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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/15/2026 has been entered.
Response to Amendment
The Amendment filed 01/15/2026 has been entered. Claims 1 and 3-9 remain pending in the application. Claims 4-6 have been withdrawn due to a restriction requirement. Claim 2 has been canceled. New claim 9 has been added. Claims 1, 3, and 7-9 are presented for examination on the merits.
Drawings
The drawings are objected to under 37 CFR 1.83(a) because they fail to show the cylindrical weight of claim 9 as described in the specification. Fig. 1B shows part C, which is described as “cylindrical weight C” in paragraph [0010] of the instant specification. However, weight C is depicted in Fig. 1B as a half-sphere rather than a “cylindrical” weight. It is therefore unclear what shape the weight is intended to have. Furthermore, one of ordinary skill in the art understands that the shape of the weight in the collision test of claim 9 will impact the weight distribution and therefore the resulting maximum length of cracks in the test piece. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
Claim 9 is interpreted as a product-by-process limitation. MPEP § 2113 states that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”. Similarly, a property of a claimed product is not changed by the method of measuring said property. In the instant case, “wherein a maximum length of cracks visually observed after a collision test is less than 7 mm” is interpreted as an inherent property of the steel sheet of claim 1, absent any evidence and/or arguments to the contrary. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(II). In this case, prior art reading on the steel sheet of claim 1 will be interpreted as also reading on claim 9 since a steel sheet with the same chemical composition will be expected to necessarily possess the same properties.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 9 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 9 recites “a length in the first direction of 900 mm” in lines 15 and 26, “a distance between outer ends of the pair of flange portions in the second direction of 100 mm” in lines 17-18, “a distance between the pair of wall portions in the second direction of 50 mm” in line 19, “a distance between the flange portions and the flat portion in the third direction of 50 mm” in lines 20-21, “a radius of curvature of the R portion connecting the pair of wall portions and the flat portion of 5 mm” in lines 22-23, “a length of 100 mm in the second direction” in line 27, and “a pair of tables 700 mm apart in the first direction” in line 29. While Figures 1A and 1B denote the claimed numbers and the instant specification recites that these numbers denote lengths ([0110]), neither the figures nor the instant specification denote that those lengths are provided in “mm” units, as recited in claim 9. Therefore, there is not sufficient support in the instant specification and drawings for the “mm” units used in the limitations recited above.
Claim 9 recites “a pair of tables 700 mm apart in the first direction” in line 29. The instant specification recites “the test piece was placed on a mount D” ([0110]). Part D depicted in Fig. 1B is interpreted as a “mount” in view of the instant specification. There is not sufficient support in the instant specification and drawings for the claimed “pair of tables” as recited in claim 9.
Claim 9 is 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 9 recites the limitation "wherein a maximum length of cracks visually observed after a collision test is less than 7 mm" in lines 1-2. This limitation renders the claim indefinite. The limitation “visually observed” is considered a subjective term since “visual observation” will depend on the visual acuity of the observer and does not provide an objective standard of measurement for the claimed maximum length of cracks. See MPEP 2173(b)(IV). It is therefore unclear what objective standard of measurement is used to measure the claimed maximum length of cracks.
Claim 9 recites the limitation "wherein a maximum length of cracks visually observed after a collision test is less than 7 mm" in lines 1-2. The claim further recites the steel sheet of claim 1 is shaped and impacted according to the collision test method steps, test piece dimensions, and test apparatus dimensions recited in the remainder of claim 9. Applicant is attempting to claim a property of a different product, one after shaping the claimed steel sheet into a hat-shaped component, adding a lid of an undisclosed material, and impacting the resulting test piece, rather than the steel sheet product as claimed in amended claim 1. A product may only be claimed at one point in time. The claim is indefinite since it is unclear whether the claimed maximum length of cracks of claim 9 applies to the steel product of claim 1 or to a different product resulting from further processing the steel product of claim 1.
Claim 9 recites collision test method steps, test piece dimensions, and test apparatus dimensions while the claim is drawn to a steel sheet product. A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011). In this case, claim 9 is drawn to a product. However, claim 9 also includes method steps for a collision test and apparatus limitations regarding the test used to measure the claimed maximum length of cracks. The claim is indefinite since it is unclear whether the claim is drawn to a product or if it is attempting to claim the recited test method and/or apparatus.
