heating rate more preferably at most 50°C/sec
Temperature 800 to 1100°C
Residence Time 30 sec to 5 minutes
Die Molding and Quenching
Press Forming and Quench Hardening
Dreulle in view of Imai discloses a steel sheet comprising a zinc-based plated layer that overlaps with that claimed (Dreulle 1:6-8, 2:16-50, 3:42 to 4:54) that is processed (Imai [0013], [0016], [0022]-[0026], [0034]-[0040]) by a substantially similar method as that recited in the instant specification (applicant’s specification 11:25 to 13:5). The composition (i.e. zinc-plating) and processes (i.e. primary heating, secondary heating, and hot press forming) of the prior art are substantially similar to the composition and processes of the invention. It appears that the product of the process of the prior art is substantially similar to the product claimed, including at least 70 wt% of the at least one element selected from the group consisting of Sb, Sn, Bi being concentrated in a region within 3 um or less from a surface of the alloyed zinc-based plated layer in a thickness direction.
Regarding claim 2, Dreulle discloses the total amount of the at least one element is 0.7 to 1.5 wt% (300 to 20000 ppm of tin, 0.03 to 2 wt% Sn) (2:23-49, 3:62 to 4:9). 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).
Regarding claim 3, Dreulle discloses the alloyed zinc-based plated layer further includes 0.1 to 7.5 wt% of Al (1000 to 20000 ppm aluminum, 0.1 to 2 wt% Al) (2:23-49, 3:42-55) and 0.1 to 5.0 wt% of Mg (10 to 1000 ppm magnesium, 0.001 to 0.1 wt% Mg) (2:23-29, 4:10-27). 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).
Regarding claim 4, Dreulle is silent to a degree of alloying of Fe of the alloyed zinc-based plated layer being 30% to 85%.
Imai discloses the heat treatment forms a zinc-iron alloy phase having an Fe content of at least 25 mass% ([0013], [0016], [0018]-[0021], [0028], [0032]).
It would have been obvious to one of ordinary skill in the art to form a zinc-iron alloy phase having an Fe content of at least 25 mass % in Dreulle to form an Fe-Zn solid solution phase that does not does contain an intermetallic compound of pure zinc phase (Imai [0013]), which stably and reliably mass produces hot press-formed members having desirable properties such as corrosion resistance after painting (Imai [0012], [0014], [0016]), strength, and quench hardening (Imai [0048]). 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).
Regarding claim 5, Dreulle is silent to a degree of alloying of Fe of the alloyed zinc-based plated layer being 45% to 78%.
Imai discloses the heat treatment forms a zinc-iron alloy phase having an Fe content of at least 25 mass% ([0013], [0016], [0018]-[0021], [0028], [0032]).
It would have been obvious to one of ordinary skill in the art to form a zinc-iron alloy phase having an Fe content of at least 25 mass % in Dreulle to form an Fe-Zn solid solution phase that does not does contain an intermetallic compound of pure zinc phase (Imai [0013]), which stably and reliably mass produces hot press-formed members having desirable properties such as corrosion resistance after painting (Imai [0012], [0014], [0016]), strength, and quench hardening (Imai [0048]). 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).
Regarding claim 6, Dreulle is silent to a degree of alloying of Fe of the alloyed zinc-based plated layer being 50% to 75%.
Imai discloses the heat treatment forms a zinc-iron alloy phase having an Fe content of at least 25 mass% ([0013], [0016], [0018]-[0021], [0028], [0032]).
It would have been obvious to one of ordinary skill in the art to form a zinc-iron alloy phase having an Fe content of at least 25 mass % in Dreulle to form an Fe-Zn solid solution phase that does not does contain an intermetallic compound of pure zinc phase (Imai [0013]), which stably and reliably mass produces hot press-formed members having desirable properties such as corrosion resistance after painting (Imai [0012], [0014], [0016]), strength, and quench hardening (Imai [0048]). 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).
Claims 1-6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Nishimura (JP 2001-207249 machine translation) in view of Imai (US 2012/0325377).
Regarding claim 1, Nishimura discloses an article ([0001], [0004], [0007]) comprising:
a base steel sheet ([0013]-[0014]); and
an alloyed zinc-based plated layer formed on a surface of the base steel sheet ([0007]-[0008]), wherein the alloyed zinc-based plated layer includes: at least one element selected from the group consisting of Sb, Sn, and Bi in a total amount of 0.7 to 2.0 wt% ( 1 to 10 mass% Sn), and a balance of Zn and inevitable impurities ([0009]).
