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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 submissions filed on June 15, 2026 and July 13, 2026 have been entered.
Response to Amendment
Applicant’s amendment has been entered. Claims 1-2, 4-5, 7-10, and 13-24 are pending. Claims 3, 6, and 11-12 are cancelled. Claims 13-18, and 20-24 remain withdrawn from consideration.
Terminal Disclaimer
The terminal disclaimer filed on June 15, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent granted on Application Number 18/043,116 has been reviewed and is accepted. The terminal disclaimer has been recorded.
In view of the terminal disclaimer, the provisional non-statutory double patenting rejection over claims of copending application number 18/043,116 is herein withdrawn.
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) 1-2, 4-5, 7-10, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thiessen (US20190119774). Thiessen is cited in prior office action(s).
Regarding claims 1-2, 4-5, and 19, Thiessen discloses low carbon (0.05%-0.20% C abstract, [0016]), martensitic (not less than 90 area % of martensite [0041]) high hole expansion (“steel product of the invention, in the hole expanding test according to ISO 16630, regularly achieves hole expansion ratios of at least 30%” [0043]) steel (abstract, [0016], [0043]).
Thiessen discloses that the steel comprises a chemical composition based on weight percentage of amounts provided in the table below:
Element
Thiessen
Present Invention
C
[0016] 0.05%-0.20%
0.03-0.097% (claim 1)
0.03-0.06% (claim 2 option(1))
0.06-0.097% (claim 2 option(2))
0.04- 0.055% (one alternative condition of claim 5 option (1))
0.07-0.09% (one alternative condition of claim 5 option (2))
Si
[0017] 0.2%-1.5%
0.8-2.0% (claim 1)
0.8-2.0% (claim 2 options (1) and (2))
0.8-1.4% (one alternative condition of claim 5 option (1))
1.0-1.4% (one alternative condition of claim 5 option (2))
Mn
[0019] 1.0%-3.0%
1.0-2.0% (claim 1)
1.5-2.0% (claim 2 option (2))
1.4-1.8% (one alternative condition of claim 5 option (1))
1.6-1.9% (one alternative condition of claim 5 option (2))
P
[0020] up to 0.02%
≤
0.02
% (claim 1)
S
[0021] up to 0.005%
≤
0.003
% (claim 1)
0.0015% or lower (one alternative condition of claim 5 option (1))
0.0015% or lower (one alternative condition of claim 5 option (2))
Al
[0018] 0.01%-1.5%
0.02-0.08% (claim 1)
0.02-0.05% (one alternative condition of claim 5 option (1))
0.02-0.05% (one alternative condition of claim 5 option (2))
N
[0022] up to 0.008%
≤
0.004
% (claim 1)
0.003% or lower (one alternative condition of claim 5 option (1))
0.003% or lower (one alternative condition of claim 5 option (2))
Mo
[0025] 0.05%-0.2%
0.1-0.5% (claim 1)
0.15-0.35% (one alternative condition of claim 5 option (1))
0.15-0.35% (one alternative condition of claim 5 option (2))
Ti
[0026] 0.005%-0.2%
0.01-0.05% (claim 1)
0.01-0.03% (one alternative condition of claim 5 option (1))
0.01-0.03% (one alternative condition of claim 5 option (2))
O
—
≤
0.0030
% (claim 1)
Fe and Impurities
[0015] Balance (as well as)
Balance (claim 1)
Cr
[0024] Cr: 0.05%-1.0%
≤
0
.
5% (claim 4)
0.2-0.4% (claim 19) one of Cr, B, Ca, Nb, V, Cu, Ni
B
[0028] B: 0.0001%-0.005%
≤
0
.
002% (claim 4)
0.0005-0.0015% (claim 19) one of Cr, B, Ca, Nb, V, Cu, Ni
Ca
—
≤
0.0
05% (claim 4)
≤
0
.002% (claim 19) one of Cr, B, Ca, Nb, V, Cu, Ni
Nb
[0027] Nb: 0.001%-0.05%
≤
0.06
% (claim 4)
≤
0
.03% (claim 19) one of Cr, B, Ca, Nb, V, Cu, Ni
V
—
≤
0.05
% (claim 4)
≤
0
.03% (claim 19) one of Cr, B, Ca, Nb, V, Cu, Ni
Cu
—
≤
0.5
% (claim 4)
≤
0
.3% (claim 19) one of Cr, B, Ca, Nb, V, Cu, Ni
Ni
—
≤
0
.5% (claim 4)
≤
0
.3% (claim 19) one of Cr, B, Ca, Nb, V, Cu, Ni
The composition disclosed by Thiessen [0015-28] overlaps composition ranges recited by present claims 1-2, 4-5, and 19. Within the present claims, O, Ca, V, Cu, and NI are either claimed with a lower limit of zero or as an alternative. When claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. See MPEP 2144.05(I).
