DETAILED ACTION
Response to Amendment
The Amendment filed 12/29/2025 has been entered. Claims 1, 3-4, 6-7, and 10-20 remain pending in the application. Claims 15-20 have been withdrawn. Claims 2, 5, 8, and 9 have been canceled. No new claims have been added. Applicant's amendments to the drawings have overcome the objections previously set forth in the Non-Final Rejection mailed 09/29/2025. Applicant's amendments to the claims have overcome the objections previously set forth in the Non-Final Rejection mailed 09/29/2025. Applicant's terminal disclaimers filed on 12/29/2025 for US Patent No. 12054844, 11931786, and 11583909 have overcome the nonstatutory double patenting rejections previously set forth in the Non-Final Rejection mailed 09/29/2025. Applicant's amendments to the claims have overcome the 112(b) rejections previously set forth in the Non-Final Rejection mailed 09/29/2025.
Claim Interpretation
Regarding the temperature increase rate of the blank in the step-heating of claim 1, any temperature increase rate of the blank will be interpreted as reading on the claimed temperature increase rate of the blank regardless of at which stage of the step-heating the rate is applied.
Regarding the carbide directional and angular limitations of claims 12-14, the lath direction and carbide angles are interpreted as applying to any of the laths present in a martensite phase. It is well known in the metallurgy arts that martensite typically has multiple laths and a hot stamped component has multiple grains, and therefore a hot stamped component with an area fraction of 80% or greater martensite phase will have a large number of laths. Consequently, given the large number of laths in a hot stamped component and the broad “to a longitudinal direction of the lath” limitations, one of ordinary skill in the art understands that at least some carbides are likely to read on the claimed orientation and angle relative to at least one of the multiple laths present in the martensitic phase of a hot stamped component.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3-4, 6-7, and 10-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims
Independent claim 1 recites broad method steps: “heating a blank”, “forming a molded body by hot stamping the blank”, and “cooling the molded body to form a hot stamped component”. Amended claim 1 now recites the process parameters of cancelled claims 2, 5, 8, and 9 of “soaking the blank to a temperature of about Ac3 or higher”, “temperature increase rate of the blank” in the step-heating step, a cooling time, and an average cooling rate. The claim attempts to narrow the limitation by reciting the properties of the resulting product in the limitation “wherein the residual stress analysis value is a product of a magnitude of an X-ray diffraction analysis (XRD) value obtained by quantifying residual stress by XRD analysis and a magnitude of an electron backscatter diffraction (EBSD) value obtained by quantifying an orientation by EBSD analysis, and the preset condition is about 2.85×10-4 Degree×MPa/μm2 or greater and about 0.05 Degree×MPa/μm2 or less”. However, this limitation does not provide actionable method steps that would enable one of ordinary skill in the art to obtain the claimed residual stress analysis value and present condition. The instant specification recites “according to exemplary embodiments of the present disclosure, the above-described residual stress analysis value may be controlled to satisfy a preset condition by applying a differentiated process condition, for example, a heating condition and/or a cooling condition in the manufacturing process” (page 14, lines 1-4). While amended claim 1 recites further limitations for the heating step and for the step of cooling the molded body to form a hot stamped component, amended claim 1 does not provide sufficient information regarding which material is used for the blank and what processing parameters are used for the broad steps, such as which parameters are used for forming a molded body to obtain the resulting residual stress analysis value satisfying the claimed preset condition. Claim 1 recites “soaking the blank to a temperature of about Ac3 or higher”, which suggests the blank is made of a steel since Ac3 temperatures are typically used in the metallurgy arts when discussing steel and ferrous alloy heat treatments. Claims 3-4 and 6-7 provide further limitations for the step of heating a blank of claim 1 and claims 10-14 provide further limitations for the properties of the resulting hot stamped component of claim 1. While the dependent claims provide more information, it is not sufficient for one of ordinary skill in the art to arrive at the hot stamped component with the residual stress analysis value and preset condition of claim 1 since the broadest reasonable interpretation of claim 1 applies the method to any steel that can be heated, formed, cooled, and measured with XRD and EBSD. Claim 10 further suggests the material used for the hot stamping method is a steel, but since there are a wide variety of steels, the guidance provided in the instant claims and specification therefore does not enable one of ordinary skill in the art to easily arrive at the claimed residual stress analysis value and preset condition without undue experimentation. Additionally, neither the instant claims nor the instant specification provide sufficient information as to which processing steps are required to achieve the iron-based carbides of the resulting hot stamped component as claimed in claims 10-14.
