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 & Status of Claims
Claims 1 and 5 are examined of which claim 1 has been amended.
Claims 6-14 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/10/2024.
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.
List 1
Element
Instant Claims
(weight%)
Prior Art
KR’848
(weight%)
C
0.12 – 0.22
0.15 – 0.20
Si
1.6 – 2.4
1.5 – 2.0
Mn
2.0 – 3.0
1.5 – 3.0
Al
0.01 – 0.05
> 0 – 0.06
sum of one or more of
Ti, Nb and V
> 0 – 0.05
one or more of Nb, Ti: 0.01 – 0.05
P
0.015 or less
> 0 – 0.020
S
0.003 or less
> 0 – 0.01
N
0.006 or less
> 0 – 0.006
Fe + impurities
Balance
Balance
Claims 1 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over KR 10-2019-0111848 A of Lee and its English machine translation (KR’848).
Regarding claim 1, KR 10-2019-0111848 A of Lee and its English machine translation (KR’848) teaches an ultra high strength cold rolled steel sheet 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. 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. KR’551 further teaches that its steel sheet has yield strength of 650 MPa or more, tensile strength of 980 MPa or more, and elongation of 15% or more thereby meeting the steel sheet having high strength and high formability with the recited ranges of YS, TS, and EL. {KR’848 abstract, claims 1-5, [0001], [0008]-[0012], [0020]-[0063], [0075]-[0100]}.
KR’848 further teaches that its steel sheet has [0021] “In one specific example, the ultra-high strength cold rolled steel sheet may include more than 0 volume % and less than or equal to 20 volume % of ferrite, 70 to 80 volume % of martensite, and 10 to 20 volume % of retained austenite at room temperature.”[0063] “In one specific example, the ultra-high strength cold rolled steel sheet may include more than 0 volume % and less than or equal to 20 volume % of ferrite, 70 to 80 volume % of martensite (including tempered martensite), and 10 to 20 volume % of retained austenite at room temperature.” thereby meeting the various phases of microstructure and their ranges as recited in the instant claim 1.
The prior art is silent regarding its steel sheet having a) a hole expansion ratio (HER) of 30% or more (claim 1), b) grain size of each of the microstructure phases being less than 5 microns (claim 1), c) ratio of the precipitates (claim 1) and d) the number of precipitates (claim 1) as recited in instant claims.
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 {instant alloy: instant specification [0056]-[0071]; Prior art: [0075]-[0102]}. 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 claim 5, KR’848 teaches that its steel sheet has tensile strength of 980 MPa or more and elongation of 15% or more” meaning that their product would be 14,700 MPa% or higher thereby reading on the instant claimed range since the claimed ranges overlap or lie inside ranges disclosed by the prior art. 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.
Response to Arguments
Applicant's arguments filed 12/10/2025 regarding the rejection of instant claims 1 and 5 under 35 U.S.C. 103 as being unpatentable over KR 10-2019-0111848 A of Lee and its English machine translation (KR’848) have been fully considered but they are not persuasive.
Regarding the arguments that the prior art would not have all of the recited properties, it is noted that Applicant has not provided any objective evidence that would suggest that the product of the prior art would not have the recited properties. As noted above, 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 {instant alloy: instant specification [0056]-[0071]; Prior art: [0075]-[0102]}. 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.
Regarding the microstructure, the prior art explicitly teaches the range of the instant claims as the prior art teaches [0021] “In one specific example, the ultra-high strength cold rolled steel sheet may include more than 0 volume % and less than or equal to 20 volume % of ferrite, 70 to 80 volume % of martensite, and 10 to 20 volume % of retained austenite at room temperature.”[0063] “In one specific example, the ultra-high strength cold rolled steel sheet may include more than 0 volume % and less than or equal to 20 volume % of ferrite, 70 to 80 volume % of martensite (including tempered martensite), and 10 to 20 volume % of retained austenite at room temperature.”
Regarding the arguments of the new ranges of the ferrite and how it relates to the claimed properties, it is noted that the instant claimed range is a retreated range from the originally retreated range. Further, Applicant’s own data in the instant specification Example 1 versus Comparative Example 2 provides even not having the recited microstructure would still yield the properties of Table 2 of claim 1. Moreover, with respect to claim 5, , KR’848 teaches that its steel sheet has tensile strength of 980 MPa or more and elongation of 15% or more” meaning that their product would be 14,700 MPa% or higher thereby reading on the instant claimed range since the claimed ranges overlap or lie inside ranges disclosed by the prior art.
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 or the instant affidavit that clearly demonstrates the criticality of the claimed ranges as argued and therefore the claimed range is deemed obvious over the prior art teachings.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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