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 .
Status of Claims
Claims 1-16 are examined in this office action as claim 1 was amended in the amendment received 8/20/25.
Claim Rejections - 35 USC § 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 1-16 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.
Claim 1 recites the limitation that “the panel includes an edge part, an end part and a flat part; the edge part is a portion located at a circumference of the panel, which is to be fixed to an other component; the end part is a portion located next to the edge part on a center side of the panel; the flat part is a portion surrounded by the end part on the center side of the panel;” While it is known that flat means having a smooth or even surface, it is not clear what a center-side is and what portion of a panel it encompasses. Thus, as it is not clear what is meant by a center-side, it is also unclear what a flat part of the panel on this center-side portion relates to. While paragraph [0023] of the specification notes that the center-side portion of the panel is a portion that is visually recognized from the outside of the automobile as the exterior of the automobile”, this merely describes what some embodiments look like rather than a physical description of what the claimed portion of the panel encompasses. While the claim notes that the flat part is surrounded by the end part, as the end part is merely “located next to the edge part on a center side of the panel” this does not elucidate where the end part ends and where the flat part begins.
Further, as a panel is merely a separate or distinct part of a surface and a panel can have any shape, it is not clear what an end part is and what portion of the panel it encompasses. While it is stated that the end part is located next to the edge part on a center side of the panel and the edge part is located at a circumference of the panel which is to be fixed to another component, the recitation of these two components merely in relation of the circumference of the panel does not provide a basis for determining the meets and bounds of these parts of the panel. Thus, it is not clear in claim 1 where the yield stress YS1 and YS2 must be measured nor where the surface roughness parameter (Sa) must be measured, rendering the claim scope unclear. Claims 2-16 are also rejected as they depend from claim 1 and do not solve the above issue.
Claim 1 recites the limitation "the flat" in line 8. There is insufficient antecedent basis for this limitation in the claim. While there is a previous recitation of “a flat part” of the panel, there is no previous recitation of “a flat” of the panel. Thus, it is not clear whether this intends to refer back to “a flat part”, whether it intends to more generally refer to a flat portion of the panel in any of the recited parts, or some other meaning. Claims 2-16 are also rejected as they depend from claim 1 and do not solve the above issue.
Claim 1 recites the limitation “the steel sheet comprises Si: 0.010% to 3.00%” in line 2. It is not clear what type of percentage is intended by this recitation, rendering the scope of the claim unclear. It is not clear whether this refers to a mass %, wt%, vol%, mol%, or some other meaning. Claims 2-16 are also rejected as they depend from claim 1 and do not solve the above issue.
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.
Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over US 2011/0048586 A1 of Kim.
As to claims 1 and 5, it is not clear what percentage Si is claimed in, see 112(b) rejection above. For the purposes of applying prior art, this will be interpreted as being mass% as mass % is used in the chemical composition recited in paragraph [0050] of the specification. Kim discloses a dual phase steel sheet for interior and exterior panels of automobiles containing ferrite as a main phase, martensite as a secondary phase in a volume fraction of 5-20% with a Si concentration of 0.03-0.50 wt% (Kim, claim 1), meeting the claim limitation of a panel having a steel sheet including martensite with a chemical composition comprising Si at 0.010% to 3.000%, as well as the claim 5 limitation of where the sheet is dual phase steel sheet. It is not clear what is meant by “a flat part of a center-side portion” and “an end part”, see 112(b) rejections above. For the purposes of applying prior art, these will be interpreted as requiring a flat portion of a panel to have the required surface roughness and some portion of the panel to have a yield stress YS2.
However, Kim does not disclose where the panel has a surface roughness parameter (Sa) at a flat part of a center-side portion of the panel is Sa≤0.500 μm, in laths of the martensite, a number density of precipitates having a major axis of 0.05 μm to 1.00 μm and an aspect ratio of 3 or more is 15 precipitates/μm2 or more; and a ratio YS1/YS2 between a yield stress YS1 measured in a tensile test specimen cut out from the flat part and a yield stress YS2 measured in a tensile test specimen cut out from an end part of the panel is 0.90 to 1.10. Nevertheless, Kim discloses a substantially identical method of manufacturing a panel of reheating an ingot to 1150-1250° C. for 1.5-3.5 hours followed by hot rolling at 800-900° C, coiling at 550-650° C, and cold-rolling at a reduction ratio of 50-80% (Kim, paragraph [0015]). The cold rolled sheet in Kim is then annealed on an continuous annealing line at 750-850° C at 10-20° C/sec and annealed for 100-110 seconds, a cooling line on which the annealed steel sheet is cooled to 460-540° C at 3-15° C./sec, and an over-aging line on which the cooled steel sheet is subjected to over-aging at 460-540° C for 100-200 seconds which is substantially identical to the method of manufacturing the panel disclosed in paragraph [0053] of the instant specification. As Kim discloses the same starting material of a steel sheet and discloses the application of a substantially identical method thereto, the same method applied to the same materials will produce the same properties of a surface roughness parameter (Sa) at a flat part of a center-side portion of the panel is Sa≤0.500 μm, in laths of the martensite, a number density of precipitates having a major axis of 0.05 μm to 1.00 μm and an aspect ratio of 3 or more is 15 precipitates/μm2 or more; and a ratio YS1/YS2 between a yield stress YS1 measured in a tensile test specimen cut out from the flat part and a yield stress YS2 measured in a tensile test specimen cut out from an end part of the panel is 0.90 to 1.10. “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) (emphasis added), see MPEP § 2112.01(I).