Thiessen discloses that the steel has a yield strength of
≥
8
00 MPa (abstract, [0015], [0043]). Thiessen discloses a tensile strength of
≥
950
MPa (abstract, [0015]) and more narrowly 950-1300 MPa [0043], which overlaps a tensile strength of
≥
980 MPa. Thiessen discloses an elongation at break (A50) of at least 8% [0015], and a typical elongation of 8-20% [0043] which encompasses/meets the claimed A50 in claim 1. Thiessen discloses a hole expansion ratio of at least 30% [0043], which meets/encompasses the claimed hole expansion ratio. Thiessen discloses that the material optimizes formability irrespective of the direction of forming (transverse vs. rolling) [0012]; therefore, the elongation disclosed by Thiessen [0015], [0043] would apply to the material in both transverse and rolling directions. When claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 7, Thiessen discloses that the steel has a microstructure of martensite or tempered (annealed) martensite and residual austenite [0039-41] wherein the content of residual austenite in the microstructure is not more than 2% by volume [0039], which lies within the claimed range of
≤
5% by volume.
Regarding claim 8, Thiessen discloses that the types of steels disclosed are suitable for the production of safety-relevant components of automobile bodywork which are to absorb deformation energy in the event of a crash [0010]. As impact toughness is a property which indicates the amount of energy a material absorbs upon impact, Thiessen’s disclosure of a material to absorb deformation energy in the event of a crash [0010] suggests that the material has a favorable impact toughness. Thiessen is silent on a numerical value of the impact toughness of the material. An impact toughness at a given temperature is a material property that is inseparable from the chemical composition and microstructure of the material. See MPEP2112.01(II). When the claimed and prior art products are substantially identical in structure or composition, or are produced by substantially identical processes, a prima facie case of obviousness has been established. See MPEP.2112.01(I). The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer See MPEP2112(I). Considering the chemical composition [0015-28], mechanical properties [0015], [0043], and microstructure [0037-41] of the steel material disclosed by Thiessen, Thiessen establishes a sound basis for believing that impact toughness of range of steels encompassed by the steel materials disclosed by Thiessen [0015-28], [0037-43], which Thiessen suggests is tough [0010], would meet or overlap an impact toughness at
-
40
°C of
≥
6
0 J.
Regarding claim 9, Thiessen discloses that the steel has a yield strength of
≥
8
00 MPa (abstract, [0015], [0043]), which directly meets the yield strength range of claim 9 option (1) and encompasses the yield strength range of claim 9 option (2). Thiessen discloses a tensile strength of
≥
950
MPa (abstract, [0015]) and more narrowly 950-1300 MPa [0043], which overlaps/encompasses the yield strength ranges of both claim 9 option (1) and claim 9 option (2). Thiessen discloses an elongation at break (A50) of at least 8% [0015], and a typical elongation of 8-20% [0043] which encompasses/meets the claimed A50 of claim 9 option (1) and claim 9 option (2). Thiessen discloses a hole expansion ratio of at least 30% [0043], which meets/encompasses the claimed hole expansion ratios of claim 9 option (1), and claim 9 option (2). When claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. See MPEP 2144.05(I). Note that both impact toughness and cold bending test are recited as optional in claim 9 option (2), and impact toughness is recited as optional in claim 9 option (1).
