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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/12/2025 has been entered.
Response to Amendment
The Amendment filed 11/12/2025 has been entered. Claims 1-13 remain pending in the application. New claims 12-13 have been added.
Information Disclosure Statement
Three (3) information disclosure statement(s) (IDS) were submitted on 11/12/2025, 02/05/2025 and 03/04/2026. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS are being considered by the examiner.
Claim Interpretation
Independent claims 1, 3, and 12 recite the limitation “wherein all or part of the steel sheet has a chemical composition of”. Transitional phrases such as "having" must be interpreted in light of the specification to determine whether open or closed claim language is intended. See MPEP 2111.03(IV). In the instant case, the term “has” is interpreted as equivalent to the open-ended term “comprising” since dependent claims 4-11 narrow the composition of independent claims 1, 3, and 12, and recite the term “comprising, in the chemical composition” (emphasis added). Additionally, dependent claims 4-11 are interpreted as narrowing the composition of elements which are already present in independent claims 1, 3, and 12.
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 1-5, 8-9, and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/151332 A1 of Toda (as cited in prior Office action using US 2020/0230681 A1 as its English machine translation).
Regarding claims 1-5, 8-9, and 12-13, Toda teaches a hot stamped body excellent in strength, impact resistance, ductility, and hydrogen embrittlement resistance after hot stamping and small in scattering in hardness ([0001], reads on claimed hot-stamped product). Toda teaches using a steel sheet for hot stamping ([0015], reads on claimed steel sheet).
Toda therefore reads on the limitation a hot-stamped product comprising: a steel sheet of claims 1, 3, and 12.
List 1
Instant claims (mass%)
Toda (mass%)
C
0.4-0.7
0.2-0.7
Si
<2
<3
Mn
0.01-0.5
0.2-3
P
≤0.2
≤0.1
S
≤0.02
≤0.1
Sol. Al
0.001-1
0.0002-3
N
≤0.02
≤0.01
Mo
0.01-0.5
0.005-1
B
0.0002-0.02
0.0005-0.01
Ti
0-0.2
0.001-0.2 (claims 4, 8)
0.01-0.15
Nb
0-0.2
0.001-0.2 (claims 4, 8)
0.01-0.15
V
0-0.2
0.001-0.2 (claims 4, 8)
-
Zr
0-0.2
0.001-0.2 (claims 4, 8)
-
Cr
0-2
0.01-2 (claims 5, 9)
-
W
0-2
0.01-2 (claims 5, 9)
-
Cu
0-2
0.01-2 (claims 5, 9)
-
Ni
0-2
0.01-2 (claims 5, 9)
0.01-3
Ca
0-0.01
0.0001-0.01 (claims 6, 10)
-
Mg
0-0.01
0.0001-0.01 (claims 6, 10)
-
REM
0-0.1
0.0001-0.01 (claims 6, 10)
-
Bi
0-0.05
-
-
-
-
Fe and impurities
Remainder
Balance (“and unavoidable impurities”)
Martensite
More than 90 vol%
“Mainly martensite”
95-99 area% (calculated)
Average Vickers hardness
≥ 670
500-800 Hv
Standard deviation of Vickers hardness
≤ 20
7-18 Hv (hot stamped body no. 3B, 4B, 7B, 10B, 15B-17B, 21B-25B in Table B-3-1)
Tensile strength
≥ 2300 MPa
≥ 1500 MPa (broader disclosure)
2308-2381 MPa (stamped body no. 4A, 29A, and 39A in Table A-3)
Yield ratio
≥ 0.65 (claim 2)
Toda teaches a hot stamped body with a chemical composition ([0017]-[0028], [0033]-[0048], claims 9-18), average Vickers hardness ([0049]-[0050], hardness is measured at 10 points and the average value was defined as the hardness of the middle part in sheet thickness as recited in [0050], therefore the hardness of Toda reads on the claimed average value of Vickers hardness), standard deviation of Vickers hardness (scattering values of hot stamped body no. 3B, 4B, 7B, 10B, 15B-17B, 21B-25B in Table B-3-1, scattering of Toda reads on claimed standard deviation since they both serve to measure variation in hardness values), and tensile strength ([0014], [0028], stamped body no. 4A, 29A, and 39A in Table A-3) overlapping with the claimed steel, 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.