As to claims 2-3 and 6-7, it is not clear what is meant by “flat part”, see 112(b) rejection above. For the purposes of applying prior art, these will be interpreted as requiring a flat portion of a panel to have the claimed properties. Kim does not disclose a ratio YS1/TS1 between the yield stress YS1 and a tensile strength TS1 of the tensile test specimen cut out from the flat part is 0.85 or more, a hardness of the flat part is 133 to 300 Hv, a tensile strength of the panel is 400 to 900 MPa, a hardness of the flat part is 133 to 300 Hv.
Nevertheless, Kim discloses a substantially identical method of manufacturing a panel of reheating an ingot to 1150-1250° C. for 1.5-3.5 hours followed by hot rolling at 800-900° C, coiling at 550-650° C, and cold-rolling at a reduction ratio of 50-80% (Kim, paragraph [0015]). The cold rolled sheet in Kim is then annealed on an continuous annealing line at 750-850° C at 10-20° C/sec and annealed for 100-110 seconds, a cooling line on which the annealed steel sheet is cooled to 460-540° C at 3-15° C./sec, and an over-aging line on which the cooled steel sheet is subjected to over-aging at 460-540° C for 100-200 seconds which is substantially identical to the method of manufacturing the panel disclosed in paragraph [0053] of the instant specification. As Kim discloses the same starting material of a steel sheet and discloses the application of a substantially identical method thereto, the same method applied to the same materials will produce the same properties of a ratio YS1/TS1 between the yield stress YS1 and a tensile strength TS1 of the tensile test specimen cut out from the flat part is 0.85 or more, a hardness of the flat part is 133 to 300 Hv, a tensile strength of the panel is 400 to 900 MPa, a hardness of the flat part is 133 to 300 Hv. “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) (emphasis added), see MPEP § 2112.01(I).
As to claims 4 and 8-9, it is not clear what is meant by “flat part”, see 112(b) rejection above. . For the purposes of applying prior art, these will be interpreted as requiring a flat portion of a panel to have the required thickness. Kim does not disclose where a sheet thickness of the flat part is 0.20 to 0.60 mm. Nevertheless, it is obvious to select dimensions for a panel as needed to achieve the desired size, strength, and shape. As such, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select a sheet thickness of 0.20 to 0.60 mm. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device, (emphasis added) see MPEP § 2144.04(IV)(A).
As to claims 10-12, Kim discloses a dual phase steel sheet for interior and exterior panels of automobiles (Kim, claim 1), meeting the claim limitation of where the sheet is dual phase steel sheet.
As to claims 13-16, it is not clear what is meant by “flat part”, see 112(b) rejection above. . For the purposes of applying prior art, these will be interpreted as requiring a flat portion of a panel to have the claimed properties. Kim does not disclose a tensile strength of the panel is 400 to 900 MPa.
Nevertheless, Kim discloses a substantially identical method of manufacturing a panel of reheating an ingot to 1150-1250° C. for 1.5-3.5 hours followed by hot rolling at 800-900° C, coiling at 550-650° C, and cold-rolling at a reduction ratio of 50-80% (Kim, paragraph [0015]). The cold rolled sheet in Kim is then annealed on an continuous annealing line at 750-850° C at 10-20° C/sec and annealed for 100-110 seconds, a cooling line on which the annealed steel sheet is cooled to 460-540° C at 3-15° C./sec, and an over-aging line on which the cooled steel sheet is subjected to over-aging at 460-540° C for 100-200 seconds which is substantially identical to the method of manufacturing the panel disclosed in paragraph [0053] of the instant specification. As Kim discloses the same starting material of a steel sheet and discloses the application of a substantially identical method thereto, the same method applied to the same materials will produce the same properties of a tensile strength of the panel is 400 to 900 MPa. “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) (emphasis added), see MPEP § 2112.01(I).