Claim 9 recites the limitation “in which a hat-shaped component and a lid are joined by spot welding wherein the hat-shaped component is formed from the steel sheet”. This limitation renders the claim indefinite since it is unclear what the claimed lid is made of. While the claim recites the hat-shaped component is formed from the steel sheet of claim 1, there is not enough information regarding the lid’s structure or composition. One of ordinary skill in the art understands that the lid will impact the resulting maximum length of cracks depending on the type of material used as well as the lid’s thickness. Therefore, the claim is indefinite since one of ordinary skill in the art would not reasonably be aware of the lid requirements needed to build the test piece for the collision test used to measure the claimed maximum length of cracks.
Claim 7 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 7 depends on cancelled claim 2 and therefore fails to further limit the subject matter of the claim upon which it depends, and fails to include all the limitations of the claim upon which it depends. If claim 7 is intended to be dependent on claim 1 instead, then claim 7 becomes a substantial duplicate of claim 3. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3, and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2016/050343 A of Yokoyama (as cited in prior Office action and IDS mailed 07/21/2022 with reference to machine translation), in view of “The effect of carbon content on the c/a ratio of as-quenched martensite in Fe-C alloys” of Lu (as cited in prior Office action) and further in view of WO 2016/177420 A1 of Heller (as cited in prior Office action with reference to machine translation).
Regarding claims 1, 3, and 7-9, Yokoyama teaches an ultra-high strength cold rolled steel sheet having excellent hydrogen embrittlement resistance (Abstract, ultra-high strength cold rolled steel sheet reads on the claimed steel sheet).
List 1
Element
Instant claims (mass%)
Yokoyama (mass%)
C
0.14 - 0.60
0.15-0.3
Si
More than 0 - 3.00
0.001-2.0
Al
More than 0 - 3.00
0.001-1.0
Mn
≤ 5.00
2.10-4.0
P
≤ 0.03
0.05
S
≤ 0.005
0.01
N
≤ 0.015
0.01
B
0 - 0.005
0.0001-0.01
Ni
0 - 5
0.001-1.0 (one or more of Cr, Ni, Cu)
Cu
0 - 5
0.001-1.0 (one or more of Cr, Ni, Cu)
Cr
0 - 5
0.001-1.0 (one or more of Cr, Ni, Cu)
Mo
0 - 1
0.001-0.5
W
0 - 1
-
Ti
0 - 0.2
0.001-0.10
Zr
0 - 0.2
-
Hf
0 - 0.2
-
V
0 - 0.2
0.001-0.5 (one or both of V, Nb)
Nb
0 - 0.2
0.001-0.1 (one or both of V, Nb)
Ta
0 - 0.2
-
Sc
0 - 0.2
-
Y
0 - 0.2
-
Sn
0 - 0.02
-
As
0 - 0.02
-
Sb
0 - 0.02
-
Bi
0 - 0.02
0.0001-0.01 (one or more of Ca, Mg, Bi, REM)
Mg
0 - 0.005
0.0001-0.01 (one or more of Ca, Mg, Bi, REM)
Ca
0 - 0.005
0.0001-0.01 (one or more of Ca, Mg, Bi, REM)
REM
0 - 0.005
0.0001-0.1 (one or more of Ca, Mg, Bi, REM)
Fe and impurities
Balance
Balance (“unavoidable impurities”)
Formula (i)
0.10 ≤ Si + Al ≤ 3.00
0.002-3.0
Formula (ii)
≤ 0.80
0.315-1.2
Formula (iii)
≥ 0.80
2.1-4
Formula (iv)
0.003-0.02
0.001-0.1
Formula (v)
≤ 0.02
0
Formula (vi) for Ms
≥ 200
220.86-382.1
Martensite
≥ 85 vol%
Tempered martensite: ≥ 60 area%
Retained austenite
≤ 15 vol%
≤ 6 area%
Bainite
Balance
≤ 30 area%
Polygonal ferrite: ≤ 10 area%
Yield stress
≥ 1000 MPa
Inventive examples: 1004-1223 MPa
Tensile strength
≥ 1400 MPa
Broad disclosure: ≥ 1300 MPa, preferably ≥ 1470 MPa
Inventive examples: 1476-1703 MPa
Yokoyama teaches a steel with a chemical composition ([0011]-[0012], [0016]-[0025], claims 1-5), microstructure ([0010]-[0011], [0026], claim 1; tempered martensite reads on the claimed martensite), yield stress (inventive examples 1-4, 9-10 and 16-35 in Table 3), and tensile strength ([0002], [0009], [0014], [0036], inventive examples 1-4, 9-10 and 16-35 in Table 3) overlapping with the claimed steel, as shown in List 1. While Yokoyama does not explicitly disclose the values of formulas (i)-(vi), one can perform the calculations which result in values overlapping with the claimed ranges as shown in List 1. