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 without traverse of Species B (C in the reply filed on April 03, 2026 is acknowledged.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 18024384, filed on March 03, 2023.
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 2, 4 and 6-9 are rejected under 35 U.S.C. 112(b), which the inventor or a joint inventor, regards as the invention.
Regarding claim 2, it recites the limitation "the hot stamping process" in line 5. There is insufficient antecedent basis for this limitation in the claim. A hot stamping component may be a component used for hot stamping, a hot stamping process is not inherent as presently recited.
Regarding claim 4, it recites the limitation "the hot stamping process" in lines 4- 5. There is insufficient antecedent basis for this limitation in the claim. A hot stamping component may be a component used for hot stamping, a hot stamping process is not inherent as presently recited.
Regarding claim 6, it recites the limitation "the hot stamping process" in line 5. There is insufficient antecedent basis for this limitation in the claim. A hot stamping component may be a component used for hot stamping, a hot stamping process is not inherent as presently recited.
Regarding claims 7-9, in each claim it is respectively indefinite what “with 1.4 mm” means. It appears to mean the thickness of the hot stamping component, but this is not definite.
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) 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Warnecke et al. (US 2013/0180305 A1), hereinafter Warnecke, in view of Yi et al. (CN 108588612 A), herein referring to the patent family member US 2020/0385836 A1 for translation, hereinafter Yi (foreign patent provided herewith).
Regarding claims 1, 3 and 5, Warnecke teaches a flat steel product for hot forming ([0040]; hot stamping component) with a tensile strength of 900-2000MPa ([0040]), steel with a C content of 0.1-0.4% by weight ([0037]) and Mn of 1.22 or 1.7 weight% (Table 1), the flat steel product of a steel sheet or strip is coated with a metal protective layer ([0030]; [0040]) based on Al by hot-dipping ([0033]), which is then suitable for hot forming ([0043]; i.e. the Al is a pre-coating). Warnecke further teaches an edge layer of 10-200 micron thick that is ductile ([0037]) and ductile is a decarbonized layer ([0034]), where hardness which is not higher than 75% of the hardness of the core region, that is to say, Hv(decarbonized)[i.e. HV1]/HV(core region) )[i.e. HV2]= HV1 /HV2 = 0.75 ([0038]; the depth of the decarbonized layer “edge layer” includes a position at less than 6 microns from an interface between the substrate steel and the coating) with ferrite near the surface ([0039]; i.e. when the aluminum coating is hot-dipped some amount of ferrite diffuses to the Al coating).
Warnecke does not specifically teach thickness of the component is 0.5-3.0 mm, nor aluminum or aluminum alloy coating thickness is 10~26µm and comprises: an interdiffusion layer adjacent to the substrate steel sheet, a thickness of the interdiffusion layer is 6~14µm, wherein an Fe content of the interdiffusion layer is not less than 70% by mass, and a Fe-Al intermetallic compound layer covering the outside of the interdiffusion layer, nor HV2 is 400-550 HV.
Yi is in a similar field of endeavor of a hot stamped component, a precoated steel sheet, hot stamped component of the present invention is provided with a coating of aluminum or an aluminum alloy on at least one surface of the base steel (Abstract). Yi teaches coating has a thickness of 6-26 microns ([0027]), composed only of a first layer located on a side close to the base steel, that is, an innermost layer (adjacent to the base steel), and the first layer is an interdiffusion layer having a thickness of 6 to 14 μm, and the composition of the interdiffusion layer is α-Fe containing Al and Si, wherein the Fe content is 70% by weight or more ([0030]) and the (outer) surface of the interdiffusion layer may further be covered by an intermetallic compound FeAl layer ([0010]). Yi further teaches the thickness of the precoated steel sheet is 0.5-3.0mm ([0045]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Warnecke to incorporate the details of Yi. The motivation for doing so would have been to improve the VDA bending toughness ([0023]) and thereby achieve the desired outcome of Warnecke for substantially better bending properties ([0062]). Further, it would have been simple substitution of known elements for others to obtain predictable results (MPEP 2143 I B). Warnecke teaches a product differing from that claimed by the absence of elements noted above in the rejection (finding 1). These elements are known in the prior art of Yi (see above citations) (finding 2). One of ordinary skill in the art would have substituted one known element for another with predictable results as the parameters of coatings and steels are well established in the art (finding 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.
