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
Applicant's election with traverse of Group I (Claims 1-13) in the reply filed on 05/08/2026 is acknowledged. The traversal is on the ground(s) that multiple groups can be searched and examined together without undue burden. This is not found persuasive because this case is filed under PCT Rule 13.1 and the restriction requirement is based on whether Group I and Group II share a specifical technical feature. Since Kim et al. (US 2021/0187583) teaches a hot stamped component (T2), Group I and Group II lack special technical feature and the requirement is still deemed proper and is therefore made FINAL. Claims 14-19 are withdrawn. Claims 1-13 are examined herein.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites a heating furnace comprising a plurality of sections having different temperature ranges in line5-8. It’s unclear whether temperature variation in a heating furnace meets the recited limitation. Appropriate correction is required.
Claim 1 recites about 910 ºC in line 10. Instant Specification discloses that “about” can be understood as within 10%, 9%, 8%, 7%, 6%, 5%, 4%, 3%, 2%, 1%, 0.5%, 0.1%, 0.05%, or 0.01% of the stated value. Since “about” can be interpreted as multiples percentage, it’s unclear which percentage is applied to heating temperature. Appropriate correction is required.
Claim 1 recites a relation expression in line 12-13 without specifying the unit of K, an and bn. In the absence of unit definitions, the relational expression is ambiguous, since different unit choices would lead to different technical meanings and different scopes. Appropriate correction is required.
Claim 1 recites a relation expression including a material correction coefficient K, without specifying any value, range, or determining expression for K. In the absence of such a definition, the scope of claim 1 is unclear. Appropriate correction is required.
Claim 2 recites about 2 minute to 10 minute. Instant Specification discloses that “about” can be understood as within 10%, 9%, 8%, 7%, 6%, 5%, 4%, 3%, 2%, 1%, 0.5%, 0.1%, 0.05%, or 0.01% of the stated value. Since “about” can be interpreted as multiples percentage, it’s unclear which percentage is applied to heating time. Appropriate correction is required.
Claim 3 recites a relation expression without specifying the unit of cn and dn. In the absence of unit definitions, the relational expression is ambiguous, since different unit choices would lead to different technical meanings and different scopes. Appropriate correction is required.
Claim 3 recites an annealing furnace. It’s unclear whether the annealing furnace is the same as the heating furnace recited in claim 1. Claim 1 does not define any annealing operation. It is therefore ambiguous whether the annealing process is intended to form part of the "heating of the blank" in claim 1 or whether it relates to a separate, preceding process for preparing the base material before the plated steel sheet/blank is formed. Appropriate correction is required.
Claim 4 recites about -15 ºC to +15 ºC. Instant Specification discloses that “about” can be understood as within 10%, 9%, 8%, 7%, 6%, 5%, 4%, 3%, 2%, 1%, 0.5%, 0.1%, 0.05%, or 0.01% of the stated value. Since “about” can be interpreted as multiples percentage, it’s unclear which percentage is applied to the dew point of the annealing process. Appropriate correction is required.
Claim 5 recites about 30 mpm to 200 mpm. Instant Specification discloses that “about” can be understood as within 10%, 9%, 8%, 7%, 6%, 5%, 4%, 3%, 2%, 1%, 0.5%, 0.1%, 0.05%, or 0.01% of the stated value. Since “about” can be interpreted as multiples percentage, it’s unclear which percentage is applied to the line speed of the annealing furnace. Further, the meaning of “mpm” is not defined. Appropriate correction is required.
Claim 6 recites about 750 ºC to 900 ºC. Instant Specification discloses that “about” can be understood as within 10%, 9%, 8%, 7%, 6%, 5%, 4%, 3%, 2%, 1%, 0.5%, 0.1%, 0.05%, or 0.01% of the stated value. Since “about” can be interpreted as multiples percentage, it’s unclear which percentage is applied to the annealing temperature. Appropriate correction is required.
Claim 7 recites about 0.5 volume % to 25 volume %. Instant Specification discloses that “about” can be understood as within 10%, 9%, 8%, 7%, 6%, 5%, 4%, 3%, 2%, 1%, 0.5%, 0.1%, 0.05%, or 0.01% of the stated value. Since “about” can be interpreted as multiples percentages, it’s unclear which percentage is applied to the gas atmosphere. Appropriate correction is required.
Claim 9 recites about 10 µm to 100 µm. Instant Specification discloses that “about” can be understood as within 10%, 9%, 8%, 7%, 6%, 5%, 4%, 3%, 2%, 1%, 0.5%, 0.1%, 0.05%, or 0.01% of the stated value. Since “about” can be interpreted as multiples percentages, it’s unclear which percentage is applied to the thickness of the decarburized layer. Appropriate correction is required.
Claim 10 recites about 80% of an average hardness. Instant Specification discloses that “about” can be understood as within 10%, 9%, 8%, 7%, 6%, 5%, 4%, 3%, 2%, 1%, 0.5%, 0.1%, 0.05%, or 0.01% of the stated value. Since “about” can be interpreted as multiples percentages, it’s unclear which percentage is applied to the average hardness. Appropriate correction is required.
Claim 12 recites about 5 µm to 30 µm. Instant Specification discloses that “about” can be understood as within 10%, 9%, 8%, 7%, 6%, 5%, 4%, 3%, 2%, 1%, 0.5%, 0.1%, 0.05%, or 0.01% of the stated value. Since “about” can be interpreted as multiples percentages, it’s unclear which percentage is applied to the thickness of the plating layer. Appropriate correction is required.
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.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshida (US 2020/0407833), and further in view of Winkel (US 2021/0155996).
