DETAILED ACTION
Claims 18-27 and 29-39 are pending and currently under review.
Claims 1-17 and 28 are cancelled.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Amendment
The amendment filed 12/29/2025 has been entered. Claims 18-27 and 29-39 remain(s) pending in the application.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed applications, Application No. 14/361,270, application no. 16/570,313, and provisional application no. 61/629,762 fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. These prior filed applications merely provide support for Si end points of 0 and 0.2 weight percent. However, these applications do not provide support for the entire claimed Si range of 0 to 0.2 weight percent (ie. values between 0 and 0.2). Accordingly, the instant claims no longer receive benefit of the aforementioned priority documents.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 18-27, 29-33, and 35-37 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Independent claim 18 recites a Si range of from 0 to 0.2 weight percent. However, the specification, original claims, and priority documents do not teach this entire range, and merely disclose a Si inclusion of “about 0.2 weight percent”. In other words, the claimed end points of 0 and 0.2 are sufficiently supported; however, the entire claimed range of 0 to 0.2 (ie. values between 0 and 0.2) is not supported. Therefore, the instantly claimed Si range of 0 to 0.2 weight percent does not have support.
Claim Interpretation
The term “quenched martensite” is interpreted to be met by any martensite that is formed by quenching according to broadest reasonable interpretation. This is distinct from the commonly used term “as-quenched” martensite, which refers specifically to martensite that is not further heat treated after quenching (emphasis added).
If applicant is of the position that “quenched” is the same as “as-quenched” as noted above, the examiner notes that the specification as filed does not appear to provide support for as-quenched martensite because low temperature heating after quenching is performed in every instance in the specification [ie. 0061-0063, 0073, 0085-0086, etc. instantly filed spec.], which one of ordinary skill would understand to form tempered martensite as opposed to as-quenched martensite which is not subjected to further low temperature treatment after quenching.
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claim 18-27 and 29-39 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Matsuda et al. (US 2011/0048589).
Regarding claims 18 and 34, Matsuda et al. discloses a martensitic steel having a composition as seen in table 1 below [abstract]. Matsuda et al. further teaches a tensile strength range of greater than 1400 MPa [abstract]. The examiner notes that the overlap between the steel composition and tensile strength range of Matsuda et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I). Matsuda et al. further discloses Cr and Cu as optional elements, which one of ordinary skill would understand to not be necessary and therefore meet the limitation of 0% (ie. not included) [0072]. Matsuda et al. further discloses a microstructure including 80% or more of tempered martensite, which overlaps with the claimed range. See MPEP 2144.05(I). One of ordinary skill would understand that martensite in steel must be formed by quenching, which meets the limitation of “quenched” martensite as claimed. This quenching also expressly taught by Matsuda et al. [0051].
Matsuda et al. does not expressly teach formula (1) as claimed. However, the examiner notes that formula (1) merely further limits the claimed C, Mn, Cr, Mo, V, Ni, and Cu amounts. The examiner notes that the composition of Matsuda et al. above further overlaps with these narrower ranges. See MPEP 2144.05(I).
Table 1.
Element (wt.%)
Claim 1 (wt.%)
Claim 34 (wt.%)
Matsuda et al. (wt.%)
C
0.22 – 0.36
0.28 – 0.36
0.12 – 0.5
Mn
0.5 – 2
0.5 – 2
1 – 5
Si
0 – 0.2
0 – 2
Cr
0
0
Optional (ie. 0)
Cu
0
0
Optional (ie.0)
Regarding claims 19-23, Matsuda et al. discloses the steel of claim 18 (see previous). The examiner notes that the aforementioned tensile strength range of Matsuda et al. further overlaps with the instantly claimed ranges. See MPEP 2144.05(I).
Regarding claims 24-25, Matsuda et al. discloses the steel of claim 18 (see previous). Matsuda et al. further discloses that all steel examples achieve elongations of greater than about 9 percent [tables3,5]. Although the specific example compositions are not relied upon to meet the claims, the examiner submits that this teaching would have been understood by one of ordinary skill to broadly mean that steels having a high elongation of greater than 9 percent are reasonably encompassed by the scope of Matsuda et al. The examiner notes that this range meets the instantly claimed ranges.
