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 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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 5-8 and 13-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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.
In reference to claims 5 and 13, the instant application is a divisional application of application 17/297,757. A divisional application must not include any subject matter which would constitute as new matter if submitted as an amendment to the parent application. Neither the parent application and instant application provide support for the FeAl(Si) phase being formed on the Fe3Al phase in the diffusion layer as presently claimed. While [0015] of the instant application’s Specification supports the diffusion layer consisting of the hot press formed member consists of at least one of FeAl(Si) and Fe3Al, nothing in the originally filed disclosure supports the FeAl(Si) phase being formed on the Fe3Al phase.
In reference to claims 6 and 14, the instant application is a divisional application of application 17/297,757. A divisional application must not include any subject matter which would constitute as new matter if submitted as an amendment to the parent application. Neither the parent application and instant application provide support for the FeAl(Si) phase comprising a pore in the surface of the diffusion layer as presently claimed. While FIG. 4 might show dimples formed on the surface of the diffusion layer, nothing discloses the phase of the diffusion layer in the example 4.
In reference to claims 7 and 15, the instant application is a divisional application of application 17/297,757. A divisional application must not include any subject matter which would constitute as new matter if submitted as an amendment to the parent application. Neither the parent application and instant application provide support for the FeAl(Si) phase being surrounded by the Fe3Al phase in the middle of the diffusion layer as presently claimed. While [0015] of the instant application’s Specification supports the diffusion layer consisting of the hot press formed member consists of at least one of FeAl(Si) and Fe3Al, nothing in the originally filed disclosure supports the FeAl(Si) phase being surrounded by the Fe3Al phase in the middle of the diffusion layer.
In reference to claims 8 and 16, the instant application is a divisional application of application 17/297,757. A divisional application must not include any subject matter which would constitute as new matter if submitted as an amendment to the parent application. Neither the parent application and instant application provide support for the Fe3Al phase comprising a pore in the middle of the diffusion layer as presently claimed. While FIG. 4 shows a cross-section of the plating layer after hot press forming including pores or voids in the diffusion layer of working example 4, nothing in the originally filed disclosure discloses the diffusion layer being Fe3Al in the middle region.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3-4, 9-11 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (KR 2019-0078013).
The examiner has provided a machine translation of KR 2019-0078013 with the Office Action mailed 11/03/2025. The citation of prior art refers to the provided machine translation.
In reference to claims 1, 3-4 and 11, Kim teaches a hot press-formed member made from an iron-aluminum alloy plated steel sheet ([0001]) (corresponding to a hot press formed member). The steel sheet for hot press forming comprises a base steel sheet and an iron-aluminum alloy plating layer formed on the surface of the base steel sheet ([0017]) (corresponding to a base steel sheet; an Al-Fe based plating layer on the base steel sheet).
The plating layer contains an iron-aluminum alloy phase having a BCC structure in an area of 90% or more ([0017]). When the aluminum-plated steel sheet is heated, iron (Fe) diffuses from the base steel sheet into the plating layer, forming the alloy phase of the plating layer ([0039]). Thus, it is clear the alloy phase is formed through diffusion of the plating layer (corresponding to a diffusion layer in the Al-Fe based plating layer).
Given that the alloy phase having a BCC structure is present in the plating layer in an area of 90% or more, it is clear when the alloy phase is 100% of the plating layer the thickness of the alloy phase is 100% of the plating layer (corresponding to a thickness of diffusion layer is 90% or more of a thickness of the Al-Fe based plating layer). The thickness of the plating layer is 3 µm or more and 40 µm or less ([0050]). Thus, when the plating layer consists of only the alloy phase, the thickness of the plating layer is 0 µm and the thickness of the diffusion layer is 3 µm to 40 µm (corresponding to the thickness of the Al-Fe based plating layer is 20 µm or less; the thickness of the Al-Fe based plating layer is 15 µm or less; the thickness of the diffusion layer is 15 µm or more).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Kim further teaches the iron-aluminum alloy phases having a BCC structure include FeAl, Fe3Al, and α-Fe ([0046]). Given that Kim teaches the iron-aluminum alloy phase present in the plating layer that overlaps the presently claimed diffusion layer, including only phases having a BBC structure such as Fe3Al, it therefore would be obvious to one of ordinary skill in the art in the art before the effective filing date of the presently claimed invention, to use the Fe3Al as the BBC structure, which is both disclosed by Kim and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
In reference to claims 9 and 17, Kim teaches the limitations of claims 1 and 11, as discussed above. Kim further teaches a hydrogen content can be controlled to 0.2 ppm or less (based on diffusible hydrogen) ([0141]) (corresponding to a content of diffusible hydrogen in the hot press formed member is 0.1ppm or less).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
In reference to claims 10 and 18, Kim teaches the limitations of claims 1 and 11, as discussed above. Given that the hot press-formed member of Kim is substantially identical to the present claimed hot press formed member in structure and composition, it is clear that the hot press-formed member of Kim would inherently have a spot welding current range of the hot press-formed member is 1kA or more.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Claims 1, 3-11 and 13-18 are rejected under 35 U.S.C. 103 as being unpatentable over Cho et al. (KR 2015-0075435) in view of Fujita et al. (WO 2019/111931) (Fujita).
