0DETAILED 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Claims 27-32 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on December 19, 2025.
Applicant's election with traverse of Group I in the reply filed on December 19, 2025 is acknowledged. The traversal is on the ground(s) that there is a special technical feature shared between the groups as amended. This is not found persuasive because the independent product claims are rejected below and as such do not contain a special technical feature to be shared in common with claim 27 and its dependent claims.
The requirement is still deemed proper and is therefore made FINAL.
Claims 13-26 are pending, claims 13 and 21 are independent.
Information Disclosure Statement
The information disclosure statement filed September 25, 2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. Specifically, only a translation of the abstract was provided for the first foreign patent (German), no copy of the foreign patent was provided.
Claim Interpretation
Examiner notes that “protective coating” is subject to broadest reasonable interpretation and any aluminum-based coating provides some degree of “protection” to the steel substrate and as such, meets this limitation. Further, examiner notes that “iron and manganese-free proportion” is definite in light of the specification (Pg. 4 Lns. 5-10). Additionally, Mg is optionally included in claim 13 (lower limit of 0%).
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 13-20 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 13, as presently recited it is indefinite if the “near-surface first Zn-rich layer” is part of the Al-based protective coating (“the Al-based protective coating has a near-surface first Zn-rich layer”) or if it is a separate layer (“adjoins a surface of the Al-based protective coating”). For purposes of examination, either shall be considered to meet the claim limitations.
Regarding claims 14, 15, 18 and 20, these claims are rejected for their respective incorporations of the above due to their dependencies on claim 13.
Regarding claim 16, 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 16 recites the broad recitation Mg of at least 0.10%, and the claim also recites at least 0.15% which is the narrower statement of the range/limitation. Further, in separate optional limitations (and/or) Mg is broadly up to 0.50% and more narrowly up to 0.35%; a third optional limitation has Zn of broadly at least 0.6^ and more narrowly at least 1.0%, or Zn broadly of at most 5.0% and more narrowly at most, and finally Zn content of the first Zn-rich layer is broadly more than 10% by weight and also more narrowly more than 18% by weight. 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. This claim is further rejected for its incorporation of the above due to its dependence on claim 13.
Regarding claim 17, the term “mainly” in claim 17 is a relative term which renders the claim indefinite. The term “mainly” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The quantity of Zn accumulations in the protective coating is rendered indefinite by this use of "mainly". This claim is further rejected for its incorporation of the above due to its dependence on claim 13.
Regarding claim 19, 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 19 recites the broad recitation low-silicon phase is less than 10% by weight, and the claim also recites less than 7% and less than 5%, which are narrower statements of the range/limitation.. 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. This claim is further rejected for its incorporation of the above due to its dependence on claim 13.
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) 13-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lupp et al., US-20120085466-A1, hereinafter Lupp.
Regarding claims 13-15, Lupp teaches a steel component ([0014]; [0041]) of a steel flat product (steel substrate) with a metallic coating produced on it ([0016]), where a metallic coating is formed by a base layer lying on the flat steel product, and an intermediate layer lying on the base layer (intermediate layer adjoins a surface of the base layer), wherein the base layer contains at least 30 wt.% Al, at least 20 wt% Fe, at least 3 wt% Si (“Al-based protective coating”) and at most 30 wt% Zn and the intermediate layer contains at least 60 wt% Zn (a near-surface first Zn-rich layer having a Zn content higher than the average Zn content of the Al-based protective coating, with a Zn content of more than 5% by weight) ([0041]), the base steel is for example 22MnB5 steel ([0070]), which is contains 0.5-3% Mn and 0.0005-0.08 % B in weight% ([0007]), the thickness of the Al-Si coating is 5-20 microns thick ([0067]), and the thickness of the Zn coating applied onto the AlSi coating has a thickness of 2-10 microns ([0066]; this means it extends over a region having a thickness of 500 nm).
Examiner notes the as Mn and Mg are not included in the Al-based coating of the prior art such that they are not considered to be present in an appreciable amount. As they are not listed it is understood to one of ordinary skill in the art that it is reasonable that they are not present. Lupp further teaches the AlSi layer is on top of an alloy barrier layer ([0067]) which supports that there is no diffusion in the AlSi layer specifically. Therefore, assuming 20 wt% Fe in this layer, there Si in an amount of 3.75% or more in the coating and Zn in an amount of 37.5% or less in an Fe-Mn free proportion (further overlapping the total weight of additional alloy constituents claimed). Examiner further notes that as presently recited the composition of the protective coating could be “as applied” and prior to alloying.
