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 .
DETAILED ACTION
Status of Claims
In the response filed 4 January 2026, no changes are made to the claims. Claims 1-8,11, and 16 are currently under examination. Claims 12-15 and 17-18 are withdrawn.
Status of Previous Rejections
Responsive to the amendment filed 4 January 2026, the rejections over Pipard are maintained.
Drawings
The drawings were received on 26 February 2023. These drawings are accepted.
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claim(s) 1-7, and 16 is/are rejected under 35 U.S.C. 102((a)(1) and (a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 20170183753 A1 (hereinafter “Pipard”).
Regarding claim 1, Pipard teaches a steel having a desired hardening and hole expansion ratio (See BRIEF SUMARY). Pipard teaches that the steel has a precipitated titanium carbide, and that the steel does not have surface defects (BRIEF SUMMARY). Pipard teaches that the steel is a 780 MPa grade with elongation at greater than 10% and a hole expansion of greater than 45% ([0017]). Pipard teaches a general composition for the steel, which overlaps the claimed composition ([0018]-[0040]).
Pipard teaches examples of the steel (see TABLES 1 thru 4 and Fig 1). Pipard teaches that a steel 8 includes a composition as claimed (TABLE 2a). The composition of the steel of Pipard is compared with the claimed composition in the chart below (all value in mass percent).
Element
Claim 1
Pipard (broad alloy)
Pipard Example 8
C
Si
Mn
P
S
Al
N
Ti
Mo
Mg
O
Fe/impurity
0.03-0.08
≤0.2
0.5-2.0
≤0.02
≤0.003
0.01-0.08
≤0.004
0.05-0.20
0.1-0.5
≤0.005
≤0.0030
balance
0.04-0.08
0.1-0.3
1.2-1.9
≤0.02
≤0.004
0.005-0.1
0.002-0.01
0.07-0.125
0.05-0.35
--
--
balance
0.06
0.2
1.5
0.017
0.001
0.05
0.003
0.098
0.15
--
--
balance
The lack of a disclosure of Mg or O reads on essentially zero of these elements, and is considered to meet the limitations therefore. All of the composition of Pipard Example 8 falls in the ranges as claimed, anticipating the entire ranges. Applicant is directed to MPEP 2131.03. In the alternative, the exclusion of impurity elements by itself is considered to be prima facie obvious to the skilled artisan. Pure materials are novel vis-à-vis less pure or impure materials because there is a difference between pure and impure materials. Therefore, the issue is whether claims to a pure material are nonobvious over the prior art. In re Bergstrom, 427 F.2d 1394, 166 USPQ 256 (CCPA 1970). Purer forms of known products may be patentable, but the mere purity of a product, by itself, does not render the product nonobvious.
Pipard teaches that the steel has a bainitic microstructure (see [0147]-[0151]). Pipard teaches that the steel has titanium carbide precipitated therein (see [0012], [0152]-[0160]). This is considered to meet the limitation wherein the carbides are precipitated in the bainitic ferrite.
Pipard describes mechanical properties of the steel in TABLE 2b. Pipard teaches that the Example 8 has a yield of 787 MPa, a tensile strength of 818 MPa, elongation of 15.2%, and a hole expansion of 71%. The properties of the steel all fall in the claimed ranges, and anticipate the entire ranges.
Regarding wherein the carbides are “nano-scale” carbides, Pipard does not teach this feature. Pipard does not teach any size of the carbides which are precipitated. Pipard teaches that the steel is processed in such a way that the desired titanium-containing precipitates are reduced in size in order to achieve good hole expansion (see [0178]-[0180]). Pipard teaches that after the rolling and coiling operations, the steel is reheated for coiling and pickling to 550-750 ([0181]-[0191]).
The feature of the precipitates being “nano-scale” is not described by Pipard. The features not taught by the prior art would have been present in the steel Example 8 inherently. The steel sheet of Pipard, having the same composition as claimed, the same bainitic microstructure as claimed, the same tensile strength, yield strength, elongation and hole expansion properties as claimed, and having titanium carbides precipitated therein, would have had this same feature of the precipitated titanium carbide being “nano-scale” as well. Applicant is directed to MPEP 2112.01. In the alternative, even if the titanium carbides are not nano-scale, the size of these precipitates is not considered to distinguish patentably over Pipard. The steel having the same composition, microstructure, and all mechanical properties as claimed, is for all practical purposes the same steel. The skilled artisan would have noticed no functional difference where all mechanical properties and composition are the same.
Regarding claim 2, Example 8 includes 0.28% Cr (TABLE 2a).
Regarding claim 3, Example 8 includes 0.06% C (TABLE 2a).
Regarding claim 4, Example 8 includes 0.001% S (TABLE 2a).
Regarding claim 5, Example 8 includes 1.5% Mn (TABLE 2a).
Regarding claim 6, Example 8 includes 0.05% Al (TABLE 2a).