(B) The nature of the invention
The instant specification recites that the invention is intended to provide a hot stamping component capable of securing high mechanical properties and hydrogen embrittlement by controlling residual stress of the hot stamping component, and a method of manufacturing the hot stamping component (page 1, line 25-page 2, line 3).
(C) The state of the prior art
Methods of hot stamping for a variety of materials, such as steels, tungsten, tin, aluminum alloys, magnesium alloys, titanium alloys, ceramic products, polymers, and composites are well-known in the art (Section 10.6.2 Materials for Hot Stamping and Table 10.1 within “Chapter 10 Hot Stamping” from Modern Manufacturing Processes of Koç). These methods include the steps of heating a blank, forming in a die set, and cooling or quenching the blank inside the die set to manufacture hot stamped products (Section 10.6.1 Hot Stamping Process Types in “Chapter 10 Hot Stamping” from Modern Manufacturing Processes of Koç). Koç teaches hot stamping increases the yield and tensile strengths of materials, allows for manufacturing of complex-shaped parts, and results in beneficial properties for parts used, for example, in the automotive industry (Sections 10.2 – 10.4 in “Chapter 10 Hot Stamping” from Modern Manufacturing Processes of Koç). The state of the art, as evidenced by Koç, understands hot stamping and its processing parameters may be used to control the resulting properties of manufactured products. Furthermore, WO 2019/043161 A1 of Winkel (as cited in IDS mailed 01/03/2025 and using US 2021/0155996 A1 as its English translation) and CN 109518114 A of Tan (as cited in IDS mailed 08/20/2025 and using US 2021/0252579 A1 as its English translation) used in the 35 U.S.C. 103 rejections in this Office action teach hot stamping methods with parameters overlapping with those of amended claim 1 as detailed in this Office action (see 35 U.S.C. 103 rejections below).
(D) The level of one of ordinary skill
One of ordinary skill in the metallurgy arts generally has a high level of skill and is knowledgeable of the interplay between structure, processing, and properties when manufacturing hot stamped components.
(E) The level of predictability in the art
It is well known in the metallurgy arts that resulting products are highly dependent on their composition, microstructure, and processing steps. Achieving the residual stress analysis value and preset condition of claim 1 for any steel having an Ac3 temperature that can be hot stamped would have a low predictability in the art. Similarly, achieving a hot stamped component with the properties recited in claims 10-14 would have a low predictability in the art.
(F) The amount of direction provided by the inventor
Instant claim 1 recites the following method steps: heating a blank, forming a molded body, and cooling the molded body. While amended claim 1 and dependent claims 3-4 and 6-7 recite processing parameters towards these method steps, it is unclear which of the parameters are necessary to produce a hot stamped component with the claimed residual stress analysis value and preset condition of claim 1. Furthermore, while dependent claims 10-14 recite properties of the resulting product, such as a martensite phase, the instant claims provide little guidance as to the composition and properties of the material used for the blank being treated for the method of manufacturing a hot stamped component, beyond one of ordinary skill in the art assuming that the material is a steel given an Ac3 temperature recited in claim 1 and a martensitic phase recited in claim 10. A wide variety of steels with varying compositions and mechanical properties have an Ac3 temperature and a martensitic phase. Therefore, the instant specification does not provide sufficient guidance as to the composition of the initial blank used throughout the claims. Additionally, the instant claims and instant specification provide no guidance as to how the iron-based carbide properties, including its shape and angles, of claims 10-14 are obtained. The instant specification recites an embodiment using a method of manufacturing on a steel with a chemical composition which may include carbon (C), manganese (Mn), boron (B), phosphorus (P), sulfur (S), silicon (Si), chromium (Cr), the balance iron (Fe), and other unavoidable impurities, and may further include at least one alloy element of titanium (Ti), niobium (Nb), and vanadium (V) as an additive, and may further include a predetermined amount of calcium (Ca) (page 6, line 28-page 9, line 27). The instant specification does not disclose how the claimed method steps of heating a blank, forming a molded body, and cooling the molded body correlate to producing a hot stamped component with the claimed residual stress analysis value and preset condition of claim 1. The amount of direction provided is insufficient to apply the claimed invention to any material having an Ac3 temperature and martensite phase, as claimed, or to arrive at a hot stamped component with the claimed residual stress analysis value and preset condition of claim 1 and consequently the hot stamping component recited in claims 10-14.