The examiner has provided a machine translation of KR 2015-0075435 with the Office Action mailed 11/03/2025. The citation of prior art in the rejections refers to the provided machine translation. Further, it is noted that when utilizing WO 2019/111931, the disclosures of the reference are based on US 2021/0164080 which is an English language equivalent of the reference. Therefore, the paragraphs cited with respect to WO 2019/111931 are found in US 2021/0164080.
In reference to claims 1, 3-4 and 11, Cho teaches a hot press-formed product using an aluminum alloy-plated steel sheet ([0001]) (corresponding to a hot press formed member). The aluminum alloy-plated steel sheet comprises a steel plate, a diffusion layer composed of an Fe3Al+FeAl(Si) intermetallic compound formed on the steel plate and an intermediate layer composed of an intermetallic compound of Fe2Al5+FeAl(Si)+Fe2Al5(or FeAl2) ([0040]-[0041]; [0094]) (corresponding to a base steel sheet; an Al-Fe based plating layer on the base steel sheet; and a diffusion layer in the Al-Fe based plating layer, wherein the diffusion layer consists of at least one of Fe3Al phase and FeAl(Si) phase).
Cho does not explicitly teach the thickness of the diffusion layer is at least 90% or more of a thickness of the plating layer, as presently claimed.
Fujita teaches a component made by hot stamping an aluminum-based plated steel sheet ([0028]; [0186]-[0198]). The aluminum-based plated steel sheet includes an aluminum-based plating layer, an intermetallic compound layer (i.e., diffusion layer) and a base steel sheet, wherein the intermetallic compound layer is formed between the plating layer and the base steel sheet ([0046]).
Fujita further teaches during heating in hot stamping, Fe in the base material diffuses into the aluminum-based plating layer in the intermetallic compound layer with an increase in temperature. Therefore, while the thickness of the aluminum-based plating layer having a high Al-concentration decreases, the intermetallic compound layer grows and increases in thickness. During heating in the hot stamping, the intermetallic compound layer is formed up to the outermost surface of the aluminum-based plating layer ([0118]). When the intermetallic compound layer is formed up to the surface, the emissivity and heating efficiency is improved ([0118]-[0119]).
In light of the motivation of Fujita, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the diffusion layer of Cho reach the outermost surface of the hot press-formed product, in order to provide improved emissivity and heating efficiency.
Cho in view of Fujita teaches a thickness of the diffusion layer is in the range of 6 to 20 µm and the diffusion layer is formed up to a surface of the hot press-formed product (Cho, [0045]; Fujita, [0118]-[0119]). Thus, it is clear in the portions of the hot press-formed product where the diffusion layer reaches the surface the thickness of the plating layer is 0 µm and the thickness of the diffusion layer is 6 to 20 µm (corresponding to the thickness of the Al-Fe based plating layer is 20µm or less; the thickness of the Al-Fe based plating layer is 15µm or less; the thickness of the diffusion layer is 15 µm or more).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
In reference to claims 5-8 and 13-16, Cho in view of Fujita teaches the limitations of claims 1 and 11, as discussed above. Cho teaches a method for manufacturing the hot press-formed product including obtaining a steel sheet, plating the steel sheet in a plating bath comprising 6-10 wt% Si, after plating is performed cooling the plated steel sheet at a cooling rate of 5 to 15 ºC/sec, heating the sheet to a temperature of 800-950ºC for 60-600 seconds and loaded into a mold, hot press-molded and the cooled ([0087]-[0092]; [0112]-[0115]).
