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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 9/25/2025 has been entered.
Election/Restriction & Status of Claims
Claims 1-11, 13-19 and 30-31 are examined of which claims 1 and 2 were amended and claim 32 was newly added in Applicant’s reply.
Claims 20-29 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 03/16/2023.
Claim Objections
Claims 1-3 and 31 are objected to because of the following informalities:
Claims 1-3 recite “weight percent” followed by elemental symbol while other claims recite “weight percent of” followed by elemental symbol.
Claim 31 recites the phases to comprise the numerical range rather than the steel to have numerical ranges for the various phases
Appropriate correction is required.
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 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.
List 1
Element
Instant Claims
(weight%)
Prior Art
WO’020
(mass%)
C
0.12 – 0.5 claim 1
0.15 – 0.4 claim 2
0.2 – 0.25 claim 3
C: 0.18 to 0.4
Mn
1 – 3 claim 1
2 – 2.8 claim 2
2.1 – 2.5 claim 3
Mn: 1.5 to 4.0
Si
0.4 – 1.1 claim 1
0.5 – 1.0 claim 2
0.6 – 0.9 claim 3
less than 1.0 claim 4
less than 0.95 claim 5
0.6 – 0.8 claim 6
Si: 0.5 to 2.0
Cr
greater than 0.4 to 0.9 claim 1
greater than 0.5 claim 3
Cr: 0 to 1.0
Mo
up to 0.5 claim 1
0.15 – 0.4 claim 2
0.2 – 0.3 claim 3
0.1 – 0.4 claim 9
0.2 – 0.3 claim 10
Mo: 0 to 0.5
Al
up to 1 claim 1
0.1 – 0.7 claim 2
0.2 – 0.5 claim 3
less than 0.5 claim 7,8
Al: 0 to 1.5
Cu
up to 0.2 claim 1
Cu: -
Fe + impurities
Steel sheet
Balance
Claims 1-11, 13-19 and 30-31 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2012/120020 A1 of Hanlon (WO’020).
Regarding claims 1-11, 13-17 and 30-31, WO 2012/120020 A1 of Hanlon (WO’020) “a method for producing a steel strip composite and to a steel strip composite produced by said method” wherein the method comprises quenching and partitioning with a composition wherein the claimed ranges of the constituent elements of the instant alloy of the instant claims overlap or lie inside the ranges of various elements of the alloy of the prior art as shown in the List 1 above thereby on the instant claimed limitation of “quench and partition steel sheet product” and the compositional ranges of the instant claims. {WO’020 abstract, page 1: 1-7, page 3: 1-33, page 4:1-6:33, claims 1-14}. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed composition over the prior art disclosure since the prior art teaches the similar property/utility throughout the disclosed ranges. 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
The prior art teaches that its steel has “The final microstructure of the steel comprises martensite, bainite and carbon- enriched austenite and, if Ti < Ac3, equiaxed ferrite” “11. Steel strip produced by any one of the claims 1 to 10 wherein the steel has a microstructure containing at least 5% austenite and the e-ratio of at least 1.8 and the tensile strength (UTS) of at least 900 MPa. 12. Steel strip according to claim 11 wherein the microstructure further contains one or more of bainite, martensite, tempered martensite, ferrite, fine carbides. 13. Steel strip according to claim 11 or 12 wherein the microstructure does not contain ferrite and/or coarse cementite.” {WO’020 page 4:19-21, claim 1, 11-13} thereby reading on the claimed microstructural limitations “the steel sheet product comprises martensite, ferrite and retained austenite” (claim 1), “greater than 10 to 16 volume percent of retained austenite” (claim 11), and “at least 11 volume percent of retained austenite” (claim 30). 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I. Regarding the claimed ranges of instant claim 31, as noted above, the prior art teaches that the microstructure of the steel comprises martensite, bainite and carbon- enriched austenite and, if Ti < Ac3, equiaxed ferrite; at least 5% austenite; further contains one or more of bainite, martensite, tempered martensite, ferrite, fine carbides meaning that the ranges of the various phases of the instant claims overlap or lie inside the ranges of various phases of the alloy of the prior art thereby reading on the instant claimed limitation. 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
The prior art teaches that its steel has “tensile strength (UTS) of at least 900 MPa” and shows values above 1180 MPa in Table 2 thereby reading on the instant claimed ranges of the tensile strength of the instant claim 1.