Regarding claim 7, Example 8 includes 0.098% Ti (TABLE 2a).
Regarding claim 16, Example 8 includes 0.28% Cr, 0.0% Nb, and none of the other elements (TABLE 2a).
Claim(s) 8 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pipard.
Regarding claim 8, Pipard does not teach an example having all of the features as claimed. Example 8 of Pipard include Mo at 0.15% (TABLE 2a). However Pipard teaches that a functional range of Mo includes 0.05-0.35% (BRIEF SUMMARY) it would have been an obvious matter to one of ordinary skill in the art at time of filing to have increased the Mo content of Example 8 of Pipard, because Pipard teaches that a functional amount of the element in the steel is 0.05-0.35% (BRIEF SUMMARY).
Regarding claim 11, Pipard teaches that the Example 8 has a yield of 787 MPa, a tensile strength of 818 MPa, elongation of 15.2% (TABLE 2b). these values all fall in the claimed range and establish a prima facie case of obviousness. Pipard teaches that the Example 8 has a hole expansion of 71%, which does not fall in the claimed range.
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). In the instant case the property of the prior art is considered to be close enough to the claimed range that the differences are not patentable. Applicant is directed to MPEP 2144.05. In the alternative, Pipard teaches a hole expansion is 70% or more (see BRIEF SUMMARY). The optimization of the hole expansion through the means taught by Pipard would have been a prima facie obvious matter to the skilled artisan.
Response to Arguments
Applicant's arguments filed 4 January 2026 have been fully considered but they are not persuasive.
In the Remarks, applicant argues “it is well known in the art that granular bainite is a composite structure composed of large or strip-shaped ferrite matrix and carbon rich austenite islands, belonging to a typical category of carbide free bainite” (Remarks, p. 8). This argument is considered but is not persuasive because it is not commensurate in scope with the teachings of the prior art. Pipard makes clear that the granular bainite is not the same a supper or lower bainite – thus it is not the structure which applicant describes. Pipard makes reference to an article (hereinafter “Zajac”) from Materials Science Forum from 2004. For convenience, this article is cited in this Office action. The relevant article describes granular bainite as also being called “quasi-polygonal ferrite” (p. 388). While the Zajac document does disclose that the ferrite is free from carbides (p. 389), Zajac makes clear that the carbides referred to are from the “carbon that is partitioned,” which will go to the austenite island and possibly generate other transformation structures. Thus the skilled artisan understands that the reference made about carbides is for transformational structures (such as cementite) during the cooling from austenite, rather than being a description of precipitate structures.
Applicant then continues at p. 8 of the Remarks, arguing that “according to the definition of “granular bainite,”” the titanium carbide in Pipard’s steel cannot precipitate in either of austenite or ferrite. Applicant argues that therefore the titanium carbides must have precipitated in the lower bainite or martensite. This argument has been carefully considered, but it is not persuasive because the argument is not commensurate in scope with the prior art. The cited portion of Pipard, which distinguishes the granular bainite from other (lath) bainites, in no way describes that precipitates cannot form. There is no discussion that precipitation cannot take place in the bainitic ferrite grains within the granular bainite. The features which applicant argues are “well known” in the art would seem to be in dispute. It is noted further that Pipard does not disclose that the carbide precipitation is a common, coarse carbide, but rather Pipard instead remarks that the titanium carbide precipitation is a novel aspect of the invention (SUMMARY). The entire thrust of Pipard is to cool at a lower temperature in order to control the titanium based precipitates specifically, in order to provide “maximum hardness” (Summary). Pipard does not make reference to a transformation structure being the location of the precipitation. The thrust of Pipard would seem to be that a novel precipitate was generated rather than a common one.
Although Pipard does not disclose the size of the precipitates, Pipard generates a steel Example 8 having the same composition as claimed, the same microstructure as claimed and the same mechanical properties (yield, tensile, elongation and HER) as claimed, in which one of the novel features is the precipitation of titanium carbide in the steel. In the alternative, the mere size of the titanium carbide precipitates being “nano-scale” is not considered to make a meaningful difference in the steels, where the steel has the same composition as claimed, the same microstructure as claimed and the same mechanical properties (yield, tensile, elongation and HER) as claimed. If the steel of applicant’s claim is distinct over that of Pipard, it is not clear why there would be a patentable distinction. Similarly, even though the location of the carbide precipitates be in dispute, this also would not seem to be a materially important difference for reasons stated above.
Applicant’s arguments fail to distinguish the steel over that of Pipard. For these reasons, the rejection is maintained.
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 CHRISTOPHER S KESSLER whose telephone number is (571)272-6510. The examiner can normally be reached 9-5:30.
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CHRISTOPHER S. KESSLER
Primary Examiner
Art Unit 1734
/CHRISTOPHER S KESSLER/Examiner, Art Unit 1759
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