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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/24/2026 has been entered.
Response to Amendment
The Amendment filed 02/24/2026 has been entered. Claims 1,3-5,7-15 and 20 remain pending in the application. Claims 10-15 and 20 have been withdrawn due to a restriction requirement. Claims 2, 6, and 16-19 have been canceled. No new claims have been added. Claims 1, 3-5, and 7-9 are presented for examination on the merits. Applicant's amendments to the abstract have overcome the objections previously set forth in the Final Rejection mailed 11/25/2025.
Claim Interpretation
Regarding claim 1, the terms “has” in the limitations “has a matrix structure of ferrite + martensite” and “the dual-phase steel has” are interpreted as open-ended since additional elements are recited in “wherein the martensite comprises coherently distributed ϵ carbides” of claim 1 and additional properties the “dual-phase steel has” in claims 7 and 8.
Transitional phrases such as "having" must be interpreted in light of the specification to determine whether open or closed claim language is intended. See, e.g., Lampi Corp. v. American Power Products Inc., 228 F.3d 1365, 1376, 56 USPQ2d 1445, 1453 (Fed. Cir. 2000) (interpreting the term "having" as open terminology, allowing the inclusion of other components in addition to those recited); Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l Inc., 246 F.3d 1336, 1348, 57 USPQ2d 1953, 1959 (Fed. Cir. 2001) (term "having" in transitional phrase "does not create a presumption that the body of the claim is open"); Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1573, 43 USPQ2d 1398, 1410 (Fed. Cir. 1997) (in the context of a cDNA having a sequence coding for human PI, the term "having" still permitted inclusion of other moieties). See MPEP 2111.03(IV).
Claim 1 recites the limitation “wherein the dual-phase steel has at least one of the following” in line 7. This limitation is interpreted as applying to the limitation “yield strength ≥ 900 MPa, and/or tensile strength ≥ 1300 MPa” and that limitations following are not included in the “at least one of the following” of line 7.
Furthermore, limitations listed after “has at least one of the following” or similar language, such as in claims 1, 3, 4, 7, and 8, are interpreted as only one of the listed limitations being required to meet the claim.
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.
Claims 1, 3-5, and 7-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a dual phase steel plate with the claimed structure, carbides, yield strength, tensile strength, elongation and hydrogen content, does not reasonably provide enablement for a dual phase steel plate with no delayed cracking when soaked in 1 mol/L hydrochloric acid for 300 hours under a pre-stress of greater than or equal to the tensile strength or 1.2 times of the tensile strength. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)
The broadest reasonable interpretation of claims 1, 3-5, and 7-9 encompasses a dual-phase steel with a specific composition and mechanical properties, and which, after being soaked in hydrochloric acid for a time and under a predetermined stress, shows “no delayed cracking”. The specification discloses sufficient information for one of ordinary skill in the art to make the steel of the instant invention with the claimed composition, carbides, yield strength, tensile strength, elongation, and hydrogen content. However, the specification does not provide direction on how to obtain the claimed “no delayed cracking” property.
The instant specification recites comparative and inventive examples that shows steels with no cracking at various stress levels from 0.6*TS to 1.2*TS (Table 3, TS represents tensile strength). Table 1 of the instant specification recites the chemical composition of said comparative and inventive examples and Tables 2-1 and 2-2 recite various processing parameters such as soaking temperature, cold rolling reduction rate, coiling temperature, annealing temperature, etc. It is not immediately apparent from the provided tables which compositions or processing parameters are outside of those of the claimed invention. Therefore, it would not be obvious to one of ordinary skill in the art which composition or processing are required to achieve the claimed “no delayed cracking”.
Based on Table 3, comparative examples 10 and 11, for example, meet the claimed elongation and “no delayed cracking” but do not meet the claimed yield strength and tensile strength. The instant specification does not clarify what is required, either in chemical composition or processing, to achieve the claimed no delayed cracking when soaked in 1 mol/L hydrochloric acid for 300 hours under a pre-stress of greater than or equal to the tensile strength or 1.2 times the tensile strength and therefore does not provide sufficient guidance for one of ordinary skill in the art to make the claimed steel.