Given that the hot press-formed product of Cho in view of Fujita is substantially identical to the present claimed hot press formed member in composition, structure and produced by a substantially identical method as disclosed in the instant application’s Specification [0070]-[0084], it is clear that the hot press-formed product of Cho in view of Fujita would intrinsically have the FeAl(Si) phase formed on the Fe3Al phase diffusion layer, the FeAl(Si) phase comprising a pore in the surface of the diffusion layer, the FeAl(Si) phase surrounded by the Fe3Al phase in the middle of the diffusion layer and the Fe3Al phase comprising a pore in the middle of the diffusion layer.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
In reference to claims 9-10 and 17-18, Cho in view of Fujita teaches the limitations of claims 1 and 11, as discussed above. Given that the hot press-formed product of Cho in view of Fujita is substantially identical to the present claimed hot press formed member in composition and structure, it is clear that the hot press-formed product of Cho in view of Fujita would intrinsically have a content of diffusible hydrogen being 0.1 ppm or less and a spot welding current range of 1kA or more.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Response to Arguments
In response to amended Specification filed 02/03/2026, the previous Objections to the Specification are withdrawn.
In response to amended claims 1, 5-8, 11 and 13-16 and cancelled claims 2 and 12, the previous Claim Objections and 35 USC 112(d) rejections of record are withdrawn.
Applicant primarily argues:
“ Applicant submits that FIG. 4 and the originally filed specification, particularly paragraph [0034], disclose the following: ‘During an alloying heat treatment, after the base steel sheet is coated with aluminum, iron (Fe) from the base steel sheet diffuses into the aluminum plating layer, which has a high aluminum (Al) content. This diffusion results in the formation of an alloying layer primarily composed of an intermetallic compound of Al and Fe on the base steel sheet.’
This disclosure clearly indicates that during the alloying heat treatment, Fe diffuses from the base steel sheet towards the aluminum plating layer. Consequently, a diffusion layer forms from the alloying layer. Within this diffusion layer, a Fe3Al phase, with a relatively high Fe concentration, preferentially forms in the lower region adjacent to the base steel sheet. Meanwhile, an FeAl(Si) phase forms in the upper region closer to the aluminum plating layer, where the influence of Al and silicon (Si) is more pronounced.
This sequence of phase formation, beginning with the Fe3Al phase on the base steel sheet side and followed by the FeAl(Si) phase towards the plating layer, is technically evident to a person skilled in the art, based on the disclosed diffusion direction and compositional gradients. Therefore, the configuration in which the FeAl(Si) phase forms on the Fe3Al phase within the diffusion layer, as described in Claims 5 and 13, can be reasonably and directly derived from the original application, and thus does not constitute the addition of new matter.
Regarding claims 6 and 14, Figure 4 shows a plurality of black dot-shaped or irregularly shaped voids in a surface region of the diffusion layer, specifically in the area adjacent to the aluminum plating layer. These voids clearly correspond to pores, and it is evident that such pores are not uniformly distributed throughout the entire diffusion layer but are concentrated in the surface region. As explained in relation to Claims 5 and 13, this surface region of the diffusion layer corresponds to the area where the FeAl(Si) phase is formed. Therefore, the configuration in which the FeAl(Si) phase comprises pores at the surface of the diffusion layer can be reasonably derived from Figure 4 of the original application, and thus does not constitute added matter.”
Regarding claims 7 and 15, Figure 4 shows that the diffusion layer does not exhibit a uniform phase distribution in the thickness direction but includes a mixed distribution of different phases in its middle region. Specifically, in this middle region, dark-colored and bright- colored microstructures are observed adjacent to each other. Based on the continuity and morphology of the phase distribution, the dark-colored microstructure corresponds to the FeAl(Si) phase, while the bright-colored microstructure corresponds to the Fe3Al phase. In this region, the Fe3Al phase forms a continuous matrix, within which the FeAl(Si) phase is entrapped, creating a structure where the FeAl(Si) phase is surrounded by the Fe3Al phase. Therefore, from the microstructure of the diffusion layer illustrated in Figure 4, the configuration in which the FeAl(Si) phase is surrounded by the Fe3Al phase in the middle of the diffusion layer can be reasonably and directly inferred by a person skilled in the art, and thus does not constitute the addition of new matter.”