(G) The existence of working examples
The instant specification provides examples with specimens where the resulting EBSD value, XRD value, residual stress analysis value, tensile strength, and amount of activated hydrogen are disclosed (Tables 1-3), but not the starting material, starting defects for desired residual stress level, nor the claimed resulting iron-based carbide morphology or orientation from claims 10-14, for instance. While the instant specification recites inventive and comparative examples, it is difficult based on the current disclosure to ascertain the processing, composition, or method differences between the provided examples since the tables and instant specification provides only XRD and EBSD data but not the corresponding processing steps to achieve the disclosed results.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure
The instant specification recites many exemplary embodiments (pages 2-4; page 6, line 28-page 9, line 27; pages 11, 13, 16, and 18-23, Tables 1-3), one of which recites using a steel sheet which may include a variety of elements with varying ranges (page 6, line 28-page 9, line 27). Furthermore, the instant specification recites residual stress in the steel sheet will impact its resulting strength and that the residual stress may result from defects in a material such as a point defect, such as vacancy, interstitials, impurity, etc., a line defect, such as dislocation, and an interfacial defect, such as external surface, grain boundary, twin boundary, stacking fault, phase boundary, etc. (page 9, line 29-page 10, line 15), but does not provide guidance as to what the initial residual stress of the blank should be (page 11, lines 3-4 recites “defects existing in the steel plate and residual stress resulting therefrom may be appropriately adjusted by controlling a residual stress analysis value”). As evidenced by the instant disclosure, there are many parameters with broad ranges that can be modified to manufacture a hot stamping component, such as chemical composition and initial residual stress of the blank, heating temperatures and rates, and cooling temperatures and rates, to name a few. With regards to claims 1, 3-4, 6-7, and 10-14, one of ordinary skill in the art will need to perform a high quantity of experimentation in order to arrive at the claimed hot stamped component with the claimed residual stress analysis value and preset condition. The examples provided in specimens A-1 through A-9, B-1 through B-8, and C-1 through C-12 in Tables 1-3 of the instance specification recite merely the XRD or EBSD values, tensile strength, and amount of activated hydrogen. It is unclear what material was used to manufacture these specimens, its initial chemical composition, its initial residual stress from material defects, and which processing steps and associated parameters were used to manufacture these example specimens. One of ordinary skill in the art would need to test various materials, steel compositions, heating, forming, and cooling parameters to arrive at a method which would produce a hot stamped component with the claimed residual stress analysis value and preset condition of claim 1. This is undue experimentation.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)
The broadest reasonable interpretation of claims 1, 3-4, 6-7, and 10-14, as currently drafted, cover a method of manufacturing a hot stamped component, which encompasses any crystalline material with an Ac3 temperature and martensite phase (likely a steel) that can be hot stamped. The specification does not provide direction on how to achieve the claimed residual stress analysis value and preset condition of claim 1. At the time of filing, the state of the art was such that it is understood that the chemical composition and residual stress value of the blank used in a hot stamping process is crucial to determine the processing parameters required to arrive at the desired properties of the final hot stamped component. Thus, the disclosed guidance in the specification does not bear a reasonable correlation to the full scope of the claim. Taking these factors into account, undue experimentation would be required by one of ordinary skill in the art to practice the full scope of the claims.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3-4, 6-7, and 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/043161 A1 of Winkel (as cited in prior Office action and in IDS mailed 01/03/2025, using US 2021/0155996 A1 as its English translation) in view of CN 109518114 A of Tan (as cited in prior Office action and in IDS mailed 08/20/2025, using US 2021/0252579 A1 as its English translation).
Claims 1, 3-4, 6-7, and 10-14, as best understood given the 112(a) rejections in this Office action, are rejected as being unpatentable over the prior art of Winkel and Tan.
