DETAILED ACTION
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 .
DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 13 April 2026 has been entered.
Status of Claims
Responsive to the amendment filed 13 April 2026, claim 1 is amended. Claims 1-5 are currently under examination. Claims 7-10 remain withdrawn.
Status of Previous Rejections
Responsive to the amendment filed 13 April 2026, new grounds of rejection are presented which are non-final.
Claim Rejections - 35 USC § 102/103
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.
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) 1-5 is/are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 2018/0202020 A1 (hereinafter “Han”).
Han teaches a steel sheet that is “excellent” in bake-hardenability (see Title, [0001]). Han teaches that the steel has excellent aging properties (see Title, [0001]). Han teaches a steel sheet with composition overlapping the claimed range ([0014]-[0021] or claims 1-3). Han teaches examples of steel compositions falling in the claimed range (See EXAMPLES and Table 1). One such Example is Specimen No 1, shown in Table 1 thru 3. The composition of the steel sheet of Han is compared with the claimed composition in the chart below (all values in mass percent).
Element
Claim 1
Han (broad composition)
Han Specimen 1
C
Mn
P
S
N
s-Al
Cr
Fe/impurity
0.002-0.015
1.5-3.0
0.03 or less
0.01 or less
0.01 or less
0.02-0.06
1.2 or less
balance
0.002-0.012
1.6-2.7
0.03 or less
0.01 or less
0.01 or less
0.02-0.06
1.0 or less
balance
0.0023
2.54
0.011
0.007
0.003
0.025
0.52
balance
The broad composition overlaps the claimed ranges. The composition of Specimen 1 falls entirely inside of the claimed ranges, anticipating the entire ranges. Applicant is directed to MPEP 2131.03.
Han teaches the steel has a composition including ferrite and martensite (see [[0017]-[0022] and Table 2). Han teaches a process of making the steel including cold rolling, annealing (See [0023]-[0025]). Han teaches examples of steel processed in such a way (see Table 2). Han teaches that the Specimen 1 includes 1.8% martensite (Table 2), falling in the range claimed and anticipating the entire range.
Han teaches that the steel of Example 1 includes a bake hardenability value of 52 MPa and a YP-El value of 0 (Table 2).
Han does not describe any value for a ratio V, being a ratio of a number of hard structures observed at a grain boundary triple point, to a sum of number of hard structures observed at a triple point and at a grain boundary within a 10000 μm2 section at ¼ of a thickness of the sheet. Han does not endeavor to count the hard structures in this way. However this limitation is inherent in the steel of the Examples of Han. Han teaches a steel with the same composition and microstructure as claimed, and having bake hardenability and aging resistance properties that are also within the parameters described as the goal of applicant’s invention. The steel sheet of Han, having the same composition and microstructure, and the same properties of bake hardening and aging resistance as claimed, would have had the unmeasured property described by Equation 1 as well, inherently. Applicant is directed to MPEP 2112.01.
In the alternative, assuming that the steel of Han had some other value of V outside of the claimed range, it is not established that the claimed steel is patentably distinct over Han. The steel with the same composition and the same microstructure, which is used for the same purpose, and has the same mechanical properties, would be considered to be an obvious variant if the only difference were an amount of a hard phase at a triple point. It is not clear that a difference in a ratio V, being a ratio of a number of hard structures observed at a grain boundary triple point, to a sum of number of hard structures observed at a triple point and at a grain boundary within a 10000 μm2 section at ¼ of a thickness of the sheet is meaningful in this case where the steels have everything else the same including composition, microstructure, use and performance properties.
Regarding claim 2, Han teaches the steel Specimen 1 has 96.4% ferrite and martensite (see Table 2).
Regarding claim 3, Han does not describe a value of Hel, as described in Equation 2. Han does not describe any Equation 2 or a value.
However, Han teaches steel Specimen 1, from which a value of Hel can be calculated. Thus, Hel = 0.0023 + 0.5 * 2.54 + 0.75 * 0.52 = 1.66. The value of Hel inherently falls in the range as claimed, and thus Han anticipates or makes obvious the claim.
Regarding claim 4, Han Specimen 1 includes no mention of Si, reading on 0 (Table 1 and 2).
Regarding claim 5, Han teaches a BH value of 52 MPa for Specimen 1 (Table 3). Han teaches an aging YP-El value of 0 for Specimen 1 (Table 3). These values fall in the ranges as claimed, anticipating the ranges.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-5 have been considered but are not persuasive.
Applicant argues that the prior art Han does not teach a steel having the property of Equation 1, wherein a value of a ratio V, being a ratio of a number of hard structures observed at a grain boundary triple point, to a sum of number of hard structures observed at a triple point and at a grain boundary within a 10000 μm2 section at ¼ of a thickness of the sheet, is 70% or more.
In support of this argument, applicant cites Examples 3-1 and 3-2, and Examples 6-1 and 6-2 from the specification. Applicant argues that the steels which are not processed in the way described by applicant do not have the claimed values of V, and then also do not have the desired values of bake hardenability and aging resistance. The arguments are not persuasive because they are not commensurate in scope with the prior art. It is noted that what is claimed is not a method for making a steel, but the steel having the properties as claimed. In this case the example steel of Han does have the required composition and microstructure, and has the required bake hardenability and aging resistance as well (as cited above). it is not clear then that the property is not inherent, as applicant has not shown any examples having a desirable bake hardenability and a desired aging resistance that then do not have the V ratio value claimed. Further, Han teaches comparative examples which do not possess the claimed properties of bake hardenability and aging resistance, which are not considered inventive examples. Thus it is not believed that applicant’s comparison is applicable to the inventive steel of Han. Further, even assuming arguendo that the steel of Han does not have the claim value of V, but has some value at less than 70%, if this is the only difference then the steel of Han is considered to be “close enough” to what is claimed to establish a prima facie case of obviousness. The steel merely having a specified ratio V, when considered absent properties and microstructure, is not considered to be a patentable invention. It is not clear that the steels are meaningfully different when every other property, including the goals of the invention, are met.
When all of the evidence is considered as a whole, evidence against patentability outweighs evidence of patentability.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER S KESSLER whose telephone number is (571)272-6510. The examiner can normally be reached 9-5:30.
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CHRISTOPHER S. KESSLER
Primary Examiner
Art Unit 1734
/CHRISTOPHER S KESSLER/Examiner, Art Unit 1759
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