Although the prior art teaches (page 2: 15-21) “For this generation of steels more attention is also being pa id to other form ability pa ra meters such as stretched edge ductility (hole expansitivity) and bendability. In most cases, mixed microstructures comprising hard majority phases such as martensite or bainite are used to develop high to ultrahigh strengths. Such hard, uniformly fine, microstructures tend to exhibit good hole expansitivity.” (page 9:29-10:2) “Preferably the yield to tensile strength ratio is 0.6 or higher. More preferably the ratio is at least 0.65 or even higher. Low yield to tensile strength ratios are associated with poor bendability and edge cracking sensitivity. Performance is often dependent on yield strength, anti-intrusion components for instance require high yield strength. High yield to tensile strength ratios ensure strength uniformity in the formed part, especially in forming operations which apply localised strain such as bending, or hole expansion.” (page 9:26-27) “Ductility levels are at least 1.8x or more than that of conventional C-Mn steels at equivalent strength.”, the prior art is silent regarding the limitations a) “the retained austenite comprises substantially equiaxed grains having an average aspect ratio of less than 3:1” of instant claim 1 and b) the specific ranges of total elongation, hole expansion, combination of ultimate tensile strength and total elongation, and combination of ultimate tensile strength, total elongation and hole expansion of instant claims 1 and 13-17. 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. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Therefore, it is expected that the alloy of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (see compositional analysis above), b) the claimed and prior art products are identical or substantially identical in structure (see microstructure analysis above) and c) the claimed and prior art products are produced by identical or substantially identical processes (the prior art teaches that the method of making its steel contains quenching and partitioning). Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
Regarding claims 18-19, the prior art teaches “In a preferred embodiment of the invention the metallic coating is provided by hot- dip galvanising or by electro-galvanising” “10. A method according to any one of the preceding claims wherein the cold-rolled and annealed strip is coated with one or more metallic layer(s), preferably wherein the step of providing the metallic coating is by hot-dip galvanising or electro- galvanising.” {page 10:35-36, claim 10} thereby reading on instant claimed limitations.
Response to Arguments
Amendments to the instant claims in concert with Applicant’s arguments, see pages 7-8, filed 09/252025, with respect to the rejection a) Claims 1, 4-19 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2017/109541 A1 of Gospodinova (WO’541) has been fully considered and are persuasive. Therefore, the rejection has been withdrawn.
Applicant's arguments filed 09/25/2025 regarding the rejection of instant claims under 35 U.S.C. 103 as being unpatentable over WO 2012/120020 A1 of Hanlon (WO’020) have been fully considered but they are not persuasive.
Regarding the argument “one skilled in the art would not be led to use Cr in the range of from greater than 0.4 to 0.9 weight percent”, the prior art teaches that its steel can have Cr in the range 0 to 1.0 thereby meeting the claimed limitation.
With respect to the arguments that the embodiments provided by the prior art do not teach the claimed matter, the arguments have been fully considered but they are not persuasive. Patents are relevant as prior art for all they contain. "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).See MPEP § 2123.
As noted above, the prior art renders the instant claims obvious. If a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990). Rebuttal evidence and arguments can be presented in the specification, In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed. Cir. 1995), by counsel, In re Chu, 66 F.3d 292, 299, 36 USPQ2d 1089, 1094-95 (Fed. Cir. 1995), or by way of an affidavit or declaration under 37 CFR 1.132, e.g., Soni, 54 F.3d at 750, 34 USPQ2d at 1687; In re Piasecki, 745 F.2d 1468, 1474, 223 USPQ 785, 789-90 (Fed. Cir. 1984). However, arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). See MPEP § 2145. Attorney argument is not evidence unless it is an admission, in which case, an examiner may use the admission in making a rejection. See MPEP § 2129 and § 2144.03 for a discussion of admissions as prior art. The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) ("An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness."). See MPEP § 716.01(c) for examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration. See MPEP § 2145 I.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP § 716.02(d). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). See MPEP § 716.02(d) II. However, there is no data in the instant specification that clearly demonstrates the criticality of the claimed range and therefore the claimed range is deemed obvious over the prior art teachings.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOPHY S. KOSHY whose telephone number is (571)272-0030. The examiner can normally be reached M-F 8:30 AM- 5:00 PM.
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/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733