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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 07/27/2026 has been entered.
Claim Objections
Claims 1 and 11 are objected to because of the following informalities:
In reference to claim 1, (1) in line 11 after “the” and before “plating layer” insert “Al-Fe based” and (2) in line 11 amend “based plaing” to “based plating”, in order to ensure consistency and proper antecedent basis in the claim language. Appropriate correction is required.
In reference to claim 11, in line 11 after “the” and before “plating layer” insert “Al-Fe based”, in order to ensure consistency and proper antecedent basis in the claim language. Appropriate correction is required.
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.
Claim 13 is 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 claim 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.
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.
Kim teaches the iron-aluminum alloy layer is composed entirely of Fe and Al and a plating layer is formed on a surface of the steel plate of 90% or more in terms of area wherein the plating layer includes Fe3Al ([0044]; [0046]; [0052]). Therefore, it is clear the iron-aluminum alloy layer does not include any oxygen (i.e., 0 wt%) (corresponding to oxygen measured by GDS (Glow Discharge Spectrometer) at a depth of 0.1 µm from a surface of the plating layer is 10 wt% or less based on a total weight of the Al-Fe based plating layer).
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 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, 3-4, 8-11, 13 and 16-18 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).
Fig. 2, provided below, shows the oxygen content of the aluminum alloy-plated steel sheet using a GDS (Glow Discharge Spectrometer) ([0107]). The oxygen measure by GDS at a depth of 0.1 µm from a surface of the plating layer is less than 10 wt% of the plating layer (corresponding to oxygen measured by GDS (Glow Discharge Spectrometer) at a depth of 0.1 µm from a surface of the plating layer is 10 wt% or less based on a total weight of the Al-Fe based plating layer).
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).
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In reference to claims 8, 13 and 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 and the diffusion layer comprises a pore.
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 canceled claims 5-7, 14-15, amended claims 8 and 16 and the Declaration filed 06/25/2026, the previous 35 USC 112(a) rejections of claims 5-8 and 14-16 are withdrawn. However, claim 13 remains rejected under 35 USC 112(a) for the same reasons as set forth in the Office Action mailed 03/25/2026 and re-stated above. The Declaration filed 06/25/2026 does not provide further support for the limitations of claim 13.
Applicant primarily argues:
“Kim does not disclose or suggest this claimed feature. Although Kim discusses controlling the crystal phases of the coating layer, including BCC phases, Kim contains no teaching or suggestion regarding controlling the oxygen concentration in the vicinity of the plating-layer surface, much less measuring the oxygen content by GDS at a depth of 0.1 µm and limiting it to 10 wt% or less.”
Remarks, p. 7
The examiner respectfully traverses as follows:
Kim teaches the iron-aluminum alloy layer is composed entirely of Fe and Al and a plating layer is formed on a surface of the steel plate of 90% or more in terms of area wherein the plating layer includes Fe3Al ([0044]; [0046]; [0052]). Therefore, it is clear the iron-aluminum alloy layer does not include any oxygen (i.e., 0 wt%), which overlaps the presently claimed range.
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).
Applicant further argues:
“Likewise, neither Cho nor Fujita discloses or suggests the claimed embodiment. As explained in paragraph [0037] of the present specification, the oxygen content near the surface of the plating layer is controlled through the specific on-line alloying heat-treatment conditions employed in the present diclosure. Neither Cho nor Fujita discloses these alloying conditions or recognizes the relationship between such conditions and the oxygen concentration at a depth of 0.1 µm from the plating-layer surface. Nor do the references teach or suggest quantitatively controlling the oxidation state of the plating-layer surface by the claimed GDS measurement.”
Remarks, p. 7
The examiner respectfully traverses as follows:
Fig. 2 of Cho, provided above, shows the oxygen content measured by GDS at a depth of 0.1 µm from a surface of the plating layer is 10 wt% or less (Fig. 2; [0107]). Therefore, it is clear that Cho does disclose the oxygen concentration at a depth of 0.1 µm from the plating-layer surface.
Therefore, Applicant's arguments filed 07/27/2026 have been fully considered but they are not persuasive.
Conclusion
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
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