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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/31/2026 has been entered.
Response to Amendment
The Amendment filed 05/31/2026 has been entered. Claims 1-20 remain pending in the application. Claims 7-20 have been withdrawn due to a restriction requirement. Claims 1 and 7 are currently amended. Claims 1-6 are presented for examination on the merits.
Claim Interpretation
Regarding claim 1, the terms “comprising” and “contains” are interpreted as open-ended. The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See MPEP 2111.03. In this case, the claimed chemical composition and microstructure are interpreted as not excluding additional, unrecited elements. The claimed microstructure is therefore not limited only to bainite and ferrite since claim 1 recites “a microstructure of the steel plate contains bainite and ferrite”. The claimed microstructure further contains pearlite and/or martensite in claim 4 and is further not limited only to bainite and ferrite.
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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over CN 104513930 A of Zhang (as cited in prior Office action and in IDS mailed 01/20/2023, with reference to English machine translation).
Regarding claims 1-6, Zhang teaches ultra-high strength hot-rolled multiphase steel plates and strips with good bending and hole expansion properties (Abstract, reads on claimed steel plate). Zhang teaches the steel can be used to manufacture products such as automobile chassis, suspension parts, and bumpers. One of ordinary skill in the arts understands a torsion beam is a structural part used in the automotive industry, including in chassis and suspension parts.
Zhang therefore reads on the limitation steel plate for a torsion beam of claim 1.
Additionally, the limitation “for a torsion beam” has been given little patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). In the instant case, the preamble merely recites the intended use of the composition, i.e. for a torsion beam, wherein the prior art can meet this future limitation by merely being capable of such intended use.
List 1
Instant claims (mass%)
Zhang - Steel H-1 (wt%)
Zhang – Broader disclosure (wt%)
C
0.04-0.085
0.09
0.07-0.14
Si
0.02-0.5
0.39
0.1-0.4
Mn
1.3-1.8
1.51
1.55-2.00
Cr
0.15-0.5
0.19
0.15-0.5 (at least one of Cr and Mo)
Mo
0.12-0.30
0.20
0.15-0.5 (at least one of Cr and Mo)
Nb
0.01-0.058
-
≤ 0.07 (at least one from Nb, Ti, V)
V
0.01-0.15
0.16
0.10-0.20 (at least one from Nb, Ti, V)
Ti
≤ 0.02
0.021
0.02-0.15 (at least one from Nb, Ti, V)
Al
0.02-0.1
0.026
0.01-0.05
P
≤ 0.02
0.011
≤ 0.015
S
≤ 0.005
0.002
≤ 0.004
N
≤ 0.005
0.002
≤ 0.005
Fe and inevitable impurities
Balance
Remainder
Remainder (“and unavoidable impurities”)
2Nb+V
0.096-0.17
0.16 (calculated)
0-0.34
0.5Cr+Mo
0.3-0.55 (claim 2)
0.3 (calculated)
0.075-0.75
CEIIw
≤ 0.50 (claim 3)
0.45 (calculated)
0.39-0.71
Bainite + ferrite
≥ 90 vol%
> 95 vol% (claim 4)
Broader disclosure
At least 80% bainite
Bainite
55-85 vol%
Broader disclosure
At least 80%
Pearlite and/or martensite
≤ 10 vol% (implicit – claim 5)
Broader disclosure
“a small amount of ferrite, martensite and retained austenite”
Longitudinal yield strength
≥ 620 MPa (claim 6)
715 MPa
≥ 700 MPa
Tensile strength
≥ 760 MPa (claim 6)
805 MPa
≥ 800 MPa
A50 elongation
≥ 16% (claim 6)
19.5%
13.3-19.5% (Inventive examples in Table 2 including G-1 and H-1)
180° cold bending property R/T
≥ 1.05 (claim 6)
0a
0a
Zhang teaches a steel with a chemical composition (H-1 in Table 1, Abstract, [0012], [0017]-[0025]), microstructure ([0009]), yield strength (H-1 in Table 2, [0009]), tensile strength (H-1 in Table 2, [0009]), and A50 elongation (H-1 in Table 2; Inventive examples in Table 2 including G-1 and H-1) 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.