Regarding claims 26-27, Matsuda et al. discloses the steel of claim 18 (see previous). Matsuda et al. further teaches the form of a cold rolled sheet [0083]. The examiner notes that a sheet thickness as claimed is merely a recitation of a specific sheet size which would have been an obvious design choice to one of ordinary skill in the art depending on the particular steel sheet application. See MPEP 2144.04(IV)(C).
Regarding claim 29, Matsuda et al. discloses the steel of claim 18 (see previous). Matsuda et al. further teaches inclusions of P and S [abstract].
Regarding claims 30-31, Matsuda et al. discloses the steel of claim 18 (see previous). Matsuda et al. teaches that inclusions of Cr, Mo, and V are optional and thus not required, which one of ordinary skill would understand to mean that these elements are absent (ie. zero percent) [0072].
Regarding claims 32-33, 35-36, and 39, Matsuda et al. discloses the steel of claims 18 and 34 (see previous). The examiner notes that the above composition of Matsuda et al. further overlaps with the claimed ratios of Si, C, and Mn. See MPEP 2144.05(I). As stated previously, although Matsuda et al. discloses inclusions of Cr, Mo, V, etc., these inclusions are optional and thus not required, which one of ordinary skill would understand to mean that these elements are absent (ie. zero percent) [0072]. The examiner therefore considers the disclosure of Matsuda et al. to meet the limitation of “consisting of…” because any non-recited elements are optional and therefore not required.
Regarding claims 37-38, Matsuda et al. discloses the steel of claims 18 and 34 (see previous). Matsuda et al. further teaches including Ti in an amount of 0.01 to 0.1 weight percent, which overlaps with the claimed range [0075].
Claim 27 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Matsuda et al. (US 2011/0048589) in view of ASM Handbooks (1990, Plain carbon steel).
Regarding claim 27, Matsuda et al. discloses the steel of claim 18 (see previous). Matsuda et al. does not expressly teach a steel thickness as claimed. ASM Handbooks discloses that it is commercially known to cold roll steels to a thickness of below 1mm to provide better surface finish and dimensional control [p.8, table3]. Therefore, it would have been obvious to one of ordinary skill to perform cold rolling to the above thickness for the aforementioned benefits. Alternatively, the examiner also notes that the commercial thicknesses of ASM Handbooks would be obvious to one of ordinary skill because they are commercial and thus well-known.
Claim 18-23, 26-27, 29-35, and 37-39 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kobayashi et al. (WO2011021724, US 2012/0216925 referred to as English translation).
Regarding claims 18 and 34, Kobayashi et al. discloses a martensitic steel having a composition as seen in table 2 below [abstract, 0041]. Kobayashi et al. further teaches a tensile strength range of greater than up to 2130 MPa [abstract]. The examiner notes that the overlap between the steel composition and tensile strength range of Kobayashi et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I). Kobayashi et al. further discloses Cr and Cu as optional elements, which one of ordinary skill would understand to not be necessary and therefore meet the limitation of 0% (ie. not included) [abstract]. The examiner’s position is further bolstered by examples of Kobayashi et al. which do not include Cr or Cu [table1]. Kobayashi et al. further teaches a single martensite phase (ie. 100%), wherein no further low temperature heat treatment or processing is performed that would change said microstructure [0042].
Kobayashi et al. does not expressly teach formula (1) as claimed. However, the examiner notes that formula (1) merely further limits the claimed C, Mn, Cr, Mo, V, Ni, and Cu amounts. The examiner notes that the composition of Kobayashi et al. above further overlaps with these narrower ranges. See MPEP 2144.05(I).
Table 2.
Element (wt.%)
Claim 1 (wt.%)
Claim 34 (wt.%)
Kobayashi et al. (wt.%)
C
0.22 – 0.36
0.28 – 0.36
0.09 – 0.38
Mn
0.5 – 2
0.5 – 2
0.5 – 3
Si
0 – 0.2
0.05 – 2
Cr
0
0
Optional (ie. 0)
Cu
0
0
Optional (ie.0)
Regarding claims 19-23, Kobayashi et al. discloses the steel of claim 18 (see previous). The examiner notes that the aforementioned tensile strength range of Kobayashi et al. further overlaps with the instantly claimed ranges. See MPEP 2144.05(I).