Regarding claims 8 and 16, Figure 4 shows black dot-shaped or irregularly shaped voids within bright-colored microstructures in the middle region of the diffusion layer. As explained in relation to Claims 7 and 15, the bright-colored microstructure corresponds to the Fe3Al phase. Accordingly, it is apparent that the Fe3Al phase in the middle region of the diffusion layer comprises pores. Therefore, the configuration in which the Fe3Al phase comprises pores in the middle of the diffusion layer, as recited in Claims 8 and 16, can be reasonably inferred by a person skilled in the art from Figure 4 of the original application, and thus does not constitute the addition of new matter.”
Remarks, p. 7-9
The examiner respectfully traverses as follows:
While there is support for the diffusion layer to consist of an Fe3Al phase and FeAl(Si) phase, there is no support in the originally filed disclosure or the parent application that the FeAl(Si) phase is formed on the Fe3Al phase. FIG. 4 does not show any distinct phase/phases of either of Fe3-Al or FeAl(Si) nor does the description disclose the phase/phases present in working Example 4, which is the example that FIG. 4 is a depiction of.
Additionally, Applicant points to FIG. 4 as supporting claims 7 and 15, which require the FeAl(Si) phase to be surrounded by the Fe3Al phase. It is not clear how FIG. 4 shows both FeAl(Si) on and surrounded by Fe3Al. While [0034] supports the diffusion of Fe from the base into an aluminum plating layer, however, [0034] does not disclose the phases in the plating layer or how the phases will form with respect to each other (i.e., stacked on each other or intermixed with each other).
Further, FIG. 4 has not been labeled with any phases in the originally filed disclosure or the instant application’s disclosure. The Applicant asserts that the dark-colored microstructure corresponds to the FeAl(Si) phase, while the bright-colored microstructure corresponds to the Fe3Al phase and the black dot-shaped voids are pores. While FIG. 4 has light and dark regions in the diffusion layer is not easy to discern what the “dark-colored” vs “bright-colored” microstructures are. Nevertheless, it appears that a layer of bright-colored microstructure (i.e., Fe3Al) is at an uppermost surface portion of the diffusion layer and surrounding the irregularly shaped voids, while the “darker” colored microstructure is present below the bright colored microstructure. Therefore, based off Applicants arguments it is not clear from FIG. 4 that (1) the FeAl(Si) phase is formed on the Fe3Al phase, (2) the FeAl(Si) phase comprises a pore at a surface of the diffusion layer (3) the FeAl(Si) phase is surrounded by the Fe3Al phase and (4) the Fe3Al phase comprises a pore in a middle of the diffusion layer.
It is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the examiner’s position that the arguments provided by the Applicant regarding the phases shown in FIG. 4 must be supported by a declaration or affidavit. As set forth in MPEP 716.02(g), “the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C.
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1001”.
Applicant further argues:
“The present embodiment limits the thickness ratio between the diffusion layer and the plating layer to 90% or more. In contrast, the Kim defines an area fraction of 95% or more, based on the area, concerning a BCC-structured alloy phase within the plating layer. Thus, the subject of the numerical limitation differs: the present invention concerns a diffusion layer, while the Kim concerns an alloy phase, with differing bases of limitation, thickness ratio versus area fraction.”
Remarks, p. 9-10
The examiner respectfully traverses as follows: Kim teaches the iron-aluminum alloy plating layer contains an iron-aluminum alloy phase having a BCC structure in an area of 90% or more ([0017]). In other words, the ratio of an iron-aluminum alloy phase having a BCC structure, such as Fe3Al, in the plating layer formed on the surface of the steel plate is 90% or more in terms of area ([0046]). Therefore, when the alloying phase having a BCC structure (i.e., Fe3Al) is 100%, which is disclosed in the range of Kim, the entire plating layer is Fe3Al.
Even if Kim teaches a ratio of area when the plating layer consists of the BCC structure the claimed thickness ratio will be met.