Toda therefore reads on the limitation comprising by mass%, C: more than 0.40% and 0.70% or less; Si: less than 2.00%;Mn: 0.01% or more and less than 0.50%;P: 0.200% or less; S: 0.0200% or less; sol. Al: 0.001% to 1.000%;N: 0.0200% or less; Mo: 0.01% or more and less than 0.50%;B: 0.0002% to 0.0200%;Ti: 0%to0.200%;Nb: 0%to0.200%;V: 0%to0.200%;Zr: 0% to 0.200%;Cr: 0%to2.00%;W: 0%to 2.00%;Cu: 0%to 2.00%;Ni: 0%to 2.00%;Ca: 0%to0.0100%;Mg:0%to0.0100%;REM:0%to0.1000%; and Bi: 0%to0.0500% with a remainder of Fe and impurities of claims 1, 3, and 12, an average value of Vickers hardness is 670 or more, a standard deviation of the Vickers hardness in the region is 20 or less of claims 1, 3, and 12, a tensile strength is 2300 MPa or more of claims 1, 3, and 12, comprising, in the chemical composition, by mass%, one or more selected from the group of: Ti: 0.001% to 0.200%;Nb: 0.001% to 0.200%;V: 0.001% to 0.200%; and Zr: 0.001% to 0.200% of claims 4 and 8, and comprising, in the chemical composition, by mass%, one or more selected from the group of: Cr: 0.001%to 2.00%;W: 0.001% to 2.00%;Cu: 0.001%to 2.00%; and Ni: 0.001%to 2.00% of claims 5 and 9.
Regarding the location of the chemical composition of claims 1, 3, and 12, Toda teaches the middle part in sheet thickness comprises the chemical composition recited in List 1 above ([0018], [0033], middle part in sheet thickness reads on claimed wherein all or part of the steel sheet has a chemical composition of).
Toda therefore reads on the limitation wherein all or part of the steel sheet has a chemical composition of claims 1, 3, and 12.
Regarding the microstructure of claims 1, 3, and 12, while Toda does not explicitly disclose a martensite amount, Toda teaches conventional hot-pressed parts are formed of mainly martensite ([0004]) and that the central portion of the sheet contains retained austenite in an area fraction of 1.0% or more and less than 5.0% to improve ductility ([0051]). One of ordinary skill in the art understands the remainder of the microstructure is martensite and the martensite content of the steel sheet of Toda is therefore at least 95-99% martensite throughout the steel sheet. 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.
Toda therefore reads on the limitation at a 1/4 depth position of a sheet thickness of the steel sheet from an interface between the steel sheet and the plating layer, a microstructure contains, by vol%, more than 90.0% of martensite of claims 1, 3, and 12.
Regarding the Vickers hardness values of claims 1, 3, and 12, Toda teaches the steel sheet has a hardness of 500 Hv to 800 Hv ([0049], 500-800 Hv reads on the claimed 670 or more). Toda teaches using a micro Vickers hardness tester, measurements are taken at 10 points at 1/2 the plate thickness, with a load of 1 kgf, and at intervals of at least three times the width of the indentation, and the average value is taken as the hardness at the center of the plate thickness of the hot stamped body ([0050]). At the cross-section vertical to the surface of the hot stamped body, the distribution of hardness at the middle part in sheet thickness is preferably uniform with no scattering ([0078], one of ordinary skill in the art understands uniform hardness with no scattering as minimizing standard deviation of the hardness). Toda further teaches the hot stamped body according to the present invention is a structure with a softened layer arranged on the surface at both sides or one side wherein the softened layer has a region having a hardness 10 Hv or more lower than the hardness of the middle part in sheet thickness ([0032]). Toda further teaches hot stamped steel sheets with scattering of hardness of 7-18 Hv (hot stamped body no. 3B, 4B, 7B, 10B, 15B-17B, 21B-25B in Table B-3-1; the scattering values serve the same function as standard deviation values since they measure the variation of the hardness measurements in the steel sheet and therefore scattering reads on the claimed standard deviation). One of ordinary skill in the art would reasonably expect the hardness values of Toda to be present “in a region that is 0.3 mm in a sheet thickness direction and 0.6 mm in a direction orthogonal to the sheet thickness” given that the hardness value is measured at the ½ plate thickness, the hardness distribution is uniform with no scattering in the middle part and the hardness lowers in the softened layer by 10 Hv or more, as taught by Toda. 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.
