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 .
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 Claims 13-18, and 20-24 remain withdrawn from consideration. Amendment has rendered moot the claim objections for minor informalities and have overcome rejections under 35 USC 112(b).
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).
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 optimized 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 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 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).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2, 4-5, 7-10, and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9, 12-13, and 16 of copending Application No. 18043116 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
The reference application claims 980 MPa-grade ultra-low-carbon martensitic-retained austenitic ultra-high-hole-expandability steel (claims 1-8, 12-13). The instantly claimed steel comprises retained austenite (instant claim 7), and the 0.03-0.10% C of instant claim 1 encompasses the 0.03%-0.06% C of the reference application (claim 1); therefore, the 980 MPa-grade ultra-low-carbon martensitic-retained austenitic ultra-high-hole-expandability steel, claimed in the reference application, is a low carbon martensitic high hole expansion steel. Reference application claims amounts of C, Si, Mn, P, S, Al, N, Mo, Ti, O, and Fe (claims 1, 3-9) of instant claims 1-2 (both alternatives), and 5 (alternative (1)). The composition claimed in reference application (claim 1) closely approaches the composition of alternative (2) of instant claim 5. Reference application claims a yield strength of
≥
800
MPa (claim 1) and more narrowly
≥
815
MPa (claim 13), which meets the yield strength of instant claim 1 and overlaps/encompasses both yield strength alternatives in instant claims 9 and 10. Reference application claims a tensile strength of
≥
980
MPa (claim 1) and more narrowly
≥
1000
MPa (claim 13) which meets, overlaps, or encompasses values of instant claims 1, 9 and 10. Reference application claims a transverse elongation A50 of
≥
10
%
(claims 1, 13), which meets the transverse elongation A50 of instant claims 1, 9, and 10. Reference application claims a hole expansion ratio of
≥
80
%
which directly meets the hole expansion ratio recited in instant claims 1 and 9 and overlaps the hole expansion ratio for alternative (1) of instant claim 10. Reference application claims amounts of Cr, B, Ca, Nb, V, Cu, and Ni (claims 1, 16) directly meeting amount recited in instant claims 4 and 19. Reference application claims
≤
5
%
retained austenite which directly meets the amount of instant claim 7. Reference application claims an impact toughness at -40
°
C of
≥
150
J (claim 13) which meets the impact toughness of all alternatives in claims 8, 9, and 10. Reference application claims that the steel has passed a cold bending test (d
≤
4a,
180
°
) (claim 13) which meets the test of all alternatives of instant claims 9 and 10. In summary, reference application claims composition, mechanical properties, and microstructures (claims 1-9, 12-13, and 16) which directly meet, overlap, or closely approach composition, properties, and microstructure of each alternative of instant claims 1-2, 4-5, 7-10, and 19. When claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists, and a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05(I).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Regarding rejections under 35 USC 103 over Thiessen (US20190119774), applicant argues with reference to In re Fine, 837 F.2d 1071, 1073-1074 (Fed. Cir. 1988); Ex Parte Wada and Murphy, Appeal 2007-3733 (BPAI 2008); See also, KSR Int'l v. Teleflex, Inc., 550 U.S. 398, 411 (2007), In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)), MPEP § 2143, and MPEP § 2142, that Thiessen discloses a preferred amount of Si of at most 0.63%, that the relationship for ψ disclosed by Thiessen would yield a maximum amount of Si near 0.64%, and that Thiessen discloses a preferred amount of Al+Si not more than 0.4% by weight. This argument is not persuasive because Thiessen discloses an overall amount of 0.2%-1.5% [0017], [0054], and Thiessen discloses a broader range of Al+Si of to not more than 1.7% by weight, and particularly favorably not more than 1.5% by weight [0056], whereas Thiessen discloses the “at most 0.63%” Si as “very particularly favorable” [0054]; Thiessen discloses that the “not more than 0.4% by weight” Al+Si as especially preferred [0056], and Thiessen discloses that conditions for ψ as optional ([0023-35], dependent claim 11). Thiessen is prior art for all that the reference would reasonably teach to one of ordinary skill in the art, including the disclosed broad ranges and compositions which are not limited by the conditions which Thiessen discloses as optional. The broader amounts for Si and Si+Al disclosed by Thiessen [0017], [0054-56] overlap presently claimed amounts. Thiessen’s disclosure of preferred embodiments does not amount to a teaching away. See MPEP 2123.
