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 .
Claim Status
An amendment, filed 9/1/2026, is acknowledged. Claims 1 and 7-8 are amended; claim 9 is newly added. Claims 1-4 and 7-9 are currently pending, claim 4 is withdrawn.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-2 and 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kizu (US 2019/0078172)(previously cited).
With respect to Claim 1, Kizu teaches a steel sheet for hot-stamping, the steel having a composition, in mass%, as follows (para. 19, 41-68, 104; Table 1):
Claim 1
Kizu
C
0.005-0.12
0.04-0.25
Si
0.50-1.6
0.5-2.0
Mn
0.30 or less (excl. 0)
0.1-2.0
Al
0.010-1.0
0.10 or less
P
0.1000 or less (excl. 0)
0.05 or less
S
0.1000 or less (excl. 0)
0.03 or less
N
0.1000 or less (excl. 0)
0.01 or less
B
0.0005 or less (excl. 0)
0.0002-0.005
O
0.1000 or less (excl. 0)
0.5 or less total content of incidental impurities including, for example, O, Sn, Mg, Co, As, Pb, Zn, and Ce
Fe
Interpreted as substantial balance
Balance with impurities
Compositional ranges including zero are interpreted as optional elements. Thus, Kizu teaches a steel with compositional ranges overlapping each of the instantly claimed ranges and that does not require an element outside those claimed. It would have been obvious to one of ordinary skill in the art to select a steel having a composition from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
As Kizu teaches the steel sheet for hot stamping, it would have been obvious to one of ordinary skill in the art to form a hot stamped component from the steel sheet of Kizu, in order to obtain a steel component with desired mechanical properties. (see Kizu, para. 104).
Additionally, Kizu teaches wherein the steel has a microstructure comprising 90 area% or more total of ferrite and bainite, preferably, “The fraction of ferrite in the entire microstructure is, in area fraction, preferably 90% or more and more preferably 100%.” (para. 71). Therefore, Kizu teaches a steel with a ferrite content, throughout the entire microstructure, and thus including a depth of ¼ a sheet thickness, of 90-100%, falling within the claimed range.
With respect to the claimed AC3 point, the instantly claimed composition-based formula fully depends on the composition of the alloy. It is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art. In the instant case, as the steel of the prior art is capable of falling within the boundaries of the instantly claimed composition formulas, it would have been obvious to one of ordinary skill in the art to have selected any portion of the disclosed ranges which fall within the boundaries of the instantly claimed composition-based formulas because the reference discloses utility throughout the disclosed ranges. See also MPEP § 2144.05.
Furthermore, Kizu specifically teaches wherein the steel is hot rolled with a finishing temperature of 800°C or higher and preferably 950°C or lower, more preferably 900°C or lower (para. 79-80), overlapping the claimed ranges and may be hot stamped after hot rolling (para. 104). It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. MPEP § 2144.05. Thus, Kizu specifically teaches wherein the hot stamped member is formed by hot rolling with a finishing temperature overlapping the claimed ranges followed by hot stamping.
Finally, Kizu teaches a steel sheet having a tensile strength of 440 MPa or higher and yield ratio of 90% or more, overlapping the claimed range, including specific examples, falling within the claimed range (e.g. Ex. 2, 620 MPa and 94% yield ratio).(para. 16, 34-35; Table 3). Additionally, while it is unclear if specified tensile strength of Kizu is “after undergoing a hot stamping process,” it does follow a hot rolling treatment. (see Table 2).
Kizu further teaches that “strength of the steel sheet is not decreased even upon reheating to 800° C. or lower. Accordingly, the steel sheet may be reheated to 800° C. or lower and then hot-pressed for stamping of components.” (para. 104). Thus, Kizu teaches that the strength of the steel is maintained at the disclosed levels after hot stamping. Therefore, whether the disclosed tensile strength and yield ratio of Kizu was measured before or after hot stamping (at the disclosed temperature range), it is deemed to teach a steel component having a strength and yield ratio overlapping the instantly claimed ranges. It would have been obvious to one of ordinary skill in the art to select a steel having a tensile strength from the portion of the overlapping ranges. Overlapping ranges have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claim 2, Kizu teaches the optional addition of one or more of Ti: 0.01-1.0 mass% and Nb: 0.01-1.0 mass%, overlapping the instantly claimed ranges. (para. 57-58). Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claim 7, Kizu teaches a steel sheet with a content of manganese (Mn) overlapping the instantly claimed range. (see rejection of claim 1 above). Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to claim 8, Kizu teaches a content of oxygen overlapping the instantly claimed range (see rejection of claim 1 above). Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05. Although Kizu teaches a total content of a range of impurities of up to 0.5 mass%, Kizu further teaches controlled contents of other minor elements, such as limiting S to 0.03 mass% or less, N to 0.01 mass% or less, and an optional content of B, in an amount of 0.0002-0.0050 mass%. (see para. 19, 23). Thus, one of ordinary skill in the art would recognize Kizu’s ability to finely control the individual element compositional makeup of the steel to a far lower content than the total 0.5 mass% level. Moreover, minimizing inevitable oxygen impurity content is well known in the art of steel-making and the instant specification provides no evidence that the claimed range is critical nor that the method of making is critical in achieving the recited oxygen content.
