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
Claim 12 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on February 11, 2026.
Applicant’s election of Group I in the reply filed on February 11, 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 1-11 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, “An object is to provide” and “This is solved by means of” is language that can be implied.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 2 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ibaragi et al. (CN106605312 B Google Patents machine translation printed March 31, 2026 for translation and original for figures ), hereinafter ‘312 (documents provided herewith).
Regarding claims 1, 2 and 4, ‘312 teaches a steel foil comprising a rolled steel foil (sheet) with a diffusion alloy layer formed on a surface of the rolled steel foil that contains Ni and Fe (iron-nickel alloy layer) (Pg. 3 [6]), in the diffusion alloy layer of the steel the outermost layer includes FeNi3 (Pg. 8 [4]; iron-nickel alloy on an outermost surface that has the iron-nickel alloy layer) with a surface treatment layer (Abstract). ‘312 further teaches EBSD maps are characterized by a very shallow depth of information, therefore the crystal orientation of the FeNi alloy on the surface (outermost as it is a very shallow depth of information) of the diffusion alloy layer can be determined by EBSD measurement, furthermore the inverse pole figure and pole density can be obtained (Pg. 7 [4]), the graphs show the pole density by contour lines
Examiner notes that the translation appears to use “reverse” and “inverse” pole figures interchangeably, and the prior art is read with this interpretation. Specifically, Pg. 7 [4] refers to “inverse pole figure can be obtained from the EBSD spectrum”; Pg. 7 [4] “1A to 1C show an example of the texture (inverse pole figure) of the diffusion alloy layer”, Pg. 4 [3], “1A is a diagram showing an example of the texture (inverse pole figure) of the diffusion alloy layer”, Pg. 4 [5], “1C is a diagram showing an example of the texture (inverse pole figure) of the diffusion alloy layer”, but Pg. 4 [4], “1B is a diagram showing an example of the texture (reverse pole diagram) of the diffusion alloy layer”. Understood in context of the entire prior art document “reverse pole diagram” appears to be equivalent to “inverse pole figure diagram” upon fair reading of the entire reference.
‘312 further teaches 1B is a diagram showing an example of the texture (reverse pole diagram) of the diffusion alloy layer (inverse pole figure) in the rolling direction (RD) (Pg. 4 [4]) and shows <101> of < 0.825, <111> of ~2 and <001> of ~2.619 (Fig. 1B). These values show in the iron-nickel alloy layer outermost surface <001> is more than <111> and <001> is more than <101> for the pole density in the inverse pole figures.
These approximate values anticipate the claimed ranges with sufficient specificity per MPEP § 2131.03 as they are well within the claimed individual value ranges and calculate to ratios well within the claimed ratios.
Claim Rejections - 35 USC § 103
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) 3 and 5-11 are rejected under 35 U.S.C. 103 as being unpatentable over Ibaragi et al. (CN106605312 B Google Patents machine translation for translation and original for figures ), hereinafter ‘312 (documents provided herewith).
Regarding claims 3, 5 and 8, ‘312 teaches each limitation of claim 1, as discussed above. ‘312 does not specifically teach wherein a plane (220) of the nickel or the iron-nickel alloy on the side that has the iron-nickel alloy layer has a crystallite size of ≤ 45 nm, nor 50 pieces/103 m2 or fewer of non-metallic inclusions of sizes of φ50 micron (examiner notes this size notation is a term of art) and greater are internally contained, nor a yield point strength of 360 MPa or higher (hereinafter claimed properties).