Applicant further argues:
“Furthermore, the present embodiment is significant in that the thickness of the diffusion layer is limited to 90% or more relative to the total thickness of the plating layer. As described in the specification, this thickness ratio limitation provides advantageous effects, including reduced diffusible hydrogen content and improved spot welding current range.
This type of relative thickness ratio limitation is fundamentally different from merely whether a diffusion layer reaches the surface, and neither the Cho nor the Fujita contains any disclosure from which such a critical thickness ratio can be derived.
The present embodiment is based on a manufacturing process where a steel sheet is plated, cooled, subjected to an alloying heat treatment to form a plated steel sheet, and then hot press-formed to manufacture a hot press-formed member. Although the Office Action alleges that the present embodiment can be derived by combining the manufacturing methods of the Cho and Fujita, a review of the claim correspondence table reveals that neither reference discloses an alloying heat treatment step performed after plating in the steel sheet manufacturing process.
Neither reference discloses an alloying heat treatment step as part of the manufacturing method of the plated steel sheet used to manufacture a hot press-formed member. Accordingly, even if the manufacturing methods of the Cho and Fujita references are combined, it is difficult to derive the hot press-formed member of the present invention, which includes an alloying heat treatment step, since such a step is not disclosed.”
Remarks, p. 10-11
The examiner respectfully traverses as follows:
Firstly, it is noted that claim 1 recites “a thickness of the diffusion layer is 90% or more of a thickness of the Al-Fe based plating layer”. Therefore, when the thickness of the diffusion layer of Cho in view of Fujita reaches the outermost surface of the member, as discussed in the rejection above, it is clear the thickness of the diffusion layer takes up the entire plating layer and meets the presently claimed limitation (i.e., 100% is included in 90% or more).
Secondly, the data to establish unexpected results is unpersuasive for the reasons set forth below.
The data is not commensurate in scope with the scope of the present claims. Specifically, the data only shows using (1) a cold-rolled steel sheet having a specific composition, (2) an aluminum plating having a specific bath composition, (3) a specific amount of aluminum plating, (4) a specific thickness of aluminum plating before and after hot press forming, (5) a specific thickness of an alloying layer before and after hot press forming, (6) a specific amount of O at 0.1 µm depth, (7) a specific ratio of thickness of the alloying layer before and after hot press forming, (8) a specific content of diffusible hydrogen and (9) a specific spot welding current range. While the present claims broadly encompass (1) a base steel sheet having any composition, (2) an aluminum plating layer being Al-Fe having any composition, (3) the Al-Fe plating layer plated in any amount, (4) any thickness of the Al-Fe plating layer before and after hot press forming, (5) any thickness of the diffusion layer before and after hot press forming, (6) any amount of O at 0.1 µm depth, (7) any ratio of thickness of the diffusion layer before hot press forming and any thickness of the diffusion layer between 90% or more after hot press forming, (8) any content of diffusible hydrogen and (9) any spot welding current range.
Further, the data does not disclose (1) the Al plating layer being a Al-Fe based plating layer or (2) the phases in the diffusion layer. The data only shows using plating layers comprising Al, Si and Mg. The data does not show whether the working examples would meet the claimed Al-Fe based plating layer or the diffusion layer consisting of at least one of Fe3Al phase and FeAl(Si).
Additionally, the data does not show using the lower claimed limit of the thickness of the diffusion layer based on the thickness of the Al-Fe base plating layer (i.e., 90%). As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support”. In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Applicant has not provided data to show that the unexpected results do in fact occur over the entire claimed range of the thickness ratio.
Lastly, there is no proper side-by-side comparison between the working examples and
the comparative examples. The “closest” side-by-side comparison appears to be Comparative Example 2 and Working Example 4. However, Comparative Example 2 and Working Example 4 both have a ratio of thickness of the diffusion layer of 100%. It is unclear the disadvantageous property is from the thickness ratio as argued.
Even if there were proper side-by-side comparisons, the data to establish unexpected results remains unpersuasive for the reasons set forth above, i.e., the data is not commensurate in scope with the scope of the present claims.
Therefore, Applicant's arguments filed 02/03/2026 have been fully considered but they are not persuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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 Mary I Omori whose telephone number is (571)270-1203. The examiner can normally be reached M-F 8am-4pm.
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/MARY I OMORI/Primary Examiner, Art Unit 1784