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Yokoyama therefore reads on the limitations a steel sheet having a chemical composition consisting of, in mass%: C: 0.14 to 0.60%, Si: more than 0% to less than 3.00%, Al: more than 0% to less than 3.00%, Mn: 5.00% or less, P: 0.030% or less, S: 0.0050% or less, N: 0.015% or less, B: 0 to 0.0050%, Ni: 0 to 5.00%, Cu: 0 to 5.00%, Cr: 0to5.00%, Mo: 0 to 1.00%, W: 0 to 1.00%, Ti: 0 to 0.20%, Zr: 0 to 0.20%, Hf: 0 to 0.20%, V: 0 to 0.20%, Nb: 0 to 0.20%, Ta: 0 to 0.20%, Sc: 0 to 0.20%, Y: 0 to 0.20%, Sn: 0 to 0.020%, As: 0 to 0.020%, Sb: 0 to 0.020%, Bi: 0 to 0.020%, Mg: 0 to 0.005%, Ca: 0 to 0.005%, and REM: 0 to 0.005%,with the balance: Fe and impurities, and satisfying following formulas (i) to (v), wherein a value of Ms expressed by a following formula (vi) is 200 or more, a steel microstructure contains, in volume%:martensite: 85% or more, and retained austenite: 15% or less, with the balance, a yield stress is 1000 MPa or more, and a tensile strength of the steel sheet is 1400 MPa or more of claims 1 and 8 (the Examiner notes that claim 8 reads “a steel sheet having a chemical composition comprising” instead of “consisting of” of claim 1).
Regarding the average block size of martensite and bainite of claims 1 and 8, Yokoyama teaches an effective grain size must be 7 μm or less and preferably, 5 μm or less ([0029]). Yokoyama further teaches the effective grain size corresponds to the block size of martensite ([0029]). Yokoyama teaches inventive examples with effective grain size (De) of 2.5-3.0 μm (inventive examples 21, 30-31, 33, and 35 in Table 3. The broader disclosure of 5 μm or less of Yokoyama overlaps with the claimed 2.4 μm or less. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Additionally, Yokoyama teaches an inventive example with a block size of 2.5 μm which is considered mathematically close to the claimed 2.4 μm or less. 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). See MPEP 2144.05 I.
Yokoyama therefore reads on the limitation an average block size of martensite and bainite: 2.4 μm or less of claims 1 and 8.
Regarding the average axial ratio of martensite and bainite of claims 1 and 8, Yokoyama does not explicitly disclose an average axial ratio of martensite and bainite: 1.0007 to 1.0100.
Lu teaches the effect of carbon content on the c/a ratio of as-quenched martensite in Fe-C alloys (Title). Lu is considered analogous art since it is similarly concerned with the axial ratio of as-quenched and tempered martensite in the steel art (Section 4 Conclusion, “This equation can be used to estimate carbon content in as-quenched martensite and tempered martensite by using X-ray diffraction”) and Yokoyama has tempered martensite in its steel microstructure as shown in List 1 above.
Regarding the average axial ratio of martensite and bainite, it would have been necessary and obvious to look to the prior art for exemplary axial ratios used in steels with martensite structures. Lu provides this teaching showing a relationship between the c/a ratio of martensite and the carbon content in steels (Abstract, the c/a ratio of martensite reads on the claimed average axial ratio of martensite). Lu teaches steels with less than 0.6 wt% carbon form tetragonal martensite and show a linear relationship between carbon content and c/a ratio (Section 4 Conclusion). Lu teaches a relationship of c/a = 1 + 0.031 wt%C and that this equation applies to both as-quenched and tempered martensite (Section 4 Conclusion). Lu teaches the lattice parameters, and therefore the resulting c/a ratios, are measured using high-resolution X-ray diffractomer (Abstract and Section 2 Experimental Procedure). Using the carbon content in the steel sheet of Yokoyama to calculate the axial ratio using the relationship taught by Lu, the c/a ratio of the martensite in the steel of Yokoyama is 1.0047-1.0093, which is within the claimed range. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the steel sheet of Yokoyama would necessarily possess a c/a ratio within the claimed ranges given the carbon content of the steel of Yokoyama and the corresponding axial ratio of martensite, as taught by Lu.
