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 Previous Notice of Allowance
Applicant is advised that the Notice of Allowance mailed 1/20/2026 is vacated. If the issue fee has already been paid, applicant may request a refund or request that the fee be credited to a deposit account. However, applicant may wait until the application is either found allowable or held abandoned. If allowed, upon receipt of a new Notice of Allowance, applicant may request that the previously submitted issue fee be applied. If abandoned, applicant may request refund or credit to a specified Deposit Account.
Status of Claims
Claim 1 has been amended in view of applicant’s after final response filed 11/13/2025. Claims 6-17 are canceled. Therefore, claims 1-5 are currently under examination.
Terminal Disclaimer
The terminal disclaimer filed on 11/13/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of copending application 18/077459 has been reviewed and is accepted. The terminal disclaimer has been recorded.
The terminal disclaimer filed on 11/13/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of copending application 18/605250 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miyazaki et al. US 2015/0043962(Miyazaki).
Miyazaki teaches a tailored blank for hot stamping includes a welded portion formed by butt-welding(abstract) of two pieces of Al coated steel blanks, wherein the Al coat layer has an adhesion amount of 20g/m2, 40g/m2 or 80g/m2[0138]. The butt-welding of Miyazaki may be performed by laser welding while a filler wire is being supplied[0051, 0090,0153]. Additionally, the base steel blank of Miyazaki has a chemical composition comprising, in mass %, 0.15-0.25% of C, 0.1-0.35% of Si, 0.8-1.8% of Mn, 0.01-0.5% of Cr, 0.1 or less of B with remainder of Fe and inevitable impurities[0095]. Miyazaki does not teach forming ferrite. Miyazaki further teaches that the two pieces of Al coated steel blanks can be the same thickness[0035] and the same material [0094] (i.e. same strength).
Regarding claim 1, although instant claim does not explicitly recite that the joint portion comprises a filler wire, the instant specification (see page 4 bottom paragraph) discloses that “the joint portion is formed by melting the first coated steel sheet, the second coated steel sheet, and the filler wire together by applying the laser beam”. Therefore, the filler wire containing welded portion as taught by Miyazaki read on the claimed joint portion as recited in the instant claim.
Miyazaki further teaches that the welded portion has a chemical composition comprising 1.5 mass% or less of Al[0070], which significantly overlaps the claimed Al mount in the joint portion. The filler wire used in the welded portion as taught by Miyazaki comprises 0.45% C and 1.5% Mn[0156]. Since the base steel planks of Miyazaki comprises 0.15-0.25% C and 0.8-1.8% Mn , one of ordinary skill in the art would have found it obvious that the final welded portion in the Al coated steel blank as taught by Miyazaki would have had C and Mn amounts that significantly overlap the claimed joint portion C and Mn amounts. Therefore, a prima facie case of obviousness exists. See MPEP 2144.05. The selection of claimed Al, C and Mn amounts from the Al, C and Mn amounts in the welded portion of Miyazaki would have been obvious to one of ordinary skill in the art since the Al, C and Mn amounts in the welded portion of Miyazaki have the same utilities.
Lastly, since the two pieces of Al coated steel blanks as taught by Miyazaki can be the same thickness[0035] and the same material [0094] (i.e. same strength), the examiner concludes that the difference between multiplication of the strength and thickness of the first coated steel sheet of Miyazaki and the multiplication of the strength and thickness of the second coated steel sheet of Miyazaki to be zero, which reads on the first scenario as recited in claim 1(i.e. when a different between a value from multiplication of a first strength and a first thickness of the first coated steel sheet and a value from multiplication of a second strength and a second thickness of second coated steel sheet is less than or equal to 500MPA x mm). As discussed above, the welded portion(i.e. joint portion) of Miyazaki contains C and Mn in amounts that significantly overlap the claimed amounts of 0.25 wt% to 0.4 wt% C and 1.5 wt% to 2.5 wt% Mn. Therefore, a prima facie case of obviousness exists. See MPEP 2144.05. The selection of claimed Al, C and Mn amounts from the Al, C and Mn amounts in the welded portion of Miyazaki would have been obvious to one of ordinary skill in the art since the Al, C and Mn amounts in the welded portion of Miyazaki have the same utilities.
The amended additional scenarios recited in the last two paragraphs of claim 1 do not patentably distinguish the claimed aluminum coated blank from the aluminum coated blank of Miyazaki, because an aluminum coated blank, such as the aluminum coated blank of Miyazaki, satisfying one of the claimed scenarios would have meet the limitations of instant claim 1.
Regarding claim 2, the heating conditions and cooling conditions as claimed are directed to process limitations in a product claim and do not patentably distinguish the claimed Al coated blank from the Al coated steel blank of Miyazaki. Miyazaki additionally teaches the improved average hardness[0115].
Regarding claim 3, Miyazaki further teaches that the welded material fully becomes martensite[0077].
Regarding claim 4, Miyazaki further teaches that the base steel additionally comprises Nb, Ti or Mo[0095].
Regarding claim 5, Miyazaki further teaches that the aluminum plating layer can be formed by hot dip coating [0099]. Miyazaki further teaches that the Al coating layer comprises 3-15mass% of Si[0099], which implies that the Al in the Al coating layer is 85-97%, meeting the limitation of claimed surface coating layer. Additionally, the claimed alloy layer between the and forming an alloy layer between the Al coating layer and the base steel blank would have inherent been present in the Al plated bank which similar Al Fe and AlFeSi intermetallic compounds.
Response to Arguments
Applicant's arguments filed 11/13/2025 have been fully considered but they are not persuasive.
Applicant argues that Miyazaki does not teach the claimed coordinated relationship between the mechanical strength-thickness products of the two coated steel sheets and the composition of the joint portion.
The examiner does not find applicant’s argument convincing. The claimed aluminum coated blank as recited in claims 1-5 defines a product. The claimed three coordinated relationships between the mechanical strength-thickness products of the two coated steel sheets are used to select to manipulate the amount of C and Mn in the joint portion, which are process limitations to achieve the claimed C and Mn amounts in the joint portion. It is well settled that a product-by-process claim defines a product, and that when the prior art discloses a product substantially the same as that being claimed, the burden falls upon the applicant to show that any process steps associated therewith results in a product materially different from that disclosed in the prior art. See In re Thorpe, (227 USPQ 964), In re Brown, (173 USPQ 685), In re Fessman, (180 USPQ 524) and MPEP 2113. In this case, since Miyazaki’s aluminum coated blank is structurally and materially significantly similar, both in the base steel sheet composition as well as the joint portion composition, to the claimed aluminum coated blank. The burden falls on the applicant to show that the claimed relationships used in achieving the claimed C and Mn amounts in the joint portion are significant.
Applicant’s argument regarding DE 102017120051 is moot since DE 102017120051 is not in the present rejection ground.
Applicant further argues that the filler wire composition as taught by Miyazaki does not represent the composition of the joint portion since the instant claim 1 does not recite a filler wire. The examiner does not find applicant’s argument convincing for the same reasons set forth in the section 6 on pages 4-5 above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
DE 102017120051 A1 teaches a laser welding apparatus using a filler wire comprising 0.1-0.4wt% of C and 1.0-2.5wt% Mn, which reliably ensures a martensitic microstructure during press hardening([0025], claim 8)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOIS L ZHENG whose telephone number is (571)272-1248. The examiner can normally be reached Mon-Fri 8:15-4:45.
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LOIS ZHENG
Primary Examiner
Art Unit 1733
/LOIS L ZHENG/Primary Examiner, Art Unit 1733