Detailed Office Action
Notice of Pre-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
Response to Amendments
The amendment filed on 07/22/26 has been entered. Claims 49 – 52 are newly added and find support in the original claim set and Table 4. Claims 20 – 48 remain pending. Claims 32 – 40 remain withdrawn. Claims 20 – 31 and 41 – 52 are under examination.
Applicant’s amendments have overcome the previous rejections under 112(b).
Claim Rejections – U.S.C. §102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 20 – 22, 24 – 31, 41 – 44, 46, and 48 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Takashima (WO2021/024748, using espacenet translation), as evidenced by ASM Handbook (“Tempering of Steels”, 2013).
Regarding claims 20 – 22 and 24, Takashima teaches a cold – rolled steel sheet [0001, 0022] for the automobile industry [0001, 0002]. Takashima teaches an example in which the steel sheet has a composition of [Table 1, Example C]:
Element
Claimed Invention (wt%)
Takashima (mass%)
Relationship
Carbon (C)
0.09 – 0.15%
0.1 – 0.13% (Claim 24)
0.12%
Falls within
Manganese (Mn)
1.8 – 2.5%
2.43%
Falls within
Silicon (Si)
0.2 – 0.7%
0.3 – 0.7% (Claim 21)
0.54%
Falls within
Aluminum (Al)
– 0.1%
0.01 – 0.08% (Claim 22)
0.03%
Falls within
Phosphorous (P)
0 – 0.09%
0.01%
Falls within
Sulfur (S)
0 – 0.09%
0.002%
Falls within
Nitrogen (N)
0 – 0.09%
0.002%
Falls within
Niobium (Nb)
0 – 0.1%
Does not teach
Meets
Titanium (Ti)
0 – 0.1%
Does not teach
Meets
Chromium (Cr)
0 – 1%
Does not teach
Meets
Molybdenum (Mo)
0 – 1%
0.12%
Falls within
Vanadium (V)
0 – 0.1%
0.02%
Falls within
Calcium (Ca)
0 – 0.005%
0.0011%
Falls within
Boron (B)
0 – 0.01%
Does not teach
Meets
Cerium (Ce)
0 – 0.1%
Does not teach
Meets
Magnesium (Mg)
0 – 0.05%
Does not teach
Meets
Zirconium (Zr)
0 – 0.05%
Does not teach
Meets
Iron (Fe)
Remainder
Remainder
Meets
*shaded area is optionally one or more of
Takashima teaches that the example composition is produced into a cold – rolled and heat treated steel sheet [Table 2, 0071] that has tempered martensite of 75 area%, which falls within the claimed range. Ferrite is 16%, bainite is 9%, the total is 25%, and residual austenite is 0% [Table 3, Example 3], which fall into the claimed ranges.
Takashima does not expressly teach the aspect ratio of the carbides in the tempered martensite. However, Takashima teaches subjecting the steel sheet to a tempering treatment at 310°C for 800 seconds [Table 2, Example 3] which is substantially identical to the tempering treatment described in the specification [0049]. As evidenced by the ASM Handbook, the temperature and time of tempering affect and shape the carbides of tempered martensite [page 1, left and middle column].
In addition to this, or by itself, Takashima discloses a steel sheet which meets the composition and microstructure as well as the properties of tensile strength, elongation, and hole expansion. As such, there is a reasonable expectation to an ordinarily skilled artisan that Takashima’s tempered martensite would meet the claimed limitation of the carbides having an aspect ratio of less than 3.5.
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 anticipation is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (See MPEP 2112.01)). In this case, a substantially identical tempering process and additionally, or by itself, a substantially identical composition, microstructure, and properties.
"[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962))
Regarding claim 25, Takashima teaches the invention as applied in claim 20. Takashima teaches that silicon is 0.54% and aluminum is 0.03% [Table 1, Example C], the total being 0.57% which meets the claimed range.
