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 Status
Applicants’ May 26, 2026 response to the February 24, 2026 Non Final Rejection is acknowledged. Claims 1, 3-5, 17 and 18 are pending, claim 1 is independent. Any rejections and/or objections, made in the previous Office Action, and not repeated below, are hereby withdrawn.
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, 3-5, 17 and 18 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, 3-5, 17 AND 18 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]; collectively considered the surface layer), 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]; plating layer on the steel sheet and on the surface layer). 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, nor an average Zn content of the inter-diffusion layer is greater than an average Zn content of the Si layer, nor “average thickness of the inter-diffusion layer is 10-80% of an average thickness of the Si layer, nor the inter-diffusion composition of claim 17 (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
Applicants’ amendment and related arguments, see Pg. 5, filed May 26, 2026, with respect to objection and 35 U.S.C. 112(a) rejections have been fully considered and are persuasive. The objection and 35 U.S.C. 112(a) rejections of February 24, 2026 has been withdrawn.
Applicant's arguments filed May 26, 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 “”surface layer on top of the plating layer”, which is not commensurate in scope with the claim as presently recited. There is no “on-top” limitation present, the plating layer has two surface layers and either can be “the surface layer” as presently recited and therefore this argument is not persuasive. Applicant next Applicant next argues that the present structure is not inevitable to the process, however, there is no evidence of criticality of the processing provided (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 the prior art does not teach the claimed metrics is not persuasive, as inherency is relied upon above and 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.
For these reasons, and for those reasons as advanced in the rejections above, the present claims are not found to distinguish over the prior art and this action is made FINAL.
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 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
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