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Claims 8-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 March 30, 2026.
Applicant's election with traverse of Group I (claims 1-7 and 14-20) in the reply filed on March 30, 2026 is acknowledged. The traversal is on the ground(s) that there is no undue search burden. This is not found persuasive because the groups have separate classifications as noted in the January 28, 2026 restriction requirement, this creates an undue search burden because the inventions require a different field of search (e.g., searching different classes/subclasses). The requirement is still deemed proper and is therefore made FINAL.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Korea on May 21, 2022. It is noted, however, that applicant has not filed a certified copy of the KR10-2022-0067234 application as required by 37 CFR 1.55.
Claim Objections
Claim 1 is objected to because of the following informalities: adjust capitalization and punctuation to make the claim a single sentence. Appropriate correction is required.
Claim 2 is objected to because of the following informalities: adjust capitalization and punctuation to make the claim a single sentence. Appropriate correction is required.
Claim 14 is objected to because of the following informalities: adjust capitalization and punctuation to make the claim a single sentence. Appropriate correction is required.
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 14-20 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 14, claim 14 recites the limitation "the depth" in line 13. There is insufficient antecedent basis for this limitation in the claim. A particular depth is not necessarily inherent to the claimed steel.
Regarding claims 15, 16 and 19, these claims are each rejected for their incorporation of the above due to their respective dependencies on claim 14.
Regarding claim 17, it is indefinite what “high toughness” refers to. High is a relative term and no direction is given in the claim or specification of ascertaining what this is defined as. Further, the lack of definiteness in these terms results in indefiniteness of the other limitations in the claim of “improve toughness” and “increasing the risk of LME” as these are dependent on the indefinite definition of “high”. For examination, any component meeting the structural limitations of the claim (as recited in claim 14) shall be considered to meet the limitations of claim 17. Claim 17 is further rejected for its incorporation of the above due to its dependence on claim 14.
Regarding claim 18, it is indefinite what “high toughness” and “high-temperature” refer to. High is a relative term and no direction is given in the claim or specification of ascertaining what this is defined as. Further, the lack of definiteness in these terms results in indefiniteness of the subsequent limitation of “reducing surface cracks during forming” as these are dependent on the indefinite definitions of “high”. For examination, any component meeting the structural limitations of the claim (as recited in claim 14) shall be considered to meet the limitations of claim 18. Claim 18 is further rejected for its incorporation of the above due to its dependence on claim 14.
Regarding claim 20, it is indefinite what “enhancing” should be considered. This is a relative term and no direction is given in the claim or specification of ascertaining what this is defined as. Further, the lack of definiteness in these terms results in indefiniteness of the rest of the claim limitations as these are dependent on the indefinite definitions of “enhancing”. For examination, any component meeting the structural limitations of the claim (as recited in claim 14) shall be considered to meet the limitations of claim 20. Claim 20 is further rejected for its incorporation of the above due to its dependence on claim 14.
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 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 14-20 of copending Application No. 18965090 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they contain the following overlapping subject matter.
These are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Regarding instant claim 1 and claim 1 of ‘090, both recite a hot stamping component (part of ‘090 is analogous to claimed “component”) comprising: a base material; a decarburization layer located on the base material; and an inner oxide layer located on the decarburization layer, wherein the hot stamping component overlapping strengths, and wherein a hardness of the hot stamping component within a depth of about 50 µm from a surface of the hot stamping component in a plate thickness direction of the hot stamping component and an average hardness of the hot stamping component satisfy Relational Expression 1. <Relational Expression 1>(A / B) ≤ 0.7 (In Relational Expression 1, A denotes the hardness (Hv(≤50 µm)) within the depth of 50 µm in the plate thickness direction of the hot stamping component, and B denotes the average hardness (Hv(avg.)) of the hot stamping component.) 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 instant claim 2 and claim 2 of ‘090, both recite a hot stamping component (part) wherein a depth of the inner oxide layer satisfies Relational Expression 2. <Relational Expression 2>C ≤5 µm (In Relational Expression 2, C denotes the depth of the inner oxide layer in the plate thickness direction of the hot stamping component [part])). 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 instant claim 3 and claim 3 of ‘090, both recite wherein the hot stamping component (part) has a VDA bending angle of about 60° or more. 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 instant claim 4 and claim 4 of ‘090, both recite wherein the hot stamping component (part) has a yield strength (YP) that overlaps and an elongation (EL) of about 4% to 10%. 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 instant claim 5 and claim 5 of ‘090, both recite wherein the hot stamping component (part) has a microstructure with a martensite fraction of about 90% or more. 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 instant claim 6 and claim 6 of ‘090, both recite further comprising a plating layer located on the inner oxide layer.
Regarding instant claim 7 and claim 7 of ‘090, both recite wherein the hot stamping component (part) wherein a thickness of the plating layer is about 10 µm to 30 µm. 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.
Claims 14 and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14 and 17 of copending Application No. 18965090 in view of Kim et al. (KR 2021/0120477A April 17, 2026 Google Patents machine translation) hereinafter Kim (original of record, copy of translation provided herewith.