Regarding claim 26, Takashima teaches the invention as applied in claim 20. Takashima teaches that ferrite is 16%, which meets the claimed range, and bainite is 9% [Table 3, Example 3]. Wherein the total is 25%, which meets the claimed range.
Regarding claim 27, Takashima teaches the invention as applied in claim 20. Wherein Takashima does not contain residual austenite and as such meets the broadest reasonable interpretation of the claimed limitation of claim 27.
Regarding claim 28, Takashima teaches the invention as applied in claim 20. Wherein Takashima teaches the example contains 75% tempered martensite [Table 3, Example 3], which meets the claimed range.
Regarding claim 29, Takashima teaches the invention as applied in claim 20. Wherein Takashima teaches the example contains 9% bainite [Table 3, Example 3], which meets the claimed range.
Regarding claim 30, Takashima teaches the invention as applied in claim 20. Takashima teaches that the tensile strength is 1311 MPa, which meets the claimed range, and elongation is 14.2%, which meets the claimed range [Table 3, Example 3].
Regarding claim 31, Takashima teaches the invention as applied in claim 30. Takashima teaches that the tensile strength is 1311 MPa, which meets the claimed range, and the hole expansion ratio is 68%, which meets the claimed range [Table 3, Example 3].
Regarding claim 41, Takashima teaches the invention as applied in claim 31. Takashima teaches that the hole expansion ratio is 68%, which meets the claimed range [Table 3, Example 3].
Regarding claim 42, Takashima teaches the invention as applied in claim 31. Takashima discloses a steel sheet which meets the composition and microstructure as well as the properties of tensile strength, elongation, and hole expansion. As such, there is a reasonable expectation to an ordinarily skilled artisan that Takashima’s steel sheet would have a yield strength that met the claimed range.
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 anticipation is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (See MPEP 2112.01)). In this case, a substantially identical composition, microstructure, and properties.
Regarding claim 43, Takashima teaches the invention as applied in claim 42. Takashima teaches that the hole expansion ratio is 68%, which meets the claimed range [Table 3, Example 3].
Regarding claim 44, Takashima teaches the invention as applied in claim 31. Wherein Takashima teaches the example contains 9% bainite [Table 3, Example 3], which meets the claimed limitation.
Regarding claim 46, Takashima teaches the invention as applied in claim 20. Wherein Takashima
teaches that the example composition is produced into a steel sheet [Table 2, 0071] that has tempered martensite of 75 area%, which falls within the claimed range. Ferrite is 16%, bainite is 9%, the total is 25%, and residual austenite/other phases is 0% [Table 3, Example 3]. The total of ferrite and bainite falls within the claimed range and microstructure of Takashima meets the claimed limitation of “consists of”.
Regarding claim 48, Takashima teaches a cold – rolled steel sheet [0001, 0022] for the automobile industry [0001, 0002]. Takashima teaches an example in which the steel sheet has a composition of [Table 1, Example C]:
Element
Claimed Invention (wt%)
Takashima (mass%)
Relationship
Carbon (C)
0.09 – 0.15%
0.12%
Falls within
Manganese (Mn)
1.8 – 2.5%
2.43%
Falls within
Silicon (Si)
0.2 – 0.7%
0.54%
Falls within
Aluminum (Al)
0.01 – 0.1%
0.03%
Falls within
Phosphorous (P)
0 – 0.09%
0.01%
Falls within
Sulfur (S)
0 – 0.09%
0.002%
Falls within
Nitrogen (N)
0 – 0.09%
0.002%
Falls within
Niobium (Nb)
0 – 0.1%
Does not teach
Meets
Titanium (Ti)
0 – 0.1%
Does not teach
Meets
Chromium (Cr)
0 – 1%
Does not teach
Meets
Molybdenum (Mo)
0 – 1%
0.12%
Falls within
Vanadium (V)
0 – 0.1%
0.02%
Falls within
Calcium (Ca)
0 – 0.005%
0.0011%
Falls within
Boron (B)
0 – 0.01%
Does not teach
Meets
Cerium (Ce)
0 – 0.1%
Does not teach
Meets
Magnesium (Mg)
0 – 0.05%
Does not teach
Meets
Zirconium (Zr)
0 – 0.05%
Does not teach
Meets
Iron (Fe)
Remainder
Remainder
Meets
*shaded area is optionally one or more of
Takashima teaches that the example composition is produced into a cold – rolled and heat treated steel sheet [Table 2, 0071] that has tempered martensite of 75 area%, which falls within the claimed range. Ferrite is 16%, bainite is 9%, the total is 25%, and residual austenite is 0% [Table 3, Example 3], which falls within the claimed ranges.
