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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/05/2026 has been entered.
Status of Claims
Claims 1, 6, 11, and 13-14 are amended. Claims 3, 7, 12, 15-18 and 20 are cancelled. Claims 1-2 and 4-5 are withdrawn. Claims 6, 8-11, 13-14, 19 and 21-26 are examined herein.
Status of Previous Rejections
The rejections of Claims 6, 8-11, 13-14, 19, and 21-26 under 35 U.S.C. 103 as being unpatentable over Han (CN 106906421A) as evidenced by CN’453 (CN 107794453A) are maintained.
Claim Rejections - 35 USC § 112
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 the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 6, 8-11, 13-14, 19 and 21-26 are 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. The applicants amended independent claims 6, 11, 13 and 14 by deleting “inevitable impurities” from the steel composition. The instant Specification discloses that there are inevitable impurities in the invented steel (See Page 3, Ln 16; Page 5, Ln 3; Page 6, Ln 15; Examples 1-6). There is no disclosure that a process is conducted to remove impurities from the disclosed steel. Therefore, the amended feature has new matter issue. Appropriate correction is required. For this examination, the amended feature is not given patentable weight.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 6, 8-11, 13-14, 19, and 21-26 are rejected under 35 U.S.C. 103 as being unpatentable over Han (CN 106906421A), as evidenced by CN’453 (CN 107794453A).
Regarding claims 6, 8-9, 11, 13-14, 19, and 21-26, Han teaches a hot stamping part containing by mass%: 0.1-0.3% C, 7-12% Mn, 0.01-3% Al, 0.1-1.5% Si, ≤1% V and ≤0.5% Nb ( [0005] to [0025]), which overlap the recited composition ranges in the instant claims and it would be obvious to one of ordinary skill in the art to have chosen the amount of each element based on the composition ranges disclosed by Han to make a steel that meets the recited composition in the instant claims. See MPEP 2144.05 I. Han discloses that the steel part has a yield strength of 834 MPa or greater (Table 3), which meets the yield strength limitation.
Han discloses an example containing 0.19 mass% C, 0.5 mass% Si, 10.3 mass% Mn, 1.5 mass% Al, 0.3 mass% V and 0 mass% Nb (Table 1, Sample “C”), which meets the recited amount of C, Mn, Si, V, Nb and Fe in the instant claims. The example contains Al that is less than the recited amount of Al. However, Han discloses that Al has an effect of improving steel ductility and welding property and can be added in the amount of 0.01-3 mass% ([0019]). One of ordinary skill in the art would be motivated to increase the Al amount to up to 3 mass% in Sample “C” in order to further improve ductility and welding property as disclosed by Han. Han discloses that Sample “C” has yield strength of 915 MPa, tensile strength of 1790 MPa, and elongation of 10.5 % (Table 3), and Fu/Fy=1790/910=1.96, which meets the property limitations recited in claim 9.
Han does not teach that the steel part is bar-shaped. However, change in shape is a prima facie case of obviousness over Han. See MPEP 2144.04 IV.
Han does not teach the process limitation recited in claims 1-2 and 4-5. However, the limitations recited in claims 1-2 and 4-5 are process limitations in the product-by-process claim. “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.” See MPEP 2113 [R-9]. Since Han teaches a steel that meets the composition and property limitations recited in claims 6, 8-9, 11, 13-14, 19, and 21-26, claims 6, 8-9, 11, 13-14, 19, and 21-26 are obvious over Han.
Han discloses that the steel consists of 0.1-0.3% C, 7-12% Mn, 0.01-3% Al, 0.1-1.5% Si, 0.005-0.01 wt% N, ≤0.02 wt% P (impurity), ≤ 0.02 wt% S (impurity) and at least one of ≤0.5 wt% Nb, ≤ 1wt% V and ≤ 0.5 wt% Ti ([0030] to [0034]). Even though Han discloses the benefit of 0.005-0.01 wt% N in the steel, the amount of N disclosed by Han meet the inevitable impurity limitation recited in claims 6, 11, 13 and 14 as evidenced by CN’453. CN’453 discloses a steel having composition overlapping the composition of Han. CN’453 discloses that ≤ 0.2 wt% N is considered an unavoidable impurity in the steel ([0011]). Thus, the steel composition disclosed by Han meets the transitional phrase “consists of” recited in claims 6, 11, 13 and 14.
Regarding claim 10, Han discloses that the hot stamping part has a dual phase structure of martensite and austenite (Abstract), which meets the structure limitation recited in claim 10.
Response to Arguments
Applicant's arguments filed 12/04/2025 have been fully considered but they are not persuasive.
The applicants argued that Han '421 fails to disclose or suggest a steel bar as claimed, including only C, Mn, Al, Si, V, Nb, and Fc. Han '421 teaches that nitrogen (N) is present in an amount of 0.005% to 0.010%, and its inclusion is integral to the "technical solution" presented in Han '421 in order to be present to combine with Al (see the last five lines of Han '421 paragraph [0022]). N is plainly an important component in the Han '421 composition. Further, because Han '421 teaches that the inclusion of N is critical to its "technical solution", a person of ordinary skill in the art would not have had any reason to modify the Han '421 composition to arrive at the claimed steel bar.
In response, the instant Specification discloses that there are inevitable impurities in the invented steel (See Page 3, Ln 16; Page 5, Ln 3; Page 6, Ln 15; Examples 1-6). There is no disclosure that a process is conducted to remove impurities from the disclosed steel. Therefore, the amended feature has new matter issue and is not given patentable weight.
Even though Han discloses the benefit of 0.005-0.01 wt% N in the steel, the amount of N disclosed by Han meet the inevitable impurity limitation disclosed in instant Specification as evidenced by CN’453. CN’453 discloses a steel having composition overlapping the composition of Han. CN’453 discloses that ≤ 0.2 wt% N is considered an unavoidable impurity in the steel ([0011]). Thus, the steel composition disclosed by Han meets the transitional phrase “consists of” recited in claims 6, 11, 13 and 14.
Conclusion
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/XIAOWEI SU/Primary Examiner, Art Unit 1733