Response to Arguments
With respect to the amendment to the specification, it is agreed that this amendment merely corrects an obvious typographical error and therefore has support in the specification as filed.
With respect to the 112(b) rejection, applicant argues that the edge part, end part, and flat part are described in Figs. 2A and 2B and the associated description in the specification of these figures (Applicant’s remarks, pg. 7, last paragraph).
However, the figures and their associated description in the specification describe these features in relation to one another rather than providing a statement of what the structural features of the panel are. While the edge part is at the circumference of the panel and the end part is next to the edge with the flat part surrounded by the end part, there is nothing that defines what differentiates these portions of the panel from one another. This renders the claim unclear as the claim recites specific properties of the panel in these locations and if the location of the parts of the panel is unclear, it is not clear how and where the properties are to be measured.
Further, the description in paragraph [0023] cited by applicant differs from the scope of the claims. While an example of an edge part being a portion that is bent by a HEM processing or welded by spot welding is recited this is narrower than what is claimed of merely being located at the circumference of the panel. Likewise, while end part is described as being advanced several mm toward the center from the edge part and being “substantially unaffected” (an unclear, relative term) by the connection process, the claims merely recite where the end part is next to the edge part. Finally, while the flat part has an example of being where the radius of curvature is 500 mm or more, the claims are merely stating that the flat part is surrounded by the end part. The claims are broader than what is being shown and described in FIG. 2A and 2B and the examples do not make clear what is meant by center side of the panel, nor what the scope of “edge part, “end part”, and “flat part” are. Thus, applicant’s arguments are not persuasive and the rejection is maintained.
With respect to the 103 rejection over Kim, applicant notes that claim 1 has been amended to recite the Si composition and that the Si composition is necessary for precipitating a large amount of fine precipitates for the desired surface properties (Applicant’s remarks, pg. 8, last paragraph).
However, as noted above, this percentage in the claim is not tied to the mass, volume, molar, or atomic percentage of Si in the steel, see 112(b) rejection above. As such, the scope of the claim is not clear and this does not differentiate over the art.
Applicant also argues that Kim does not disclose a substantially identical process and therefore the steel in Kim would not have the same properties and this is shown in comparative examples C2, D1b and E1b (Applicant’s remarks, pg. 9 last paragraph – pg. 10 4th paragraph).
While Kim does not disclose the specific step of imparting stress to the sheet in the same manner as the instant specification, the sheet in Kim is nevertheless coiled which would impart stress to the sheet. Thus, while the method in Kim is not identical to the disclosed method, it is substantially similar such that it would be expected to demonstrate the same properties.
While the cited method and examples relate to a steel with a chemical composition consisting of, in mass%, C: 0.020% or more and 0.145%or less, Si: 0.010% or more and 3.000% or less, Mn: 0.45% or more and 2.25%or less, P: 0.030% or less, S: 0.020%or less, sol. Al: 0.30% or less, N: 0.0100% or less, B: 0 to 0.0050%, Mo: 0 to 0.80%, Ti: 0 to 0.20%, Nb: 0 to 0.10%, Cr: 0 to 0.70%, and Ni: 0 to 0.25%, with the balance being Fe and impurities (Applicant’s specification, paragraph [0050]) the claims are merely directed to a steel including martensite which comprises Si: 0.010% to 3.000%. As such, applicant’s arguments are not commensurate in scope with the claims. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range, see MPEP § 716.02(d). Further, to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960), see MPEP § 716.02(d)(II).
Applicant argues that all mandatory and optional elements as well as specified impurity levels including their numerical ranges are not needed as the invention is not directed to a metal alloy but to a panel having a steel sheet including martensite and paragraph [0050] notes that the composition is merely an example of an embodiment and there is no need for specific content of elements other than Si to achieve the effects of the invention (Applicant’s remarks, pg. 10 last paragraph – pg. 11, 2nd paragraph).
First, the composition of Si in instant claim 1 is not clear, see 112(b) rejection above. While the instant claims do not require a composition and merely a steel sheet including martensite, applicant is pointing to data in Table 5 which does relate to the composition in paragraph [0050]. Further the specifics of the instant method disclosed in paragraph [0053] also refers to this being performed on a “cast piece having the aforementioned chemical composition” (Applicant’s specification, paragraph [0053]). As both the method cited for differences as well as the data cited as showing differences from the prior art depend upon the composition in paragraph [0050], it is not clear how applicant’s arguments are commensurate in scope with the claim limitations. Thus, applicant’s arguments are not persuasive and the rejection is maintained.
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 Joshua S Carpenter whose telephone number is (571)272-2724. The examiner can normally be reached Monday - Friday 8:00 am - 5:30 pm.
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/JOSHUA S CARPENTER/Examiner, Art Unit 1733
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733