Takashima does not expressly teach the aspect ratio of the carbides in the tempered martensite or the yield strength.
However, Takashima teaches subjecting the steel sheet to a tempering treatment at 310°C for 800 seconds [Table 2, Example 3] which is substantially identical to the tempering treatment described in specification [0049]. As evidenced by the ASM Handbook, the temperature and time of tempering affect and shape the carbides [page 1, left and middle column].
In addition to this, or by itself, Takashima discloses a steel sheet which meets the composition and microstructure as well as the properties of tensile strength, elongation, and hole expansion (see claims 30 – 31, 41, and 43. As such, there is a reasonable expectation to an ordinarily skilled artisan that Takashima’s tempered martensite would meet the claimed limitation of the carbides having an aspect ratio of less than 3.5 and that the steel sheet would have a yield strength that met the claimed range.
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 anticipation is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (See MPEP 2112.01)). In this case, a substantially identical tempering process and additionally, or by itself, a substantially identical composition, microstructure, and properties.
"[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962))
Claims 20 and 48 – 52 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shiraki (JP2016194135, using espacenet translation)
Regarding claims 20 and 48 – 52, Shiraki teaches a steel sheet which is subjected to cold-rolling and heat treating [0045, 0046]. Shiraki teaches an example in which the steel sheet has a composition of [Table 1, Example 2]:
Element
Claimed Invention (wt%)
Shiraki (mass%)
Relationship
Carbon (C)
0.09 – 0.15%
0.094%
Falls within
Manganese (Mn)
1.8 – 2.5%
2.0%
Falls within
Silicon (Si)
0.2 – 0.7%
0.3 – 0.495% (Claim 51)
0.3 – 0.482% (Claim 52)
0.35%
Falls within
Aluminum (Al)
0.01 – 0.1%
0.059%
Falls within
Phosphorous (P)
0 – 0.09%
0.005%
Falls within
Sulfur (S)
0 – 0.09%
0.0023%
Falls within
Nitrogen (N)
0 – 0.09%
0.0054%
Falls within
Niobium (Nb)
0 – 0.1%
Does not teach
Meets
Titanium (Ti)
0 – 0.1%
Does not teach
Meets
Chromium (Cr)
0 – 1%
0.8%
Falls within
Molybdenum (Mo)
0 – 1%
Does not teach
Meets
Vanadium (V)
0 – 0.1%
Does not teach
Meets
Calcium (Ca)
0 – 0.005%
Does not teach
Meets
Boron (B)
0 – 0.01%
0.0031%
Falls within
Cerium (Ce)
0 – 0.1%
Does not teach
Meets
Magnesium (Mg)
0 – 0.05%
Does not teach
Meets
Zirconium (Zr)
0 – 0.05%
Does not teach
Meets
Iron (Fe)
Remainder
Remainder
Meets
*shaded area is optionally one or more of
Shiraki meets the composition of claims 20, 48, and 51 – 52.
Shiraki teaches that the example composition is cold – rolled and heat treated [0057] to produce a steel sheet that has ferrite area fraction of 23% and tempered martensite from 74 – 77%, which meets the claimed ranges of tempered martensite, cumulative amount of ferrite and bainite, and the amount of retained austenite (i.e., 0 – 3%) [Table 2, Example 8] for claim 20 and claim 48. See [0037] regarding 3% or less residual microstructure.
