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’ May 18, 2026 response to the February 18, 2026 Non-Final Rejection is acknowledged. Claims 1-8 are pending, claim 1 is independent. Any rejections and/or objections, made in the previous Office Action, and not repeated below, are hereby withdrawn.
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, “is also disclosed” is language that can be implied.
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) 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 (of record).
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 %. 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%).
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
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 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including 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.
Response to Arguments
Applicants’ amendment and related arguments, see Pg. 1, filed May 18, 2026, with respect to objections have been fully considered and are persuasive. The objection of February 18, 2026 has been withdrawn. However, in light of applicants’ amendments further objections are made herein.
Applicants’ amendment and related arguments, see Pg. 1, filed May 18, 2026, with respect to 35 U.S.C 112(b) rejections have been fully considered and are persuasive. The 35 U.S.C 112(b) rejections of February 18, 2026 have been withdrawn.
Applicant's arguments regarding the obviousness rejections have been fully considered but they are not persuasive. Applicants’ arguments to the prior art solving a different problem, because “The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant” (MPEP 2144 IV). Applicants’ arguments to the density of Fujita is not persuasive, as the range of Fujita is not relied upon, annotated Fig 5 is, which teaches 7 Kirkendall voids in 400 square microns, which calculates to 18 Kirkendall voids/1000microns squared, which overlaps the claimed range and renders it obvious. The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed (MPEP 2141.02 VI). Therefore, the example of the prior art does indeed read on the claimed invention. Applicant further alleges “functionally critical” for the void density, but fails to provide any specific evidence is referenced or proffered, and as such there is no persuasive argument that any alleged difference in results are unexpected and unobvious and of both statistical and practical significance. (MPEP 716.02 (b)). Therefore, this is not persuasive. Applicants’ arguments to expectation of success and modifying Fujita, which is not necessary beyond overlapping ranges as the prior art of Fujita explicitly overlaps with that claimed. Therefore, no modification is necessary.
Examiner reiterates (as noted by applicant) that claim 7 presently recites allowable subject matter.
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.
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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
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