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 .
Claims 27-28 withdrawn from further consideration pursuant to 37 CFR 1.142(b),
as being drawn to a nonelected group II, there being no allowable generic or linking
claim. Applicant timely traversed the restriction (election) requirement in the reply filed
on 07/03/25.
Applicant's election with traverse of group I in the reply filed on 07/03/25 is
acknowledged. The traversal is on the ground(s) that Honda does not teach the
thickness of 10-50-um. This is not found persuasive because although the applicant is
correct regarding Honda reference, however the restriction can is Del Frate teaches
ferritic surface layer having a thickness from 10 um to 50 um [0169] and restriction
stays.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claim 35 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 22. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 15-19, 21, 23, 32-33 are rejected under 35 U.S.C. 103 as being
unpatentable over Franco Del Frate et al (U. S. Patent Application: 2016/0194739, here
after Del Frate), further in view of Akito Mizutani et al (U. S. Patent Application: 2021/0059019, here after Mizutani), and Jose Drillet et al (U. S. Patent Application:
2018/0171459, here after Drillet).
Claim 15 is rejected. Del Frate teaches a method for depositing
metallic(zinc) coatings on a steel substrate [0139], the method comprising:
i. an annealing step, in an annealing furnace(tube) [0114, 0115 lines 1-3, 0118],
including
a. a pre-heating wherein the steel substrate is heated to a temperature T1 lower than 600°C [0115]
b. a heating step wherein the steel substrate is heated from T1(550) to a
temperature T2 in an atmosphere comprising 2-8 % (by volume) of H2, a balance being an inert gas and unavoidable impurities [0118, 0121] and having a dew point from -25°C to 10°C(-10C) [0050, 0124] and then
c. a soaking step wherein the steel substrate is maintained in a temperature in an
atmosphere comprising 2-8% (by volume) of H2, a balance being the inert
gas(nitrogen) or a further inert gas and unavoidable impurities [0118] and having a dew point from -25°C to 10°C (-10) [0123, 0124] which in fact in annealing step allows formation, on the steel substrate, of a ferritic surface layer having a thickness from 10 um to 50 um [0169] and a microstructure comprising in surface fraction of 90% ferrite [0096] which in fact means up to 10% of cumulated amounts of martensite, austenite, bainite and carbide,
ii. A skin pass step, at a temper mill, wherein the steel substrate is rolled
[0113],
iii. thereafter, a coating step, inside a vacuum chamber to form a metallic coating [0139]. Del-Frate does not teach heating the substrate (step b) and soaking temperature of 720-1000C. however teaches heating step wherein the steel substrate is heated from T1(550) to temperature T2 from 679.85°C -730.12°C (based on steel C in table 1, for recrystallization) in an atmosphere comprising 2-8 % (by volume) of H2, a balance being an inert gas and unavoidable impurities [0118, 0121]. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of [overlapping range] that corresponds to the claimed range. In re Malagari, 182 USPQ 549 (CCPA 1974). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention was made to have a method of Del-Frate where the heating of substrate (step b) and soaking step, step c) is done at 720-730.12 C, because one having ordinary skill in the art to have selected the portion of overlapping range that corresponds to the claimed range in absence of criticality. Del-Frate does not teach skin pass step (cold rolling) after annealing step. Mizutani teaches repeating annealing and cold rolling of steel sheet as necessary to obtain desirable thickness [0148].Therefore,
it would have been obvious to one of ordinary skill in the art at the time of the invention was made to have a method of Del-Frate where cold rolling and annealing steps repeatedly perform, because it helps achieving a desirable thickness with a
(reduction from 0.02% to 2%). Del-Frate teaches iii. a coating step, inside a vacuum chamber, but does not teach a metallic vapor is ejected towards at least a
side of the steel substrate. Drillet teaches a method of coating a steel substrate with
zinc [0027], and teaches the zinc(metal) coating layer is done by JVD [0055], which in
fact a metallic vapor is ejected towards at least a side of the steel substrate. Therefore,
it would have been obvious to one of ordinary skill in the art at the time of the invention
was made to have a method of Del-Frate, and Mizutani where metallic coating(zinc) forms by JVD, because it is suitable method for depositing zinc on steel substrate.