Zhang therefore reads on the limitation comprising the following chemical components in percentage by mass:0.04-0.085% of C, 0.02-0.5% of Si, 1.3-1.8% of Mn, 0.15-0.5% of Cr, 0.12-0.30% of Mo, 0.01-0.058 of Nb, 0.01-0.15% of V, 0.02% or less of Ti, 0.02-0.1% of Al, 0.02% or less of P, 0.005% or less of S, and 0.005% or less of N, the balance being Fe and inevitable impurities of claim 1, wherein a microstructure of the steel plate contains bainite and ferrite, and a volume fraction of the bainite is 55-85% of claim 1, wherein the microstructure of the steel plate further contains pearlite and/or martensite of claim 5, wherein the steel plate has a longitudinal yield strength of 620 MPa or more, a tensile strength of 760 MPa or more, an A50 elongation of 16% or more of claim 6.
Zhang further teaches a steel H-1 with a chemical composition, microstructure, yield strength, tensile strength, and A50 elongation lying with the claimed ranges with the exception of C, Nb, V, and Ti, as shown in List 1. Regarding the C, V, and Ti content, steel H-1 has 0.09% C, 0.16% V and 0.021% Ti, which is infinitesimally close to the claimed top value of 0.085% C, 0.15% V and 0.02% Ti respectively. 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.
Regarding the C, Nb, V, and Ti content of steel H-1 more broadly, Zhang teaches a carbon content of 0.07% to 0.14% to meet strength, elongation and porosity requirements ([0017]). Zhang teaches a broader disclosure with Nb ranges of ≤ 0.07 ([0012]) and inventive examples with 0.03, 0.065, and 0.046% Nb (Steels B, D, and G of Table 1). Zhang teaches a vanadium content of 0.10 to 0.20% to obtain a precipitation strengthening effect ([0023]). Zhang teaches a titanium content of 0.02 to 0.15% to obtain a grain refinement or precipitation strengthening effect and improves strength without reducing elongation and porosity ([0022]). Zhang further teaches adding Ti, Nb, and V produces a suitable amount of fine alloy carbides to strengthen the ferrite and bainite thereby obtaining good hole expansion and bending properties ([0041]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the C, Nb, V, and Ti compositions of steel H-1 of Zhang, such as within claimed ranges, to obtain desired strength, elongation, porosity, and strengthening effects, as taught by Zhang.
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.
While Zhang does not explicitly disclose values for 2Nb+V of claim 1, 0.5Cr+Mo of claim 2, and a carbon equivalent of claim 3, performing the calculations using the composition of Zhang results in values lying within or overlapping with the claimed ranges as shown in List 1. Regarding the 2Nb+V value of claim 1, the examiner notes that a modified steel H-1 with a Nb content of 0.01%, for example, and a V content of 0.1% would result in a 2Nb+V value of 0.12, which is within the claimed ranges and is within the broad ranges of Nb and V taught by Zhang. 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.
Zhang therefore reads on the limitation wherein the amount of Nb and V satisfies the following formula: 0.096% ≤ 2Nb+V ≤ 0.17% of claim 1, wherein the chemical components of the steel plate satisfy 0.3% ≤ 0.5Cr+Mo ≤ 0.55%, wherein the element symbols in the formula denote the weight percentage of the corresponding elements in the steel plate of claim 2, wherein the chemical components of the steel plate satisfy: a carbon equivalent CEIIw ≤ 0.50%, wherein CEIIw =%C+%Mn/6+%(Cr+Mo+V)/5+%(Ni+Cu)/15, wherein the element symbols in the formula denote the weight percentage of the corresponding elements in the steel plate of claim 3.
Regarding the total volume fraction of bainite and ferrite of claim 1, Zhang teaches the microstructure is at least 80% bainite and a small amount of ferrite, martensite and retained austenite, wherein the bainite is mainly lower bainite ([0009]). Zhang teaches coiling at a temperature of 430-550°C to obtain an appropriate amount of carbides increasing the strength and reducing the strength difference between bainite, small amount of ferrite, and small amount of martensite in the microstructure ([0011], [0032], [0039]). Given the overlapping chemical composition, bainite content, tensile strength, yield strength, elongation, and processing, one of ordinary skill in the art would reasonably expect the steel of Zhang to necessarily possess the claimed total volume fraction of bainite and ferrite despite not explicitly disclosing or measuring the amount of ferrite.
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 coiling steps 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).
One of ordinary skill in the art would reasonably expect the steel of Zhang to necessarily possess the claimed total volume fraction of bainite and ferrite despite not explicitly disclosing or measuring the amount of ferrite or total of bainite and ferrite since the steel of Zhang has overlapping chemical composition, bainite content, tensile strength, yield strength, elongation, and processing with the instant invention.