Modified Yokoyama therefore reads on the limitation an average axial ratio c/a of martensite and bainite, measured by an X-ray diffraction method: 1.0007 to 1.0100, wherein a and c denote a-axis and c-axis lattice constants in a tetragonal crystal structure, respectively of claims 1 and 8.
Regarding the iron carbides of claim 1, Yokoyama teaches the number density of Fe carbides in tempered martensite needs to be 1×106/mm2 or more ([0027], claim 1).
However, modified Yokoyama does not explicitly disclose wherein an average particle size of iron carbides included in the steel microstructure is 0.005 to 0.20 μm of claim 1.
Regarding the average particle size of iron carbides, it would have been necessary and obvious to look to the prior art for exemplary particle sizes of iron carbides used in steels with overlapping composition and microstructure to the steel sheet of modified Yokoyama. Heller provides this teaching showing a teaches a flat steel product and is considered analogous art since Heller teaches a steel with chemical composition, microstructure, and yield stress overlapping with the steel of Yokoyama (Abstract). Heller teaches the steel sheet contains iron carbides with a size of less than 500 nm ([0018], 500 nm is 0.5 μm and therefore the carbide sizes of Heller overlap with the claimed range). Heller teaches finely dispersed carbides aid strength ([0139]) and oversized carbides could initiate cracks at high degrees of deformation ([0144]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the steel sheet of modified Yokoyama, and adjusting and varying the iron carbide particle size, such as within the claimed ranges, to achieve desired strength and avoid crack formation due to oversized carbides as taught by Heller, in order to form a conventional steel sheet using known and tested particle sizes of iron carbides predictably suitable for steels with optimized strength.
In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Modified Yokoyama therefore reads on the limitation wherein an average particle size of iron carbides included in the steel microstructure is 0.005 to 0.20 μm of claim 1.
Modified Yokoyama therefore reads on all the limitations of claims 1 and 8.
Regarding claims 3 and 7, modified Yokoyama teaches the steel sheet of claim 1 as described above.
Heller teaches the steel sheet is coated with a Zn coating with a hot dip coating step to protect the steel sheet against corrosive attacks ([0148], claim 6, a coating is considered a plating layer and is understood to be on a surface of a steel sheet which reads on the claimed plating layer on a surface of the steel sheet).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the steel sheet of modified Yokoyama to include the plating layer of Heller to protect the steel sheet against corrosive attacks, as taught by Heller.
Modified Yokoyama therefore reads on the limitation wherein the steel sheet includes a plating layer on a surface of the steel sheet of claims 3 and 7.
Regarding claim 9, modified Yokoyama teaches the steel sheet of claim 1 as described above.
Yokoyama teaches a steel sheet with a chemical composition resulting in improved toughness and excellent hydrogen embrittlement resistance ([0014], [0017]-[0018], [0020]-[0022]-[0025], one of ordinary skill in the art understands toughness and hydrogen embrittlement resistance are both mechanical properties indicative of crack susceptibility). Since Yokoyama teaches in improved toughness and excellent hydrogen embrittlement resistance, one of ordinary skill in the art understands the steel of Yokoyama is designed, at least in part, to avoid or minimize cracking.
However, modified Yokoyama does not explicitly disclose wherein a maximum length of cracks visually observed after a collision test is less than 7 mm of claim 9.
As best understood given the 112(a) and 112(b) rejections for claim 9 above, one of ordinary skill in the art would reasonably expect the steel of modified Yokoyama to necessarily possess the claimed maximum length of cracks visually observed after a collision test given the overlapping chemical composition, microstructure, values of formulas (i)-(v), average block size, average axial ratio c/a, yield stress, tensile strength, and average particle size of iron carbides between modified Yokoyama and the instant invention, as described in the rejection for claim 1 above.
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). See MPEP § 2112.01 I. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Therefore, it is expected that the steel of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (see compositional analysis above and in List 1), and b) the claimed and prior art products are identical or substantially identical in structure (see microstructure analysis above and in List 1). Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
In this case, absent any clear and convincing evidence and/or arguments to the contrary, one of ordinary skill in the art would reasonably expect the steel of modified Yokoyama to necessarily possess the claimed maximum length of cracks visually observed after a collision test, despite modified Yokoyama not explicitly disclosing or measuring the maximum length after a collision test, since modified Yokoyama and the instant invention have overlapping chemical composition, microstructure, values of formulas (i)-(v), average block size, average axial ratio c/a, yield stress, tensile strength, and average particle size of iron carbides, as described in the rejection for claim 1 above. A prima facie case of obviousness has been properly established herein. As the Patent Office does not possess the laboratory facilities to test any differences in the claimed invention versus that of the reference, the burden shifts to applicant to demonstrate otherwise.