These are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Regarding instant claim 14 and claims 14 and 17 of ‘090, both recite a hot stamping component (part), comprising: a base material including carbon (C), silicon (Si), manganese (Mn), chromium (Cr) and other elements, wherein the base material has a microstructure with a martensite fraction of about 90% or more; a decarburization layer located on the base material; an inner oxide layer located on the decarburization layer; and a plating layer located on the inner oxide layer, wherein the hot stamping component satisfies the following conditions: a tensile strength (TS) that overlaps; a VDA bending angle of about 60° or more; Relational Expression: (A / B) ≤ 0.7, and Relational Expression: C ≤ 5 µm. (In Relational Expression, A denotes the hardness (Hv(≤50 µm)) within the depth of 50 µm in the plate thickness direction of the hot stamping component, and B denotes the average hardness (Hv(avg.)) of the hot stamping component.) (In Relational Expression, C denotes the depth of the inner oxide layer in the plate thickness direction of the hot stamping component.) . 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.
‘090 does not specifically teach including boron. Kim is in a similar field of endeavor of steel that is multi-stage heated (Abstract) for hot stamping with yield and tensile strengths that overlap applicant and 90% or more martensite (Pg. 3 [11]). Kim teaches >0 to 0.01 wt% B (Pg. 3 [10]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify ‘090 to incorporate Boron taught by Kim. The motivation for doing so would have been to improve the strength of the steel (Pg. 10 [4]), which is desired in ‘090 [0166]).
Regarding instant claim 19 and claims 14 and 17 of ‘090, both recite a hot stamping component (part), with overlapping yield strength and elongation. . 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.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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) 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (KR 2021/0120477A April 17, 2026 Google Patents machine translation) hereinafter Kim (original of record, copy of translation provided herewith. Claim 7 as evidenced by Sunrise (“Aluminum Alloy AlSi12”).
Regarding claims 1-3, Kim teaches a hot stamping part including a base steel sheet (Pg. 3 [10]) with a tensile strength of 1000 MPa or more (Pg. 3 [11]) with a dense surface oxide (inner oxide layer) (Pg. 4 [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, (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.
Kim does not specifically teach a decarburization layer on the base material with the inner oxide layer on the decarburization layer, with hardness meeting Relational Expression 1 and a depth of the inner oxide layer meeting Relational Expression 2, nor a VDA bending angle of 60⁰ or more (hereinafter “claimed properties”).
One of ordinary skill in the art, before the effective filing date of the invention, would have expected substantially identical material treated in a substantially identical manner as applicants to have substantially identical properties (including the claimed properties).
Applicant teaches the base material is steel ([0084]), of an optional composition, “may include’” ([0065]) and Kim teaches a base steel sheet, remaining Fe and unavoidable impurities (Pg. 3 [17])
Applicant teaches forming a blank of a plated steel sheet, heating it in a heating furnace with a plurality of sections with different temperature ranges (multi stage hating step), soaking step of heating from Ac1 to ~910⁰C, annealing at ~750 to 900⁰C at a dew point of ~15 to 15⁰C, further comprising transferring the heated blank, and forming a molded body and then cooling it (claims 8-11). Examiner notes the only parameter shown to be critical in Tables 1 and 2 is the dew point temperature (Tables 1 and 2).
Kim teaches a Taylor rolled blank of a base material of Fe and unavoidable impurities (steel) with an Al-Si based plating layer formed on it (Pg. 3 [17]) that is passed through a multi-stage heating section and then crack treated (annealed), then transferred to a press mold to form a molded body and then cooled (Pg. 5 [1]). Crack treatment is after heating it to 800-1000⁰C (heated then annealed) (Pg. 4 [13]) and the dew point is 0⁰C in the heating furnace (Pg. 5 [3]). Kim further teaches the temperature may be sequentially increased in a direction from inlet to outlet in the different sections (Pg. 3 [5]; different temperature range in sections). Kim teaches processing ranges (previous paragraph) that 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 product of the prior art 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 compositions are substantially identical in support of the determination that the inherent characteristic of the claimed properties necessarily flows from the teachings of the prior art (MPEP 2112 IV).
As the prior art teaches a substantially identical product, produced by a substantially identical process as that which applicant discloses as producing the claimed properties, one of ordinary skill in the art, before the effective filing date of the invention, would expect the product of the prior art to possess the claimed limitations, 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 claims 4 and 5, Kim teaches each limitation of claim 1, as discussed above and further teaches yield strength of 800 MPa or more, elongation of 5% or more and a martensite fraction of 90% or more in the microstructure (Pg. 3 [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 claims 6 and 7, Kim teaches each limitation of claim 1, as discussed above and further teaches a dense surface oxide (inner oxide layer) (Pg. 4 [7]) and an Al-Si based plating layer formed on the base steel sheet surface (generally on the inner oxide layer) (Pg. 3 [2]) and 100-180 g/m2 of Al-Si plating based on both sides (Pg. 4 [13]; this includes densities of Al-Si plating that overlap the claimed thickness on one side). Sunrise provides evidence the specific weight is 2.68kg/dm3 (Pg. 2 [7]), which calculates to ~38 microns total, or ~19 microns per side. 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.