Zhang therefore reads on the limitation wherein a total volume fraction of the bainite and the ferrite is 90% or more of claim 1.
Zhang therefore reads on all the limitations of claims 1-5.
Regarding the cold bending property of claim 6, Zhang teaches the ultra-high strength hot-rolled multiphase steel with good bending properties and that has a 180° cold bending performance of 0a ([0009], [0044], reads on claimed 180° cold bending property). However, Zhang does not explicitly disclose a R/T of 1.05 or more.
Given the overlapping chemical composition, microstructure, tensile strength, yield strength, and elongation, one of ordinary skill in the art would reasonably expect the steel of Zhang to necessarily possess the claimed R/T of 1.05 or more despite not explicitly measuring or disclosing it.
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 b) the claimed and prior art products are identical or substantially identical in structure (see microstructure analysis above). 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).
One of ordinary skill in the art would reasonably expect the steel of Zhang to necessarily possess the claimed R/T of 1.05 or more despite not explicitly disclosing or measuring the R/T value since the steel of Zhang has overlapping chemical composition, microstructure, tensile strength, yield strength, and elongation with the instant invention.
Zhang therefore reads on the limitation 180° cold bending property R/T of 1.05 or more of claim 6.
Additionally, or alternatively, it is well known in the art that steels can have a variety of shapes, and consequently various radii and thicknesses, to form complex automotive structural parts such as automotive chassis, suspension parts, and others (as evidenced by Zhang, [0005]). Neither the instant claims nor the instant specification provide evidence as to why the radius and thickness of the claimed steel meeting an R/T value of 1.05 or more is significant. The change in configuration or shape of a device is obvious absent persuasive evidence that the particular configuration is significant (emphasis added). In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). It would have been obvious to one having ordinary skill in the art at the time of the invention to modify the shape of the steel of Zhang, such as to that of a beam which is well-known in the art as a structural part in the automotive industry, and adjusting the radius (R) and thickness (T) of the steel of Zhang, such as within the claimed R/T ranges, to meet the requirements of a particular structural part for the automotive industry.
Response to Arguments
Applicant's arguments filed 05/31/2026 have been fully considered but they are not persuasive.
Applicant argues that although Zhang broadly discloses that its steel may contain Nb and/or V, Zhang does not explicitly disclose that the contents of Nb and V should satisfy the relationship required by the present application, namely 0.096% 2Nb+V 0.17% (remarks, page 7). Applicant argues that Zhang does not provide any motivation to proportion Nb and V according to the relationship required by the present application, nor does Zhang recognize any cooperative effect between this relationship and the overall properties achieved by the present application (remarks, page 8).
In response, it is noted that Applicant agrees that Zhang broadly discloses its steel may contain Nb and/or V. Additionally, the instant claim is drawn to a steel plate and is therefore a product claim. The formula used in the instant invention is merely a description of the claimed steel’s composition. The steel of Zhang has a composition that overlaps with the claimed formula values of the instant invention, as described in this Office action and shown in List 1 herein. The use of terms, formulas or other descriptors do not serve to change the product itself, and in the instant case, do not serve to patentably distinguish the claimed steel. The steel of Zhang therefore reads on the claimed steel as presently claimed despite Zhang not describing its steel composition in terms of a formula as was done in the instant invention. The steels of Zhang and the instant invention themselves do not have different compositions even if the compositions are described differently. Finally, in response to applicant's argument that Zhang does not recognize any cooperative effect between Nb and V, 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, the steel of Zhang has a composition overlapping with that of the instant invention, as described in the 35 U.S.C. 103 rejections in this Office action and the “cooperative effect” would be achieved by the steel of Zhang whether or not the advantage is explicitly recognized by Zhang.
Applicant argues that none of the Example steels in Zhang contains both Nb and V. Zhang also does not teach that, by simultaneously containing specific amounts of Nb and V and making them satisfy the above relationship (remarks, pages 7-8).
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, Zhang's invention is not limited in scope to the specific examples in its tables. The properties and compositions in the tables are representative of what Zhang's steels can achieve and should not be construed as only attainable and tied to the specific alloy compositions because the full scope of Zhang's invention covers whole ranges of chemical alloying components and process parameters, including compositions that include both Nb and V simultaneously, as agreed by Applicant in page 7 of the remarks.