Shiraki teaches that the example has a yield strength of 754 MPa, which meets the claimed range of claim 48.
Shiraki teaches that the example has a tensile strength of 1045 MPa, which meets the claimed range of claims 49 and 50.
Shiraki does not expressly teach the aspect ratio of the carbides in the tempered martensite (claims 20 and 48). However, Shiraki discloses a steel sheet which meets the composition, microstructure, properties of tensile strength (claims 49 – 50) and yield strength claimed (claim 48), as well as the elongation described in US2023/0036084 [0008]. As such, there is a reasonable expectation to an ordinarily skilled artisan that Shiraki’s tempered martensite would meet the claimed limitation of the carbides having an aspect ratio of less than 3.5.
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 anticipation is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (See MPEP 2112.01)). In this case, a substantially identical composition, microstructure, and properties.
"[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962))
Claim Rejections – U.S.C. §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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 23, 45, 47, and 51 – 52 are rejected under 35 U.S.C. 103 as being unpatentable over Takashima (WO2021/024748, using espacenet translation), as applied to claim 20 above.
Regarding claim 23, Takashima teaches the invention as applied in claim 20. Takashima teaches that the composition has 2.43% Mn [Table 1, Example C], which is outside the claimed range upper bound of 2.4%. However, 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."). In this case, Takashima has the same microstructure and tensile, elongation, and hole expansion. As such, the proportions are so close it would have been expected that they have the same properties.
Regarding claims 45 and 51 – 52, Takashima teaches the invention as applied in claim 20. Takashima teaches that the composition has 0.54% Si [Table 1, Example C], which is outside the claimed range upper bound of 0.495% Si in claim 45 and 51, and the upper bound of 0.482% Si in claim 52. However, 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."). In this case, Takashima has the same microstructure and tensile, elongation, and hole expansion. As such, the proportions are so close it would have been expected that they have the same properties.
Regarding claim 47, Takashima teaches the invention as applied in claim 20. Takashima teaches a composition that contains C, Mn, Si, Al, P, S, N, and additional components of Mo, V, and Ca [Table 1, Example C]. Wherein V is not included in the composition of claim 47. However, Takashima explicitly states that vanadium is an optional element which may not be included [0032].
As such, it would have been obvious to one of ordinary skill in the art before the effective filing date to have modified the steel disclosed by Takashima by removing V to achieve predictable results. Given that Takashima expressly teaches that vanadium is not required, an ordinarily skilled artisan would have had a reasonable expectation of success in achieving predictable results.
Response to Arguments
Applicant's arguments filed have been fully considered but they are not persuasive. The examiner notes that an additional rejection is provided of claims 20 and 48 – 52 under 35 U.S.C. 102(a)(1) as being anticipated by Shiraki (JP2016194135, using espacenet translation), in response to the new claims 48 – 52. Claims 49 and 50 overcome the previous prior art of Takashima (WO2021024748)
The currently pending rejections are:
Claims 20 – 22, 24 – 31, 41 – 44, 46, and 48 under 35 U.S.C. 102(a)(2) as being anticipated by Takashima (WO2021/024748), as evidenced by ASM Handbook (“Tempering of Steels”, 2013).
Claims 23, 45, 47, and 51 – 52 under 35 U.S.C. 103 as being unpatentable over Takashima (WO2021/024748), as applied to claim 20.
Claims 20 and 48 – 52 under 35 U.S.C. 102(a)(1) as anticipated by Shiraki (JP2016194135)
Applicant argues that:
“In particular, Takashima contains no mention of any carbide aspect ratio. Further, although Takashima teaches the use of fine carbides it does not in any way suggest the elimination of coarse carbides ([0018],[0062], [0090]-[0093]), and again says nothing at all regarding aspect ratios. Moreover, as there is no discussion of the aspect ratio of any of the carbides in Takashima, there is simply no basis to conclude anything regarding the claimed aspect ratio.”
