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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10 January 2025 was considered by the examiner.
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 1-20 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.
In regards to independent claim 1, this claim sets forth the limitation “a base iron” in the second line of the claim. The metes and bounds of this particular limitation cannot be determined since it is not clear what would fall within the scope of a base iron. It is not clear if a base iron means a component that has iron in it, consists of iron, comprises iron, or another such limitation. For the purposes of examination, the Office is construing this to mean a base that comprises iron.
As to claims 2-6, these claims depend from independent claim 1 and incorporate the limitations therein. Accordingly, claims 2-6 are rejected for the reasons set forth above in regards to independent claim 1.
In regards to independent claim 7, this claim sets forth the limitation “a base iron” in the second line of the claim. The metes and bounds of this particular limitation cannot be determined since it is not clear what would fall within the scope of a base iron. It is not clear if a base iron means a component that has iron in it, consists of iron, comprises iron, or another such limitation. For the purposes of examination, the Office is construing this to mean a base that comprises iron.
As to claims 8-13, these claims depend from independent claim 7 and incorporate the limitations therein. Accordingly, claims 8-13 are rejected for the reasons set forth above in regards to independent claim 7.
In regards to independent claim 14, this claim sets forth the limitation “a base iron” in the second line of the claim. The metes and bounds of this particular limitation cannot be determined since it is not clear what would fall within the scope of a base iron. It is not clear if a base iron means a component that has iron in it, consists of iron, comprises iron, or another such limitation. For the purposes of examination, the Office is construing this to mean a base that comprises iron.
As to claims 15-20, these claims depend from independent claim 14 and incorporate the limitations therein. Accordingly, claims 15-20 are rejected for the reasons set forth above in regards to independent claim 14.
Claim Rejections - 35 USC § 102 / 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 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.
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.
Claims are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Korean Patent Publication KR101569508 (Corresponding U.S. Patent Number 10,533,237 will be utilized as a translation and cited herein as “Oh”).
In regards to independent claim 9 and dependent claims 10 and 11, Oh is directed to a method for manufacturing a hot press forming (HPF) part having excellent bending properties. (Abstract) The HPF part has a hot dip aluminum plating layer formed on the surface of a base steel sheet, viz. a base iron. (2:22-25)
As set forth below, Oh sets forth a steel sheet having compositional ranges that overlap the ranges taught within the instant application for achieving the claimed structure.
Base Iron
(¶23 of Specification)
Oh
(2:26-30)
Carbon
0.18-0.25
0.18-0.25
Silicon
0.1-0.5
0.1-0.5
Manganese
0.9-1.5
0.9-1.5
Phosphorus
0.03 or less
0.03 or less
Sulphur
0.01 or less
0.01 or less
Aluminum
0.01-0.05
0.01-0.05
Chromium
0.05-0.5
0.05-0.5
Titanium
0.01-0.05
0.01-0.05
Boron
0.001-0.005
0.001-0.005
Nitrogen
0.009 or less
0.009 or less
Iron
Balance
Balance
The steel material is rolled and subjected to hot-dip aluminum plating. (9:14-16) After hot dipping, the product is annealed at a temperature within the range of 700 to 900C. (9: 30-33) The aluminum plating bath may contain aluminum as a major ingredient and silicon in the range of 7 to 12%. (9:33-36) At this time, a hot dip aluminum plating bath was composed of aluminum as a major ingredient, 8.5% Si, 2% Fe and other impurities. (10:40-42) The hot-dip aluminum plated steel sheet is heated to 850 to 1000 C and maintained for 1 second to 1000 seconds. (9:37-40) The heating rate is maintained at a rate of 1 C/s to 100 C/s. (9:47-48)
This appears to be the same or substantially identical the process utilized to produce the claimed product, in particular the Fe-Al alloy plated layer with the middle layer and average grain size. The specification sets forth that the aluminum-based pated steel may be prepared at 800 to 1000 C for 3 to 20 minutes. (¶73 of Specification) The heating rate is from 1 to 10 C/s. (¶75) A preferable composition of the hot-dip aluminum plating bath may include, by wt. %, 8 to 11% of Si, 3% or less of Fe, and a balance of Al and inevitable impurities. (¶63)
Where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the Office can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. Whether the rejection is based on “inherency” under 35 USC 102, on “prima facie obviousness” under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the Office’s inability to manufacture products or to obtain and compare prior art products. In re Best, Bolton and Shaw, 195 USPQ 430 (CCPA 1977).
Consequently, absent a showing to the contrary, it appears that the product in the prior art necessarily or inherently possesses the characteristics of the claimed product, including the Fe-Al alloy plated layer having the parts, the composition of the parts, and the grain size of the parts as set forth within the instant claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Daniel Schleis whose telephone number is (571)270-5636. The examiner can normally be reached 10 AM to 4 PM Monday through Friday.
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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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Daniel J. Schleis
Primary Examiner
Art Unit 1784
/Daniel J. Schleis/ Primary Examiner, Art Unit 1784
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