DETAILED ACTION
Claims 1-2, 4, and 6-12 are pending, and claims 1-2 and 4 are currently under review.
Claims 3 and 5 are cancelled.
Claims 6-12 are withdrawn.
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 .
Response to Amendment
The amendment filed 5/19/2026 has been entered. Claims 1-2, 4, and 6-12 remain(s) pending in the application.
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 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.
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.
Claim(s) 1-2 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsuda et al. (US 2014/0242416) alone or alternatively in view of Seo et al. (WO2018117711, US 2020/0239976 referred to as English translation).
Regarding claims 1 and 4, Matsuda et al. discloses a high strength steel having excellent stretch flangeability (ie. workability) and having a composition as seen in table 1 below [abstract, 0022-0030, 0105-0107]. Matsuda et al. further discloses a microstructure of 5 to 70% martensite (of which at least 25% is tempered), at least 40% bainite, 5 to 40% retained austenite, 10 to 50% ferrite, and a remainder of other phases [abstract, 0090]. The examiner notes that the overlap between the steel composition and microstructure of Matsuda et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I).
Matsuda et al. does not expressly teach relationships 1 and 4 as claimed. However, the examiner submits that overlapping values of relationship 1 and 4 would have naturally flowed from the prior art. See MPEP 2112 & MPEP 2144.05(I). One of ordinary skill would readily understand that steel structure and properties are directly affected by steel composition and manufacturing. Matsuda et al. already discloses an overlapping steel composition as explained above. Matsuda et al. further discloses a substantially similar, overlapping manufacturing method relative to the instant application. Specifically, the instant specification teaches meeting this claimed feature by performing an annealing step after cold rolling of heating to Ac1 to Ac3 for at least 50 seconds, cooling to 100 to 300 degrees C at at least 1 degree C per second, and subsequent reheating to 300 to 500 degrees C for 50 to 172,000 seconds [0170-0205]. Matsuda et al. further teaches processing the steel sheet after cold rolling by annealing at up to 1000 degrees C for 60 to 500 seconds, cooling at 8 degrees C per second or faster to the Ms point or lower, and reheating to 350 to 490 degrees C for 40 to 400 seconds [0130-0139]. Since Matsuda et al. discloses an overlapping steel composition, overlapping steel microstructure, and overlapping annealing steps which are essential to achieve the claimed relationships 1 and 4 as disclosed by the instant specification, the examiner submits that overlapping values of relationship 1 and 4 would have naturally flowed from the prior art. See MPEP 2144.05(I). The examiner’s position is further bolstered by the overlapping mechanical properties of tensile strength, elongation, and hole expansion achieved by Matsuda et al. explained below. One of ordinary skill would recognize that these steel mechanical properties are similarly affected by steel composition, microstructure, and processing, such that overlapping relationship 4, which is also similarly affected by steel composition, microstructure, and processing, would also similar be expected. See MPEP 2112 & MPEP 2144.05(I).
Matsuda et al. further teaches a property of TSxEL of 27,000 or more, as well as a TS value of up to 1400 MPa and a hole expansion ratio of 25% or more [abstract, 0157-0158]. The examiner notes that these ranges overlap with the claimed ranges of relationships 2-3. See MPEP 2144.05(I).
Alternatively, Matsuda et al. does not teach a ratio of hardness of expression 1 as claimed. Seo et al. discloses that it is known to control a ratio of soft phase hardness to hard phase hardness in general to be 1.4 or less to secure desirable mechanical properties such as yield strength, hold expansion, etc. [0079]. Therefore, it would have been obvious to modify the steel of Matsuda et al. by specifying a ratio of soft phase hardness to hard phase hardness to be 1.4 or less for the aforementioned benefits. The examiner notes that the general teaching of hard phase of Seo et al. overlaps with the claimed hard phases. See MPEP 2144.05(I).
Table 1.
Element (wt.%)
Claim 1
Matsuda et al.
C
0.25 – 0.75
0.1 – 0.59
Si
0 – 4
0 – 3
Mn
0.9 – 5
0.5 – 3
Al
0 – 5
0 – 3
P
0 – 0.15
0 – 0.1
S
0 – 0.03
0 – 0.07
N
0 – 0.03
0 – 0.01
Si+Al
3.03 – 6
0.7 – 5
Fe & Impurities
Balance
Balance
Regarding claim 2, Matsuda et al. discloses the steel of claim 1 (see previous). Matsuda et al. further discloses an inclusion of Cr of up to 0.05 to 5 weight percent, which overlaps with the claimed range [0040]. See MPEP 2144.05(I).
Response to Arguments
Applicant's arguments filed 5/19/2026 have been fully considered but they are not persuasive.
Applicant argues that Matsuda et al. does not teach each and every processing step of the instant application and therefore overlapping, substantially similar features of relationships 1 and 4 would not have naturally flowed. The examiner cannot concur. As stated above, the forming, annealing, and heat treatment of Matsuda et al. is substantially similar to the instant application. One of ordinary skill would readily understand these parameters to be the materially significant, determining features in controlling microstructure, and this point is also further expressly disclosed in the instant specification as explained above. Applicant appears to be of the position that each and every step is materially significant. However, applicant does not provide any evidence or technical reasoning as to how these other steps, such as slab reheating for example, would have any contribution to the claimed features. Indeed, the instant specification provides data demonstrating the influence of the aforementioned forming, annealing, and heat treating steps (all met by Matsuda et al.) on the claimed features [table2-9], while providing no evidence that other steps would have any material effect on the claimed features. Therefore, the examiner cannot concur with applicant’s mere conclusory remarks absent concrete evidence to the contrary, which has not been presented. Nonetheless, the examiner further notes that Matsuda et al. still teaches overlapping slab reheating, hot rolling, cooling, coiling parameters prior to the aforementioned forming, annealing, and heat treating steps above [0120-0138]. Therefore, it is not apparent to the examiner, nor has it been made clear by applicant, as to which processing steps of Matsuda et al. contradict the instant application.
Applicant argues against the combination with Seo et al. because Seo et al. discloses differing carbon amounts such that the combination is not predictable. The examiner cannot concur. The reliance upon Seo et al. is merely to demonstrate obviousness of controlling hardness ratios of soft phases and hard phases in steel [0079]. This teaching is not specific or dependent upon any particular C amount. One of ordinary skill would readily understand that soft phases (ie. ferrite, etc.) and hard phases (ie. martensite etc.) can be desirably controlled despite a wide variety of known C inclusions. In other words, the reliance upon Seo et al. does not depend on any particular amount of C disclosed by Seo et al., contrary to applicant’s arguments, but rather a general teaching of desirable hardness ratios of steel microstructural phases that one of ordinary skill would have understood to be applicable to any steel of similar microstructures.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 5712721177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734
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