At the time of filing, the state of the art was such that delayed cracking, also known as cold cracking, is recognized as an issue that occurs in the HAZ or under weld beads and therefore typically occurs during welding (Section C. Cold Cracking of "Embrittlement, Engineering Alloys" of Banerji; HAZ refers to the heat-affected zone and is a well-known term in the metallurgy arts). Banerji further teaches three factors are required for cold cracking: (1) pickup of hydrogen, (2) formation of a susceptible microstructure such as martensite, and (3) stress, which in the case of a weld can be provided by residual stresses. Additionally, the state of the art was such that it is recognized that cold cracking may be prevented by pre- or post-heating treatment similar to other welding processes (Cold cracking section of “Defect formation mechanisms and preventive procedures in laser welding” of Katayama, page 344).
While the claimed steel has martensite in its microstructure, the presence of martensite merely increases the susceptibility to delayed cracking and both increased hydrogen and stress are required for delayed cracking to occur, as taught by Banerji and Katayama. The examples provided in the specification do not clarify what chemistry or processing is required for the steel to meet the claimed “no delayed cracking” property, as discussed above. One of ordinary skill in the art would therefore have to experiment with many chemical compositions and processing parameters, including various heating treatments, before arriving at the claimed “no delayed cracking” property. Additionally, adding the hydrogen and stress required for delayed cracking would result in a product different to the claimed product (see 112(b) rejection below).
Thus, the disclosed guidance in the specification does not bear a reasonable correlation to the full scope of the claim. Taking these factors into account, undue experimentation would be required by one of ordinary skill in the art to practice the full scope of claims 1, 3-5, and 7-9.
Claims 1, 3-5, and 7-9 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 “a dual-phase steel”. This limitation renders the claim indefinite since it is unclear what the claimed steel product is (e.g. sheet, plate, pipe, rod, etc.). The instant specification recites “steel plate” in at least page 9, line 3.
Claims 3-5, and 7-9 are dependent on claim 1, do not resolve the aforementioned issues, and are thereby also indefinite.
Claim 1 recites the limitation “wherein no delayed cracking when soaked in 1 mol/L hydrochloric acid for 300 hours under a pre-stress of greater than or equal to the tensile strength”. This limitation renders the claim indefinite since it is grammatically ambiguous and is missing a verb and/or a reference to the claimed steel. It is unclear whether the claimed “no delayed cracking” applies to the claimed steel, whether it is a separate test, or what the relation is between “no delayed cracking” and the remaining conditions of soaking under a “pre-stress”. As an example, the claim uses “wherein the dual-phase steel has” in other instances which clarifies the relation between those claimed properties and the claimed steel.
Claims 3-5, and 7-9 are dependent on claim 1, do not resolve the aforementioned issues, and are thereby also indefinite.
Claim 1 recites the limitation “no delayed cracking when soaked in 1 mol/L hydrochloric acid for 300 hours under a pre-stress of greater than or equal to the tensile strength”. Similarly, claim 8 recites the limitation “under a pre-stress of greater than or equal to 1.2 times of the tensile strength”. These limitations render the claims indefinite. Specifically, the term “pre-stress” renders the limitation indefinite since it is unclear what constitutes a “pre-stress” that would meet the claimed limitation.
Claims 3-5, and 7-9 are dependent on claim 1, do not resolve the aforementioned issues, and are thereby also indefinite.
Claims 7 and 8 recite the limitation “initial hydrogen content”. The term “initial” renders the claim indefinite since it is unclear whether the claimed “initial hydrogen content” is for the claimed steel plate, or for the steel plate at a different point in processing before arriving at the final steel plate that is claimed in the instant claims. A product may only be claimed at one point in time.
Claims 1 and 8 recite the limitations “no delayed cracking when soaked in 1 mol/L hydrochloric acid for 300 hours under a pre-stress of greater than or equal to the tensile strength” and “no delayed cracking when soaked in 1 mol/L hydrochloric acid for 300 hours under a pre-stress of greater than or equal to 1.2 times of the tensile strength”. These limitations render the claims indefinite since soaking the claimed steel in hydrochloric acid would result in a steel different to the steel as claimed in claim 1. Applicant is attempting to claim a property of a different product, one after soaking the claimed steel in hydrochloric acid under a “pre-stress”, rather than the steel product as claimed. A product may only be claimed at one point in time.
