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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/13/2026 has been entered.
Claim Status
An amendment, filed 5/13/2026, is acknowledged. Claim 1 is amended. Claims 1-4 and 7-8 are currently pending, claim 4 is withdrawn.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
Kizu, Ex. 2
C
0.005-0.12
0.04-0.25
0.07
Si
0.50-2.0
0.5-2.0
1.8
Mn
0.30 or less (excl. 0)
0.1-2.0
0.2
Al
0.010-1.0
0.10 or less
0.05
P
0.1000 or less (excl. 0)
0.05 or less
0.05
S
0.1000 or less (excl. 0)
0.03 or less
0.005
N
0.1000 or less (excl. 0)
0.01 or less
0.005
B
0.0005 or less (excl. 0)
0.0002-0.005
0.0014
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
Not disclosed
Fe
Interpreted as substantial balance
Balance with impurities
Balance
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.
Kizu also teaches an example (Ex. 2 above), falling within each of the claimed ranges with the exception of minor O impurity content and a B content deemed sufficiently close to establish a prima facie case of obviousness. See MPEP 2144.05. (“Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of ‘having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium’ as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. ‘The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.’”). The claimed content of B and that of Ex. 2 are both very minor impurity levels and one of ordinary skill in the art would not expect such a content to change the properties of the steel, further noting that other impurity elements (P, S, N, and O) are all allowed to be present at much higher levels.
In addition, 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.
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).
Furthermore, Kizu specifically 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.").
Response to Arguments
Applicant’s arguments, filed 5/13/2026, with respect to the rejection of claims 1-2 and 5-8 under 35 U.S.C. 103 over Haga in view of Kawasaki and claim 3 over Haga in view of Kawasaki and Otsuka have been fully considered and are persuasive in view of Applicant’s amendments to the claims. Specifically, Claim 1 now uses the closed transitional phrase “consisting of,” limiting the composition to the recited elements. Prior art Haga requires a content of Cr, and thus, fails to teach the claimed composition. The rejections have been withdrawn.
Applicant’s arguments with respect to the 103 rejections over prior art Kizu have been fully considered but are not found persuasive.
Applicant argues that Kizu fails to teach a composition meeting the amended claim 1, pointing to exemplary compositions that fall outside the claimed ranges. These arguments have been fully considered but are not found persuasive.
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). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994); MPEP 2123. As Kizu teaches a steel hot stamped member with compositional ranges overlapping the instantly claimed ranges and that does not specifically require additional elements or contents outside those claimed, the reference is deemed sufficient to establish a prima facie case of obviousness over the claimed composition. MPEP 2144.05.
Applicant further argues that Kizu does not teach properties of a hot stamped member and that the disclosed method of making (drawn to an example that is not actually hot stamped but hot rolled) differs from that of Kizu and therefore, one of ordinary skill in the art would not expect the steel of Kizu to exhibit the claimed properties. These arguments have been fully considered but are not found persuasive.
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. 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).
Furthermore, Kizu specifically 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 after hot stamping. Therefore, whether the disclosed tensile strength and yield ratio of Kizu was measured before or after hot stamping, 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.
While the instant specification discloses examples hot rolled at 900 ± 20°C, the instant claims do not require hot stamping (or hot rolling) at 900 ± 20°C. Therefore, the steel of Kizu having properties meeting those claimed, may be hot stamped at a lower temperature (800°C or less), and still meet the instantly recited limitation.
Moreover, Applicant fails to provide evidence to rebut the prima facie case of obviousness established by Kizu. The instant specification provides examples hot rolled at a temperature below 900°C, but these examples all have compositions falling significantly outside the claimed ranges and therefore, are not sufficient to demonstrate criticality of the hot rolling/hot stamping temperature process step. Additionally, there is no evidence to demonstrate that the steel of Kizu, if hot stamped/hot rolled at a temperature of 900 ± 20°C, would not continue to meet the instantly claimed properties. See MPEP 2112.01.
Conclusion
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
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