Regarding claim 1, Winkel teaches a method for heating a metal component to a target temperature, in which the component has a preliminary coating and is passed through a furnace that has at least four zones, which can be respectively adjusted to an individual zone temperature (Abstract). Winkel teaches the method according to the invention can be used in particular in a press hardening line in which a press hardening tool is arranged downstream of a roller hearth furnace ([0001], a method for heating a metal component used in a press hardening line reads on the claimed method of manufacturing a hot stamped component). Winkel teaches the steel sheet is first heated in a furnace above the AC3 temperature, a temperature at which the conversion of ferrite to austenite ends during an initial heating process, and then shaped in the press hardening process and cooled accordingly below the martensite start temperature ([0002], steel sheet first heated in a furnace reads on the claimed heating a blank; shaped in the press hardening process reads on the claimed forming a molded body by hot stamping the blank; cooled accordingly reads on the claimed cooling the molded body to form a hot stamped component).
Winkel therefore reads on the claimed method of manufacturing a hot stamped component, the method comprising: heating a blank, forming a molded body by hot stamping the blank, and cooling the molded body to form a hot stamped component of claim 1.
Regarding the step-heating step of claim 1, Winkel teaches the component is passed successively through at least an initial heating zone, a plateau zone, a peak heating zone and an end zone and wherein the initial heating zone is adjusted to an initial heating temperature, the plateau zone is adjusted to a plateau temperature, the peak heating zone is adjusted to a peak temperature and the end zone is adjusted to the target temperature (claim 1, [0007], [0011]-[0016], [0051]-[0053], Figs. 1-4, the heating zones read on the claimed step-heating the blank while passing a plurality of sections in a heating furnace). Winkel teaches the initial heating temperature, the plateau temperature, the peak temperature and/or the target temperature are predetermined based on the material of the metal component used, the type and/or thickness of the preliminary coating and/or the design, in particular the shape and/or thickness of the metal component ([0015]). Winkel teaches the steel sheet is first heated in a furnace to a target temperature above the AC3 temperature, a temperature at which the conversion of ferrite to austenite ends during an initial heating process, and then shaped in the press hardening process and cooled accordingly below the martensite start temperature ([0002], [0061], heating to a temperature of above the Ac3 reads on the claimed soaking the blank to a temperature of about Ac3 or higher).
As seen in Fig. 3, the plateau temperature (14) increases in temperature over time from about 650°C to about 750°C and finally to a target temperature (3) of, for example, 870-940°C for soaking the blank ([0056], one of ordinary skill in the art understands this temperature range is above an Ac3 temperature for boron-manganese steel). The heating sections of Winkel encompassing the plateau temperature (14, Fig. 3) read on the claimed plurality of sections in a heating furnace wherein a temperature range increases gradually in the plurality of sections provided while the target temperature (3, Fig. 3) reads on the claimed soaking the blank to a temperature of about Ac3 or higher.
Winkel therefore reads on the limitation wherein the heating of the blank comprises: step-heating the blank while passing a plurality of sections in a heating furnace having progressively higher temperatures; and soaking the blank to a temperature of about Ac3 or higher of claim 1.
Regarding the cooling step of claim 1, Winkel teaches the steel sheet is cooled accordingly below the martensite start temperature to set a predominantly martensitic structure ([0002], [0061]).
Winkel therefore reads on the limitations wherein the cooling of the molded body to form a hot stamped component comprises maintaining the molded body at a temperature below a temperature at which martensitic transformation starts of claim 1.
However, Winkel does not explicitly disclose wherein, in the step-heating, the temperature increase rate of the blank is in a range from about 6°C/s to about 12°C/s of claim 1, wherein the cooling of the molded body to form a hot stamped component comprises maintaining the molded body for about 3 seconds to about 20 seconds in a press mold at a temperature below a temperature at which martensitic transformation of claim 1, wherein the molded body is cooled in the press mold at an average cooling rate of 15°C/s or greater to a temperature at which martensitic transformation is terminated of claim 1, and wherein the residual stress analysis value of the hot stamped component is a product of a magnitude of an X-ray diffraction analysis (XRD) value obtained by quantifying residual stress of the hot stamped component by XRD analysis and a magnitude of an electron backscatter diffraction (EBSD) value obtained by quantifying an orientation of the hot stamped component by EBSD analysis, and wherein the preset condition is about 2.85×10-4 Degree×MPa/μm2 or greater and about 0.05 Degree×MPa/μm2 or less of claim 1.