Thiessen discloses that the steel has very good deformability [0042], thereby suggesting that the steel material disclosed by Thiessen would be expected to pass a cold bending test, but Thiessen is silent as to whether the disclosed steel material would pass a specific cold bending test. The ability of a material to pass a cold bending test is a material property that is inseparable from the chemical composition of the material. See MPEP2112.01(II). When the claimed and prior art products are substantially identical in structure or composition, or are produced by substantially identical processes, a prima facie case of obviousness has been established. See MPEP.2112.01(I). The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer See MPEP2112(I). Considering the chemical composition [0015-28], mechanical properties [0015], [0043], and microstructure [0037-41] of the steel material disclosed by Thiessen, Thiessen establishes a sound basis for believing that the steel material which Thiessen discloses has very good deformability [0042] would pass a cold bending test (d
≤
4a,
180
°
) as claimed in claim 9 option (1) and optionally in claim 9 option (2).
Regarding the impact toughness limitations which both options of claim 9 indicate as optional, Thiessen discloses that the types of steels disclosed are suitable for the production of safety-relevant components of automobile bodywork which are to absorb deformation energy in the event of a crash [0010]. As impact toughness is a property which indicates the amount of energy a material absorbs upon impact, Thiessen’s disclosure of a material to absorb deformation energy in the event of a crash [0010] suggests that the material has a favorable impact toughness. Thiessen is silent on a numerical value of the impact toughness of the material. An impact toughness at a given temperature is a material property that is inseparable from the chemical composition and microstructure of the material. See MPEP2112.01(II). When the claimed and prior art products are substantially identical in structure or composition, or are produced by substantially identical processes, a prima facie case of obviousness has been established. See MPEP.2112.01(I). The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer See MPEP2112(I). Considering the chemical composition [0015-28], mechanical properties [0015], [0043], and microstructure [0037-41] of the steel material disclosed by Thiessen, Thiessen establishes a sound basis for believing that impact toughness of range of steels encompassed by the steel materials disclosed by Thiessen [0015-28], [0037-43], which Thiessen suggests is tough [0010], would meet or overlap an impact toughness at
-
40
°C of
≥
14
0 J (claim 9 option (1)) or the broader
≥
6
0 J (claim 9 option (2)).
Regarding claim 10, Thiessen discloses that the steel has a yield strength of
≥
8
00 MPa (abstract, [0015], [0043]), which encompasses the yield strength range of claim 10 option (1), the first claim 10 option (2) and the second claim 10 option (2). Thiessen discloses a tensile strength of
≥
950
MPa (abstract, [0015]) and more narrowly 950-1300 MPa [0043], which overlaps/encompasses the yield strength ranges of all three of claim 10 option (1), the first recited claim 10 option (2) and the second recited claim 10 option (2). Thiessen discloses an elongation at break (A50) of at least 8% [0015], and a typical elongation of 8-20% [0043] which encompasses/overlaps all three of the claimed A50 of claim 10 option (1), the first recited claim 10 option (2) and the second recited claim 10 option (2). Thiessen discloses a hole expansion ratio of at least 30% [0043], which meets/encompasses the claimed hole expansion ratios of all three of claim 10 option (1), the first recited claim 10 option (2), and the second recited claim 10 option (2). When claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding the impact toughness limitations, Thiessen discloses that the types of steels disclosed are suitable for the production of safety-relevant components of automobile bodywork which are to absorb deformation energy in the event of a crash [0010]. As impact toughness is a property which indicates the amount of energy a material absorbs upon impact, Thiessen’s disclosure of a material to absorb deformation energy in the event of a crash [0010] suggests that the material has a favorable impact toughness. Thiessen is silent on a numerical value of the impact toughness of the material. An impact toughness at a given temperature is a material property that is inseparable from the chemical composition and microstructure of the material. See MPEP2112.01(II). When the claimed and prior art products are substantially identical in structure or composition, or are produced by substantially identical processes, a prima facie case of obviousness has been established. See MPEP.2112.01(I). The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer See MPEP2112(I). Considering the chemical composition [0015-28], mechanical properties [0015], [0043], and microstructure [0037-41] of the steel material disclosed by Thiessen, Thiessen establishes a sound basis for believing that impact toughness of range of steels encompassed by the steel materials disclosed by Thiessen [0015-28], [0037-43], which Thiessen suggests is tough [0010], would meet or overlap an impact toughness at
-
40
°C of
14
0-185 J (claim 10 option (1)), 60-100 J (claim 10 first option (2)) and/or 80-110 J (claim 10 second recited option (2)).
Regarding claim 10 option (1) and the second recited claim 10 option (2), Thiessen discloses that the steel has a microstructure of martensite or tempered (annealed) martensite and residual austenite [0039-41] wherein the content of residual austenite in the microstructure is not more than 2% by volume [0039], which lies within the claimed range of
≤
5% by volume.
