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 .
Election/Restrictions
Applicant’s election with traverse of Group I, claims 16-24 and 29 in the reply filed on 9/2/25 is acknowledged. Applicant states that claim 25 has been amended and now all claims as presented have unity based on the microstructure recited in claim 16.
Claims 16 and 25 require common technical features of recited steel composition and microstructure. Examiner notes that limitations relating to processing steps of hot forging and two-step cooling (claim 25) are not common technical features. Matsuda et al. (US 2011/0146852) discloses the common technical features of steel composition comprising the respective amounts of C, Mn, Si, Cr, Ni and other elements that overlap with claimed ranges ([0020-0028], Table 1) and a microstructure of the steel comprising auto-tempered martensite, martensite as well as residual austenite [0055-0056, 0062], which falls within the claimed range. Accordingly, these features are not special technical features as they do not make a contribution over the prior art. Accordingly, the groups fail to form a single general inventive concept and unity of invention is lacking. The restriction requirement is still deemed proper and is therefore made FINAL.
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 16-24 and 29 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.
With respect to claim 16, the recited limitations 55 to 85% martensite, 20% to 45% auto-tempered martensite, wherein a cumulative amount of auto-tempered martensite and martensite is at least 90% are ambiguous because the amounts appear to be inconsistent and do not add up in the total. For instance, if one selects 20% (minimum endpoint) auto-tempered martensite then selecting 85% martensite would bring the total to 105 (20 + 85), which is over 100%. The recited conflicting language fails to clearly set forth the scope, rendering the claim indefinite. According to Applicant’s original specification, a minimum of 55% martensite is required to achieve a tensile strength of 1300 MPa [0029] and so minimum endpoint of 55% is necessary. It appears that changing the maximum endpoint to 80% would resolve the issue. For purpose of examination and in accordance with broadest reasonable interpretation consistent with the specification, the claim is taken to mean: 55% to 80% martensite. Appropriate correction is requested.
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.
Claims 16-22, 24 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuda et al. (US 2011/0146852).
Regarding claim 16, Matsuda discloses a high-strength steel composition comprising the following by mass: 0.17-0.73% C, Si ≤ 3.0%, 0.5-3% Mn, 0.05-5.0% Cr, 0.05-2.0% Ni, P < 0.1%, with optional elements (e.g. Al ≤ 3.0%,) and the remainder of the composition being iron and unavoidable impurities [0020-0028], which overlaps with recited ranges of respective elements as shown in the table below. Examiner notes that optional elements are not required. Matsuda discloses optional element Al 3.0% or less [0026] and Ti in range of 0.01-0.1% [0037], which also falls within the claimed ranges.
Claim 16
Prior art
Element
mass%
US 2011/0146852
Overlap
C
0.04-0.28
0.17-0.73 [0021]
0.17-0.28
Mn
1.2-2.2
0.5-3.0 [0023]
1.2-2.2
Si
0.3-1.2
< 3.0 [0022]
0.3-1.2
Cr
0.5-1.5
0.05-5.0 [0032]
0.5-1.5
Ni
0.01-1.0
0.05-2.0 [0042]
0.05-1.0
S
0-0.06
< 0.07 [0025]
0-0.06
P
0-0.02
< 0.1 [0034]
0-0.02
N
0-0.015
< 0.01 [0027]
0-0.01
Concerning the microstructure of the steel, Matsuda discloses up to 90% area being martensite [0054] with a tempered (auto-tempered) martensite area fraction being 25% or more of the martensite, wherein the auto-tempered martensite is characterized by fine carbide precipitates in the martensite [0055]. The remainder area ratio comprises 5% or more residual austenite and 5% or more bainitic ferrite [0056] and [0062]. For instance, exemplary microstructure can be 22.5% (25% of 90) auto-tempered martensite, 67.5% martensite, 5% residual austenite and 5% bainitic/ferrite, which meet the recited ranges with a cumulative amount of auto-tempered martensite & martensite being at least 90%. It is also noted that bainite or ferrite phase is not excluded from the present claim; applicant’s specification discloses providing bainitic steel [0007-0008]. The microstructure phase area fractions taught by Matsuda overlap with claimed area fractions. 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 Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), MPEP 2144.05.
As to claim 17, Matsuda discloses preferably less than 2.2% Si [0072], which overlaps with the claimed range.
As to claim 18, Matsuda discloses 0.17-0.73% carbon [0071].
As to claim 19, Matsuda discloses 0.17-0.73% carbon [0071].
As to claim 20, Matsuda discloses 0.005% Al [0078].
As to claim 21, Matsuda discloses 0.05-5.0% Cr [0032].
As to claim 22, Matsuda discloses 67.5% martensite content.
As to claim 24, in several examples, Matsuda disclose the steel having tensile strength of more than 1300 MPa (Table 3 samples no. 17-28) and the impact toughness is also equal to or greater than 38 J/cm2 due to at least 20% tempered martensite in the overall microstructure.
As to claim 29, Matsuda discloses high-strength steel sheet useful for automobile parts [0002, 0020]. Rejection of claim 16 above is incorporated herein regarding steel composition and microstructure. Examiner also notes that “for the manufacture of structural or safety parts of a vehicle” is an intended use.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Matsuda as applied to claim 16 above, and in view of Kohsaka et al. (WO 2016/103534 A1, see attached document, hereafter “Kohsaka”).
As to claim 23, Matsuda discloses 90% martensite, which is very close to claimed 95%. The claim would have been obvious since it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985), MPEP 2144.05. Nonetheless, Kohsaka is also directed to steel sheet composition comprising martensite and auto-tempered martensite (abstract). Kohsaka teaches an area ratio of martensite being 50% or more, including up to 100% (this encompasses at least 95%) to obtain high tensile strength since martensite is a hard phase that contributes to strengthening of the steel (see [0037]). Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have at least 95% cumulative amount of auto-tempered martensite & martensite phase in Matsuda with the motivation to tailor to desired properties such as tensile strength, ductility and/or workability of the steel.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 9/8/25, 5/27/25, 4/10/23 complies with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVANG R PATEL whose telephone number is (571) 270-3636. The examiner can normally be reached on Monday-Friday 8am-5pm, EST.
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/DEVANG R PATEL/
Primary Examiner, AU 1735