Regarding the temperature increase rate of the step-heating of claim 1, it would have been necessary and obvious to look to the prior art for exemplary heating rates for step-heating methods used in hot stamping methods. Tan teaches a manufacturing method for a hot stamping component having an aluminium-silicon alloy coating (Abstract). Wilken and Tan are considered analogous art since they are similarly concerned with a method for manufacturing hot stamping components, and their methods both include heating a blank using stepwise heating, forming a molded body by hot stamping, and cooling the body to obtain a hot stamped component.
Tan teaches a typical heating rate from room temperature to 700° C is 4-12°C/s and is well-known in the art ([0003], the Background Art section covers what is well-known in the art), which overlaps with the claimed range. Tan further teaches inventive examples with a first heating and holding stage of temperatures between 750-880°C and time of heating and holding of 55-90 s (Table 2, Examples 1-9). Using the temperature and time of heating and holding of Tan as a reference point, the heating rate of Tan would range from 8.44 to 15.45°C/s, which overlaps with the claimed range.
Tan teaches the manufacturing method of a hot stamping component can ensure the mechanical properties, welding performance, coating performance and corrosion resistance of the component ([0005]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the method of Winkel with the heating rate of Tan to ensure the mechanical properties, welding performance, coating performance and corrosion resistance of the hot stamped component, as taught by Tan.
In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Modified Winkel therefore reads on the limitation wherein, in the step-heating, the temperature increase rate of the blank is in a range from about 6°C/s to about 12°C/s of claim 1.
Regarding the press time and average cooling rate of the cooling step of claim 1, it would have been necessary and obvious to look to the prior art for exemplary press times and cooling rates used in hot stamping methods. Tan is similarly concerned with a manufacturing method for a hot stamping component (Abstract). Tan teaches the heat-treated blank is quickly transferred to a mold for stamping, the transfer time is 4-12 seconds, and the blank is in a temperature of not lower than 600° C. before being fed into the mold; the mold is cooled before stamping to ensure that the surface temperature of the mold before stamping is lower than 100° C., and the cooling rate of the blank is greater than 30° C/s ([0029], claim 6). Tan teaches the transfer time and cooling rate ensure the microstructure of the hot stamping component is mainly martensite and has excellent mechanical properties and meets requirements for use ([0029]). While Tan does not explicitly disclose a press time, since the blank of Tan will cool from at least 600°C to lower than 100°C at a cooling rate greater than 30°C/s, the press time would be approximately 16.7 seconds, which is within the claimed range, and the pressing would occur at a temperature at which martensitic transformation is terminated since the resulting microstructure is mainly martensite.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the cooling step of Winkel with the press time and cooling rate of Tan to obtain a hot stamping component with a mainly martensitic microstructure with excellent mechanical properties and which meets requirements for use, as taught by Tan.
In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Modified Winkel therefore reads on the limitation wherein the cooling of the molded body to form a hot stamped component comprises maintaining the molded body for about 3 seconds to about 20 seconds in a press mold at a temperature below a temperature at which martensitic transformation starts of claim 1 and wherein the molded body is cooled in the press mold at an average cooling rate of 15°C/s or greater to a temperature at which martensitic transformation is terminated of claim 1.
Regarding the residual stress analysis value and preset condition of claim 1, Applicant argues that claim 1 now recites concrete, actionable process conditions tied to the claimed result (remarks, page 10). As described above, the method of manufacturing a hot stamping component of modified Winkel reads on the claimed method steps of heating, forming, and cooling of claim 1. Therefore, as best understood given the 112(a) rejections above, the method of modified Winkel necessarily results in the claimed residual stress analysis value and preset condition of claim 1.
Modified Winkel therefore reads on the limitation wherein the residual stress analysis value of the hot stamped component is a product of a magnitude of an X-ray diffraction analysis (XRD) value obtained by quantifying residual stress of the hot stamped component by XRD analysis and a magnitude of an electron backscatter diffraction (EBSD) value obtained by quantifying an orientation of the hot stamped component by EBSD analysis, and wherein the preset condition is about 2.85×10-4 Degree×MPa/μm2 or greater and about 0.05 Degree×MPa/μm2 or less of claim 1.