Thiessen discloses that the steel has very good deformability [0042], thereby suggesting that the steel material disclosed by Thiessen would be expected to pass a cold bending test, but Thiessen is silent as to whether or not the disclosed steel material would pass a specific cold bending test. The ability of a material to pass a cold bending test is a material property that is inseparable from the chemical composition of the material. See MPEP2112.01(II). When the claimed and prior art products are substantially identical in structure or composition, or are produced by substantially identical processes, a prima facie case of obviousness has been established. See MPEP.2112.01(I). The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer See MPEP2112(I). Considering the chemical composition [0015-28], mechanical properties [0015], [0043], and microstructure [0037-41] of the steel material disclosed by Thiessen, Thiessen establishes a sound basis for believing that the steel material which Thiessen discloses has very good deformability [0042] would pass a cold bending test (d
≤
4a,
180
°
) as claimed in claim 10 option (1) and in the second recited claim 10 option (2).
Claim(s) 1-2, 4-5, 7-10, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nippon Steel (JP2015196891A). Nippon Steel is cited in the IDS filed June 24, 2026. References to Nippon Steel are directed to the examiner-supplied English language translation.
Regarding claims 1-2, 4-5, and 19, Nippon Steel discloses a low carbon [0070], martensitic (“one [emphasis added] or both of tempered martensite and bainite” [0027], [0034], [0039]) high hole expansion (excellent punched hole expandability) steel [0017].
Nippon Steel discloses that the steel comprises a chemical composition based on weight percentage of amounts provided in the table below:
Element
Nippon Steel
Present Invention
C
0.01-0.20 % [0070]
0.03-0.097% (claim 1)
0.03-0.06% (claim 2 option(1))
0.06-0.097% (claim 2 option(2))
0.04- 0.055% (one alternative condition of claim 5 option (1))
0.07-0.09% (one alternative condition of claim 5 option (2))
Si
2.50% or less (excluding 0) [0072]
0.8-2.0% (claim 1)
0.8-2.0% (claim 2 options (1) and (2))
0.8-1.4% (one alternative condition of claim 5 option (1))
1.0-1.4% (one alternative condition of claim 5 option (2))
Mn
4.00% or less (excluding 0) [0074]
1.0-2.0% (claim 1)
1.5-2.0% (claim 2 option (2))
1.4-1.8% (one alternative condition of claim 5 option (1))
1.6-1.9% (one alternative condition of claim 5 option (2))
P
0.10% or less (excluding 0) [0075]
≤
0.02
% (claim 1)
S
0.03% or less (excluding 0) [0076]
≤
0.003
% (claim 1)
0.0015% or lower (one alternative condition of claim 5 option (1))
0.0015% or lower (one alternative condition of claim 5 option (2))
Al
0.001-2.00 % [0077]
0.02-0.08% (claim 1)
0.02-0.05% (one alternative condition of claim 5 option (1))
0.02-0.05% (one alternative condition of claim 5 option (2))
N
0.01% or Less [0079]
≤
0.004
% (claim 1)
0.003% or lower (one alternative condition of claim 5 option (1))
0.003% or lower (one alternative condition of claim 5 option (2))
Mo
0.01-1.00 % [0085]
0.1-0.5% (claim 1)
0.15-0.35% (one alternative condition of claim 5 option (1))
0.15-0.35% (one alternative condition of claim 5 option (2))
Ti
0.01 to 0.30% (Ti and Nb in total) [0081]
0.01-0.05% (claim 1)
0.01-0.03% (one alternative condition of claim 5 option (1))
0.01-0.03% (one alternative condition of claim 5 option (2))
O
0.01% or less (excluding 0) [0080]
≤
0.0030
% (claim 1)
Fe and Impurities
Balance [0019]
Balance (claim 1)
Cr
0.01-2.00% [0085]
≤
0
.
5% (claim 4)
0.2-0.4% (claim 19) one of Cr, B, Ca, Nb, V, Cu, Ni
B
—
≤
0
.