Claim(s) 3 is rejected under 35 U.S.C. 103 as being unpatentable over Kizu (US 2019/0078172) as applied to claim 1 above, further in view of Otsuka (US 2018/0001368)(previously cited).
With respect to Claim 3, the claim requires a “tailored blank member” comprising the steel sheet of claim 1 and “a steel sheet having a tensile strength of 1000 MPa or more after a heat treatment.” The claim does not require a heat treatment nor does it specify the heat treatment parameters. Thus, the claim requires the steel sheet of claim 1 and a second steel sheet that may comprise any composition, structure, or even strength so long as it could hypothetically achieve a tensile strength of 1000 MPa after some kind of heat treatment.
Kizu teaches a steel sheet with a tensile strength of 440 MPa or more, capable of exhibiting a low tensile strength of 500-800 MPa (see rejection of claim 1; table 3) and that also may exhibit a high tensile strength of 1200 MPa or more after being subjected to annealing (heat treatment) (see Tables 2 and 3). Kizu is silent, however, as to forming a tailored blank comprising the steel sheet of claim 1 and an additional steel sheet.
Otsuka teaches forming a tailored blank comprising “multiple kinds of steel sheets having different sheet thicknesses, tensile strengths, etc.” wherein the sheets are “integrated together by welding.” (para. 139). The reference teaches that such tailored blanks are useful for forming, for example, door panels of an automobile. (para. 2, 137, 139).
It would have been obvious to one of ordinary skill in the art to provide one or more of the steel sheets of Kizu, including one meeting the limitation of claim 1 (see rejection above) and having, or capable of achieving after heat treatment, a tensile strength of 1000 MPa or more (also taught by Kizu, see above), to form a tailored blank comprising steel sheets of differing tensile strength, as taught by Otsuka, in order to form a part having utility as an automobile door panel component. See also MPEP 2144.05; Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.").
Allowable Subject Matter
Claim 9 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: closest prior art Kizu teaches away from re-heating the hot rolled steel to a temperature above 800°C for a hot-stamping step, teaching that mechanical properties are expected to deteriorate if heated above this temperature. (para. 104). Claim 9, requires a hot stamping temperature to a temperature above 800°C and therefore, one of ordinary skill in the art would expect a structural change from this product-by-process limitation overcoming the rejection over Kizu.
Response to Arguments
Applicant’s arguments, filed 9/1/2026, with respect to the 103 rejections over prior art Kizu have been fully considered but are not found persuasive.
Applicant argues that Kizu teaches away from the amended Claim 1, as Kizu teaches away from re-heating a hot rolled steel above 800°C for a hot stamping step. Applicant also argues that Kizu teaches a different order in the method of making with respect to hot rolling and cold rolling. Applicant concludes that these differences in manufacturing would result in Kizu having significantly lower strength and yield ratio that would not overlap the claimed ranges. These arguments have been fully considered but are not found persuasive.
With respect to the order of hot rolling and cold rolling, the claims are drawn to a product, not a method, the claims do not include product-by-process limitations drawn to a cold rolling step, nor does Applicant present evidence that the order would result in a structural change to the steel member. See also Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.). MPEP § 2144.04.
With respect to a hot stamping temperature, the Examiner agrees that Kizu teaches away from re-heating the hot rolled steel sheet above a temperature of 800°C for a hot stamping/pressing step; however, the instant claim 1 limits the finishing temperature of a hot rolling step (for which Kizu teaches an overlapping hot rolling finishing temperature) and does not limit the temperature at which hot stamping occurs, nor does the claim require re-heating to a temperature above 800°C. Therefore, Applicant’s arguments are not found persuasive.
In contrast, Applicant’s arguments as they pertain to Claim 9 are found persuasive as the claim specifically limits the hot stamping temperature to a temperature above 800°C and therefore, one of ordinary skill in the art would expect a structural change from this product-by-process limitation overcoming the rejection over Kizu.
Finally, for the purposes of compact prosecution, Examiner notes that withdrawn Claim 4 requires a different hot stamping temperature range than new claim 9. Should Claim 9, having indicated allowable subject matter, be incorporated into claim 1, Applicant should amend Claim 4 to correspond to the hot stamping limitations of Claim 1 in order to allow for proper rejoinder of the claim.
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 JOHN A HEVEY whose telephone number is (571)270-0361. The examiner can normally be reached Monday-Friday 9:00-5:30.
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/JOHN A HEVEY/ Primary Examiner, Art Unit 1735