Toda therefore reads on the limitation an average value of Vickers hardness in a region that is 0.3 mm in a sheet thickness direction and 0.6 mm in a direction orthogonal to the sheet thickness direction is 670 or more, a standard deviation of the Vickers hardness in the region is 20 or less of claims 1, 3, and 12.
Regarding the applied load and load retention time of claims 1, 3, and 12, 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, although the method of Toda uses a different load and retention time in its micro Vickers hardness measurements, given that Toda discloses the average and standard deviation Vickers hardness values as is presently claimed and absent evidence of criticality in how the Vickers hardness is measured, it is the Examiner's position that the Vickers hardness disclosed by Toda meets the claim limitation.
Toda therefore reads on the limitation the Vickers hardness being measured by a method in which, a micro Vickers hardness tester is used, and, as the measurement conditions, an applied load is set to 0.49 N, and a load retention time is set to 10 seconds of claims 1, 3, and 12.
Toda therefore reads on all the limitations of claims 1, 4, and 5.
Regarding the plating layer of claim 3, Toda teaches including a plated layer on the surface of the softened layer of the steel sheet to improve corrosion resistance ([0079]).
Toda therefore reads on the limitation a plating layer formed on a surface of the steel sheet of claim 3.
Regarding the yield ratio of claims 2 and 3, the yield ratio is interpreted as the ratio obtained by dividing a material’s yield strength by its tensile strength. Toda teaches a tensile strength overlapping with the claimed hot-stamped product, as described for claim 1 and shown in List 1 above. Toda teaches that the hot-stamped steel may be subjected to a reheating step at a temperature in the range of 150-600°C for the purpose of adjusting the steel’s strength ([0079], “tempering treatment” is the reheating step).
However, Toda does not explicitly disclose wherein a yield ratio is 0.65 or more of claims 2 and 3, or a yield strength to calculate the yield ratio.
Since Toda has overlapping chemical composition, microstructure, Vickers hardness, and tensile strength with the claimed steel, one of ordinary skill in the art would reasonably expect the steel sheet of Toda to necessarily possess the claimed yield ratio, despite not explicitly disclosing or measuring a yield ratio. 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 alloy 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), b) the claimed and prior art products are identical or substantially identical in structure (see microstructure analysis above), and c) the claimed and prior art products are produced by similar processes (both Toda and the instant invention use a reheating step with overlapping temperatures). 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).
As further evidence that one of ordinary skill in the art would reasonably expect the steel of Toda to necessarily possess the claimed yield ratio, the instant specification recites it is necessary to excessively increase the reheating temperature in the reheating step to significantly increase the yield ratio, which decreases the strength of the formed article ([0047]). The specification further notes that the yield ratio as claimed can be obtained through a process that includes a reheating temperature of 90°C or higher and lower than 150°C and holding the temperature for 5 minutes or more ([0063]). The reheating temperature of the instant invention being lower than 150°C, includes 149.999°C and is therefore considered to be so mathematically close to the minimum 150°C of the reheating of Toda that the difference between the ranges is virtually negligible absent any showing of unexpected results or criticality. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05 (I).
Since Toda and the instant invention have overlapping chemical composition, microstructure, Vickers hardness values, tensile strength, and processing steps, one of ordinary skill in the art would reasonably expect the steel of Toda to necessarily possess the claimed yield ratio.
Toda therefore reads on the limitation of a yield ratio is 0.65 or more of claims 2 and 3.
Toda therefore reads on all the limitations of claims 2, 3, 8, and 9.
Regarding the vertical wall portions of claims 12 and 13, Toda teaches a cross-section vertical to the longitudinal direction of a long hot stamped body was taken at any position in that longitudinal direction and measured for hardness at the middle position in sheet thickness at the entire cross-sectional region including the vertical walls ([0156], vertical walls reads on claimed vertical wall portions). Toda teaches the hot stamped body can be a hat-shaped structure with vertical wall parts ([0078], hat-shaped structure reads on claimed hat member; vertical wall part reads on claimed vertical wall portions).
