DETAILED ACTION
Claims 1-2 and 4-11 are pending, and claims 1-2 and 4 are currently under review.
Claim 3 is cancelled.
Claims 5-11 are withdrawn.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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/30/2025 has been entered.
Response to Amendment
The amendment filed 6/10/2025 has been entered. Claims 1-2 and 4-11 remain(s) pending in the application. Applicant’s amendments to the Claims have overcome each and every objection previously set forth in the Final Office Action mailed 3/11/2025.
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).
Regarding claim 1, Matsuda et al. discloses a high strength steel having a composition as seen in table 1 below [abstract, 0022-0030]. 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). The examiner further notes that the Si and Al amounts of Matsuda et al. overlap with the claimed Si+Al range.
Matsuda et al. does not expressly teach a relationship 1 as claimed. However, the examiner submits that overlapping values of relationship 1 would have naturally flowed from the prior art. Specifically, the instant specification teaches meeting this claimed feature by performing an annealing step after cold rolling of heating to Ac1 to Ac3 for 50 to 1200 seconds, cooling to 100 to 300 degrees C, and subsequent reheating to 300 to 500 degrees C for at least 50 seconds [0190-0205]. 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 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 relationship 1 as disclosed by the instant specification, the examiner submits that an overlapping value of relationship 1 would have naturally flowed from the prior art. 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
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).
Regarding claim 4, Matsuda et al. discloses the steel of claim 1 (see previous). 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).
Matsuda et al. does not expressly teach relationship 4. However, as stated above, Matsuda et al. discloses an overlapping steel composition, microstructure, and method of manufacture, such that overlapping mechanical properties would have naturally flowed as explained above.
Claim(s) 1-2 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Futamura et al. (WO2012133057, machine translation referred to herein).
Regarding claim 1, Futamura et al. discloses a steel having a composition as seen in table 2 below [p.2-3, table1]. Futamura et al. further discloses a microstructure of up to 80% bainite and tempered martensite, 10 to 50% ferrite, and 5 to 30% retained austenite [p.8-10]. The examiner notes that the overlap between the steel composition and microstructure of Futamura et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I). The examiner further notes that the Si and Al amounts of Futamura et al. overlap with the claimed Si+Al range.
Futamura et al. does not expressly teach a relationship 1 as claimed. However, the examiner submits that overlapping values of relationship 1 would have naturally flowed from the prior art. Specifically, the instant specification teaches meeting this claimed feature by performing an annealing step after initial steps of hot rolling, coiling, and cold rolling; wherein said annealing includes heating to Ac1 to Ac3 for 50 to 1200 seconds, cooling to 100 to 300 degrees C, and subsequent reheating to 300 to 500 degrees C for at least 50 seconds [0190-0205]. Futamura et al. further teaches processing the steel sheet through hot rolling, coiling, cold rolling, and then subsequent annealing at (Ac1+Ac3)/2 + 20 to Ac3+20 degrees C for at least 50 seconds, cooling down to a T2 temperature of 200 to 400 degrees C, and holding at 200 to 400 degrees C for 200 seconds or more [p.15-17]. The examiner notes that “holding” as taught by Futamura et al. will naturally require application of heat (ie. reheating). Since Futamura et al. discloses an overlapping steel composition, overlapping steel microstructure, and overlapping annealing steps which are essential to achieve the claimed relationship 1 as disclosed by the instant specification, the examiner submits that an overlapping value of relationship 1 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 Futamura et al. as shown below, which are directly affected by relationship 1 as disclosed by applicant.
Table 2.
Element (wt.%)
Claim 1
Futamura et al.
C
0.25 – 0.75
0.1 – 0.3
Si
0 – 4
1 – 3
Mn
0.9 – 5
1.5 – 3
Al
0 – 5
0.005 – 3
P
0 – 0.15
0 – 0.1
S
0 – 0.03
0 – 0.05
N
0 – 0.03
0.002 – 0.004
Fe & Impurities
Balance
Balance
Regarding claim 2, Futamura et al. discloses the steel of claim 1 (see previous). Futamura et al. further teaches inclusion of Ti in an amount of up to 0.15 weight percent, which overlaps with claimed range (1) [p.3]. See MPEP 2144.05(I).
Regarding claim 4, Futamura et al. discloses the steel of claim 1 (see previous). Futamura et al. further teaches obtaining a 1180 MPa class steel having a tensile strength of up to 1270 MPa, elongation of 15% or higher, expandability (ie. HER) of 20% or higher, limit bending radius of 4.5 mm or less, and a steel thickness of 1.4 mm [p.33]. The examiner notes that these parameters obtain overlapping values of expressions (2) to (4), which is prima facie obvious. See MPEP 2144.05(I).
Response to Arguments
Applicant's arguments, filed 6/10/2025, have been fully considered but they are not persuasive.
Applicant argues that both Matsuda and Futamura do not teach all of the same manufacturing steps in the same order as the instant application, and therefore the prior art does not teach a substantially identical process and the examiner has not met the burden of proof for rejection. The examiner cannot concur.
As stated in the previous office action, one of ordinary skill would understand that a substantially identical process is that which only materially affects the limitations at hand (emphasis added). In this case, the limitations that are not expressly taught by the prior art are: 1) the content of Si and Al in ferrite, and 2) relationship 4. The examiner notes that these features are expressly disclosed by applicant to only be materially affected by the primary annealing parameters after cold rolling (ie. annealing, cooling, and reheating), as also supported by the data of the instant specification [0171-0205, 0256-0274 spec.]. Since the prior art discloses overlapping annealing parameters after cold rolling as stated above, similar overlapping features that are dependent on said parameters would have naturally flowed. The examiner’s position is further bolstered by the similar overlapping microstructure and mechanical properties obtained by the prior art, which one of ordinary skill would readily understand to be directly affected by the processing parameters (emphasis added). This is also shown by applicant’s own specification that the claimed features of Si and Al in ferrite is controlled specifically to achieve a balance of tensile strength, elongation, and hole expansion [0158 spec.], all of which are already disclosed by the prior art as explained in the above rejection sections. Thus, the examiner has clearly met the burden of proof required by MPEP 2112(IV) and MPEP 2112.01.
Applicant alleges that other manufacturing parameters would materially affect the steel. However, applicant provides no further evidence to support these allegations. The examiner cannot concur with applicant’s mere conclusory remarks absent concrete evidence to the contrary, which has not been provided. See MPEP 2145(I).
Applicant then argues that it is not proper to determine that the specifically claimed formula would be inherent to the prior art. In response, the examiner notes that this exact point was not made in the previous office actions. Rather, an overlapping range of Si and Al in ferrite which overlaps with the claimed formula would have been inherent, wherein said overlap is prima facie obvious (emphasis added). In other words, although the prior art does not expressly recognize a feature of Si and Al in ferrite, the disclosure of the prior art would have naturally resulted in an overlapping amount of Si and Al in ferrite for the reasons explained above. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant further appears to rely on prior PTAB decisions as precedent. The examiner cannot concur. Examination is conducted according to MPEP, and the decisions relied upon by applicant are not cited as precedent in the MPEP.
Applicant further argues that Futamura et al. does not teach the specific claimed microstructure amounts of bainite and tempered martensite. It is not entirely clear to the examiner as to what point applicant is trying to make. Futamura et al. expressly teaches an overlapping amount of bainite and tempered martensite together as stated above, which is prima facie obvious. See MPEP 2144.05(I). If applicant is of the position that the claimed amounts of bainite and tempered martensite are significant and critical, the examiner cannot concur absent concrete evidence to the contrary, which has not been provided.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734