002% (claim 4)
0.0005-0.0015% (claim 19) one of Cr, B, Ca, Nb, V, Cu, Ni
Ca
0.0005-0.01% [0088]
≤
0.0
05% (claim 4)
≤
0
.002% (claim 19) one of Cr, B, Ca, Nb, V, Cu, Ni
Nb
0.01 to 0.30% (Ti and Nb in total) [0081]
≤
0.06
% (claim 4)
≤
0
.03% (claim 19) one of Cr, B, Ca, Nb, V, Cu, Ni
V
0.01-0.30% [0085]
≤
0.05
% (claim 4)
≤
0
.03% (claim 19) one of Cr, B, Ca, Nb, V, Cu, Ni
Cu
0.01-2.00 [0085]
≤
0.5
% (claim 4)
≤
0
.3% (claim 19) one of Cr, B, Ca, Nb, V, Cu, Ni
Ni
0.01-2.00 [0085]
≤
0
.5% (claim 4)
≤
0
.3% (claim 19) one of Cr, B, Ca, Nb, V, Cu, Ni
The composition disclosed by Nippon Steel [0019], [0070-88] overlaps composition ranges recited by present claims 1-2, 4-5, and 19. Within the present claims, B is either claimed with a lower limit of zero or as an alternative. When claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. See MPEP 2144.05(I).
The range of yield strength (YP) for inventive examples (発明例) disclosed by Nippon Steel is 875-1010 MPa (Tables 4-5) which lies entirely in a range of
≥
800 MPa. Nippon Steel discloses that the steel has a tensile strength of >980 MPa (claim 1, [0026-27]). The range of transverse elongation (EL %) of inventive examples disclosed by Nippon Steel is 8.9-12.9% (Tables 4-5) which lies within a range of
≥
8%. Nippon Steel discloses a hole expansion ratio of 50% or more [0114], which lies within the range of
≥
30%. Considering every inventive example (発明例) disclosed by Nippon Steel meets the yield strength and elongation of the steel of claims 1-2, 4-5, and 19 (Tables 4-5), and the ranges of tensile strength and hole expansion ratio disclosed by Nippon Steel [0026-27], [0114] meet those of the steel of claims 1-2, 4-5, and 19, one of ordinary skill in the art, at the time of filing, would expect that the steel encompassed by ranges disclosed by Nippon Steel, applied above to meet the mechanical properties of the steel of claims 1-2, 4-5, and 19.
Regarding claim 7, Nippon Steel discloses that the steel has a microstructure of tempered martensite (“one [emphasis added] or both of tempered martensite and bainite” [0027], [0034], [0039]) and a content of residual austenite in the microstructure of 10% or less by volume, preferably 5% or less by volume [0048]. A range of 10% or less by volume encompasses the claimed range of
≤
5% by volume, and a range of 5% or less by volume is identical to the claimed range for austenite. When claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 8, Nippon Steel discloses that the steel has excellent low temperature toughness (claims 1-5, [0016], [0026-27]), which Nippon Steel evaluates as impact toughness at
-
40
°
C [0115]. Nippon Steel is silent on the numerical value of the impact toughness. The impact toughness of a steel is a material property that is inseparable from the chemical composition of the material. See MPEP2112.01(II). When the claimed and prior art products are substantially identical in structure or composition, or are produced by substantially identical processes, a prima facie case of obviousness has been established. See MPEP.2112.01(I). The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer See MPEP2112(I). Considering Nipon Steel discloses that the impact toughness at
-
40
°
C is excellent (claims 1-5, [0016], [0026-27], [0115]), in view of the chemical composition disclosed by Nipon Steel [0019], [0070-88], and mechanical properties disclosed by Nippon Steel (Tables 4-5, [0026-27], [0114]), Nippon Steel establishes a sound basis for believing that the range of steel sheets disclosed by Nippon Steel, applied above would have an impact toughness at -40