Thiessen discloses a hole expansion ratio of at least 30% [0043], which is the exact range recited in claim 1. Thiessen discloses that the steel has a yield strength of
≥
8
00 MPa (abstract, [0015], [0043]), which is the same range recited in present claim 1. and Thiessen discloses a tensile strength of
≥
950
MPa (abstract, [0015]), which significantly overlaps the claimed tensile strength range of
≥
980
MPa. Thiessen does not suggest these mechanical properties are limited to preferred embodiments; therefore, the overall disclosure of Thiessen overlaps the range of structure encompassed by claim 1. Thiessen’s lack of inventive examples within the presently claimed range and consideration of the example with the highest Si content (steel F) as comparative do not amount to a teaching away from the broader ranges disclosed by Thiessen [0017], [0054-56]. See MPEP 2123.
Applicant’s arguments suggest that applicant considers the presently claimed amount of Si to be critical to a favorable hole expansion coefficient. This suggestion of an argument is not persuasive because the evidence of record does not show that the claimed amount of Si is critical to some unexpected hole expansion result over that disclosed by Thiessen. Notably, the present disclosure includes example 7 (Tables 1, 4) which has 0.53% Si, which is within the ranges which Thiessen discloses as preferred. Example 7 of the present disclosure, which has 0.53% Si, meets all the mechanical properties recited in present claim 1, including hole expansion.
Regarding applicant’s suggestion that examiner has not put forth a prima facie case of obviousness, applicant is encouraged to review how the office action applies the cited portions of Thiessen particularly to limitations recited in present claim 1, noting that overlapping or encompassing ranges are very well established bases for prima facie obviousness, as evidenced by the several examples provided in MPEP 2144.05.
Applicant’s argument that Mo is an essential feature in the presently claimed steel, whereas Mo is an optional element in Thiessen's steel is not persuasive because a disclosure as optional is still a disclosure. Thiessen discloses a pearlite suppression effect of adding Mo in the disclosed amounts [0062], thereby providing reasons why one of skill in the art would consider adding Mo to the disclosed steel in the disclosed amounts.
Arguments that Thiessen fails to disclose a manufacturing method of an uncoated fiat steel product are not persuasive because claims to the elected invention are directed to a product and not to a method of manufacturing. Claim 1, as worded is not even limited to a steel made by a particular process in a product-by-process capacity. As discussed above, the disclosure of Thiessen meets the structural limitations of claim 1. Arguments that focus on the process of making without linking that process to a claimed structure are not persuasive in showing that the claimed structure defines over the structure rendered obvious by Thiessen, as discussed above.
Applicant acknowledges rejection of dependent claims over prior art and suggests dependent claims should be allowable for the reasons argued with respect to claim 1. This argument/suggestion is not persuasive for the reasons given above with respect to claim 1.
Applicant’s comment indicating intent to file a terminal disclaimer upon allowance is acknowledged. As this comment does not particularly argue limitations claimed in the present application over claims of copending application 18/043,116, the provisional non-statutory double patenting rejection over claims of application 18/043,116 is maintained.
Applicant’s request for rejoinder is acknowledged. Applicant is reminded that in order to be eligible for rejoinder, a claim to a nonelected invention must depend from or otherwise require all the limitations of an allowable claim. The present application does not have an allowable claim; therefore, claims to the non-elected invention(s) remain withdrawn.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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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/SEAN P. O'KEEFE/ Examiner, Art Unit 1738
/SALLY A MERKLING/ SPE, Art Unit 1738
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