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.
Regarding claim 17, Lupp teaches each limitation of claim 13, as discussed above, and further teaches a steel component ([0014]; [0041]) of a steel flat product with a metallic coating produced on it ([0016]), where a metallic coating is formed by a base layer lying on the flat steel product, and an intermediate layer lying on the base layer (intermediate layer adjoins a surface of the base layer), wherein the base layer contains at least 30 wt.% Al, at least 20 wt% Fe, at least 3 wt% Si (“Al-based protective coating”)and at most 30 wt% Zn and the intermediate layer contains at least 60 wt% Zn (a near-surface first Zn-rich layer having a Zn content higher than the average Zn content of the Al-based protective coating, with a Zn content of more than 5% by weight) ([0041]). Examiner notes a metallic coating of Zn is understood by one of ordinary skill in the art to reasonably be made of metallic Zn accumulations (under a broadest reasonable definition of “accumulations).
Claim(s) 21-26 are rejected under 35 U.S.C. 103 as being unpatentable over Maki et al. (JP 2004238682 A Google Patents machine translation of March 6, 2026), hereinafter Maki (original and translation provided herewith).
Regarding claims 21-26, Maki teaches a hot-dip Al-coated steel sheet ([0010]) without an alloy layer ([0019]), where a steel sheet (substrate) is hot-dipped into Al-plating ([0025]), the steel sheet contains ≤ 0.7 mass% Mn and B: ≤ 0.01 mass% ([0010]-[0011]) and the Al-based plating layer (“Al-based protective coating”) is in mass%: 2-15% Si, ≤3% Fe, Mg: 0.1-10%, Zn: ≤ 50%, Mn: 1% or less, balance is Al and inevitable impurities and all other elements are optionally 0% (lower limit of % or optionally added) ([0010]-[0012]). When Fe and Mn are 0% (as allowed by Maki), this means the iron and manganese free portion of Si is 2-15 mass%, Zn: ≤ 50 mass% and Mg: 0.1-10 mass%. Further where additional elements in the aluminum plating layer are 0% as allowed by Maki, this overlaps up to 30% of additional alloy components.
Regarding “for hot forming”, this occurs before the transitional phrase and lacks sufficient structure to further limit the claim and is therefore considered an intended use of the product. See MPEP 2111.02. Maki teaches a substantially identical product as that which is claimed and is therefore considered to meet the claimed intended use.
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
Claims 18-20 would be allowable if rewritten 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: the closest prior art to the instant claims is Lupp as claim 13 is rejected above. Lupp teaches each limitation of claim 13, as discussed above. Lupp does not teach or suggest, alone or in combination with the prior art, the Al-based protective coating comprises a low silicon phase (A) and a silicon-rich phase (R), where the silicon-rich phase has an insular distribution in the low-silicon phase, where the Zn content of the silicon rich phase is < 90% of an average Zn content of the Al-based protective coating and the Zn content of the low silicon phase is more than 105% of the average Zn content of the Al-based protective coating, nor the Si content of the low-silicon phase as claimed, nor the Si content of the Si rich-phase as claimed (hereinafter collectively “claimed properties”).
One of ordinary skill in the art, before the effective filing date of the invention, would have expected substantially identical materials (discussed above) treated in a substantially identical manner as applicants to have substantially identical properties (including the claimed properties). Applicant teaches heating the flat steel product for 1-18 minutes at 830-980⁰C and then forming it (transfer time is “typically” ≤10 seconds, but “typically does not mean required). Examiner further notes the cooling rate is also optional. Then a phosphate layer is deposited on the steel component (optionally “for example” a thickness is noted) to create the claimed low-silicon and silicon-rich phases (Pg. 18 Ln. 4 to Pg. 19 Ln. 11).
Lupp teaches heating the steel flat product at 800-950⁰C for 30-720 seconds ([0027]-[0028]) and then hot formed ([0030]). Lupp teaches the phosphate top layer is provided prior to the heat forming ([0024]-[0027]), not after as required by the process of applicant.
It is noted 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 Lupp has no teaching of the claimed properties, nor the order of steps of applicant, it cannot be concluded that the claimed properties inherently met. Thus, the claims 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.
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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