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
Claims 1 and 5-7 are examined in the office action of which claims 1, 5 and 7 were amended.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 5-6 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by US 2013/0095347 A1 of Kawasaki (US’347).
Regarding claims 1 and 6, US 2013/0095347 A1 of Kawasaki (US’347) teaches “[0001] The present invention relates to a hot-stamped steel that is excellent in terms of balance between strength and toughness. Particularly, the present invention relates to a hot-stamped steel having a strength of 1470 MPa or more and a sufficient energy absorption capability. In addition, the present invention relates to a method of producing a steel sheet for hot stamping that is applied to parts manufactured through hot stamping, and a method of producing a hot-stamped steel in which this steel sheet for hot stamping is used.” “[0012] (1) A hot-stamped steel according to an aspect of the present invention includes, by mass %, C: 0.20% to 0.35%, Si: 0.1% to 0.5%, the total of at least one selected from Mn and Cr: 1% to 3%, Al: 0.005% to 0.06%, Ti: 0.002% to 0.1%, Nb: 0.002% to 0.1%, O: 0.003% to 0.007%, and a balance of iron and inevitable impurities, wherein P is limited to 0.015% or less, S is limited to 0.01% or less, and N is limited to 0.004% or less, the dimensional ratio of the lengths of prior austenite grains in a rolling direction to the lengths of the prior austenite in the sheet thickness direction is 1.3 to 2.5, the average grain size of the prior austenite grains is 6 μm or less, the microstructure includes 98% or more of martensite, and the tensile strength is 1470 MPa or more. [0013] (2) The hot-stamped steel according to the above (1) may further include, by mass %, one or more of B: 0.005% or less, V: 0.1% or less, Mo: 0.5% or less, Ca: 0.03% or less, Mg: 0.03% or less, REM: 0.03% or less, Cu: 0.5% or less, Sn: 0.1% or less, Ni: 0.5% or less, and W: 1% or less. [0014] (3) The hot-stamped steel according to the above (1) or (2) may further comprise a coating layer formed by solidification of molten metal on the surface.” and points out a specific examples in Table 2 for instance Steel A-D & G,H {Table 2 [0083]} that has PAG diameter and martensite that lies within the claimed range thereby anticipating the instant claims. See MPEP § 2131.03 I.
Regarding claims 1 and 5, it is noted that the prior art is silent regarding its alloy having the properties of the fractions of low angle grain boundary, special grain boundary and random grain boundaries as recited in the instant claims. 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 alloy of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in structure or composition, b) the claimed and prior art products are identical or substantially identical in structure or composition (martensite with PAG of specific size) and c) the claimed and prior art products are produced by identical or substantially identical processes {Prior art: [0001], [0010]-[0026], [0083]}. 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).
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 7 is rejected under 35 U.S.C. 103 as being unpatentable over US 2013/0095347 A1 of Kawasaki (US’347).
Regarding claim 7, US 2013/0095347 A1 of Kawasaki (US’347) teaches “[0001] The present invention relates to a hot-stamped steel that is excellent in terms of balance between strength and toughness. Particularly, the present invention relates to a hot-stamped steel having a strength of 1470 MPa or more and a sufficient energy absorption capability. In addition, the present invention relates to a method of producing a steel sheet for hot stamping that is applied to parts manufactured through hot stamping, and a method of producing a hot-stamped steel in which this steel sheet for hot stamping is used.” with a composition wherein the claimed ranges of the constituent elements ([0010]-[0026], [0047]-[0068]) of the instant alloy of the instant claims overlap or lie inside the ranges of various elements of the alloy of the prior art as shown in the List 1 above. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed composition over the prior art disclosure since the prior art teaches the similar property/utility throughout the disclosed 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.
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 and 5-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/079,332 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the copending application teaches a hot stamping component with substantially identical composition, microstructure and properties.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 5-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18/079,493 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the copending application teaches a hot stamping component with substantially identical composition, microstructure and properties.
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 filed 9/2/2025 have been fully considered but they are not persuasive.
Regarding the arguments that the prior art would not have the recited properties, Applicant's arguments filed 9/2/2025 have been fully considered but they are not persuasive. As noted above, it is expected that the alloy of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in structure or composition, b) the claimed and prior art products are identical or substantially identical in structure or composition (martensite with PAG of specific size) and c) the claimed and prior art products are produced by identical or substantially identical processes {Prior art: [0001], [0010]-[0026], [0083]}. Furthermore, Applicant’s own data buttresses the position that prior art would have the recited limitations of the grain boundary as Applicant’s data in Table 2 shows that all samples having prior austenite grain size between 10 and 25 microns would also have the recited fractions of low-angle grain boundary and special grain boundary {See instant specification Table 2 Examples 1-6}.
Regarding the double patenting rejections, the rejections have been maintained and modified in view of the amendments.
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 JOPHY S. KOSHY whose telephone number is (571)272-0030. The examiner can normally be reached M-F 8:30 AM- 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KEITH HENDRICKS can be reached at (571)272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733