One of ordinary skill in the art, before the effective filing date of the invention, would have expected substantially identical materials treated in a substantially identical manner as applicants to have substantially identical properties (including the claimed properties). Applicant teaches the steel composition is not critical and “preferably a cold-rolled steel sheet” is used ([0054]), further there is no “particular limitation” on the thickness of the original sheet ([0055]). Applicant further teaches nickel-plating amount of 5-70 g/m2 is sufficient ([0057]) then heat treatment under batch (box) (450-690⁰C for 4-80 hours) or continuous annealing (preferably 600-960⁰C for 15-150 seconds) ([0062]-[0064]). Next, a first rolling step where parameters are not specifically limited ([0073]-[0074]; Table 1 shows examples of 65-75% reduction)) and a second heat treatment step to set the pole density parameters under a reducing atmosphere ([0075]). This second heat treatment is continuous annealing of 680-950⁰C for 30-150 seconds or batch (box) annealing at 500-650⁰C for 1.5-20 hours ([0078]). There is a second rolling step that is “not essential and can be omitted” ([0083]) and is therefore not further considered in this analysis.
‘312 teaches Ni adhesion amount in nickel plating is 1-50g/m2 (Pg. 10 [10]) on a cold-rolled steel sheet (Pg. 10 [9]) that is then box annealed at 500-700⁰C for several hours to several days (Pg. 11 [2]). Next, a cold-rolling to a cumulative reduction ratio of 70% or more (Pg. 11 [4]) followed by recrystallization continuous annealing at 750-1100⁰C for 4-120 seconds (Pg. 11 [7]) which is in an atmosphere of 5% H2 and a balance of N2 (reducing) (Pg. 12 [13]). These processing ranges overlap those taught by applicant; 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).
Given substantially identical materials and processing parameters, (as discussed above), one of ordinary skill in the art before the effective filing date of the invention would have expected the foil of ‘312 to have substantially identical properties to that of applicant; including the claimed properties, meeting applicant’s claimed requirements.
The examiner has provided a basis in technical reasoning that the processing and product are substantially identical in support of the determination that the inherent characteristic of the claimed properties necessarily flows from the teachings of ‘312 (MPEP 2112 IV).
As ‘312 teaches a substantially identical steel foil, produced by a substantially identical process as that which applicant discloses in their specification as producing the claimed properties, one of ordinary skill in the art, before the effective filing date of the invention, would expect the steel foil of ‘312 to possess the claimed properties, absent an objective showing (MPEP 2112). The PTO can require an applicant to prove that the prior art products do not necessarily possess the characteristics of the claimed product, whether the rejection is based on inherency under 35 U.S.C. 102 or prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same (MPEP 2112 V).
Regarding claim 6, ‘312 teaches each limitation of claim 1, as discussed above, ‘312 further teaches chromium-based surface treatment layers on the surface of the diffusion alloy layer, and the surface treatment layers may be on both sides (i.e. the alloy layer would also be on both sides; Pg. 9 [5]).
Additionally/alternatively, it would have been obvious to one of ordinary skill in the art to provide a second iron-nickel alloy layer on the second side of the steel sheet before the effective filing date of the invention. The motivation for doing so would have been mere duplication of parts has no patentable significance unless a new and unexpected result is produced (MPEP 2144.04 VI B).
Regarding claim 7, ‘312 teaches each limitation of claim 1, as discussed above and further teaches the tensile strength of the steel foil is preferably 200-1200 MPa (Pg. 9 [11]). 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 9, ‘312 teaches each limitation of claim 1, as discussed above and further teaches rolled steel foil with the elongation at break at 12% or more is grade A (best) (Pg. 13 [11] to Pg. 14 [1]). 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 10, ‘312 teaches each limitation of claim 1, as discussed above and further teaches Ni adhesion amount (deposition amount) in the diffusion alloy layer of 0.3g/m2 or more (Pg. 8 [8]) to 5g/m2 or less (Pg. 9 [2]). 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 11, ‘312 teaches each limitation of claim 1, as discussed above and further teaches the total thickness of the rolled steel foil and diffusion alloy layer is more preferably 50 micron or less and further includes a chromium-based surface treatment layer of 2-200 nm thickness (Pg. 9 [4]-[5]; total thickness includes 50.2 microns). 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.
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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/KATHERINE A CHRISTY/Primary Examiner, Art Unit 1784