°
C of
≥
60 J.
Regarding claim 9, option (2), the range of yield strength (YP) for inventive examples (発明例) disclosed by Nippon Steel is 875-1010 MPa (Tables 4-5) which overlaps a range of
≥
900 MPa. Nippon Steel discloses that the steel has a tensile strength of >980 MPa (claim 1, [0026-27]), which encompasses a range of
≥
1180 MPa. The range of transverse elongation (EL %) of inventive examples disclosed by Nippon Steel is 8.9-12.9% (Tables 4-5) which overlaps a range of
≥
10%. Nippon Steel discloses a hole expansion ratio of 50% or more [0114], which lies within the range of
≥
30%. Considering the extent to which mechanical properties disclosed by Nippon Steel ([0026-27], claims 1-5, [0114-115], Tables 4-5) overlap the ranges for yield strength, tensile strength, elongation, and hole expansion recited in claim 9 option (2), it would have been obvious to one of ordinary skill in the art that the range of steels encompassed by the Nippon Steel disclosure, applied above, overlap the ranges for yield strength, tensile strength, elongation, and hole expansion recited in claim 9 option (2). When claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. See MPEP 2144.05(I). Note that claim 9 identifies all other properties of claim 9 option (2) as optional.
Regarding claim 9 option (1), the range of yield strength (YP) for inventive examples (発明例) disclosed by Nippon Steel is 875-1010 MPa (Tables 4-5) which lies entirely in a range of
≥
800 MPa. Nippon Steel discloses that the steel has a tensile strength of >980 MPa (claim 1, [0026-27]). The range of transverse elongation (EL %) of inventive examples disclosed by Nippon Steel is 8.9-12.9% (Tables 4-5) which lies within a range of
≥
8%. Nippon Steel discloses a hole expansion ratio of 50% or more [0114], which is identical the range of
≥
50%. Considering every inventive example (発明例) disclosed by Nippon Steel meets the yield strength and elongation of the steel of claim 9 option (1) (Tables 4-5), and the ranges of tensile strength and hole expansion ratio disclosed by Nippon Steel [0026-27], [0114] meet those of the steel of claim 9 option (1), one of ordinary skill in the art, at the time of filing, would expect that the steel encompassed by ranges disclosed by Nippon Steel, applied above to meet the yield strength, tensile strength, elongation, and hole expansion coefficient recited in claim 9 option (1). Nippon Steel is silent as to whether the disclosed steel would pass a cold bending test.
A material’s ability to pass a cold bending test is a material property that is inseparable from the chemical composition of the material. See MPEP2112.01(II). When the claimed and prior art products are substantially identical in structure or composition, or are produced by substantially identical processes, a prima facie case of obviousness has been established. See MPEP.2112.01(I). The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer See MPEP2112(I). Considering the chemical composition [0019], [0070-88], microstructure [0027], [0034], [0039], and mechanical properties ([0026-27], [0114-115], Tables 4-5) disclosed by Nippon Steel, Nippon steel establishes a sound basis for believing that the steel disclosed by Nippon Steel, applied above would pass a cold bending test (d
≤
4a,
180
°
). Note that the impact toughness limitation of claim 9 option (1) is claimed as optional.
Regarding claim 10 option (1), the range of yield strength (YP) for inventive examples (発明例) disclosed by Nippon Steel is 875-1010 MPa (Tables 4-5) which overlaps a range of 800-890 MPa. Nippon Steel discloses that the steel has a tensile strength of >980 MPa (claim 1, [0026-27]), which encompasses a range of 980-1150 MPa. The range of transverse elongation (EL %) of inventive examples disclosed by Nippon Steel is 8.9-12.9% (Tables 4-5) which lies in the range of 8-13%. Nippon Steel discloses a hole expansion ratio of 50% or more [0114], which encompasses the range of 50-85%. Considering the extent to which mechanical properties disclosed by Nippon Steel ([0026-27], claims 1-5, [0114-115], Tables 4-5) overlap the ranges for yield strength, tensile strength, elongation, and hole expansion recited in claim 10 option (1), it would have been obvious to one of ordinary skill in the art that the range of steels encompassed by the Nippon Steel disclosure, applied above, overlap the ranges for yield strength, tensile strength, elongation, and hole expansion recited in claim 10 option (1). When claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. See MPEP 2144.05(I).
Nippon Steel discloses that the steel has a microstructure of tempered martensite (“one [emphasis added] or both of tempered martensite and bainite” [0027], [0034], [0039]) and a content of residual austenite in the microstructure of 10% or less by volume, preferably 5% or less by volume [0048]. A range of 10% or less by volume encompasses the claimed range of
≤
5% by volume, and a range of 5% or less by volume is identical to the claimed range for austenite. When claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. See MPEP 2144.05(I).
