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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 10, 2026 has been entered.
Claims 1 and 3-5 are pending, with claim 1 independent. Any rejections and/or objections, made in the previous Office Action, and not repeated below, are hereby withdrawn.
Specification
The amendment filed January 20, 206 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: removing “may” from line 3, removing “may” from line 5 and changing “may be” to “are” in line 6. These change the scope of the specification beyond that supported as originally filed.
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1 and 3-5 are rejected under 35 U.S.C. 112(a), as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, had possession of the claimed invention.
Regarding claim 1, applicant has extensively argued that heating operation S200 is required to control diffusion (and impact the limitations of the claim by the inherency rejection below). When the claims have not been amended, per se, but the specification has been amended to add new matter, a rejection of the claims under should be made whenever any of the claim limitations are affected by the added material (MPEP 2163.06 I). The added material which is not supported by the original disclosure is as follows: removing “may” from line 3, removing “may” from line 5 and changing “may be” to “are” in line 6. These change the scope of the specification beyond that supported as originally filed and need to be cancelled. For purposes of examination, the specification shall still be considered to include the above deletions. This change in scope would change the inherency rejection of claim 1 and is therefore rejected under 35 U.S.C. 112(a).
Regarding claim 3, applicant has extensively argued that heating operation S200 is required to control diffusion (and impact the limitations of the claim by the inherency rejection below). When the claims have not been amended, per se, but the specification has been amended to add new matter, a rejection of the claims under should be made whenever any of the claim limitations are affected by the added material (MPEP 2163.06 I). The added material which is not supported by the original disclosure is as follows: removing “may” from line 3, removing “may” from line 5 and changing “may be” to “are” in line 6. These change the scope of the specification beyond that supported as originally filed and need to be cancelled. For purposes of examination, the specification shall still be considered to still include the above deletions. This change in scope would change the inherency rejection of claim 3 and is therefore rejected under 35 U.S.C. 112(a). Claim 3 is further rejected for its incorporation of the above due to its dependence on claim 1.
Regarding claims 4 and 5, these claims are rejected for their incorporation of the above due to their respective dependencies on claim 1.
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.
Claim 1 and 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Seiji et al. (JP5597980B2), hereinafter Seiji (original and translation of record in the application).
Regarding claims 1 and 3-5, Seiji teaches a hot press member (hot stamped component) with a Zn-Fe alloy layer on a steel plate, then an Si content layer, then an ZnO layer ([0008]-[0011]), the Zn-Fe layer is formed by diffusion ([0021]; interdiffusion layer) and when the alloying occurs for more than three minutes, a ZnO layer is mixed in the Si content layer (Fig. 2 [0021]; ZnO layer on the same layer as the Si layer), where the Si containing material may be lithium silicate ([0025];inorganic Si based agent) formed from a Zn plated steel sheet ([0021). The thickness of the Si layer is 0.5-5 microns and the thickness of the ZnO layer is 0.1-10 microns ([0019]; i.e. the Si layer may be 5-5000% of the size of the ZnO thickness) . Seiji further teaches a plating layer composition of 5-15 mass% Fe and an Al content of 0.1-0.5 mass% of Zn (i.e. balance Zn and other impurities) ([0024]) . Regarding Si and Mn in the plating layer, as the prior art of record does not teach them in broad compositions or specific examples they are presumed absent or at minimum present in an amount overlapping applicants’ ranges which include 0%. 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). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Seiji does not specifically teach the inter-diffusion layer overlaps at least one of the Si layer and the Zn oxide layer, wherein an area fraction of the inter-diffusion layer with respect to a total area fraction of the Si layer is 10-80%, wherein the Si layer comprises at least one of Si, Mn, O, Fe, Zn and SiO as components diffused from the steel sheet and the plating layer, and an oxide of the Si based agent, nor an average thickness of the inter-diffusion layer is 0.1-2 micron (hereafter these limitations will be referred to as “the claimed properties”).
One of ordinary skill in the art, before the effective filing date of the invention, would have expected substantially identical materials, treated in a substantially identical manner as applicants to have substantially identical properties (including the claimed properties). Applicant teaches the steel has a composition in wt% of C: 0.15-0.30, Si: 0.05-0.8, Mn: 0.8-3.0, P: ≤0.1, S: ≤0.1, Cr: 0.1-0.9, B: 0.001-0.00 and a balance of Fe and unavoidable impurities (Pg. 10 Ln.4 to Pg. 12 Ln. 15), and the plating layer may be a Zn-based plating layer (Pg. 13 Ln. 23) of 10-70% Fe, 0-5 wt% Al, optional Mn and Si and a balance of Zn and impurities (Pg. 1Lns. 22-25). Seiji teaches a steel of 0.4-0.5% Cr, B: 0.0015-0.0025%, C: 0.1-0.5%, Si: 0.05-2.0%, Mn: 0.5-3%, P ≤ 0.1% and S: ≤0.05% and remainder Fe and unavoidable impurity ([0023]) and a Zn plating layer of Fe:5-15 mass%, Al: 0.1-0.5 mass% (remainder Zn and impurities understood) ([0024]).