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).
With respect to at least 70 wt% of the at least one element is concentrated in a region within 3 pm or less from a surface of the alloyed zinc-based plated layer in a thickness direction thereof, Nishimura discloses 1 to 10 mass% Sn results in uniform formation of spangles in the plating layer, where Sn is excreted near the grain boundaries of the plating during the solidification process of the plating and Sn has a low melting point, such that it remains in the molten state for a long time as the dendrite crystals of the plating layer continue to grow ([0009]), which reads on the Sn being concentrated on a surface of the allowed zinc-based plated layer in a thickness direction thereof. Generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[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.” MPEP 2144.05(II)(A).
Nishimura is silent to a hot press-formed article.
Imai discloses hot press-formed article comprising a base steel sheet and a zinc-based plated layer formed on a surface of the base steel sheet ([0005]).
It would have been obvious to one of ordinary skill in the art to hot press form the plated steel sheet of Nishimura because the plating suppresses the formation of scale in hot press forming (Imai [0005]).
In the event it is determined that the disclosure of Nishimura does not render obvious the claimed “at least 70 wt% of the at least one element is concentrated in a region within 3 pm or less from a surface of the alloyed zinc-based plated layer in a thickness direction thereof”, then the below rejection in view of Imai is applied.
Imai discloses a hot press-formed article ([0001]) manufactured by subjecting a zinc-based plated steel sheet to a heat treatment by heating to 600 to 750°C at a rate of more preferably at most 10°C/sec ([0022]-[0026]) then heating to a temperature of at least Ac3 point of the steel, preferably 800 to 1000°C/sec at a heating rate of at most 50°C/sec, holding for 30 seconds to 5 minutes, then hot-press forming and quenching ([0034]-[0040]) ([0013], [0016]).
It would have been obvious to one of ordinary skill in the art to perform the heat treatment and hot-press forming process of Imai on the hot-dip galvanized steel of Nishimura to obtain high-strength steel parts of complicated shapes (Imai [0003]), suppress the formation of scale in hot press forming (Imai [0005]), stably and reliably produce hot press-formed members having corrosion resistance (Imai [0011], [0012], [0014], [0016]), and minimize the occurrence of find cracks on the surface (Imai [0041]). Further, using the hot dip galvanizing bath of Nishimura in the process of Imai advantageously obtains extremely high spangle uniformity and corrosion resistance (Nishimura [0005]-[0007]) which can be used without painting for applications such as building materials, civil engineering, and car bodies, which is of extremely high industrial value (Nishimura [0018]).
Instant Specification 12:23 to 15:1
Imai [0013], [0016], [0022]-[0026], and [0034]-[0040]
Primary Heating (Fe alloying)
Heating rate 3.5 to 4.2°C/sec
End Temperature 640 to 680°C
First Heating (Fe alloying)
Heating rate more preferably at most 10°C/sec
Temperature 600 to 750°C
Secondary Heating (Sb, Sn, and/or Bi segregation)
Heating rate 1.1 to 1.6°C/sec
End Temperature 900 to 930°C
Holding Time 1 to 5 minutes
Second Heating
Heating rate more preferably at most 50°C/sec
Temperature 800 to 1100°C
Residence Time 30 sec to 5 minutes
Die Molding and Quenching
Press Forming and Quench Hardening
Nishimura in view of Imai discloses a steel sheet comprising a zinc-based plated layer that overlaps with that claimed (Nishimura [0007]-[0009]) that is processed (Imai [0013], [0016], [0022]-[0026], [0034]-[0040]) by a substantially similar method as that recited in the instant specification (applicant’s specification 11:25 to 13:5). The composition (i.e. zinc-plating) and processes (i.e. primary heating, secondary heating, and hot press forming) of the prior art are substantially similar to the composition and processes of the invention. It appears that the product of the process of the prior art is substantially similar to the product claimed, including at least 70 wt% of the at least one element selected from the group consisting of Sb, Sn, Bi being concentrated in a region within 3 um or less from a surface of the alloyed zinc-based plated layer in a thickness direction.
Regarding claim 2, Nishimura discloses the total amount of the at least one element is 0.7 to 1.5 wt% (1 to 10 mass% Sn) ([0009]). 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).
Regarding claim 3, Nishimura discloses the alloyed zinc-based plated layer further includes 0.1 to 7.5 wt% of Al (0.1 to 15 mass% Al) and 0.1 to 5.0 wt% of Mg (0.1 to 5 mass% Mg) ([0010]). 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).