Nippon Steel discloses that the steel has excellent low temperature toughness (claims 1-5, [0016], [0026-27]), which Nippon Steel evaluates as impact toughness at
-
40
°
C [0115]. Nippon Steel is silent on the numerical value of the impact toughness. The impact toughness of a steel is a material property that is inseparable from the chemical composition of the material. See MPEP2112.01(II). When the claimed and prior art products are substantially identical in structure or composition, or are produced by substantially identical processes, a prima facie case of obviousness has been established. See MPEP.2112.01(I). The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer See MPEP2112(I). Considering Nipon Steel discloses that the impact toughness at
-
40
°
C is excellent (claims 1-5, [0016], [0026-27], [0115]), in view of the chemical composition disclosed by Nipon Steel [0019], [0070-88], and mechanical properties disclosed by Nippon Steel (Tables 4-5, [0026-27], [0114]), Nippon Steel establishes a sound basis for believing that the range of steel sheets disclosed by Nippon Steel, applied above would have an impact toughness at -40
°
C of 140-185 J.
The cold bending test limitations of claim 10 option (1) are identical to those required of claim 9 option (1), on which claim 10 depends.
Regarding both alternatives of claim 10, option (2), the range of yield strength (YP) for inventive examples (発明例) disclosed by Nippon Steel is 875-1010 MPa (Tables 4-5) which overlaps both a range of 900-1000MPa and a range of 940-1000MPa. Nippon Steel discloses that the steel has a tensile strength of >980 MPa (claim 1, [0026-27]), which encompasses both a range of 1200-1280MPa and a range of 1210-1300MPa. The range of transverse elongation (EL %) of inventive examples disclosed by Nippon Steel is 8.9-12.9% (Tables 4-5) which overlaps a range of 10-13%. Nippon Steel discloses a hole expansion ratio of 50% or more [0114], which approaches a range of 30-50% at the endpoint of 50%. Considering the extent to which mechanical properties disclosed by Nippon Steel ([0026-27], claims 1-5, [0114-115], Tables 4-5) overlap or approach the ranges for yield strength, tensile strength, elongation, and hole expansion recited in claim 10 option (2), it would have been obvious to one of ordinary skill in the art that the range of steels encompassed by the Nippon Steel disclosure, applied above, overlap or approach the ranges for yield strength, tensile strength, elongation, and hole expansion recited in claim 10 option (2). When claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists, and prima facie case of obviousness exists, and where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05(I).
Nippon Steel discloses that the steel has excellent low temperature toughness (claims 1-5, [0016], [0026-27]), which Nippon Steel evaluates as impact toughness at
-
40
°
C [0115]. Nippon Steel is silent on the numerical value of the impact toughness. The impact toughness of a steel is a material property that is inseparable from the chemical composition of the material. See MPEP2112.01(II). When the claimed and prior art products are substantially identical in structure or composition, or are produced by substantially identical processes, a prima facie case of obviousness has been established. See MPEP.2112.01(I). The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer See MPEP2112(I). Considering Nipon Steel discloses that the impact toughness at
-
40
°
C is excellent (claims 1-5, [0016], [0026-27], [0115]), in view of the chemical composition disclosed by Nipon Steel [0019], [0070-88], and mechanical properties disclosed by Nippon Steel (Tables 4-5, [0026-27], [0114]), Nippon Steel establishes a sound basis for believing that the range of steel sheets disclosed by Nippon Steel, applied above would have an impact toughness at -40
°
C of 60-100 J or 80-110 J.
A material’s ability to pass a cold bending test is a material property that is inseparable from the chemical composition of the material. See MPEP2112.01(II). When the claimed and prior art products are substantially identical in structure or composition, or are produced by substantially identical processes, a prima facie case of obviousness has been established. See MPEP.2112.01(I). The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer See MPEP2112(I). Considering the chemical composition [0019], [0070-88], microstructure [0027], [0034], [0039], and mechanical properties ([0026-27], [0114-115], Tables 4-5) disclosed by Nippon Steel, Nippon steel establishes a sound basis for believing that the steel disclosed by Nippon Steel, applied above would pass a cold bending test (d
≤
4a,
180
°
).
Response to Arguments
Applicant's arguments filed June 15, 2026 and July 13, 2026 have been fully considered but they are not persuasive.