Toda therefore reads on the limitation the hot-stamped product includes vertical wall portions of claim 12, and wherein the hot-stamped product is a hat member, the hat member including the vertical wall portions of claim 13.
Regarding the microstructure at the vertical wall portion of claim 12, Toda teaches conventional hot-pressed parts are formed of mainly martensite ([0004]) and that the central portion of the sheet contains retained austenite in an area fraction of 1.0% or more and less than 5.0% to improve ductility ([0051]). One of ordinary skill in the art understands the remainder of the microstructure is martensite and the martensite content of the steel sheet of Toda is therefore at least 95-99% martensite throughout the steel sheet, including at the vertical walls. 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.
Toda therefore reads on the limitation at a 1/4 depth position of a sheet thickness from a surface of the steel sheet, on the vertical wall portions, a microstructure contains, by vol%, more than 90.0% of martensite of claim 12.
Toda therefore reads on all the limitations of claims 12-13.
Toda therefore reads on all limitations of claims 1-5, 8-9, and 12-13.
Claims 6 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/151332 A1 of Toda (as cited in prior Office action using US 2020/0230681 A1 as its English machine translation), as applied to claims 1 and 3 above, in view of WO 2019/003543 A1 of Takashima (as cited in prior Office action and using US 2020/0131596 A1 as its English translation).
Regarding claims 6 and 10, Toda teaches the hot-stamped product of claims 1 and 3.
However, Toda does not explicitly disclose one or more selected from the group of: Ca: 0.0001% to 0.0100%; Mg: 0.0001% to 0.0100%; and REM: 0.00010% to 0.1000%.
Takashima teaches a hot-pressed member and a method for manufacturing the same, and that the steel sheets for hot press may include general cold-rolled steel sheets and coated or plated steel sheets ([0001]-[0002], “hot press” is another term for “hot stamp”). Takashima and Toda are considered analogous art since they are similarly concerned with hot stamped steel sheets, have overlapping chemical composition, microstructure, and mechanical properties, and both may include plating layers.
Takashima teaches the steel sheet comprises Ca: 0.005% or less, Mg: 0.005% or less, REM: 0.005% or less to control the shape of sulfides and oxides and suppress the formation of coarse inclusions, thereby improving delayed fracture resistance ([0071]-[0072]). Takashima teaches the improved resistance occurs when adding an amount of 0.00005% or more, and that addition past 0.005% may cause an increase in inclusions and deteriorate delayed fracture resistance ([0072]).
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 Toda with the Ca, Mg, and/or REM contents of Takashima, such as within claimed ranges, to control the shape of sulfides, oxides, and suppress the formation of coarse inclusions thereby improving resistance to delayed fracture in the steel sheet, as taught by Takashima.
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 Toda therefore reads on the limitation one or more selected from the group of: Ca: 0.0001% to 0.0100%; Mg: 0.0001% to 0.0100%; and REM: 0.00010% to 0.1000% of claims 6 and 10.
Claims 7 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/151332 A1 of Toda (as cited in prior Office action using US 2020/0230681 A1 as its English machine translation), as applied to claims 1 and 3 above, in view of US 2003/0084965 A1 of Nishi (as cited in prior Office action).
Regarding claims 7 and 11, Toda teaches the hot-stamped product of claims 1 and 3 as discussed above.
However, Toda does not explicitly disclose comprising, in the chemical composition, by mass%:Bi: 0.0001% to 0.0500%.
Nishi teaches a steel for machine structural use and excellent machinability (Abstract). Nishi and Toda are considered analogous art since they are similarly concerned with steel sheets used in automobile applications. Additionally, the claimed steel sheet includes hot rolling in its processing ([0069]), and would therefore benefit from the increased machinability taught by Nishi for hot rolled steel sheets ([0155]).
Nishi teaches adding 0.01-0.1% Bi increases the machinability of steel during hot rolling while balancing improved machinability and cost ([0116]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to add the 0.01-0.1% Bi of Nishi to the steel sheet of Toda to improve machinability during hot rolling, as motivated by Nishi.
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 Toda therefore reads on the limitation in the chemical composition, by mass%: Bi: 0.0001% to 0.0500% of claims 7 and 11.
Response to Arguments
Applicant's arguments filed 11/12/2025 have been fully considered but they are not persuasive.