Regarding claim 4, Nishimura is silent to a degree of alloying of Fe of the alloyed zinc-based plated layer being 30% to 85%.
Imai discloses the heat treatment forms a zinc-iron alloy phase having an Fe content of at least 25 mass% ([0013], [0016], [0018]-[0021], [0028], [0032]).
It would have been obvious to one of ordinary skill in the art to form a zinc-iron alloy phase having an Fe content of at least 25 mass % in Nishimura to form an Fe-Zn solid solution phase that does not does contain an intermetallic compound of pure zinc phase (Imai [0013]), which stably and reliably mass produces hot press-formed members having desirable properties such as corrosion resistance after painting (Imai [0012], [0014], [0016]), strength, and quench hardening (Imai [0048]). 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).
Regarding claim 5, Nishimura is silent to a degree of alloying of Fe of the alloyed zinc-based plated layer being 45% to 78%.
Imai discloses the heat treatment forms a zinc-iron alloy phase having an Fe content of at least 25 mass% ([0013], [0016], [0018]-[0021], [0028], [0032]).
It would have been obvious to one of ordinary skill in the art to form a zinc-iron alloy phase having an Fe content of at least 25 mass % in Nishimura to form an Fe-Zn solid solution phase that does not does contain an intermetallic compound of pure zinc phase (Imai [0013]), which stably and reliably mass produces hot press-formed members having desirable properties such as corrosion resistance after painting (Imai [0012], [0014], [0016]), strength, and quench hardening (Imai [0048]). 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).
Regarding claim 6, Nishimura is silent to a degree of alloying of Fe of the alloyed zinc-based plated layer being 50% to 75%.
Imai discloses the heat treatment forms a zinc-iron alloy phase having an Fe content of at least 25 mass% ([0013], [0016], [0018]-[0021], [0028], [0032]).
It would have been obvious to one of ordinary skill in the art to form a zinc-iron alloy phase having an Fe content of at least 25 mass % in Nishimura to form an Fe-Zn solid solution phase that does not does contain an intermetallic compound of pure zinc phase (Imai [0013]), which stably and reliably mass produces hot press-formed members having desirable properties such as corrosion resistance after painting (Imai [0012], [0014], [0016]), strength, and quench hardening (Imai [0048]). 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).
Regarding claim 8, Nishimura discloses the alloyed zinc-based plated layer further includes 1.5 to 7.2 wt% of Al (0.1 to 15 mass% Al) and 1 to 3.0 wt% of Mg (0.1 to 5 mass% Mg) ([0010]). 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).
Nishimura is silent to a degree of alloying of Fe of the alloyed zinc-based plated layer being 50% to 75%.
Imai discloses the heat treatment forms a zinc-iron alloy phase having an Fe content of at least 25 mass% ([0013], [0016], [0018]-[0021], [0028], [0032]).
It would have been obvious to one of ordinary skill in the art to form a zinc-iron alloy phase having an Fe content of at least 25 mass % in Nishimura to form an Fe-Zn solid solution phase that does not does contain an intermetallic compound of pure zinc phase (Imai [0013]), which stably and reliably mass produces hot press-formed members having desirable properties such as corrosion resistance after painting (Imai [0012], [0014], [0016]), strength, and quench hardening (Imai [0048]). 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).
Claims 1-6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Ogawa (JP 2004-083950 machine translation) in view of Pistofidis (Pistofidis et al. The combined effect of nickel and bismuth on the structure of hot-dip zinc coatings. Materials Letters 61 (2007) 2007-2010.) and Imai (US 2012/0325377).
Regarding claim 1, Ogawa discloses an article (Abstract, p.1 para. 1) comprising:
a base steel sheet (Abstract, para. spanning pp. 1-2); and
an alloyed zinc-based plated layer formed on a surface of the base steel sheet (p.2 para. 2),
wherein the alloyed zinc-based plated layer includes:
at least one element selected from the group consisting of Sn, and Bi in a total amount of 0.7 to 2.0 wt% (0.1 to 3 wt% Bi to improve workability, adhesion, and fluidity) (p. 2 para. 2), and
a balance of Zn and inevitable impurities (remainder being zinc) (p. 2 para. 2).
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).
Ogawa is silent to at least 70 wt% of the at least one element is concentrated in a region within 3 um or less from a surface of the alloyed zinc-based plated layer in a thickness direction thereof.