Regarding claims 1-5, Yoshida teaches a method of manufacturing a hot-stamped part, comprising: forming a blank by cutting a plated steel sheet having a plating layer formed on at least one surface of a base material ([0108]); and heating the blank in a heating furnace to a temperature of Ac3 or higher with holding time of preferably 15 minutes or less ([0106]; [0107]), which overlaps the recited heating temperature in claim 1 and the recited heating time in claim 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. 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). See MPEP 2144.05 I. Thus, the recited heating temperature and time in claims 1 and 2 are obvious over Yoshida.
Yoshida does not disclose that the heating furnace comprises a plurality of sections having different temperature ranges and the heating of the blank comprises a multistage heating operation of heating the blank in stages as recited in claim 1.
Winkel teaches a method for heating a metal component to a target temperature, in which the component has a preliminary coating and is passed through a furnace that has at least four zones (Abstract). Winkel discloses the method can be used in particular in a press hardening line in which a press hardening tool is arranged downstream of a roller hearth furnace ([0001]) and the steel sheet is first heated in a furnace above the AC3 temperature, and then shaped in the press hardening process and cooled accordingly ([0002]), which is analogous to the method of Yoshida. Winkel further discloses that the component is passed successively through at least an initial heating zone, a plateau zone, a peak heating zone and an end zone and wherein the initial heating zone is adjusted to an initial heating temperature, the plateau zone is adjusted to a plateau temperature, the peak heating zone is adjusted to a peak temperature and the end zone is adjusted to the target temperature (claim 1, [0007], [0011]-[0016], [0051]-[0053], Figs. 1-4), which meets the limitation that the heating furnace comprises a plurality of sections having different temperature and heating the blank comprises a multistage heating as recited in claim 1. Winkel discloses the heating method is beneficial in heating up the coated component with reduced crack formation ([0005]). Thus, it would be obvious to one of ordinary skill in the art to apply the heating method disclosed by Winkel in the process of Yoshida in order to rapidly heat up the coated steel sheet with reduced crack formation as disclosed by Winkel.
Yoshida discloses an example that the dew point and line speed during annealing is 0 ºC and 45 mpm, respectively (Table 3, Sample No. 10), which meets the recited dew point in claim 4 and the recited line speed in claim 5. K=-0.025x45= 1.125. Yoshida discloses a steel composition in Table 1, which is used by the Examiner to calculate Ac3 and the Ac3 is 792 ºC. Yoshida discloses heating the blank in a heating furnace to a temperature of Ac3 or higher with holding time of preferably 15 minutes or less ([0106]; [0107]). Base on the disclosure by Yoshida, it’s reasonable to assume that the heating temperature is 900 ºC and the heating time is 10 minutes, 91.81+K-0.022xan-0.23xbn= 91.81-1.125-0.022x900-0.23x10=68.585, which is greater than 62 and meet the recited relational expression in claim 1. Thus, claim 1 is obvious over Yoshida in view of Winkel.
Regarding claim 6, Yoshida discloses the annealing temperature of the base material is 700 ºC and 720 ºC (Table 3, Sample No. 8 to 13 and 15-16). Claim 6 recites that the annealing temperature is about 750 ºC to 900 ºC. Instant Specification discloses that “about” can be understood as within 10% of the stated value. Thus, the recited temperature range in claim 6 is 675 ºC to 990 ºC and the annealing temperature disclosed by Yoshida overlap the recited temperature range in claim 6. In the case where the claimed ranges "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). See MPEP 2144.05 I. Thus, claim 6 is obvious over Yoshida in view of Winkel.
Regarding claim 7, Yoshida discloses that the annealing of the base material is performed in a gas atmosphere comprising 1 volume% to 30 volume% of hydrogen and a remainder of nitrogen ([0087]), which overlaps the recited ratio of hydrogen in claim 7. In the case where the claimed ranges "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). See MPEP 2144.05 I. Thus, claim 7 is obvious over Yoshida in view of Winkel.
Regarding claims 8 and 9, Yoshida discloses that a decarburized layer having a thickness of 20 µm or less is formed on the base material ([0095]), which overlaps the recited thickness in claim 9. In the case where the claimed ranges "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). See MPEP 2144.05 I. Thus, claims 8 and 9 are obvious over Yoshida in view of Winkel.
Regarding claim 10, as set forth in the rejections of claims 6 and 7 above, Yoshida teaches an annealing temperature that overlaps the recited annealing temperature in claim 6 and a gas atmosphere that meets the recited gas atmosphere in claim 7, one of ordinary skill in the art would expect that the decarburized layer disclosed in Yoshida to meet the recited hardness limitation in claim 10. “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.
Regarding claim 11, Yoshida discloses that the plating layer is a Zn-based plating layer ([0099]), which meets the limitation recited in claim 11.
Regarding claim 12, Yoshida discloses that the coating amount of Zn is 30 g/m2 to 120 g/m2 ([100]). Since Zn has a density of 7.14g/cm3, 30 g/m2 to 120 g/m2 corresponds to a thickness of 4.2-16.8 µm that overlaps the recited thickness in claim 12. In the case where the claimed ranges "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). See MPEP 2144.05 I. Thus, claim 12 is obvious over Yoshida in view of Winkel.
Regarding claim 13, Yoshida discloses that after the heating of the blank, forming a molded body is performed ([0106]). Winkel discloses that press-hardening (i.e. hot stamping) comprises heating the steel sheet in a furnace and then shaped in a press hardening process in a press and cooling accordingly ([0002]). Thus, Yoshida in view of Winkel discloses a transferring step from the heating furnace to the press and claim 13 is obvious over Yoshida in view of Winkel.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/861,418. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-20 of copending Application No. 18/861,418 teach all the limitations recited in instant claims 1-13.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/XIAOWEI SU/Primary Examiner, Art Unit 1733
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