Applicant argues that Toda does not teach or suggest a hot-stamped product as presently claimed and directs the examiner to the enclosed Rule 132 Declaration (remarks, page 9).
In response, the declaration under 37 CFR 1.132 filed 04/25/2025 is insufficient to overcome the rejection of claims 1-13 based upon 35 U.S.C. 103 using prior art of Toda as set forth in the last Office action because the declaration fails to set forth facts and evidence that demonstrates Toda does not possess the claimed average Vickers hardness, standard deviation, and yield ratio of 0.65 of more, as will be explained below. The declaration focuses on the claimed average Vickers hardness, standard deviation, and yield ratio of 0.65 of more. The examiner notes that while the declaration does not explicitly refer to specific claims, the average Vickers hardness, standard deviation, and yield ratio of 0.65 of more are recited in claims 1-3 and 12 of claim set dated 11/12/2025. Accordingly, dependent claims 4-11 and 13 rise and fall with independent claims 1, 3, and 12.
The declaration recites an expert opinion that the cited prior art does not and cannot achieve the claimed average Vickers hardness, standard deviation, and yield ratio of 0.65 of more (Declaration, page 1). This is not found persuasive for the following reasons.
In response, although factual evidence is preferable to opinion testimony, such testimony is entitled to consideration and some weight so long as the opinion is not on the ultimate legal conclusion at issue. While an opinion as to a legal conclusion is not entitled to any weight, the underlying basis for the opinion may be persuasive. In re Chilowsky, 306 F.2d 908, 134 USPQ 515 (CCPA 1962) (expert opinion that an application meets the requirements of 35 U.S.C. 112 is not entitled to any weight; however, facts supporting a basis for deciding that the specification complies with 35 U.S.C. 112 are entitled to some weight); In re Lindell, 385 F.2d 453, 155 USPQ 521 (CCPA 1967) (Although an affiant’s or declarant’s opinion on the ultimate legal issue is not evidence in the case, "some weight ought to be given to a persuasively supported statement of one skilled in the art on what was not obvious to him." 385 F.2d at 456, 155 USPQ at 524 (emphasis in original)).
In this case, the evidence presented uses opinion as a legal conclusion. The declaration relies on comparing the processing method differences between the instant invention and that of Toda, despite the fact that Toda explicitly teaches the claimed average value and standard deviation of Vickers hardness. Applicant is reminded that the instant claims are directed to a product not a method, and that there are many methods that may arrive at the same claimed product properties. A mere conclusion that Toda would not achieve the claimed average Vickers hardness, standard deviation, and yield ratio of 0.65 of more is not enough to show nonobviousness.
Regarding the yield ratio, the declaration recites a yield ratio of 0.65 or more and a tensile strength of 2300 MPa or more are achieved by a reheating step in which the reheating temperature is set to 90°C or higher and lower than 150°C (Declaration, page 3). The declaration further recites the temperature range disclosed in Toda does not overlap the reheating temperature of the present application (Declaration, page 3). The declaration cites Examples 133 and 136 in Table 6-1 of the present application use a reheating temperature of 270°C and the hot-stamped product does not meet the claimed tensile strength is 2300 MPa or more and a yield ratio of 0.65 or more (Declaration, page 3).
In response, as described in the 35 U.S.C. 103 rejections in this Office action, a yield ratio is defined as the ratio of a yield strength to a tensile strength and Toda teaches a tensile strength overlapping with the claimed invention. Regarding the argument that the temperatures of Toda do not overlap, the reheating temperature of the instant invention being lower than 150°C, includes 149.999°C and is therefore considered to be so mathematically close to the minimum 150°C of the reheating of Toda that the difference between the ranges is virtually negligible absent any showing of unexpected results or criticality. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05 (I). The comparative examples provided in the declaration using a reheating temperature of 270°C are not commensurate in scope with the teachings of Toda since a temperature of 270°C does not demonstrate a temperature of 150°C does not achieve the claimed yield ratio. Additionally, since Toda teaches an overlapping tensile strength and a minimum reheating temperature of 150°C, which is mathematically close to the upper limit of 149.99°C of the instant invention as described above, one of ordinary skill in the art would reasonably expect the hot stamped product of Toda to necessarily possess the claimed yield ratio despite not explicitly disclosing or measuring a yield ratio.
