DETAILED ACTION
Claims 13-32 are pending, and claims 13-17, 19-22, and 25-32 are currently under review.
Claims 1-12 are cancelled.
Claims 18 and 23-24 are withdrawn.
Claims 25-32 are newly added.
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 .
Response to Amendment
The amendment filed 5/26/2026 has been entered. Claims 13-24 and newly submitted claim(s) 25-32 remain(s) pending in the application.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 27 and 31 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. Claims 27 and 31 recite a B range of 0.0005 to 0.32 weight percent, which is indefinite because these claims are dependent upon independent claim 13 which recites a narrower B range. Therefore, it is unclear whether these claims are meant to further broaden the B range of independent claim 13 or not.
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.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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.
Claims 27 and 31 are 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. Claims 27 and 31 recite a B range of 0.0005 to 0.32 weight percent. However, these claims depend from independent claim 13, which already recites a narrower B range of 0.0005 to 0.005 weight percent. Therefore, claims 27 and 31 fail to further limit the scope of independent claim 13. 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
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 13-16, 19-22, 25-27, 29-30, and 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Magar et al. (WO2018055425).
Regarding claim 13, Magar et al. discloses a cold rolled, annealed, and tempered steel having a yield strength of at least 1100 MPa [abstract, p.1, 12]; wherein said steel has a composition as seen in table 1 below [p.2-3]. Magar et al. further teaches a microstructure of 10 to 50 percent retained austenite, up to 8 percent fresh martensite, and a balance of tempered martensite [p.2-3]. The examiner notes that the overlap between the steel composition and microstructure of Magar et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I). Magar et al. also discloses controlling Mn in the retained austenite to be 0.5Mn to 1.3Mn of the total steel and controlling C in the retained austenite to be 0.4 to 1 weight percent [p.2]. Although Magar et al. does not expressly teach a relationship between Mn in retained austenite and C in retained austenite as claimed, the examiner notes that the disclosed ranges of Magar et al. above still overlap with the claimed relationship which is prima facie obvious. See MPEP 2144.05(I).
Table 1.
Element (wt.%)
Claim 13 (wt.%)
Magar et al. (wt.%)
C
0.03 – 0.18
0.1 – 0.4
Mn
6 – 11
3.5 – 8
Mo
0.05 – 0.5
0.001 – 0.5
B
0.0005 – 0.005
0.0005 – 0.003
S
0 – 0.01
0 – 0.01
P
0 – 0.02
0 – 0.02
N
0 – 0.008
0 – 0.08
Al (optional)
0 – 3
0.003 – 3
Si (optional)
0 – 1.2
0.5 – 2.5
Ti (optional)
0 – 0.05
0.01 – 0.08
Nb (optional)
0 – 0.05
0.01 – 0.08
Cr (optional)
0 – 0.5
0.01 – 2
V (optional)
0 – 0.2
0.01 – 0.3
Fe & Impurities
Balance
Balance
Regarding claims 14-16, 21-22, 25-27, and 29-30, Magar et al. discloses the steel of claim 13 (see previous). The examiner notes that the aforementioned composition of Magar et al. further overlaps with the claimed ranges. See MPEP 2144.05(I). Although Magar et al. does not expressly teach an LME index or carbon equivalent as claimed, the examiner notes that these formulas merely further narrow the claimed C, Si, Cr, Mn, Al, P, B, and Mo amounts, which still overlaps with the disclosed ranges of Magar et al.
Regarding claims 19-20 and 32, Magar et al. discloses the steel of claim 13 (see previous). Magar et al. further teaches obtaining a tensile strength of at least 1300 MPa, uniform elongation of at least 10%, and total elongation of at least 13%, which overlaps with the claimed ranges and product ranges [p.1]. See MPEP 2144.05(I).
Claim(s) 13-17, 21-22, and 25-31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jung et al. (WO2019123240) in view of Magar et al. (WO2018055425).
Regarding claim 13, Jung et al. discloses a cold rolled, annealed, and tempered steel having yield strengths of at least 1000 MPa [abstract, p.4-5, tables 4-5]; wherein said steel has a composition as seen in table 2 below [p.5-6]. Jung et al. further teaches a microstructure of 8 to 50 percent retained austenite, up to 80 percent ferrite having a grain size of up to 1.5 micrometers, and a remainder of martensite which is further tempered (ie. tempered martensite) [p.5-6]. Jung et al. alternatively also further teaches limiting fresh martensite to be at most 8 percent [p.7]. The examiner notes that the overlap between the steel composition and microstructure of Jung et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I). Although the specific examples of Jung et al. are not particularly relied upon in the instant rejections, the examiner submits that one of ordinary skill would readily understand that the disclosure of Jung et al. suggests a desirable and achievable range of yield strengths which meets the instantly claimed range.