Claim 16 is rejected as Del-Frate teaches the steel substrate has a thickness of 1
mm [0172].
Claim 17 is rejected as Del-Frate teaches the steel substrate has a composition
comprising, in weight percent: Si: 0.2, Mn: 0.19, C:0.15, P:0, S:0, Al: 0.05, Cu:0, Ti +Nb
:0, Cr+ Mo:0 and a balance consisting of Fe and unavoidable impurities [table 1 steel c].
Claim 18 is rejected. It is obvious by heating and quenching the steel, the ferrite (and austenite) phase converts to martensite and it is to skill of an ordinary person to repeat heating and quenching so in surface fraction up to 10% of cumulated amounts of ferrite, austenite, bainite and carbide, and the balance being made of martensite (90%).
Claim 19 is rejected as Del-Frate teaches the steel substrate has a composition
comprising, in weight percent: Si: 0.2, Mn: 0.19, C:0.15, P:0, S:0, Al: 0.05, Cu:0, B:0,
Ti+ Nb Cr+ Mo:0 and a balance consisting of Fe and unavoidable impurities [table 1
steel c].
Claim 21 is rejected. Considering steel F in table 1, and paragraph 0046 of Del-
Frate although the steel substrate is not maintained in a temperature range from 820°C
to 930°C. However, stays between Tmin of 863.2C and Tmax of 977.4C (for steel F of
table 1). Overlapping ranges are prima facie evidence of obviousness. It would have
been obvious to one having ordinary skill in the art to have selected the portion of
[overlapping range] that corresponds to the claimed range. In re Malagari, 182 USPQ
549 (CCPA 1974). Therefore, it would have been obvious to one of ordinary skill in the
art at the time of the invention was made to have a method of Del-Frate where the
annealing is done between 863.2C-930C, because one having ordinary skill in the art
could selected the portion of overlapping range that corresponds to the claimed range in
absence of criticality.
Claim 23 is rejected as Del-Frate teaches the ferritic layer has a thickness from
10-50 um [0169]. Although it does not specifically teach thickness of 20 um to 40 um.
However, overlapping ranges are prima facie evidence of obviousness. It would have
been obvious to one having ordinary skill in the art to have selected the portion of
[overlapping range] that corresponds to the claimed range. In re Malagari, 182 USPQ
549 (CCPA 1974). Therefore, it would have been obvious to one of ordinary skill in the
art at the time of the invention was made to have a method of Del-Frate where the
thickness of ferritic layer is 20-40 nm, because one having ordinary skill in the art can
have selected the portion of overlapping range that corresponds to the claimed range in
absence of criticality.
Claim 32 is rejected. Del-Frate teaches the ferritic surface layer has a thickness of 10-50 um [0169]. Although not does not teach thickness of 16-31 um. However, overlapping ranges are prima facie evidence of obviousness. It would have
been obvious to one having ordinary skill in the art to have selected the portion of
[overlapping range] that corresponds to the claimed range. In re Malagari, 182 USPQ
549 (CCPA 1974). Therefore, it would have been obvious to one of ordinary skill in the
art at the time of the invention was made to have a method of Del-Frate where the
thickness of ferritic layer is 20-40 nm, because one having ordinary skill in the art can
have selected the portion of overlapping range that corresponds to the claimed range in
absence of criticality.
Claim 33 is rejected as Del-Farte teaches the steel substrate has a bulk
microstructure consisting in surface fraction up to 10% of cumulated amounts of ferrite,
austenite, bainite and carbide, and the balance being made of martensite [table 4 steel
B1, steel B2].
Claims 20 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Franco Del Frate et al (U. S. Patent Application: 2016/0194739, here after Del Frate), Akito Mizutani et al (U. S. Patent Application: 2021/0059019, here after Mizutani), Jose Drillet et al (U. S. Patent Application: 2018/0171459, here after Drillet), further in view of Pavan C. Venkatasurya et al (U. S. Patent Application: 2020/0181750, here after
Venkatasurya).