Modified Winkel therefore reads on all the limitations of claim 1.
Regarding claim 3, modified Winkel teaches the method of claim 1 as described above.
Winkel teaches the initial heating temperature, the plateau temperature, the peak temperature and/or the target temperature are predetermined based on the material of the metal component used, the type and/or thickness of the preliminary coating and/or the design ([0015]). While Winkel does not explicitly disclose a ratio of a length of sections for step-heating the blank to a length of a section for soaking the blank, one can calculate this ratio using the heating sections of Fig. 3 (heating section from Z=9000 mm to 17000 and soaking section from Z=17000-39000) and Fig. 4 (heating section from Z=9000 mm to 25000 and soaking section from Z=25000-39000), which results in a ratio of length of heating section to length of soaking section ranging from 1:0.875 to 1:2.75. The ratios of Winkel overlap with the claimed 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Modified Winkel therefore reads on the limitation wherein, in the plurality of sections, a ratio of a length of sections for step-heating the blank to a length of a section for soaking the blank is about 1:1 to 4:1 of claim 3.
Regarding claim 4, modified Winkel teaches the method of claim 1 as described above.
Winkel teaches a roller hearth furnace (1, Fig. 1) in which a method for heating a metal component (2, reads on the claimed blank) to a target temperature (3) is carried out where the metal component is passed through an access (4) into the roller hearth furnace over rollers (5) through the roller hearth furnace (1) to the exit (6) ([0051]-[0056], Fig. 1; the access 4 reads on the claimed inlet of the heating furnace and the exit 6 reads on the claimed outlet of the heating furnace). As seen in Fig. 1, the metal component moves through the initial heating zone (9), plateau zone (10), peak heating zone (11) and end zone (12). Given the heating sections of Winkel increasing in temperature as shown in Fig. 3, and as applied to claim 1 above, the sections of Winkel read on the limitation wherein the temperature in the plurality of sections increases in a direction from an inlet of the heating furnace to an outlet of the heating furnace of claim 4.
Regarding claim 6, modified Winkel teaches the method of claim 1 as described above.
As seen in Fig. 3, Winkel teaches the zone temperature (18) is the target temperature (3, reads on the claimed soaking) and that the target temperature is higher than the step-heating ([0056]-[0057], Fig. 3).
Modified Winkel therefore reads on the limitation wherein, in the plurality of sections, a temperature of a section for soaking the blank is higher than a temperature of sections for step-heating the blank of claim 6.
Regarding claim 7, Winkel teaches the method of claim 1 as described above.
However, Winkel does not explicitly disclose wherein the blank is present in the heating furnace for a range from about 180 seconds to about 360 seconds of claim 7.
Regarding the time the blank is present in the heating furnace, it would have been necessary and obvious to look to the prior art for exemplary heating times for step-heating methods used in hot stamping methods. Tan is similarly concerned with a manufacturing method for a hot stamping component (Abstract). Tan teaches the time of the heat treatment process of the blank is not less than 150 s and not more than 600 s and that within this time range, the blank after heat treatment has high surface quality, good coating performance, and good welding performance ([0027]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the method of Winkel with the time wherein the blank is present in the heating furnace of Tan to enable a high surface quality, good coating performance, and good welding performance of the blank, as taught by Tan.
In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Modified Winkel therefore reads on the limitation wherein the blank is present in the heating furnace for a range from about 180 seconds to about 360 seconds of claim 7.
Regarding the hot stamped component of claims 10-14, Winkel teaches the method of claim 1 as described above.
Winkel teaches the steel sheet is cooled accordingly below the martensite start temperature to set a predominantly martensitic structure ([0002], [0061]). Regarding the lath phase, one of ordinary skill in the art understands martensite structures have laths. A patent need not teach, and preferably omits, what is well known in the art. See MPEP § 2164.01.
Winkel therefore reads on the limitation wherein the hot stamped component comprises: a martensite phase of claim 10 and wherein: the martensite phase comprises a lath phase of claim 12.