Regarding claims 26-27, Kobayashi et al. discloses the steel of claim 18 (see previous). Kobayashi et al. further teaches the form of a cold rolled sheet [0048]. The examiner notes that a sheet thickness as claimed is merely a recitation of a specific sheet size which would have been an obvious design choice to one of ordinary skill in the art depending on the particular steel sheet application. See MPEP 2144.04(IV)(C).
Regarding claim 29, Kobayashi et al. discloses the steel of claim 18 (see previous). Kobayashi et al. further teaches inclusions of P and S [abstract].
Regarding claims 30-31, Kobayashi et al. discloses the steel of claim 18 (see previous). Kobayashi et al. teaches that inclusions of Cr, Mo, and V are optional and thus not required, which one of ordinary skill would understand to mean that these elements are absent (ie. zero percent) [abstract].
Regarding claims 32-33, 35, and 39, Kobayashi et al. discloses the steel of claims 18 and 34 (see previous). The examiner notes that the above composition of Kobayashi et al. further overlaps with the claimed ratios of Si, C, and Mn. See MPEP 2144.05(I).
Regarding claims 37-38, Kobayashi et al. discloses the steel of claims 18 and 34 (see previous). Kobayashi et al. further teaches including Ti in an amount of 0.005 to 3 weight percent, which overlaps with the claimed range [0033].
Claim 27 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kobayashi et al. (WO2011021724, US 2012/0216925 referred to as English translation) in view of ASM Handbooks (1990, Plain carbon steel).
Regarding claim 27, Kobayashi et al. discloses the steel of claim 18 (see previous). Kobayashi et al. does not expressly teach a steel thickness as claimed. ASM Handbooks discloses that it is commercially known to cold roll steels to a thickness of below 1mm to provide better surface finish and dimensional control [p.8, table3]. Therefore, it would have been obvious to one of ordinary skill to perform cold rolling to the above thickness for the aforementioned benefits. Alternatively, the examiner also notes that the commercial thicknesses of ASM Handbooks would be obvious to one of ordinary skill because they are commercial and thus well-known.
Claim 36 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kobayashi et al. (WO2011021724, US 2012/0216925 referred to as English translation) in view of or as evidenced by Kodym et al. (1985, Trace elements in steel – ways to influence melting operations).
Regarding claim 36, Kobayashi et al. discloses the steel of claim 18 (see previous). The examiner notes that the only further element required by Kobayashi et al. that is not recited (ie. omitted) in the instant claims is Sb from 0.002 to 0.03 weight percent [abstract]. However, Sb would have been recognized by one of ordinary skill to be an unavoidable impurity in steel in an amount of 0.002 weight percent as evidenced by Kodym et al. [fig.5.4]. Alternatively, Kodym et al. discloses that it is known to minimize Sn amounts to impurity amounts of 0.002 weight percent in steel because Sn endangers steel production [p.3-4, fig.5.4]. Therefore, it would have been obvious to one of ordinary skill to modify the steel of Kobayashi et al. to minimize Sn to 0.002 weight percent as taught by Kodym et al. above. Again, the examiner notes that 0.002 weight percent is an impurity amount of Sb and is reasonably included in the claim scope.
Claim 18-27 and 29-39 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Taji et al. (JP2010248565, machine translation of attached equivalent patent document JP5402191 referred to herein due to figure/table availability).
Regarding claims 18 and 34, Taji et al. discloses a martensitic steel having a composition as seen in table 3 below [abstract, 0011]. Taji et al. further teaches a tensile strength range of greater than 1760 MPa [0011]. The examiner notes that the overlap between the steel composition and tensile strength range of Taji et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I). Taji et al. further discloses Cr and Cu as optional elements, which one of ordinary skill would understand to not be necessary and therefore meet the limitation of 0% (ie. not included) [0012]. The examiner’s position is further bolstered by examples of Taji et al. which do not require Cr or Cu [table1]. Taji et al. further teaches a single martensite phase (ie. 100%), which one of ordinary skill would recognize to be formed by quenching [0011].
Taji et al. does not expressly teach formula (1) as claimed. However, the examiner notes that formula (1) merely further limits the claimed C, Mn, Cr, Mo, V, Ni, and Cu amounts. The examiner notes that the composition of Taji et al. above further overlaps with these narrower ranges. See MPEP 2144.05(I).
