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 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, 5, and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Azuma et al. (US 2011/0024004), hereinafter “Azuma.”
Regarding claims 1-2, Azuma teaches a high-strength high hole expansion steel comprising, in mass%, C: 0.05-0.20%, Si: 0.3-2.0%, Mn: 1.3-2.6%, P: 0.001-0.03, S: 0.0001-0.01%, N:0.0005-0.0100%, Al: 2.0% or less, O: 0.0005-0.007, and a balance of Fe and unavoidable impurities, wherein the steel may also include one or more of 0.0001-0.5% Ca, 0.001-0.14% Nb, and 0.01-1.0% Cu ([0045]), which overlaps with the instantly claimed chemical composition ranges. Azuma teaches wherein the microstructure is composed mainly of ferrite and hard structures, wherein the hard structures may be bainite, and wherein the volume fraction of the hard structures is preferably 5% or greater (Abstract, [0069]-[0070]), which overlaps with the instantly claimed range of ≥15%. Azuma further discloses an example containing 16% bainite (Table 5). Azuma teaches a tensile strength of 540 MPa or greater (Abstract), which overlaps with the instantly claimed range, and further teaches a tensile strength range of 590-1080 MPa, which satisfies the instantly claimed range. Azuma additionally teaches in the examples YS ranging from 343-735 MPa, elongation 16-36%, and hole expansion rate 52-118% (Tables 4 and 5), which overlaps with the instantly claimed ranges. In the case where the claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP §2144.05.
Regarding claims 5 and 17, Azuma teaches that its steel may have a thickness of 1.2 mm ([0175]).
Response to Arguments
Applicant's arguments filed 9/30/2025 have been fully considered but they are not persuasive.
Applicant argues regarding claim 1 that Al is an essential element in Azuma’s steel, citing paragraph [0095 of Azuma, while claim 1 recites an Al content of <0.001%. Applicant further concludes based on the examples of Azuma that one skilled artisan would expect the steel of Azuma to have at least 0.004-2.0% Al, which would not overlap with the instantly claimed range.
In response, Examiner also cites paragraph [0095] of Azuma, which states “Al promotes ferrite formation and can therefore be added to improve ductility. It can also be utilized as a deoxidizer.” This language would be understood by one of ordinary skill in the art to mean that the addition of Al is optional to the steel of Azuma. Paragraph of [0095] of Azuma also states “although no lower limit need be defined, a content of 0.0005% or less is difficult to achieve, and, as such, is the substantial lower limit,” which suggests that an Al content of more than 0.0005% to 2.0% is within the scope of the steel of Azuma, which overlaps with the instantly claimed range of <0.001%. In response to Applicant’s arguments pertaining to the examples of Azuma, Examiner notes that “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments.” See MPEP §2123 (I). Furthermore, “disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP §2123 (II).
Applicant further argues that Azuma discloses that its steel has a structure composed mainly of ferrite and hard structures and further discloses that “hard structures” means bainite, martensite, and retained austenite, citing paragraph [0069] of Azuma. Applicant further points to the examples of Azuma, alleging that all examples of Azuma contain all of bainite, martensite, and retained austenite as hard structures, while the claimed steel only has ferrite and bainite. Applicant further argues that only comparative examples of Azuma contain only ferrite and bainite, and these examples do not have yield strengths and tensile strengths satisfying the instantly claimed ranges.
In response, Examiner notes that claim 1 recites “wherein the high hole expansion steel has a microstructure of ferrite + bainite.” The broadest reasonable interpretation of this limitation is that the microstructure is inclusive or open-ended and does not exclude additional, unrecited structures. This is supported by paragraph [0013] of the instant application as published in US 2022/389534 A1, which states “its microstructure is mainly ferrite and bainite, sometimes containing a small amount of martensite.” Nonetheless, Examiner notes that Azuma recites “hard structure” (singular) numerous times (see for example, [0042], [0045]-[0046], [0050]), and inventive example A-5 of Azuma (Table 4), has only two of bainite, martensite, and retained austenite, which would suggest to one of ordinary skill in the art that “hard structure(s)” in Azuma means one or more of bainite, martensite, and retained austenite. In response to Applicant’s arguments pertaining to the examples of Azuma, Examiner notes that “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments.” See MPEP §2123 (I). Furthermore, “disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP §2123 (II).
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 ANTHONY M LIANG whose telephone number is (571)272-0483. The examiner can normally be reached M-F: 9:00am-5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at (571)272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY M LIANG/Primary Examiner, Art Unit 1734