Pistofidis discloses an article of steel and an alloyed zinc-based plated layer (2. Experimental procedure) with at least 70 wt% of the at least one element is concentrated in a region within 3 um or less from a surface of the alloyed zinc-based plated layer in a thickness direction thereof (outer part of the coating with Bi not dissolved in the coating and is in the form of inclusions) (3. Results para. 4).
It would have been obvious to one of ordinary skill in the art in the coating of Ogawa for the Bi to concentrate in the outer part of the coating because Bi does not dissolve in the coating and it forms inclusions that concentrate in the outer part (Pistofidis 3. Results para. 4). Generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. “[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.” MPEP 2144.05(I).
Ogawa is silent to a hot press-formed article.
Imai discloses hot press-formed article comprising a base steel sheet and a zinc-based plated layer formed on a surface of the base steel sheet ([0005]).
It would have been obvious to one of ordinary skill in the art to hot press form the plated steel sheet of Ogawa because the plating suppresses the formation of scale in hot press forming (Imai [0005]).
In the event it is determined that the disclosure of Ogawa in view of Pistofidis does not render obvious the claimed “at least 70 wt% of the at least one element is concentrated in a region within 3 pm or less from a surface of the alloyed zinc-based plated layer in a thickness direction thereof”, then the below rejection in view of Imai is applied.
Imai discloses a hot press-formed article ([0001]) manufactured by subjecting a zinc-based plated steel sheet to a heat treatment by heating to 600 to 750°C at a rate of more preferably at most 10°C/sec ([0022]-[0026]) then heating to a temperature of at least Ac3 point of the steel, preferably 800 to 1000°C/sec at a heating rate of at most 50°C/sec, holding for 30 seconds to 5 minutes, then hot-press forming and quenching ([0034]-[0040]) ([0013], [0016]).
It would have been obvious to one of ordinary skill in the art to perform the heat treatment and hot-press forming process of Imai on the hot-dip galvanized steel of Ogawa in view of Pistofidis to obtain high-strength steel parts of complicated shapes (Imai [0003]), suppress the formation of scale in hot press forming (Imai [0005]), stably and reliably produce hot press-formed members having corrosion resistance (Imai [0011], [0012], [0014], [0016]), and minimize the occurrence of find cracks on the surface (Imai [0041]). Further, using the hot dip galvanizing bath of Ogawa in the process of Imai advantageously obtains corrosion resistance without increasing the melting point of the alloy, worsening workability, and advantageously improves workability, adhesion, and fluidity without decreasing workability, cracking during bending, and sagging (Ogawa p. 2 para. 2).
Instant Specification 12:23 to 15:1
Imai [0013], [0016], [0022]-[0026], and [0034]-[0040]
Primary Heating (Fe alloying)
Heating rate 3.5 to 4.2°C/sec
End Temperature 640 to 680°C
First Heating (Fe alloying)
Heating rate more preferably at most 10°C/sec
Temperature 600 to 750°C
Secondary Heating (Sb, Sn, and/or Bi segregation)
Heating rate 1.1 to 1.6°C/sec
End Temperature 900 to 930°C
Holding Time 1 to 5 minutes
Second Heating
Heating rate more preferably at most 50°C/sec
Temperature 800 to 1100°C
Residence Time 30 sec to 5 minutes
Die Molding and Quenching
Press Forming and Quench Hardening
Ogawa in view of Pistofidis and Imai discloses a steel sheet comprising a zinc-based plated layer that overlaps with that claimed (Ogawa para. spanning pp. 1-2, p. 2 para. 2) that is processed (Imai [0013], [0016], [0022]-[0026], [0034]-[0040]) by a substantially similar method as that recited in the instant specification (applicant’s specification 11:25 to 13:5). The composition (i.e. zinc-plating) and processes (i.e. primary heating, secondary heating, and hot press forming) of the prior art are substantially similar to the composition and processes of the invention. It appears that the product of the process of the prior art is substantially similar to the product claimed, including at least 70 wt% of the at least one element selected from the group consisting of Sb, Sn, Bi being concentrated in a region within 3 um or less from a surface of the alloyed zinc-based plated layer in a thickness direction.
Regarding claim 2, Ogawa discloses the hot press-formed article of claim 1, wherein the total amount of the at least one element is 0.7 to 1.5 wt% (0.1 to 3 wt% Bi) (p. 2 para. 2). 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).
Regarding claim 3, Ogawa discloses the hot press-formed article of claim 1, wherein the alloyed zinc- based plated layer further includes 0.1 to 7.5 wt% of Al (1 to 60 wt% Al) and 0.1 to 5.0 wt% of Mg (0.1 to 3 wt% of Bi and Mg) (p. 2 para. 2). 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).