Table 3.
Element (wt.%)
Claim 1 (wt.%)
Claim 34 (wt.%)
Taji et al. (wt.%)
C
0.22 – 0.36
0.28 – 0.36
0.25 – 0.4
Mn
0.5 – 2
0.5 – 2
1.5 – 2.5
Si
0 – 0.2
0 – 1
Cr
0
0
Optional (ie. 0)
Regarding claims 19-23, Taji et al. discloses the steel of claim 18 (see previous). The examiner notes that the aforementioned tensile strength range of Taji et al. further overlaps with the instantly claimed ranges. See MPEP 2144.05(I).
Regarding claims 24-25, Taji et al. discloses the steel of claim 18 (see previous). Taji et al. further discloses that all steel examples achieve elongations of greater than about 7 percent [tables2]. Although the specific example compositions are not relied upon to meet the claims, the examiner submits that this teaching would have been understood by one of ordinary skill to broadly mean that steels having a high elongation of greater than 7 percent are reasonably encompassed by the scope of Taji et al. The examiner notes that this range meets the instantly claimed ranges.
Regarding claims 26-27, Taji et al. discloses the steel of claim 18 (see previous). Taji et al. further teaches the form of a cold rolled sheet [0001]. The examiner notes that a sheet thickness as claimed is merely a recitation of a specific sheet size which would have been an obvious design choice to one of ordinary skill in the art depending on the particular steel sheet application. See MPEP 2144.04(IV)(C).
Regarding claim 29, Taji et al. discloses the steel of claim 18 (see previous). Taji et al. further teaches inclusions of P and S [0011].
Regarding claims 30-31, Taji et al. discloses the steel of claim 18 (see previous). Taji et al. teaches that inclusions of Cr, Mo, and V are optional and thus not required, which one of ordinary skill would understand to mean that these elements are absent (ie. zero percent) [0011].
Regarding claims 32-33, 35-36, and 39, Taji et al. discloses the steel of claims 18 and 34 (see previous). The examiner notes that the above composition of Taji et al. further overlaps with the claimed ratios of Si, C, and Mn. See MPEP 2144.05(I). As stated previously, although Taji et al. discloses inclusions of Cr, Mo, V, etc., these inclusions are optional and thus not required, which one of ordinary skill would understand to mean that these elements are absent (ie. zero percent) [0072]. The examiner therefore considers the disclosure of Taji et al. to meet the limitation of “consisting of…” because any non-recited elements are optional and therefore not required.
Regarding claims 37-38, Taji et al. discloses the steel of claims 18 and 34 (see previous). Taji et al. further teaches including Ti in an amount of 0.005 to 0.1 weight percent, which overlaps with the claimed range [0011].
Claim 27 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Taji et al. (JP2010248565, machine translation of attached equivalent patent document JP5402191 referred to herein due to figure/table availability) in view of ASM Handbooks (1990, Plain carbon steel).
Regarding claim 27, Taji et al. discloses the steel of claim 18 (see previous). Taji et al. does not expressly teach a steel thickness as claimed. ASM Handbooks discloses that it is commercially known to cold roll steels to a thickness of below 1mm to provide better surface finish and dimensional control [p.8, table3]. Therefore, it would have been obvious to one of ordinary skill to perform cold rolling to the above thickness for the aforementioned benefits. Alternatively, the examiner also notes that the commercial thicknesses of ASM Handbooks would be obvious to one of ordinary skill because they are commercial and thus well-known.
Claim 34 and 38 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Cao et al. (CN101713046, machine translation referred to herein).
Regarding claim 34, Cao et al. discloses a martensitic steel achieving a tensile strength range of up to 2200 MPa and a composition as seen in table 4 below [p.1 ln.10-15, p.4 ln.149-156, table1]. The examiner notes that the overlap between the steel composition and tensile strength disclosed by Cao et al. and the instantly claimed range is prima facie obvious. See MPEP 2144.05(I). The examiner further notes that Cu is not disclosed (ie. absent), and Cr is disclosed to be an optional element in Cao et al. and is therefore not required, which meets the claimed Cr amount of zero percent. This position is further bolstered by the examples of Cao et al. which do not require Cr [table1]. Cao et al. does not teach any other desired microstructures besides martensite, which one of ordinary skill would understand to mean that the steel is entirely martensite (ie. 100%). Cao et al. further does not require any low temperature heat treatment or processing that would change said martensite microstructure.