Claims 3-5, and 7-9 are dependent on claim 1, do not resolve the aforementioned issues, and are thereby also indefinite.
Claim 8 recites the limitation “wherein the ultra-high strength dual-phase steel”. There is insufficient antecedent basis for this limitation since claim 1 recites “a dual-phase steel” without the term “ultra-high”.
Claim 8 recites the limitation “ultra-high strength dual-phase steel”. The term “ultra-high-strength” in claim 8 is a relative term which renders the claim indefinite. The term “ultra-high-strength” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what the term “ultra-high-strength” is meant to limit, such as yield strength, tensile strength, fatigue strength, etc. and it is further unclear to what range the strength is meant to be limited to be considered “ultra-high”.
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, 3-5, and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/001423 A1 of Xue (as cited in prior Office action using its equivalent US 2020/0115769 A1 as English translation).
Regarding claims 1, 3-5, and 7-9, Xue teaches dual-phase steel plate (Title, Abstract, reads on the claimed dual-phase steel). Xue teaches the dual-phase steel plate has a fine and uniform martensite-ferrite dual-phase structure, wherein the dual-phase steel plate contains at least 75% of martensite, and the rest is ferrite; the grain size of the martensite is not more than 5 micrometers, and the grain size of the ferrite is not more than 5 micrometers ([0014], claim 8, fine and uniform martensite-ferrite structure with at least 75% martensite reads on the claimed wherein the dual-phase steel has a matrix structure of ferrite+martensite). Since the steel of Xue contains at least 75% martensite and has a fine and uniform structure with even grain sizes of ferrite and martensite, the structure of Xue reads on the claimed wherein the ferrite is distributed evenly like islands.
Xue therefore reads on the limitations dual-phase steel, wherein the dual-phase steel has a matrix structure of ferrite + martensite, wherein the ferrite is distributed evenly like islands of claim 1.
List 1
Instant claims (mass%)
Xue (mass%)
Xue Example 15 (mass%)
C
0.12-0.2
0.1-0.125
0.124
Si
0.5-1.0
0.4-0.8
0.57
Mn
2.5-3.0
2.6-2.9
2.80
Al
0.02-0.05
0.01-0.05
0.026
Nb
0.02-0.05
0.01-0.03
0.023
Ti
0.02-0.05
0.01-0.03
0.021
B
0.001-0.003
-
-
Unavoidable impurities
At least one of the following:
P: ≤ 0.01
S: ≤ 0.002
N: ≤ 0.004
Include P, N, S ([0024])
P: ≤ 0.015
S: ≤ 0.003
N: ≤ 0.005
P: 0.008
S: 0.0012
N: 0.0043
Fe
Balance
Remainder
Remainder
Martensite
> 90%
≥ 75%
≥ 75%
Yield strength
≥ 900 MPa
≥ 930 MPa (claim 8)
≥ 850 MPa
1021 MPa
Tensile strength
≥ 1300 MPa
≥ 1320 MPa (claim 8)
≥ 1180 MPa
Upper limit 1350 MPa ([0025])
1324 MPa
Elongation after fracture
≥ 5%
≥ 5.5% (claim 8)
≥ 8%
8.5%
Initial hydrogen content
≤ 10 ppm
≤ 7 ppm (claim 8)
-
-
Yield ratio
0.70-0.75
Examples of Table 3: 0.66-0.78 (calculated)
0.77
Xue teaches a steel with a chemical composition ([0013], [0016]-[0025], claims 1-7), microstructure ([0009], [0014], claim 8), yield strength ([0009], [0015], [0038], [0049], claim 9), tensile strength ([0009], [0015], [0038], [0049], claim 9), and elongation ([0009], [0015], [0038], [0049], claim 9, elongation reads on the claimed elongation after fracture) overlapping with the claimed steel, as shown in List 1. Xue further teaches a steel with a chemical composition (Example 15, Table 1), microstructure (broader teaching of [0014]), yield strength (Example 15, Table 3), tensile strength (Example 15, Table 3), and elongation (Example 15, Table 3) which lies within the claimed ranges of the instant invention. 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.