Claim 20 is rejected. Del Farte teaches the ferritic layer has a microstructure
comprising in surface fraction up to 90% of ferrite [0096], but does not teach 5% of
ferrite. Venkatasurya teaches a method of coating steel where after heat treatment the
amount of ferrite phase is 5% (cumulated amounts of martensite, austenite, bainite
and carbide is 95%) [0034-0035, 0038-0039]. Therefore, it would have been obvious to
one of ordinary skill in the art at the time of the invention was made to have a method of
Del-Frate, and Drillet where by heat treatment and quenching increase the martensite phase, because it helps formation of more martensite phase and make steel harder.
Claim 34 is rejected. Del Farte teaches the ferritic layer has a microstructure
comprising in surface fraction up to 90% of ferrite [0096], but does not teach 5% of
ferrite. Venkatasurya teaches a method of coating steel where after heat treatment the
amount of ferrite phase is 5% (cumulated amounts of martensite, austenite, bainite
and carbide is 95%) [0034-0035, 0038-0039]. Therefore, it would have been obvious to
one of ordinary skill in the art at the time of the invention was made to have a method of
Del-Frate, Mizutani and Drillet where by heat treatment and quenching increase the martensite phase, because it helps formation of more martensite phase and make steel harder.
Claims 22 and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Franco Del Frate et al (U. S. Patent Application: 2016/0194739, here after Del Frate), Akito Mizutani et al (U. S. Patent Application: 2021/0059019, here after Mizutani), Jose Drillet et al (U. S. Patent Application: 2018/0171459, here after Drillet), further in view of Yuma Honda et al (European Patent: 3305932, here after Honda).
Claims 22 and 35 are rejected. Del Farte teaches the ferritic layer has
microstructure comprising in surface fraction up to 10% of cumulated amounts of martensite, austenite, bainite and carbide, and the balance being made of ferrite (%90) [0096], but does not teach 95% of ferrite. Honda teaches a method of coating steel where after heat treatment the amount of ferrite phase is 95% (cumulated amounts of martensite, austenite, bainite and carbide is 5%) [0047], where reducing heating rate and heating temperature[0024]. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention was made to have a method of Del-Frate, Mizutani and Drillet where the heating rate and temperature is reduced, because it helps formation of more ferrite phase.
Claims 24-26, and 29-31 are rejected under 35 U.S.C. 103 as being unpatentable over Franco Del Frate et al (U. S. Patent Application: 2016/0194739, here after Del Frate), Akito Mizutani et al (U. S. Patent Application: 2021/0059019, here after Mizutani), Jose Drillet et al (U. S. Patent Application: 2018/0171459, here after Drillet), further in view of Daniel Chaleix et al (U. S. Patent Application: 2017/0114467, here after Chaleix).
Claims 24-26 are rejected. Del Frate teaches coating steel with zinc [0139], and
Drillet teaches depositing zinc layer (considering as second metal layer, which is an anti-corrosion layer) by JVD, but does not teach coating with a first and second layers. Chaleix teaches a method of coating steel with zinc layer (4) [fig. 1], where a metal coating layer (3) of Ni-Cr-Fe is deposited before depositing Zn layer (4) [fig. 1], to improve adhesion. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention was made to have a method of Del-Frate, Mizutani and Drillet, where an intermediate layer is under zinc layer, because it enhances adhesion. Chaleix teaches the composition of the intermediate layer (first metal layer) comprising more than 8% Ni, at least 10% of Cr, and balance of Fe [abstract]. Chaleix teaches depositing the layer on the substrate by physical vapor deposition [0012-0016].
