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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/30/2025 has been entered.
Status of Claims
Claims 1, 3, 5-6, 8-18 and 20 are pending. Claims 1,3, 5-6, 8 and 14-15 are presented for this examination. Claims 9-13, 16-18 and 20 are withdrawn. Claims 2, 4 , 7 and 19 are cancelled. Claim 1 is amended.
Status of Previous Rejections
All art rejections are withdrawn from previous office action of 09/05/2025.
A new ground of art rejections is rendered in view of amendment of claim 1.
112 4th paragraph rejection of claim 5 is rendered in view of amendment of claim 1.
Priority
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 03/22/2022 and is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 5 depends on claim 1. Claim 1 recites “the microstructure… consists of ferrite and bainite” which excludes any unrecited additional element in the microstructure. Claim 5 requires the microstructure has microalloy precipitates.
Hence, claim 5 fails to limit the subject matter of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1,3, 5-6, 8 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Wakita (US20180037980A1).
As for claims 1, 3, 5 and 8, it is noted instant claim 1 is amended to require “microstructure consists of ferrite and bainite”. Hence, scope of claimed invention is changed.
Wakita discloses a hot rolled steel sheet having microstructure including ferrite and bainite as main phase, 1% or less cementite and Ti, Nb bonding with C to form (Ti,Nb)C and Nb bonding with N to form Nb as required by instant claim 5. (Abstract) Hence, instant claimed complex phase steel having a hole expansibility is expected.
Table 1 below illustrates Steel Type E (Table 1 of Col 10) having every elemental compositions, TS, elongation and hole expansion rate (Test Number 12 using Same Steel Type E in Table 3 of Col 16) either close to or within claimed ranges. With respect to amended ““microstructure consists of ferrite and bainite”, Wakita explicitly discloses microstructure is Zw which Zw is mainly bainite ; and PF (polygonal ferrite) 20% or less, ([0115])and cementite is 1% or less [0104]. Hence, amended “microstructure consists of ferrite and bainite” is met.
Table 1
Element
Applicant
(weight %)
Wakita et al.
(weight %)
Steel Type E of Table 1
Test Number 12 using Same Steel Type E of Table 3
Overlap/within
(weight %)
C
0.06-0.9
0.028
Broad: 0.01-0.1
0.028 is close to 0.06
Broad: 0.06-0.1
Si
0.05-0.5
0.05
0.05
Al
0.02-0.1
0.05
0.05
Mn
1.5-1.8
1.68
1.68
Cr
0.3-0.6
0.26
Broad: 0.05-1
0.26 is close to 0.3
Broad: 0.3-0.6
Nb
<=0.015
0.018
Broad: 0.003-0.05
0.018 is close to 0.015
Broad: 0.003-0.015
Ti
0.05-0.12
0.087
0.087
Cr-0.5(Si+Al)
0.2-0.42
0.21
0.21
TS
>=780MPa
786
786
YS
>=700 Mpa
Elongation
>=15%
21
21
Hole expansion rate
>=50%
89
89
P (Claim 3)
<=0.03
0.009
0.009
S(Claim 3)
<=0.02
0.003
0.003
N(Claim 3)
<=0.005
0.0031
0.0031
3.3Nb+Ti
0.08-0.2
0.1464
0.1464
TS (Claim 8)
>=800MPa
786
786 is close to 800
YS(Claim 8)
>=730 MPa
Elongation
(Claim 8)
>=15%
21
21
Hole expansion rate
(Claim 8)
>=70%
89
89
A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
Regarding claimed 180 degree bending performance and YS, they are measured mechanical property due to same steel composition, which meets claimed formulas Cr-0.5(Si+Al) between 0.2-0.42 and 3.3Nb+Ti between 0.08-0.2%. That is, claimed 180 degree bending performance and YS are expected absent evidence of the contrary.
When the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the prior art products necessarily possess the characteristics of the claimed product. See MPEP 2112.01.
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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)
“Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range, see MPEP § 716.02(d) - § 716.02(e)”.
In the instant case, examiner has presented closest prior art Wakita’s Test Number 12 using Steel Type E having same microstructure and mass % of each chemical element, TS, elongation rate and punching hole expansion rate, as well as Cr-0.5(Si+Al) between 0.2-0.42 and 3.3Nb+Ti being close to claimed range of 0.08-0.2%, burden is then shifted to applicant to demonstrate that Wakita’s Test Number 12 not (emphasis added) having claimed 180 degree bending performance and YS.
Because applicant has failed to present such evidence of the contrary, prima facie case of obviousness is maintained absent evidence of the contrary.
As for claims 6, 14-15, how TS is determined is product by process limitation in a product claim. When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either Section 102 or Section 103 is proper. See MPEP 2113. In the instant case, Wakita discloses same TS as claimed. Hence, how claimed TS is determined is not given patentable distinction over prior art.
Response to Argument
In response to applicant’s argument filed on 11/30/2025 that prior cited art Na discloses 1-5% remaining of the microstructure is martensite, austenite and phase martensite, argument is moot since Na is withdrawn.
Newly cited Wakita microstructure comprises bainite, ferrite and 1 % or less cementite meets instant amendment “microstructure consists of ferrite and bainite”.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNY R WU whose telephone number is (571)270-5515. The examiner can normally be reached on 8:30 AM-5:00 PM.
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/JENNY R WU/Primary Examiner, Art Unit 1733