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
Request for Continued Examination
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/20/26 has been entered.
Response to Amendments
The amendment filed on 01/20/26 has been entered. Claims 46 – 48 are newly added and have support in the specification [0009 and original claim set]. Claims 32 – 40 remain withdrawn. Claims 20 – 31 and 41 – 48 are under examination.
Claim Rejections – U.S.C. §112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 31 and 41 – 44 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 31, the phrase states “of greater of at least 55%”. The phrase is indefinite because it’s not clear if the phrase is intended to mean greater than 55% or whether it means 55% or more. For purposes of examination, the later interpretation is taken.
Claims 41 – 44 are rejected by virtue of dependency.
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)(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))
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, and 47 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 claim 45, 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. 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 with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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, using espacenet translation), as evidenced by ASM Handbook (“Tempering of Steels”, 2013).
Claims 23, 45, and 47 under 35 U.S.C. 103 as being unpatentable over Takashima (WO2021/024748, using espacenet translation), as applied to claim 20 above.
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US2018/0355453 – steel with overlapping composition, microstructure, as well as yield, tensile, and elongation
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUSTIN POLLOCK whose telephone number is (571)272-5602. The examiner can normally be reached M - F (8 - 5).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached on (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