However, Winkel does not explicitly disclose wherein the hot stamped component comprises: a martensite phase having an area fraction of 80% or greater; and an iron-based carbide located inside the martensite phase and having an area fraction of less than 5% based on the martensite phase of claim 10, wherein the iron-based carbide has an acicular form, and the acicular form has a diameter of less than 0.2 μm and a length of less than 10 μm of claim 11, wherein the iron-based carbide comprises a first iron-based carbide horizontal to a longitudinal direction of the lath and a second iron-based carbide perpendicular to the longitudinal direction of the lath, and an iron-based carbide reference area fraction of the first iron-based carbide is greater than an iron-based carbide reference area fraction of the second iron-based carbide of claim 12, wherein the first iron-based carbide has an angle with the longitudinal direction of the lath of 0° or greater and 20° or less and the iron-based carbide reference area fraction of 50% or greater of claim 13, and wherein the second iron-based carbide has an angle with the longitudinal direction of the lath of 70° or greater and 90° or less and the iron-based carbide reference area fraction of less than 50% of claim 14.
Tan teaches the microstructure of the hot stamping component obtained through the above process is mainly martensite, and the hot stamping component has excellent mechanical properties and meets the requirements for use ([0029]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the method of Winkel with the press time and cooling rate of Tan to obtain a hot stamping component with a mainly martensitic microstructure with excellent mechanical properties and which meets requirements for use, as taught by Tan.
While Winkel and Tan do not explicitly disclose the specific area fraction of martensite, the terms “mainly” and “predominantly” mean that the area fraction of martensite in the microstructure is greater than 50%, which overlaps with the claimed range of 80% or greater. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Modified Winkel therefore meets the limitation of a martensite phase having an area fraction of 80% or greater of claim 10.
Regarding the iron-based carbide of claims 10-14, neither the instant claims nor the instant specification require method steps to achieve the iron-based carbide properties of claims 10-14 (see 112a rejection above).
Since the method of hot stamping of Winkel, as modified by Tan, reads on all the method steps of claims 1, 3-4, 6-7, as described in this Office action, and the microstructure of the hot stamping component of modified Winkel overlaps with the microstructure of instant claim 10, one of ordinary skill in the art would reasonably expect the method of hot stamping of modified Winkel to result in the hot stamping component properties of claims 10-14. Additionally, since the claimed “to a longitudinal direction of the lath” refers to any lath in the microstructure of the hot stamped component, one of ordinary skill in the art understands the claimed orientation and angles will necessarily be true in at least one of the multiple laths present in the martensitic phase of a hot stamped component given the overlapping process steps and parameters of modified Winkel and the instant invention. See Claim Interpretation regarding directional and angle limitations of claims 12-14.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP § 2112.01 I. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Therefore, it is expected that the hot stamping component resulting from the prior art method possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in structure (see microstructure analysis above in 35 U.S.C. 103 rejection for claim 10), and b) the claimed and prior art products are produced by identical or substantially identical processes (see processing analysis above in 35 U.S.C. 103 rejections for claims 1, 3-4, and 6-7). Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
Since the properties of the product claimed in claims 10-14 are a result of the claimed method, the method of modified Winkel necessarily results in the hot stamped component with the properties of claims 10-14. Therefore, as best understood given the 112(a) rejections above, the method of Winkel necessarily results in the claimed hot stamping component properties of claims 10-14.
Modified Winkel therefore reads on all the limitations of claims 10-14.
Response to Arguments
Applicant's arguments filed 12/29/2025 have been fully considered but they are not persuasive.
Regarding claim rejections under 35 USC 112(a), Applicant argues that the claims are not reasonably read to cover ceramics, polymers, or arbitrary crystalline materials given the claimed temperature Ac3 and martensitic transformation start temperature (remarks, page 9).
In response, a broadest reasonable interpretation in view of the above temperatures is any steel, which still encompasses a wide range of steels with a wide range of possible compositions and properties, as described in the 35 U.S.C. 112(a) rejection in this Office action which has been updated for amended claim 1.
Applicant argues that claim 1 now recites concrete, actionable process conditions tied to the claimed result (remarks, page 10, emphasis added). Applicant further argues that these are precisely the types of heating and cooling conditions that the specification explains may be used to control residual stress, and they provide sufficient guidance for a person skilled in the art to practice the invention and obtain a hot stamped component meeting the preset condition (remarks, page 10, emphasis added).