Jung et al. does not expressly teach an amount of Mn and C in retained austenite as claimed. Magar et al. discloses that it is known to control Mn and C in retained austenite to be 1.3Mn of the total steel and 0.4 to 1 weight percent, respectively, in order to desirably control microstructure formation and steel properties [p.2, 11-13]. Therefore, it would have been obvious to one of ordinary skill to modify the disclosure of Jung et al. by controlling Mn and C contents in retained austenite for the aforementioned benefit disclosed by Magar et al. Although Magar et al. does not expressly teach a relationship between Mn in retained austenite and C in retained austenite as claimed, the examiner notes that the disclosed ranges of Magar et al. above still overlap with the claimed relationship which is prima facie obvious. See MPEP 2144.05(I).
Table 2.
Element (wt.%)
Claim 13 (wt.%)
Jung et al. (wt.%)
C
0.03 – 0.18
0.1 – 0.4
Mn
6 – 11
3.5 – 8
Mo
0.05 – 0.5
0 – 0.5
B
0.0005 – 0.005
0 – 0.004
S
0 – 0.01
0 – 0.003
P
0 – 0.02
0 – 0.015
N
0 – 0.008
0.002 – 0.013
Al (optional)
0 – 3
0 – 3
Si (optional)
0 – 1.2
0.1 – 1.5
Ti (optional)
0 – 0.05
0 – 0.1
Nb (optional)
0 – 0.05
0 – 0.1
Cr (optional)
0 – 0.5
0 – 1
V (optional)
0 – 0.2
0 – 0.2
Fe & Impurities
Balance
Balance
Regarding claims 14-16, 21-22, and 25-31, Jung et al. discloses the steel of claim 13 (see previous). The examiner notes that the aforementioned composition of Jung et al. and Magar et al. further overlaps with the claimed ranges. See MPEP 2144.05(I). Although Jung et al. does not expressly teach an LME index or carbon equivalent as claimed, the examiner notes that these formulas merely further narrow the claimed C, Si, Cr, Mn, Al, P, B, and Mo amounts, which still overlaps with the disclosed ranges of Jung et al.
Regarding claim 17, Jung et al. discloses the steel of claim 13 (see previous). The examiner notes that the aforementioned microstructure of Jung et al. further overlaps with the claimed ranges. See MPEP 2144.05(I).
Response to Arguments
The previous double patenting rejections are withdrawn in view of the terminal disclaimer filed 5/26/2026.
The previous 103 rejections over Xu et al. alone and Jung et al. alone have been withdrawn in view of applicant’s remarks.
The previous 103 rejections of claims 19-20 over Jung et al. have been withdrawn in view of applicant’s remarks.
Applicant's arguments filed 5/26/2026 regarding the 103 rejections over Magar et al. have been fully considered but they are not persuasive.
Applicant argues that Magar et al. does not teach the claimed ratio of C and Mn in austenite and further teaches that this feature would not have naturally flowed from Magar et al. in view of the comparative examples of the instant specification. In response, the examiner notes these points were never alleged in the previous rejections. Rather, the disclosure of Magar et al. overlaps with the claimed ratio, which is prima facie obvious. See MPEP 2144.05(I). Specifically, the claimed ratio merely recites an arbitrary value of a relationship between C in austenite, M in austenite, total C in the steel, and total Mn in the steel. Magar et al. already discloses values of C in austenite, M in austenite, total C in the steel, and total Mn in the steel which would result in an overlapping ratio relative to that as claimed. The mere fact that applicant chooses to recite an arbitrary ratio as recited in claim 1 does not make the claimed ranges patentable over the overlapping ranges of the prior art absent concrete evidence to the contrary, which applicant has not provided.
Applicant’s remarks regarding B and Si as they relate to the claimed ratio are unclear as these points were never relied upon or alleged in the previous rejections.
Applicant's arguments filed 5/26/2026 regarding the 103 rejections over Jung et al. in view of Magar et al. have been fully considered but they are not persuasive.
Applicant argues that MPEP 2112 requires comparison to a single reference, and further argues that the claimed features would not have naturally flowed from the disclosure of Jung et al. evidenced by Magar et al. The examiner cannot concur. Firstly, MPEP 2112 does not require comparison to a single reference. MPEP 2112 states that inherency requires showing that “the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art.” Indeed MPEP 2112 never requires a single reference or even makes mention of the number of references as a pertinent factor. Rather, determination of inherency merely depends on whether the claimed feature would be the natural result of the combination of elements in the prior art. Applicant’s reliance on the case law in p.12-13 of the remarks are further moot because these cases are not cited as precedent in the MPEP and furthermore these cases do not specifically pertain to a number of references used in the rejection. Nonetheless, the examiner notes that the previous rejection over Jung et al. and Magar et al. is not based on inherency as stated above. Rather, Magar et al. discloses controlling C and Mn amounts which overlap with the claimed range and is prima facie obvious, and Magar et al. further provides express motivation to control these C and Mn amounts such that modification of Jung et al. with Magar et al. would have been obvious.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS A WANG whose telephone number is (408)918-7576. The examiner can normally be reached usually M-Th: 7-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 5712721177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734
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