Claim(s) 14-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of Yoo et al. (US 2021/0147955 A1), hereinafter Yoo (of record). Claim 16 evidenced by Sunrise (“Aluminum Alloy AlSi12”).
Regarding claims 14-15, Kim teaches a hot stamping part including a base steel sheet (Pg. 3 [10]) with a tensile strength of 1000 MPa or more (Pg. 3 [11]) with a dense surface oxide (inner oxide layer) (Pg. 4 [7]), a martensite fraction of 90% or more in the microstructure (Pg. 3 [11]) and a base material of C, Mn, B, S, N, P, at least one of Ti or Al, and remining Fe (steel) (claim 3).
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.
Kim does not specifically teach a decarburization layer on the base material with the inner oxide layer on the decarburization layer, with hardness meeting Relational Expression 3 and a depth of the inner oxide layer meeting Relational Expression 4, nor a VDA bending angle of 60⁰ or more, nor the decarburization layer is softer than the base material with an average hardness of ≤70% of the average hardness at an about ¼ plate thickness of the hot stamping component (hereinafter “claimed properties”), nor the base material includes Cr.
Yoo is in the similar field of endeavor of a hot stamped steel plate including a decarburized layer (Abstract) and teaches including Cr in the steel (Abstract). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention to modify Kim to incorporate the Cr of Yoo. The motivation for doing so would have been to improve the hardenability and strength of the steel ([0048]) and thereby achieve the objective hardness and strength, which are desired by Kim (Pg. 3 [11]).
One of ordinary skill in the art, before the effective filing date of the invention, would have expected substantially identical material treated in a substantially identical manner as applicants to have substantially identical properties (including the claimed properties).
Applicant teaches the base material is steel ([0084]), of an optional composition “may include’” ([0065]) and Kim in view of Yoo teaches an overlapping base material as cited above.
Applicant teaches forming a blank of a plated steel sheet, heating it in a heating furnace with a plurality of sections with different temperature ranges (multi stage hating step), soaking step of heating from Ac1 to ~910⁰C, annealing at ~750 to 900⁰C at a dew point of ~15 to 15⁰C, further comprising transferring the heated blank, and forming a molded body and then cooling it (claims 8-11). Examiner notes the only parameter shown to be critical in Tables 1 and 2 is the dew point temperature (Tables 1 and 2).
Kim teaches a Taylor rolled blank of a base material of Fe and unavoidable impurities (steel) with an Al-Si based plating layer formed on it (Pg. 3 [17]) that is passed through a multi-stage heating section and then crack treated (annealed), then transferred to a press mold to form a molded body and then cooled (Pg. 5 [1]). Crack treatment is after heating it to 800-1000⁰C (heated then annealed) (Pg. 4 [13]) and the dew point is 0⁰C in the heating furnace (Pg. 5 [3]). Kim further teaches the temperature may be sequentially increased in a direction from inlet to outlet in the different sections (Pg. 3 [5]; different temperature range in sections). Kim teaches processing ranges (previous paragraph) that 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 product of the prior art 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 compositions are substantially identical in support of the determination that the inherent characteristic of the claimed properties necessarily flows from the teachings of the prior art (MPEP 2112 IV).
As the prior art teaches a substantially identical product, produced by a substantially identical process as that which applicant discloses as producing the claimed properties, one of ordinary skill in the art, before the effective filing date of the invention, would expect the product of the prior art to possess the claimed limitations, 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 16, Kim teaches each limitation of claim 14, as discussed above and further teaches a dense surface oxide (inner oxide layer) (Pg. 4 [7]) and an Al-Si based plating layer formed on the base steel sheet surface (generally on the inner oxide layer) (Pg. 3 [2]) and 100-180 g/m2 of Al-Si plating based on both sides (Pg. 4 [13]; this includes densities of Al-Si plating that overlap the claimed thickness on one side). Sunrise provides evidence the specific weight is 2.68kg/dm3 (Pg. 2 [7]), which calculates to ~38 microns total, or ~19 microns per side. 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 “providing corrosion resistance and preventing toughness reduction”, these are subject to broadest reasonable interpretation and any Al-based plating layer provides some degree of corrosion resistance and any additional metal layer necessarily contributes to a degree of preventing toughness reduction (as broadly interpreted). Therefore, the prior art of Kim is considered to read on this limitation.
Regarding claim 17, 18 and 20, Kim teaches each limitation of claim 14, as discussed above including the decarburization layer, hardness ratio and layered structure. As noted above in the 35 U.S.C. 112(b) rejections of these claims, as the physical structure of claim 14 is met by the prior art of Kim (see claim 14 rejection), they are considered to meet these claim limitations.
Regarding claim 19, Kim teaches each limitation of claim 14, as discussed above and further teaches yield strength of 800 MPa or more and elongation of 5% or more (Pg. 3 [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.
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
Prosecution Insights