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 .
Election/Restrictions
Claims 9-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on January 05, 2026.
Applicant’s election of Group I in the reply filed on January 05, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1-8 are pending, claim 1 is independent.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided. Specifically, “Provided are” is language that can be implied.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1-8 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Regarding claim 1, it is indefinite what a “long diameter” is defined as. Applicants’ specification states “long diameter of Kirkendall void may refer to an equivalent circular diameter when assuming an ideal circle having the same area for each Kirkendall void” ([0129]). Examiner emphasizes “may refer to”, i.e. this is not a definition. However, for purposes of examination, this explanation shall be applied.
Regarding claims 2-4 and 7, these claims are each rejected for their respective incorporation of the above due to their dependencies on claim 1.
Regarding claim 5, it is indefinite the amount of 0.005-1 weight percent is each element listed, or a total of all the elements. Further regarding claim 5, it is further rejected due to its incorporation of the above due to its dependency on claim 1.
Regarding claim 6, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 6 recites the broad recitation “one or more group 1 elements selected from a group consisting of Sb, Sn, As, Bi, Cu and Ni”, and the claim also recites “comprises 0.005-0.1% of each of one or more elements selected from a group consisting of Sb, Sn, As and Bi” and also "comprises 0.05-1% of each of one or more elements selected from a group consisting of Cu and Ni among the group 1 elements" which are narrower statements of the ranges/limitations. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Further regarding claim 6, it is further rejected due to its incorporation of the above due to its dependency on claim 1. Further, it is indefinite if the amounts listed are for the total of the element group or each element listed.
Regarding claim 8, it is indefinite if “in a region within 20 microns from an interface” is the same “region within 20 microns from an interface” as introduced in claim 1, or a different one, as its introduced with “a” and then “an”. Examiner notes that “an average number per unit area” is not indefinite because it refers to a different long diameter range than that in claim 1. Further regarding claim 8, it is further rejected due to its incorporation of the above due to its dependency on claim 1.
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.
Claim(s) 1-6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Fujita et al. (US 2021/0095368 A1), hereinafter Fujita.
Regarding claims 1-3 and 8, Fujita teaches an Fe-Al-based plated hot-stamped member comprising an Fe-Al-based plated layer on a surface of a base material that is a steel sheet (claims 1 and 4) and the plated layer contains Kirkendall voids whose cross sectional area is 3 -30 microns squared (calculates to ~2 to ~6 microns equivalent circular diameter; claim 1), and Fig. 5 is a plated cross-section of the example of the present application and shows the number density of Kirkendall voids ([0048]) all Kirkendall voids are within 20 microns of the interface between the layer and the base material (Fig. 5). Examiner has annotated a 20 micron by 20 micron square on Figure. 5 below, within 20 microns from an interface between the base steel sheet and plating layer. This square shows 7 Kirkendall voids in 400 square microns, which calculates to 18 Kirkendall voids/1000microns squared. Examiner notes that the method of measuring the average number per unit area of the Kirkendall voids is not limited to any particular technique ([0130] of the specification).
In the case 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). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
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Regarding claims 4-6, Fujita teaches each limitation of claim 1, as discussed above. Fujita further teaches the base material (claims 1 and 3) of steel (claim 4) comprises a composition shown below in the Table in weight %.
Table
Instant claim 4
Instant claim 5
Instant claim 6
Fujita claims 1, 3
C
0.02-0.5
0.1-0.5
Si
0.001-2
0.01-2.00
Al
0.001-1
0.01-0.50
Mn
0.1-4
0.3-5.0
P
>0 to 0.05
0.001-0.100
S
>0 to 0.02
0.0001-0.100
N
>0 to 0.02
0.001-0.010
Ti
≤ 0.1
0.005-0.500
B
0.0001-0.01
0.0002-0.0100
Mo
≤ 1.00
0.01-3.00
V
≤ 1.00
0.01-2.00
Ca
≤ 0.01
0.001-0.01
Nb
≤ 0.1
0.01-1.00
W
≤ 1
0.01-3.00
REM
≤ 0.3
0.0001-0.01
Fe & inevitable impurities
balance
balance
Sb
0.005-1 of one or more of these
0.005-0.1 of one or more of these
0.005-0.100
Sn
0.005-0.300
As
Bi
Cu
One or more of these at 0.05-1
0.01-3.00
Ni
0.01-5.00
Regarding Bi and As, Fujita is silent to the presence of these elements, such that they are not considered to be present in an appreciable amount, also note examples. If these elements are not listed it is understood to one of ordinary skill in the art that it is reasonable that they are not present. Therefore, the elements are considered to be present in an amount within, or at least overlapping, applicant’s claimed proportions (which include 0%).
In the case 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). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Allowable Subject Matter
Claim 7 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b), set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Fujita teaches each limitation of claim 1, as discussed above, including Sn, Cu and Ni as noted above in the Table (claims 1, 3 and 4). Fujita does not teach or suggest, alone or in combination with the prior art, the relational expression 1. Furthermore, it is noted that that the fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic (MPEP 2112 (IV)). As Fujita does not teach a substantially identical process to that applicant teaches is critical to forming the claimed relational expression, it cannot be concluded that this is inherently present. Thus, the claim would be allowable.
Conclusion
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