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’ response to the Non-Final Rejection of August 01, 2025, filed October 27, 2025 is acknowledged. Claims 8 is pending and independent. Any rejections and/or objections, made in the previous Office Action, and not repeated below, are hereby withdrawn.
Claim Rejections - 35 USC § 112
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 8 is 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Specifically, “the first region not being in a martensite state” is not supported by “In this hot press forming, only the second region is transformed to martensite” ([0063]; similar wording in [0012]), this does not mean that the first region does not have other formed martensite. Similarly, “the second region…becomes martensite” ([0066]) does not preclude the first region containing martensite. Also, “the forming step includes transforming only the second region to martensite” in claim 5 is similarly not a positive support for “the first region not being in a martensite state”.
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(s) 8 is rejected under 35 U.S.C. 103 as being unpatentable over Winkel et al. (WO 2015/11/456 A1, herein referring to the google patents machine translation printed July 30, 2025), hereinafter Winkel (of record in the application).
Regarding claim 8, Winkel teaches an Al-Si coated steel sheet, that alloys (on a surface; Pg. 6 [7]) that is fed to a pressing tool and press hardened (formed; Pg. 6 [2]) that is formed by heating the steel sheet to a temperature close to the AC3 temperature and then apply temperatures above the AC3 temperature, when above AC3 the ferrite turns into austenite (Pg. 5 [1]-[2]) where aftertreatment includes a first portion is cooled below the AC3 temperature and a second portion is heated above AC3 temperature (reheated; and made in the austenite state) (Pg. 5 [11] to Pg. 6 [3]), for example to approximately 600⁰C (Pg. 10 [12]; applicant teaches this temperature range of about 550-650⁰C in [0030]) and at this temperature (hot) is press hardened (hot press formed) and the coated steel sheet is then alloyed at a diffusion temperature of 950⁰C (Pg. 6 [7]), the cooling can be forced convection (Pg. 6 [12]). Winkel does not specifically teach the claimed properties of the formed product.
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. Applicant teaches a process to achieve these properties in [0026]-[0035], which parallel claim 1 as presently recited. Upon thorough review of the specification and claims as originally filed, no steel composition is taught as being necessary. Accordingly, this product appears to simply require the use of any steel, which Winkel also teaches. Further, Winkel teaches processing (previous paragraph) that overlaps 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 alloying parameters, (as discussed above), one of ordinary skill in the art before the effective filing date of the invention would have expected the plated steel of Winkel to have substantially identical properties to that of applicant, 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 claimed properties necessarily flows from the teachings of Winkel (MPEP 2112 IV).
As Winkel teaches a substantially identical press formed plated steel sheet, 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 product of Winkel 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’ specification amendment, filed October 27, 2025, with respect to specification objections have been fully considered and are persuasive. The objection of August 01, 2025 has been withdrawn.
Applicant's arguments filed October 27, 2025 have been fully considered but they are not persuasive regarding the 35 U.S.C. 112(a) rejection. Applicant has failed to distinctly point out how broad, multiple paragraphs specifically provide support for “the first region not being in a martensite”, some of which are specifically addressed by the examiner in her rejection. Therefore, these general references are not persuasive. .
Applicants’ claim amendment, filed October 27, 2025, with respect to 35 U.S.C. 112(b) rejection have been fully considered and are persuasive. The 35 U.S.C. 112(b) rejection of August 01, 2025 has been withdrawn.
Applicant's arguments filed October 27, 2025 have been fully considered but they are not persuasive regarding the 35 U.S.C. 103 rejection. Applicant has merely generally asserted that Winkel does not teach the properties of claim 8, without addressing (at all), the inherency rejection made by the examiner. As Winkel teaches a substantially identical press formed plated steel sheet, 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 product of Winkel to possess the claimed properties, absent an objective showing (MPEP 2112). Therefore applicants’ broad, conclusory statements are not persuasive.
Further, applicant argues to dependent claims (Pg. 7 [2]) when there are no dependent claims pending.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERINE A CHRISTY/Primary Examiner, Art Unit 1784