Claim 29 is rejected. Del Frate teaches coating steel with zinc [0139], and
teaches forming an oxide layer during annealing, but then fully reducing the iron oxide layer [0049-0050]. Chaleix teaches a method of coating steel with zinc layer (4) [fig. 1], where a metal coating layer (3) of Ni-Cr-Fe is deposited before depositing Zn layer (4) [fig. 1], to improve adhesion. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention was made to have a method of Del-Frate, Mizutani and Drillet, where an intermediate layer is under zinc layer, because it enhances adhesion. Chaleix also teaches by having Ni-Cr-Fe the oxide layer is not require to be removed and can have thickness of 3-20 nm [0055-0056]. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention was made to have a method of Del-Frate, Mizutani, Drillet, and Chaleix where oxide layer is not removed with thickness of 3-20nm, because it could be covered by layer of Fe-Cr-Ni as an adhesion layer. Charlex teaches the thickness of oxide is 3-20 nm and not 5-15 nm, however overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of [overlapping range] that corresponds to the claimed range. In re Malagari, 182 USPQ 549 (CCPA 1974). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention was made to have a method of Del-Frate, Mizutani and Drillet where the thickness of oxide layer is 5-15 nm, because one having ordinary skill in the art to have selected the portion of overlapping range that corresponds to the claimed range in absence of criticality. Del-Frate teaches steel includes ferritic surface layer having a thickness from 10 um to 50 um [0169] and a microstructure comprising in surface fraction of 90% ferrite [0096] which in fact means up to 10% of cumulated amounts of martensite, austenite, bainite and carbide.
Claim 30 is rejected. Del-Frate teaches the ferritic surface layer has a thickness of 10-50 um [0169]. Although not does not teach thickness of 16-31 um. However, overlapping ranges are prima facie evidence of obviousness. It would have
been obvious to one having ordinary skill in the art to have selected the portion of
[overlapping range] that corresponds to the claimed range. In re Malagari, 182 USPQ
549 (CCPA 1974). Therefore, it would have been obvious to one of ordinary skill in the
art at the time of the invention was made to have a method of Del-Frate where the
thickness of ferritic layer is 20-40 nm, because one having ordinary skill in the art can
have selected the portion of overlapping range that corresponds to the claimed range in
absence of criticality.
Claim 31 is rejected as Mizutani teaches repeating annealing and cold rolling of steel sheet as necessary to obtain desirable thickness [0148]. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention was made to have a method of Del-Frate, Mizutani, Drillet, and Chaleix where the steel substrate is rolled with a reduction of 0.1%, because repeating annealing and cold rolling of steel sheet can be done to obtain desirable thickness.
Response to Arguments
Applicant’s arguments, see Remarks, filed 01/14/26, with respect to 35 U.S.C 112(a) have been fully considered and are persuasive. The 35 U.S.C 112(a) of claim 26 has been withdrawn.
Applicant’s arguments, see Remarks, filed 01/14/26, with respect to 35 U.S.C 112(b) have been fully considered and are persuasive. The 35 U.S.C 112(b) of claims 25-26 has been withdrawn.
Applicant's arguments filed 01/14/26 have been fully considered but they are not persuasive. The applicant argues that Del Frate does no teach the step of cold rolling after annealing step, however Mizutani teaches repeating annealing and cold rolling of steel sheet as necessary to obtain desirable thickness, therefor it is obvious to repeat the above steps to obtain desirable thickness. Furthermore, Del Frate also teaches the microstructure of the steel sheet of the invention must contain, as surface fraction, 10% to 50% of austenite, 25% to 90% of ferrite, kappa precipitates below 5% and martensite lower than 25% [0096], and formation of ferrite with thickness of 10-20 um [0169].
Regarding rejection of claim 18, it is obvious by heating and quenching ferrite (or austenite0 phase convert to martensite phase, therefor an ordinary skill in art can repeat heating and quenching so in surface fraction up to 10% of cumulated amounts of ferrite, austenite, bainite and carbide, and the balance being made of martensite (90%).
For claim 20, Venkatasurya in fact teaches heating and quenching ferrite and transforming to martensite phase.
The applicant argument for claim 22 rejection is not persuasive as Honda teaches by reducing heating rate and annealing at low temperature ferrite phase forms rather than martensite or austenite and therefore an ordinary skill in art can optimize heating rate and heating temperature to form more ferrite phase.
Regarding claim 24, Mizutani teaches cold rolling and annealing to obtain
desirable thickness (an ordinary skill in art can use cold rolling and annealing to obtain reduction of 0.02-2%).
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 TABASSOM TADAYYON ESLAMI whose telephone number is (571)270-1885. The examiner can normally be reached M-F 9:30-6.
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/TABASSOM TADAYYON ESLAMI/Primary Examiner, Art Unit 1718
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