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 HV2). Applicant teaches degree of carbonization is reflected by its hardness ([0111]) and then a relationship between the degree of decarburization and the dew point and the carbon content of the substrate steel sheet ([0075]; also the below parameters are the only ones listed as critical in any Table of applicant (Table 2)), and the decarburization is by heating the substrate steel sheet to 740-880⁰C at an ambient atmosphere of H2 and N2 with a volume percentage of H2 of 2-12% and the dew point should be -40 to -15⁰C for 30-300 seconds ([0076]). Warnecke teaches annealing the steel at a 600-1000⁰C for 10-360 seconds at -20 to 60 ⁰C dew point in a 0.1-25% by Vol H2, with a balance of N2 ([0023]). Warnecke teaches processing ranges 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 coated steel of Warnecke in view of Yi to have substantially identical properties to that of applicant; including the claimed HV2, 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 HV2 necessarily flows from the teachings of Warnecke in view of Yi (MPEP 2112 IV).
As Warnecke in view of Yi teaches a substantially identical coated steel, produced by a substantially identical process as that which applicant claims and discloses in their specification as producing the claimed hardness, one of ordinary skill in the art, before the effective filing date of the invention, would expect the coated steel of Warnecke in view of Yi to possess the claimed HV2, 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 2, 4 and 6-9, Warnecke in view of Yi teaches each limitation of claims 1, 3 and 5, as discussed above. Warnecke further teaches a flat steel product for hot forming ([0040]; hot stamping component) with a tensile strength of 900-2000MPa ([0040]). Warnecke does not specifically teach the claimed bending fracture strains, VDA peak forces, nor VDA bending angles (hereinafter collectively “claimed properties”), nor “1.4 mm”.
Yi is in a similar field of endeavor of a hot stamped component, a precoated steel sheet, hot stamped component of the present invention is provided with a coating of aluminum or an aluminum alloy on at least one surface of the base steel (Abstract). Yi teaches the thickness of the precoated steel sheet is 0.5-3.0mm ([0045]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Warnecke to incorporate the details of Yi. The motivation for doing so would have been to it would have been simple substitution of known elements for others to obtain predictable results (MPEP 2143 I B). Warnecke teaches a product differing from that claimed by the absence of elements noted above in the rejection (finding 1). These elements are known in the prior art of Yi (see above citations) (finding 2). One of ordinary skill in the art would have substituted one known element for another with predictable results as the parameters of coatings and steels are well established in the art (finding 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.
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 degree only the below parameters are critical to property formation as the below parameters are the only ones listed as critical in any Table of applicant (Table 2). Applicant teaches the heating the substrate steel sheet to 740-880⁰C at an ambient atmosphere of H2 and N2 with a volume percentage of H2 of 2-12% and the dew point should be -40 to -15⁰C for 30-300 seconds ([0076]). Warnecke teaches annealing the steel at a 600-1000⁰C for 10-360 seconds at -20 to 60 ⁰C dew point in a 0.1-25% by Vol H2, with a balance of N2 ([0023]). Warnecke teaches processing ranges that overlap those taught by applicant; where the 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 coated steel of Warnecke in view of Yi 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 Warnecke in view of Yi (MPEP 2112 IV).
As Warnecke in view of Yi teaches a substantially identical coated steel, produced by a substantially identical process as that which applicant claims and discloses in their specification as producing the claimed hardness, one of ordinary skill in the art, before the effective filing date of the invention, would expect the coated steel of Warnecke in view of Yi 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).
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
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