Cao et al. does not expressly teach formula (1) as claimed. However, the examiner notes that formula (1) merely further limits the claimed C, Mn, Cr, Mo, V, Ni, and Cu amounts. The examiner notes that the composition of Gao et al. further overlaps with these narrower ranges. See MPEP 2144.05(I).
Table 4.
Element (wt.%)
Claim 34 (wt.%)
Cao et al. (wt.%)
C
0.28 – 0.36
0.08 – 0.45
Mn
0.5 – 2
0.3 – 2.8
Cr
0
Not required
Regarding claim 38, Cao et al. discloses the steel of claim 18 (see previous). Cao et al. further teaches including Ti in an amount of 0.06 to 0.25 weight percent, which overlaps with the instantly claimed range [p.4]. See MPEP 2144.05(I).
Response to Arguments
Applicant's arguments filed 12/29/2025 regarding the 112a rejections have been fully considered but they are not persuasive.
Applicant argues that, even though the application only discloses an end point range of Si of about 0.2 percent, one of ordinary skill would broadly interpret the disclosure of the application to include Si ranges down to 0 percent as claimed. The examiner cannot concur. Firstly, although applicant cites the case law noted on p.7 of the remarks filed 12/29/2025, the examiner notes that examination is conducted in accordance with the MPEP, and said instances of case law are not cited as precedent in the MPEP. Furthermore, applicant has not explained why one of ordinary skill would interpret the instant specification disclosure so broadly, such that the examiner cannot concur with applicant’s mere conclusory remarks. See MPEP 2145(I). Applicant also does not explain why a broader interpretation would be more “sensible”. Rather, one of ordinary skill in the art of metallurgy would understand that even minute differences in alloying elements can directly influence steel properties, such that desired inclusion amounts should be expressly and distinctly disclosed.
Applicant's arguments filed 12/29/2025 regarding the 103 rejections over Matsuda et al. and Taji et al. have been fully considered but they are not persuasive.
Applicant argues that the martensite of Matsuda et al. and Taji et al. is not “quenched” as claimed. The examiner cannot concur for the reasons stated above in the “claim interpretation” section. Applicant appears to be of the position that the claims require “as-quenched” martensite. However, it is noted that these features upon which applicant relies are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Furthermore, the recitation of “as-quenched” martensite does not appear to be supported by the instant specification as explained above.
Applicant's arguments filed 12/29/2025 regarding the 103 rejections over Kobayashi et al. have been fully considered but they are not persuasive.
Applicant argues that Kobayashi et al. requires Cu, which does not meet the claims. The examiner cannot concur. Kobayashi et al. merely teaches Cu as an optional element, which one of ordinary skill would understand to mean that Cu is not required. This is further bolstered by specific examples of Kobayashi et al. which do not require any inclusion of Cu as explained above.
Applicant's arguments filed 12/29/2025 regarding the 103 rejections over Cao et al. have been fully considered but they are not persuasive.
Applicant again argues that the claimed Ceq formula achieves critical and unexpected results of improved weldability. The examiner cannot concur absent concrete evidence supporting this allegation, which has not been presented. See MPEP 2144.05(III)(A) & MPEP 716.02(b). It is further not apparent to the examiner as to how the claimed Ceq formula would be critical or significant in view of the data of the instant specification, which does not demonstrate any statistically or practically significant differences between examples which meet the claimed Ceq range (ie. examples 1-4 in table 10, examples 1-2 in table 12 instant spec.) vs. examples which do not meet the claimed Ceq range (ie. example 5 in table 10, examples 3-6 in table 12 instant spec.). All of these aforementioned examples achieve similar, comparable mechanical property and bendability values [tables 11, 13-14 instant spec.]. Therefore, the examiner cannot consider the claimed Ceq range to achieve critical or unexpected results absent concrete evidence to the contrary. See MPEP 716.02(b-d).
Conclusion
THIS ACTION IS MADE FINAL. 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 NICHOLAS A WANG whose telephone number is (408)918-7576. The examiner can normally be reached usually M-Th: 7-5.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734