However, Applicant also argues that Winkel fails to disclose any configuration corresponding to the residual stress analysis value / preset condition of amended claim 1 (remarks, page 14). Applicant further argues that inherency cannot be established by speculation or by asserting that a property "would" or "might" result; the Office must establish that the missing limitation is necessarily present in the relied-upon prior art configuration (remarks, page 14).
In response, if the claimed process conditions of amended claim 1 are “tied to the claimed result” as argued by Applicant, then any process reading on the claimed step-heating, forming, and cooling steps with the claimed temperatures, rates, and times will necessarily result in the claimed residual stress analysis value, as described in the 35 U.S.C. 103 rejections in this Office action.
While X-ray diffraction (XRD) and electron backscatter diffraction (EBSD) analysis are common methods in the metallurgy arts, the claimed residual stress analysis value and preset condition obtained from a product of XRD and EBSD measurements are not standard in the art and merely describe a resulting property of the hot stamped component obtained by processing with the claimed method steps and parameters. Therefore, absent any clear and convincing evidence and/or arguments to the contrary, one of ordinary skill in the art would reasonably expect the hot stamped component resulting from modified Winkel to necessarily possess the claimed residual stress analysis value and preset condition, despite not explicitly disclosing or measuring this property, as explained in the 35 U.S.C. 103 rejections in this Office action. A prima facie case of obviousness has been properly established herein. As the Patent Office does not possess the laboratory facilities to test any differences in the claimed invention versus that of the reference, the burden shifts to applicant to demonstrate otherwise.
Additionally, Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. In this case, it is unclear what a “configuration” corresponding to the residual stress analysis value / preset condition of amended claim 1 entails. Therefore, it is unclear what processing steps or parameters are missing from Winkel and Tan that would suggest that the hot stamped component resulting from modified Winkel to not have the claimed residual stress analysis value and preset condition of the instant claims. See 112(a) rejection in this Office action.
Applicant argues that Winkel does not disclose these specific press-mold hold and cooling-rate limitations (remarks, page 15). Applicant argues that Winkel and Tan fail to disclose any configuration corresponding to a step-heating rate of about 6-120C/s (remarks, pages 14-16).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this case, Winkel is not relied on to teach the specific press mold hold and cooling rate limitations. The teachings of Tan are relied on for these features, as described in the 35 U.S.C. 103 rejections in this Office action. While Tan does not explicitly disclose a press time, since the blank of Tan will cool from at least 600°C to lower than 100°C at a cooling rate greater than 30°C/s ([0039]), the press time would be approximately 16.7 seconds, which is within the claimed range, and the pressing would occur at a temperature at which martensitic transformation is terminated since the resulting microstructure is mainly martensite. Modified Winkel therefore reads on the instant claims.
Regarding the step-heating rate, Tan teaches step-heating rate in multiple ways. Tan teaches a typical heating rate from room temperature to 700° C is 4-12°C/s and is well-known in the art ([0003], the Background Art section covers what is well-known in the art), which overlaps with the claimed range. In addition to the background information provided by Tan, Tan further teaches inventive examples with a first heating and holding stage of temperatures between 750-880°C and time of heating and holding of 55-90 s (Table 2, Examples 1-9). Using the temperature and time of heating and holding of Tan as a reference point, the heating rate of Tan ranges from 8.44 to 15.45°C/s, which overlaps with the claimed range, as described in the 35 U.S.C. 103 rejections in this Office action.
Applicant further argues that Tan does not disclose a “temperature increase rate in the step-heating while passing a plurality of furnace sections having progressively high temperatures” (remarks, page 16).
In response, the claim reads “wherein, in the step-heating, the temperature increase rate of the blank is within a range of about 6°C/s to about 12°C/s” and not “temperature increase rate in the step-heating while passing a plurality of furnace sections having progressively high temperatures”, as argued by Applicant. The broadest reasonable interpretation for the claimed “temperature increase rate of the blank” “in the step-heating” is any temperature increase rate at any point of the step-heating process. Nevertheless, Tan teaches the temperature increase rate limitation as described above and in the 35 U.S.C. 103 rejections in this Office action.
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 extension fee 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 date of this final action.
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/M.A./Examiner, Art Unit 1733
/REBECCA JANSSEN/Primary Examiner, Art Unit 1733