Regarding the B content of claim 1, while Xue does not explicitly teach B content in its embodiments, Xue teaches a dual-phase steel of prior art with overlapping composition and microstructure to the steel of Xue which adds B: 0.0005% to 0.0050% to refine grains and improve hardenability ([0005]). Since B is a known alloying element for dual-phase steels, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the composition of Xue by adding B, and adjusting and varying the B content such as within claimed ranges, for grain refinement and improved hardenability as taught by the prior art referenced by Xue.
Xue therefore reads on the limitations wherein the dual-phase steel comprises the following chemical elements in mass percentages, in addition to Fe: C: 0.12-0.2%, Si: 0.5-1.0%, Mn: 2.5-3.0%, Al: 0.02-0.05%, Nb: 0.02-0.05%, Ti:0.02-0.05%, B: 0.001%-0.003%, and a balance of Fe and other unavoidable impurities of claim 1, wherein the dual-phase steel has at at least one of the following: yield strength 900 MPa, and/or tensile strength 1300 MPa of claim 1, wherein the unavoidable impurities include elements P, S and N, and contents thereof are controlled to be at least one of the following: P ≤ 0.01%, S ≤ 0.002%, N ≤ 0.004% of claim 3, wherein the martensite has a phase proportion of >90% by volume of claim 5, wherein the dual-phase steel further has at least one of the following properties: elongation after fracture >5%, initial hydrogen content <10 ppm of claim 7, and wherein the ultra-high-strength dual-phase steel has performances properties that meet at least one of the following: yield strength 930 MPa, tensile strength 1320 MPa, elongation after fracture >5.5%, initial hydrogen content 57 ppm; no delayed cracking when soaked in 1 mol/L hydrochloric acid for 300 hours under a pre-stress of greater than or equal to 1.2 times of the tensile strength of claim 8.
Further regarding the chemical composition of claims 1 and 4, Xue teaches no precious alloying elements such as Mo and Cr are added to the steel to ensure low cost ([0011], [0023], reads on the claimed wherein the dual-phase steel does not contain Mo). Xue teaches a steel in Example 15 with a Mn content of 2.8% which overlaps with the claimed Mn: 2.5-2.8% range at 2.8%, and Xue teaches a broader Mn content of 2.6-2.9, which also overlaps with the claimed Mn: 2.5-2.8% range. 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.
Xue therefore reads on the limitation wherein the dual-phase steel does not contain Mo of claim 1 and wherein the mass percentages of the chemical elements satisfy at least one of: C: 0.14-0.18%, Mn: 2.5-2.8% of claim 4.
Regarding the yield ratio of claim 9, Xue does not explicitly disclose a yield ratio. However, one can perform the calculation to determine the yield ratios of Xue based on the yield strength and tensile strength taught by Xue. One of ordinary skill in the art understands yield ratio is calculated by dividing the yield strength by the tensile strength. Xue teaches inventive examples (Table 3) with yield ratios overlapping with those of the claimed invention, as shown in List 1 above. 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.
Xue therefore reads on the limitation wherein the dual-phase steel has a yield ratio of 0.70-0.75 of claim 9.
However, Xue does not explicitly disclose wherein the martensite comprises coherently distributed ϵ carbides of claim 1, wherein no delayed cracking when soaked in 1 mol/L hydrochloric acid for 300 hours under a pre-stress of greater than or equal to the tensile strength of claim 1, and no delayed cracking when soaked in 1 mol/L hydrochloric acid for 300 hours under a pre-stress of greater than or equal to 1.2 times of the tensile strength of claim 8.
Xue teaches a manufacturing method including smelting and casting, hot rolling, cold rolling, annealing, tempering at 200-270°C for 100-400s, and leveling ([0028]-[0034], tempering step of Xue overlaps with the tempering of the instant invention).