Regarding the submission filed June 15, 2026, applicant's arguments are not persuasive in overcoming the rejection of claims under 35 USC 103 over Thiessen (US20190119774). Applicant argues against the position that the steel of claim 1 overlaps ranges disclosed by Thiessen because the claimed ranges cannot meet the compositional relationship ψ disclosed by Thiessen. This argument is not persuasive because, though Thiessen discloses the relationship for ψ as preferred, Thiessen discloses the relationship as optional, and the disclosure of Thiessen as a whole is not limited to the compositional relationship for ψ. Thiessen's disclosure of relationship for ψ as optional is evident in the statements "A ratio ψ may [conform [not conforms or must conform] to 1.5≤ψ≤3 with ψ=(% C+% Mn/5+% Cr/6)/(% Al+% Si), and % C, % Mn, % Cr, % Al, % Si being the respective C, Mn, Cr, Al, and Si contents of the steel" (abstract) and Thiessen's claiming of the ψ relationship in dependent claim 11, as opposed to independent claim 10. The Thiessen disclosure, therefore is an overlapping disclosure.
Of the techniques for rebutting rejections based on overlapping ranges set forth in MPEP 2144.05(III), applicant's argument most closely align with an argument that Thiessen's ψ relationship would teach away from the claimed composition, as discussed in MPEP 2144.05(III)(B). This argument is not persuasive because while Thiessen expresses a preference for a composition satisfying the ψ relationship, at the same time Thiessen provides the motivation for one of ordinary skill in the art to optimize and select from within the ranges disclosed for each of the constituent elements of the ψ relationship. Thiessen discloses specific effects of C in paragraphs [0046-47], specific effects of Mn in paragraph [0057], specific effects of Cr in paragraph [0061], specific effects of Al in paragraph [0055], and the specific effects of Si in paragraph [0054]. This disclosure provides motivation for one of skill in the art to explore the ranges disclosed by Thiessen for C, Mn, Cr, Si, and Al [0046-47], [0054-55], [0057], [0061]. Note that the reason which Thiessen provides for setting the lower limit of the ψ relationship to 1.5 is to avoid negative effects of coatability of excess silicon, avoid negative effects on castability of excess aluminum and to achieve sufficient strengthening for C, Mn, and Cr [0045], and not on interrelation of elements disclosed in numerator and denominator of the ψ relationship. Thiessen's preference to avoid a value of ψ below 1.5 while disclosing that the lower limit for ψ was determined by independent properties, is not sufficient to teach away from optimizing the constituents from within the ranges disclosed by Thiessen for the reasons Thiessen discloses for the ranges [0046-47], [0054-55], [0057], [0061], to arrive at a balance of properties independent of the ψ value. See in particular the Geisler example discussed in MPEP 2144.05(III)(B).
In remarks filed July 13, 2026, applicant argues that the ψ relationship disclosed by Thiessen is an essential limitation of Thiessen because Thiessen discloses the ψ relationship as essential. This argument is not persuasive because Thiessen is relevant prior art for all which the reference teaches, including the portions of the reference which identify the ψ relationship as optional. Thiessen discloses “A ratio ψ may conform to 1.5≤ψ≤3 with ψ=(% C+% Mn/5+% Cr/6)/(% Al+% Si), and % C, % Mn, % Cr, % Al, % Si being the respective C, Mn, Cr, Al, and Si contents of the steel” (abstract), and Thiessen claims the ψ relationship in a dependent claim. Much as it would be improper to limit a claimed invention to what is described in an invention’s disclosure (MPEP 2111.01(II)) it would be improper to ignore the teachings of Thiessen as a whole to limit the disclosure to the ψ relationship of a narrower embodiment, even if the ψ relationship is essential to that narrower embodiment. As the presently claimed composition, overlaps the overall composition disclosed by Thiessen, without the ψ limitation, and Thiessen, as a whole, is not limited to the ψ relationship, the presently claimed composition continues to overlap that disclosed by Thiessen.
Applicant argues rejection of dependent claims over Thiessen by reference to independent claim 1. These arguments are not persuasive for the reasons given above, with respect to claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN P O'KEEFE whose telephone number is (571)272-7647. The examiner can normally be reached MR 8:00-6:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SEAN P. O'KEEFE/ Examiner, Art Unit 1738
/SALLY A MERKLING/ SPE, Art Unit 1738
Prosecution Insights