Applicant further teaches a method of manufacturing a hot-stamped component (Pg. 6 Ln. 18) of optional post-treatment, then heating the steel sheet after inorganic agent is applied to Ac1 to about 910⁰C for 120-600 seconds (Pg. 7 Lns. 7-13) and then heating at about 550-about 750⁰C (Pg. 8 Lns. 21-24). Seiji teaches alloying the Zn plated steel plate with an Si containing compound at the surface to 800-1000⁰C for 3-15 minutes ([0021]-[0022]) and then heating to form the material at about 450-600⁰C ([0024]).
Seiji teaches processing and composition ranges (previous paragraphs) that overlap those taught by applicant; 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). Given substantially identical materials and processing parameters, (as discussed above), one of ordinary skill in the art before the effective filing date of the invention would have expected the material of Seiji to have substantially identical properties to that of applicant; including the claimed properties, meeting applicant’s claimed requirements.
The examiner has provided a basis in technical reasoning that the processing and compositions are substantially identical in support of the determination that the inherent characteristic of the claimed properties necessarily flow from the teachings of Seiji (MPEP 2112 IV). As Seiji teaches a substantially identical galvanized steel, produced by a substantially identical process as that which applicant claims and discloses in their specification as producing the claimed properties, one of ordinary skill in the art, before the effective filing date of the invention, would expect the material of Seiji to possess the claimed properties, absent an objective showing (MPEP 2112). The PTO can require an applicant to prove that the prior art products do not necessarily possess the characteristics of the claimed product, whether the rejection is based on inherency under 35 U.S.C. 102 or prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same (MPEP 2112 V).
Response to Arguments
Applicant's arguments filed February 10, 2026 (from the After final of January 20, 2026) have been fully considered but they are not persuasive regarding the 35 U.S.C. 103 rejections. Applicant first alleges Seiji’s ZN-Fe alloy layer is not the claimed inter diffusion layer because claim 1 requires “a distinct” interdiffusion layer, which is not commensurate in scope with the claim as presently recited. There is no “distinct” limitation present, and therefore this argument is not persuasive. Applicant next argues that Seiji does not teach the inter-diffusion layer thickness or partial area fraction, which is not persuasive as they do not include citations for what Seiji “implies” (which is also not the same as teaching) and further “under certain heating conditions” is not necessarily in all embodiments and is further not persuasive.
Applicant next argues that Seiji does not disclose a manufacturing process that corresponds to the process of the present invention, specifically heating operation S200 (Pg. 7 Lns. 14-25). The examiner notes that applicants’ proposed amendment to S200 have been rejected under 35 U.S.C. 112(a) above and objected to under 35 USC 132 and the portions of the amended language needs to be canceled. Therefore, the previous specification wording to “may” is considered to remain in effect. Therefore, the examiner notes that this heating operation heating rate as cited by the applicant is an optional step (“the target heating temperature from about 700⁰C may range from about 1.5 ⁰C/sec to about 7⁰C/sec” and “when the average heating rate ranges from about 1.5⁰C/sec to about 7⁰C/sec, components between the plating layer and the post-treatment layer may diffuse to each other, and at the same time, mechanical properties [material properties] of the steel sheet and the plating layer may be secured). Examiner notes that in a single paragraph to this heating rate, it is qualified as “may” impact properties no fewer than three times. Further, there is no evidence of criticality of this range (no examples are shown inside or outside this range). Therefore, the examiner maintains that the process of Seiji reads on that of applicant, as rejected above.
Applicants’ arguments that is not directed to alloying or maintaining a thin layer is not persuasive, as a “ reference may be directed to an entirely different problem than the one addressed by the inventor, or may be from an entirely different field of endeavor than that of the claimed invention, yet the reference is still anticipatory if it explicitly or inherently discloses every limitation recited in the claims” (MPEP 2131.05). Further the “reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant” (MPEP 2144 IV). Therefore, this argument is not persuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE CHRISTY whose telephone number is (303)297-4363. The examiner can normally be reached Monday-Thursday, 7am-4pm MT.
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/KATHERINE A CHRISTY/Primary Examiner, Art Unit 1784