Applicant argues that it can be directly inferred that the ferrite volume fraction in claim 1 must be at least 5% (remarks, page 8). Applicant argues that Zhang does not disclose the specific bainite/ferrite proportion required by claim 1 and the specification of the present application expressly states that the above microstructural proportion of bainite and ferrite contributes to the strength and bending properties of the steel plate for a torsion beam (see paragraph [0037]) (remarks, page 9).
In response, Zhang explicitly teaches overlapping chemical composition, bainite content, tensile strength, yield strength, elongation, and processing with the instant invention. One of ordinary skill in the art would reasonably expect the steel of Zhang to necessarily possess the claimed total volume fraction of bainite and ferrite despite not explicitly disclosing or measuring the amount of ferrite or total of bainite and ferrite since the steel of Zhang has overlapping chemical composition, bainite content, tensile strength, yield strength, elongation, and processing with the instant invention. As argued by Applicant, the microstructural proportion contributes to the strength of the claimed steel plate, as described in the 35 U.S.C. 103 rejections in this Office action and summarized in List 1. Zhang explicitly teaches strengths overlapping with those of the claimed invention. Absent any clear and convincing evidence and/or arguments to the contrary, one of ordinary skill in the art would expect the steel of Zhang to possess the claimed total volume fraction of the bainite and ferrite since the steels of Zhang and the instant invention have overlapping chemical composition, bainite content, tensile strength, yield strength, elongation, and processing with the instant invention. 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 regarding the Office's position that, because Zhang and the present application are highly similar in composition and processing, Zhang may be presumed to have the same or substantially the same microstructure, Applicant respectfully submits that such a presumption is not sufficiently supported (remarks, pages 9-10). Applicant further argues differences in process conditions between Zhang and the present application (remarks, pages 10-12).
In response, absent any clear and convincing evidence and/or arguments to the contrary, one of ordinary skill in the art would expect the steel of Zhang to possess the claimed total volume fraction of the bainite and ferrite since the steels of Zhang and the instant invention have overlapping chemical composition, bainite content, tensile strength, yield strength, elongation, and processing with the instant invention. A prima facie case of obviousness has been properly established herein.
Regarding processing differences, Applicant is reminded that a prima facie case of obviousness is established when the products are identical or substantially identical in structure or composition, OR are produced by identical or substantially identical processes (emphasis added). In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). 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. In this case, the steel of Zhang is identical or substantially identical in structure or composition since the steel of Zhang has a chemical composition, bainite content, tensile strength, yield strength, and elongation overlapping with that of the claimed invention.
Furthermore, Applicant is reminded that the processing differences upon which applicant relies are not recited in the rejected claim(s) since the instant claims are drawn to a product. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). In this case, one of ordinary skill in the art understands that there are many possible processing pathways that may arrive at the same properties. The steel of Zhang has an identical or substantially identical structure or composition, as described in this Office action, despite any processing differences. A prima facie case of obviousness has been properly established herein. Absent any clear and convincing evidence and/or arguments to the contrary, one of ordinary skill in the art would expect the steel of Zhang to possess the claimed total volume fraction of the bainite and ferrite since the steels of Zhang and the instant invention have overlapping chemical composition, bainite content, tensile strength, yield strength, elongation, and processing with the instant invention.
Citation of Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
JP 2015/078394 A of Azuma (with reference to its English machine translation) is considered relevant to claims 1-6. Azuma teaches a steel sheet with a tensile strength of 780 MPa or more and a microstructure in which ferrite accounts for 20% or more by volume fraction and one or more types of martensite and bainite totaling 5 to 80% or less (Abstract, tensile strength and microstructure overlap with the claimed invention in an embodiment which only includes ferrite and bainite). Azuma teaches a chemical composition ([0057]-[0073]) overlapping with that of the claimed invention.
JP 2015/078395 A of Azuma (hereinafter JP’395, with reference to its English machine translation) is considered relevant to claims 1-6. JP’395 teaches a steel sheet with a tensile strength of 980 MPa or more, characterized in that the microstructure contains 20% or more ferrite as the main phase by volume fraction, and contains 5 to 80% or less in total of one or more of martensite and bainite as the second phase, and the retained austenite volume fraction is limited to less than 10% (Abstract, tensile strength and microstructure overlap with the claimed invention in an embodiment which only includes ferrite and bainite). JP’395 teaches a chemical composition ([0065]-[0081]) overlapping with that of the claimed invention.
Conclusion
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/M.A./Examiner, Art Unit 1733
/REBECCA JANSSEN/Primary Examiner, Art Unit 1733
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