Modified Yokoyama therefore reads on all the limitations of claim 9.
Response to Arguments
Applicant's arguments filed 01/15/2026 have been fully considered but they are not persuasive.
Applicant argues that the cited prior art references do not teach or suggest a steel sheet as claimed in claims 1 and/or 8 (remarks, page 12).
In response, a prima facie case of obviousness has been established in the 35 U.S.C. 103 rejections in this Office action.
Applicant argues that Yokoyama does not in any way disclose or suggest that the maximum length of cracks can be suppressed to less than 7 mm (rated as "A" to "C" in terms of the evaluation of cracking, as described in paragraph [0110] of the Specification) by satisfying the presently claimed average block size of martensite and bainite of 2.4 μm or less, the claimed average axial ratio of martensite and bainite of 1.0007 to 1.0100, the claimed total content of Si and Al of 0.10% or more, and the claimed average particle size of iron carbides of 0.005 to 0.20 μm (remarks, page 12).
In response, Yokoyama teaches a steel sheet with a chemical composition resulting in improved toughness and excellent hydrogen embrittlement resistance ([0014], [0017]-[0018], [0020]-[0022]-[0025], one of ordinary skill in the art understands toughness and hydrogen embrittlement resistance are both mechanical properties indicative of crack susceptibility). Since Yokoyama teaches in improved toughness and excellent hydrogen embrittlement resistance, one of ordinary skill in the art understands the steel of Yokoyama is designed, at least in part, to avoid or minimize cracking.
In response to applicant's argument that Yokoyama does not disclose suppression of a maximum length of cracks, 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).
In this case, absent any clear and convincing evidence and/or arguments to the contrary, one of ordinary skill in the art would reasonably expect the steel of modified Yokoyama to necessarily possess the claimed maximum length of cracks visually observed after a collision test, despite modified Yokoyama not explicitly disclosing or measuring the maximum length after a collision test, since modified Yokoyama and the instant invention have overlapping chemical composition, microstructure, values of formulas (i)-(v), average block size, average axial ratio c/a, yield stress, tensile strength, and average particle size of iron carbides, as described in the rejection for claim 1 above. A prima facie case of obviousness has been properly established herein. As the Patent Office does not possess the laboratory facilities to test any differences in the claimed invention versus that of the reference, the burden shifts to applicant to demonstrate otherwise.
Applicant argues that there is no embodiment in Yokoyama that satisfies the presently claimed average block size of martensite and bainite of 2.4 μm or less and average axial ratio of martensite and bainite of 1.0007 to 1.0100 (remarks, page 12).
In response, examples and preferred embodiments are not evidence of teaching away when acceptable broader ranges are taught by the prior art. See MPEP 2123(II). In other words, Yokoyama's invention is not limited in scope to the specific examples in its tables. Yokoyama teaches a block size of martensite must be 7 μm or less and preferably, 5 μm or less ([0029], effective grain size corresponds to the block size of martensite), which overlaps with the claimed 2.4 μm or less. Additionally, Yokoyama teaches an inventive example with a block size of 2.5 μm which is considered mathematically close to the claimed 2.4 μm or less. 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). See MPEP 2144.05 I. In this case, both the broad disclosure and the inventive examples of Yokoyama read on the claimed average block size of martensite and bainite.
Applicant argues that Lu fails to cure the deficiencies of Yokoyama (remarks, page 12). Applicant further argues that Lu teaches the effect of the carbon content in martensite alone, which is different from the effect of the carbon content in a steel as a whole and that Yokoyama discloses the carbon content in martensite alone, not in the whole steel (remarks, page 13).
In response, Lu teaches the equation for calculating a c/a ratio using carbon content applies to tempered martensite (Section 4 Conclusions, emphasis added) in addition to the “as-quenched martensite” recited in the title of the journal article, and therefore is relevant to the tempered martensite of the steel of Yokoyama. Additionally, both Lu and Yokoyama disclose carbon content in the entire steel and have overlapping carbon contents. Therefore, the equation taught by Lu is relevant to the steel sheet of Yokoyama given the overlap in the type of martensite and carbon content of the steel sheets.
Conclusion
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/M.A./Examiner, Art Unit 1733
/REBECCA JANSSEN/Primary Examiner, Art Unit 1733
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