As best understood given the 112(a) and 112(b) rejections regarding “no delayed cracking” in this Office action, given the overlapping chemical composition, microstructure, mechanical properties, and processing between the steel of Xue and the instant invention, one of ordinary skill in the art would reasonably expect the steel of Xue to necessarily possess the claimed coherently distributed carbides and “no delayed cracking” of the instant invention.
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), 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 identical or substantially identical processes (both have overlapping processing and tempering after annealing steps). 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, since the steel of Xue has a chemical composition, microstructure, yield strength, tensile strength, elongation, and yield ratio overlapping with the instant invention and further has a tempering step after annealing with overlapping temperatures and times, the steel of Xue necessarily has the claimed coherently distributed ϵ carbides and “no delayed cracking” despite not being explicitly disclosed by Xue.
Xue therefore reads on the limitations wherein the martensite comprises coherently distributed ϵ carbides of claim 1, wherein no delayed cracking when soaked in 1 mol/L hydrochloric acid for 300 hours under a pre-stress of greater than or equal to the tensile strength of claim 1, and no delayed cracking when soaked in 1 mol/L hydrochloric acid for 300 hours under a pre-stress of greater than or equal to 1.2 times of the tensile strength of claim 8.
Xue therefore reads on all the limitations of claims 1, 3-5, and 7-9.
Response to Arguments
Applicant's arguments filed 02/24/2026 have been fully considered but they are not persuasive.
Applicant argues that Xue is silent at least in delayed cracking and that the manufacturing method of Xue is substantially different from the method disclosed in the instant application at least in the coiling temperature: i.e., 400-500°C in Xue's method (see e.g., claim 10 of Xue) vs 600-650°C disclosed in the instant application (see paragraph [0044] of the instant application as published) (remarks, page 7). Applicant further argues that the steels of Comparative Examples 8 and 9 in Table 3 have element compositions and tempering temperatures falling within the claimed scopes but an elongation after fracture and stress level falling outside of the claimed scope (remarks, pages 7-8). Applicant argues that in view of Xue, one skilled artisan would not be able to obtain the steels with the claimed special microstructure and delayed cracking property, as now recited in claim 1, given the substantial different manufacturing method (remarks, page 8).
In response, Applicant is reminded that the claims are drawn to a product and not to a manufacturing method. Therefore, arguments regarding method differences need to convincingly argue that those method differences would result in a patentably distinct product. 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. In this case, since Xue teaches a steel with a chemical composition, microstructure, yield strength, tensile strength, elongation, and yield ratio overlapping with the claimed invention, as outlined above and shown in List 1, one of ordinary skill in the art would reasonably expect the steel of Xue to necessarily possess the claimed coherently distributed ϵ carbides and “no delayed cracking” despite not being explicitly disclosed by Xue, as outlined in the 35 U.S.C. 103 rejection in this Office action.
Furthermore, it is unclear from the instant disclosure how one arrives at the claimed “no delayed cracking” property as claimed in view of the 112(a) and 112(b) rejections in this Office action. It is unclear what the difference in either composition or processing is between the steel of Xue and the instant invention that would result in the steel of Xue not possessing the claimed “no delayed cracking”. For example, Applicant argues that Xue has coiling differences with the instant invention, but Comparative Examples 8 and 9 have coiling temperatures of 610°C and 580°C respectively and do not obtain the claimed “no delayed cracking”. The instant specification recites coiling at 600-650°C (page 7, line 25). Comparative Example 8 is within this coiling temperature range and does not obtain the claimed “no delayed cracking”. Therefore, the argument that the steel of Xue does not possess the “no delayed cracking” property because of coiling differences is not persuasive since coiling temperatures within those of the instant invention do not secure the claimed “no delayed cracking” as shown by Applicant’s Comparative Example 8.
Absent any clear and convincing evidence and/or arguments to the contrary, one of ordinary skill in the art would expect the steel of Xue to possess the claimed properties. 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.
Conclusion
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/M.A./Examiner, Art Unit 1733
/REBECCA JANSSEN/Primary Examiner, Art Unit 1733
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