This is not persuasive because “There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003) (MPEP 2112 II)”.
Applicant argues that a previously cited prior art (Akira, JP2009215571) provides evidence that the example of Takashima would have iron-based carbides in the tempered martensite with aspect ratios greater than 3.5. This is not persuasive. As mentioned above, Takashima discloses a steel sheet which meets the composition and microstructure as well as the properties of tensile strength, elongation, and hole expansion. As such, there is a reasonable expectation to an ordinarily skilled artisan that Takashima’s tempered martensite would meet the claimed limitation of the carbides having an aspect ratio of less than 3.5.
Additionally, Akira does not explicitly state that carbides have an aspect ratio of greater than 3.5 are present, only that inclusions in tempered martensite with an aspect ratio of greater than 2.0 are limited to 200 or less/mm2. Moreover, Applicant does not provide reasoning as to why Akira’s broader disclosure composition and inclusion size teaching show that the example relied upon in Takashima would not necessarily have an aspect ratio of iron based carbides less than 3.5. As such, this argument is not found persuasive.
Applicant argues that the similarities in tempering treatment is not enough to support the rejection because differences in soaking temperatures for the annealing cannot be ignored. Applicant argues that Akira had a different annealing process too and could not eliminate iron based carbides with an aspect ratio greater than 2. These arguments are unpersuasive. First, a review of the data presented in the specification provides no evidence that performing the annealing in a different manner results in iron based carbides in the tempered martensite having a grain size aspect ratio of 3.5 or more. That is, the data provided in the specification does not actually show/state that the ‘’inventive steels” and “comparative steels” have or do not have the carbide feature.
Even assuming arguendo that the “comparative” steel examples possess iron based carbides in the tempered martensite with an aspect ratio of 3.5 or more, these steels (as shown in Table 3 and 4) do not meet the claimed microstructure nor mechanical properties. As such, this would provide further evidence that the example of Takashima does possess the carbide feature claimed because Takashima discloses a steel sheet which meets the composition, microstructure and properties of tensile strength, elongation, and hole expansion. Therefore, applicant arguments are not persuasive.
Lastly, the examiner notes that the tempering treatment was not solely relied upon for establishing a reasonable expectation that the example of Takashima possesses the claimed feature. As stated, “In addition to this, or by itself, Takashima discloses a steel sheet which meets the composition and microstructure as well as the properties of tensile strength, elongation, and hole expansion.”
That is, Takashima discloses a steel sheet which meets the composition, microstructure and the properties of tensile strength, elongation, and hole expansion, establishing a reasonable expectation that the example possesses the claimed carbide feature. The substantially identical tempering treatment provides even further evidence of a reasonable expectation because the ASM Handbook states temperature and time of tempering affect and shape the carbides of tempered martensite [page 1, left and middle column].
It is has been held that "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. (MPEP 2112 IV). 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). (MPEP 2112 V)
The Office has provided a sound basis for believing that the example of Takashima [Table 1, Example C; Table 3, Ex 3] and the claimed invention are the same based on the following:
Takashima teaches subjecting the steel sheet to a tempering treatment at 310°C for 800 seconds [Table 2, Example 3] which is substantially identical to the tempering treatment described in the specification [0049]. As evidenced by the ASM Handbook, the temperature and time of tempering affect and shape the carbides of tempered martensite [page 1, left and middle column].
In addition to this, or by itself, Takashima discloses a steel sheet which meets the composition and microstructure as well as the properties of tensile strength, elongation, and hole expansion. As such, there is a reasonable expectation to an ordinarily skilled artisan that Takashima’s tempered martensite would meet the claimed limitation of the carbides having an aspect ratio of less than 3.5.
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 anticipation is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (See MPEP 2112.01)). In this case, a substantially identical tempering process and additionally, or by itself, a substantially identical composition, microstructure, and properties.
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 Austin M Pollock whose telephone number is (571)272-5602. The examiner can normally be reached M - F (11 - 8 ET).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738
Prosecution Insights