Regarding claim 4, Ogawa is silent to a degree of alloying of Fe of the alloyed zinc-based plated layer being 30% to 85%.
Imai discloses the heat treatment forms a zinc-iron alloy phase having an Fe content of at least 25 mass% ([0013], [0016], [0018]-[0021], [0028], [0032]).
It would have been obvious to one of ordinary skill in the art to form a zinc-iron alloy phase having an Fe content of at least 25 mass % in Ogawa to form an Fe-Zn solid solution phase that does not does contain an intermetallic compound of pure zinc phase (Imai [0013]), which stably and reliably mass produces hot press-formed members having desirable properties such as corrosion resistance after painting (Imai [0012], [0014], [0016]), strength, and quench hardening (Imai [0048]). 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).
Regarding claim 5, Ogawa is silent to a degree of alloying of Fe of the alloyed zinc-based plated layer being 45% to 78%.
Imai discloses the heat treatment forms a zinc-iron alloy phase having an Fe content of at least 25 mass% ([0013], [0016], [0018]-[0021], [0028], [0032]).
It would have been obvious to one of ordinary skill in the art to form a zinc-iron alloy phase having an Fe content of at least 25 mass % in Ogawa to form an Fe-Zn solid solution phase that does not does contain an intermetallic compound of pure zinc phase (Imai [0013]), which stably and reliably mass produces hot press-formed members having desirable properties such as corrosion resistance after painting (Imai [0012], [0014], [0016]), strength, and quench hardening (Imai [0048]). 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).
Regarding claim 6, Ogawa is silent to a degree of alloying of Fe of the alloyed zinc-based plated layer being 50% to 75%.
Imai discloses the heat treatment forms a zinc-iron alloy phase having an Fe content of at least 25 mass% ([0013], [0016], [0018]-[0021], [0028], [0032]).
It would have been obvious to one of ordinary skill in the art to form a zinc-iron alloy phase having an Fe content of at least 25 mass % in Ogawa to form an Fe-Zn solid solution phase that does not does contain an intermetallic compound of pure zinc phase (Imai [0013]), which stably and reliably mass produces hot press-formed members having desirable properties such as corrosion resistance after painting (Imai [0012], [0014], [0016]), strength, and quench hardening (Imai [0048]). 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).
Regarding claim 8, Ogawa discloses the hot press-formed article of claim 1, wherein the alloyed zinc- based plated layer further includes 1.5 to 7.2 wt% of Al (1 to 60 wt% Al) and 1 to 3.0 wt% of Mg (0.1 to 3 wt% of Bi and Mg) (p. 2 para. 2). 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).
Ogawa is silent to a degree of alloying of Fe of the alloyed zinc-based plated layer being 50% to 75%.
Imai discloses the heat treatment forms a zinc-iron alloy phase having an Fe content of at least 25 mass% ([0013], [0016], [0018]-[0021], [0028], [0032]).
It would have been obvious to one of ordinary skill in the art to form a zinc-iron alloy phase having an Fe content of at least 25 mass % in Ogawa to form an Fe-Zn solid solution phase that does not does contain an intermetallic compound of pure zinc phase (Imai [0013]), which stably and reliably mass produces hot press-formed members having desirable properties such as corrosion resistance after painting (Imai [0012], [0014], [0016]), strength, and quench hardening (Imai [0048]). 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).
Related Art
Song (KR 2014-0081621)
Song discloses a hot press-formed product ([0001]) that has been plated with a zinc-based playing layer ([0019], [0026]) that may include Al, Mg, and Sn ([0021]) in which diffusion of Fe from the base steel sheet into the plating layer has been controlled ([0022]) to 10 to 90% alloying of Fe ([0022]) to suppress evaporation of Zn during heating ([0023]).
Kojima (US 2015/0125716)
Kojima discloses a hot stamped galvanized steel sheet ([0001]) manufactured by alloying at about 500°C to 700°C to easily increase the Fe concentration of the galvanized layer ([0083]).
Maki (JP 2005-113233 machine translation)
Maki discloses a hot-pressed steel plate ([0001]) with a Zn-plated layer containing 0.01 to 10% Sn, 0.01 to 10% Mg, and 0.08 to 60% Al ([0014], [0024]) that undergoes alloying ([0028]) then is heated to 800 to 1000°C for hot press forming ([0026]).
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/STEPHANI HILL/Examiner, Art Unit 1735
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