Regarding the Vickers hardness, the declaration recites the claimed Vickers hardness cannot be obtained in Takashima and/or Toda due to differences in hot stamping conditions between the present application and the cited prior art references (Declaration, page 2).
In response, Toda explicitly teaches Vickers hardness values overlapping with the claimed average and standard deviation, as described in the 35 U.S.C. 103 rejection in this Office action. Given that Toda discloses the average and standard deviation Vickers hardness values as is presently claimed and absent evidence of criticality in how the Vickers hardness is measured, it is the Examiner's position that the Vickers hardness disclosed by Toda meets the claim limitation.
Applicant argues that the presently claimed standard deviation of the Vickers hardness of 20 or less in the measured region cannot be obtained in either Toda or Takashima due to differences in hot stamping conditions between the present application and the cited prior art differences (remarks, pages 9-10). Applicant argues that the present invention requires a hot stamping start temperature higher than 1050°C to obtain the claimed standard deviation of Vickers hardness (remarks, pages 9-10).
In response, 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, although the method of Toda uses a different load and retention time in its micro Vickers hardness measurements, given that Toda discloses the average and standard deviation Vickers hardness values as is presently claimed and absent evidence of criticality in how the Vickers hardness is measured, it is the Examiner's position that the Vickers hardness disclosed by Toda meets the claim limitation.
Further regarding Vickers hardness measurements, instant claim 1 recites a load of 0.49 N (equivalent to ~49 gf) for measurement of the Vickers hardness while Toda recites a 1 kgf (equivalent to 1000 gf) load. The instant invention uses JIS Z 2244:2009 as the standard for Vickers hardness measurements ([0051]) and Toda uses JIS Z 2244 ([0050]). Therefore, the prior art and the instant invention both follow the same industry standard to obtain Vickers hardness values. It is well-known in the metallurgical arts that forces smaller than 200 gf used in Vickers hardness measurements generally produce hardness numbers that are different from those determined from tests conducted with forces ≥200 gf, as taught by “Microindentation hardness testing” of Vander Voort (page 221, paragraph 2). Vander Voort teaches in general, the larger the indent is, the better the precision will be (“Important Test Considerations”, page 225; one of ordinary skill in the art understands larger loads result in larger indents as evidenced by Fig. 9 of page 225). Vander Voort further teaches the importance of trying to use the greatest possible load for a Vickers hardness test to ensure good results, reproducibility and repeatability (from Section “Harness versus Applied Force” in page 226 to first paragraph of page 228). When applied loads are below 200 gf, as is the case in the instant invention, an “indentation size effect” may influence the hardness values obtained. In crystalline materials (which include steels such as those of the instant invention), indentation size effects typically increase the hardness value with decreasing load, as taught by “The Indentation Size Effect: A Critical Examination of Experimental Observations and Mechanistic Interpretations” of Pharr (pages 271-273). The comparative examples of 105, 111, and 119 using a heating temperature of 980°C (Table 6-1 of instant specification) result in a standard deviation of 28, 26, and 22 respectively (Table 6-2), which are close to the claimed value of less than 20. Since the instant invention measures Vickers hardness with an applied load of ~49 gf (significantly lower than 200 gf), one of ordinary skill in the art understands that the hardness values of the instant invention may be artificially increased due to errors associated with small applied loads, as taught by Vander Voort, and indentation size effects, as taught by Pharr. The standard deviation values of 28, 26, and 22 of the instant comparative examples are not readily compared to the hardness values of Toda since the values are within error ranges and indentation size effects associated with applied loads of ≤ 200 gf. In view of the state of the art in Vickers hardness measurements, one of ordinary skill understands the Vickers hardness measurements of Toda are considered to be reliable given the large applied load of 1000 gf. In contrast, the Vickers hardness of the instant invention may have larger errors and variations in its measurement given the small ~49 gf load used in the measurements. Therefore, the comparative examples argued by Applicant do not objectively show that the hot stamped body of Toda does not possess the claimed average and standard deviation of Vickers hardness. Absent evidence to the contrary, the hot stamped body of Toda reads on the claimed average value and standard deviation of Vickers hardness.
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Conclusion
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/M.A./Examiner, Art Unit 1733
/REBECCA JANSSEN/Primary Examiner, Art Unit 1733