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 .
Status of Claims
Claim 2 is canceled. Claims 1 and 3-20 are pending where claims 1, 12, 16 and 19 have been amended. Claims 14, 15 and 17-20 are withdrawn from consideration and claims 1, 3-13 and 16 remain for examination on the merits.
Status of Previous Rejections
The previous 35 USC § 112 and § 103 rejections of the claims have been withdrawn in view of amendments to the claims.
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, 3-13 and 16 is/are rejected under 35 U.S.C. 103 as obvious over US 2020/0063227020 A1 to Yamazaki et al.
Regarding claims 1 and 3, Yamazaki discloses a steel with a tensile strength of 980 MPa or more comprising the following composition which overlaps the instantly claimed composition as follows: (Yamazaki, abstract, para [0045-0075], claims 1 and 2)
Element
Claimed wt%
Yamazaki wt%
Overlaps?
C
0.05-0.10
0.04-0.15
Yes
Si
0.5-2.0
0.4-2.0
Yes
Mn
1.0-2.0
1.0-3.0
Yes
P
≤0.02
0-0.100
Yes
S
≤0.003
0-0.0100
Yes
Al
0.02-0.08
0.01-2.00
Yes
N
≤0.004
0-0.010
Yes
Mo
≥0.1
≤impurity or 0.05-0.50
Yes
Ti
0.01-0.05
0.03-0.15
Yes
Cr
≤0.5
≤impurity or 0.10-2.50
Yes
B
≤0.002
0.0005-0.0050
Yes
O
≤0.0030
≤impurity
Yes
Nb
≤0.06
≤impurity or 0.005-0.060
Yes
V
≤0.05
≤impurity or 0.05-0.50
Yes
Cu
≤0.5
≤impurity or 0.01-0.50
Yes
Ni
≤0.5
≤impurity or 0.01-0.50
Yes
Ca
≤0.005
≤impurity or 0.0002-0.0100
Yes
Fe
Balance
Balance
Yes
Wherein a microstructure of the high hole expansion steel consists of a primary phase containing upper bainite, a secondary phase which may be lower bainite, and 0-3% of a remaining phase which may be retained austenite (Yamazaki, para [0071-0075]), overlapping the instantly claimed range of 1-5% residual austenite, and a hole expansion ratio of 50% or more (Yamazaki, para [0042]), lying within the instantly claimed range of a hole expansion ratio of ≥40%.
Regarding the overlapping the ranges, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of Yamazaki including the instantly claimed because Yamazaki discloses the same utility throughout the disclosed ranges.
Regarding the limitations “consisting of a chemical composition” and “a microstructure of the high hole expansion steel consists of,” the additional elements and microstructural phases recited in Yamazaki are optional and are not required to be in the alloy of Yamazaki
Regarding claims 4-11 and 16, the alloy of Yamazaki overlaps the instantly claimed ranges.
Regarding claims 12-13, the alloy of Yamazaki may have a TS of at least 980 MPa (Yamazaki, abstract), a hole expansion ratio of 50% or more (Yamazaki, para [0042]) and has exemplary yield strengths of 842-1012 MPa and exemplary elongations of 12.5-16.6% (Yamazaki, Table 3), overlapping the instantly claimed ranges.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 3-13 and 16 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 BRIAN D WALCK whose telephone number is (571)270-5905. The examiner can normally be reached Monday-Friday 10 AM - 6:30 PM.
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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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/BRIAN D WALCK/ Primary Examiner, Art Unit 1738
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