DETAILED ACTION
Claims 1 and 4-12 are pending, and claims 1 and 4-6 are currently under review.
Claims 2-3 are cancelled.
Claims 7-12 are withdrawn.
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
The amendment filed 12/15/2025 has been entered. Claims 1 and 4-12 remain(s) pending in the application. Applicant’s amendments to the Claims have overcome each and every 112(b) rejection previously set forth in the Non-Final Office Action mailed 9/16/2025.
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 and 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoo et al. (KR20190001493, US 2021/0147955 referred to as English translation) alone or alternatively further in view of Hayashi et al. (JP2005068548, machine translation referred to herein).
Regarding claim 1, Yoo et al. discloses a steel for hot stamping having a composition as seen in table 1 below [abstract, 0006]. The examiner notes that the overlap between the composition of Yoo et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I). Yoo et al. further teaches that the Ti forms precipitates of carbonitrides [0053]. Although Yoo et al. does not disclose that the precipitates serve to trap hydrogen, the examiner submits that this feature would naturally flow from the prior art because one of ordinary skill would understand that Ti precipitates would naturally be able to trap hydrogen.
Alternatively, Yoo et al. does not expressly teach that the precipitates are fine and trap hydrogen as claimed. However, the examiner submits that a similar, overlapping precipitate size and function would have naturally flowed from the disclosure of Yoo et al. See MPEP 2112 & MPEP 2144.05(I). The instant specification discloses obtaining the claimed steel by following process steps as seen in table 1 below. Yoo et al. also discloses an overlapping processing method as shown in table 1 below. One of ordinary skill would understand that steel microstructure, including precipitate parameters, are directly influenced by steel composition and processing. Since Yoo et al. discloses an overlapping steel composition and method of manufacture, a substantially similar, overlapping precipitate size and capability of trapping hydrogen would have naturally flowed absent concrete evidence to the contrary. See MPEP 2112 & MPEP 2144.05(I).
Alternatively, Yoo et al. does not teach that the precipitates are fine and trap hydrogen as claimed. Hayashi et al. discloses that precipitates of elements such as Ti are known to act as hydrogen trapping sites, and Hayashi et al. further discloses that it is known to control precipitates sizes to be 0.001 to 5 micrometers to achieve desirable properties and trapping effects [0015-0016]. The examiner submits that the aforementioned size of Hayashi et al. meets the limitation of “fine” according to broadest reasonable interpretation.
Hayashi et al. further teaches controlling precipitate parameters to have a size of 0.001 to 5 micrometers and a density of 100 to 10^13 per square millimeter (or approximately 0.0001 to 10^7 per square micrometer) to achieve desirable properties [0015-0017]. Hayashi et al. further discloses a narrow standard deviation overlapping with the claimed range (ie. includes all 100% of the particles meeting the aforementioned parameter) [0018]. The examiner notes that the above parameters overlap with those as claimed. See MPEP 2144.05(I). Hayashi et al. does not expressly teach an amount of activated hydrogen as claimed; however, this feature is met by the disclosure of Yoo et al. below.
Alternatively, Yoo et al. does not teach further precipitate parameters of number density or diameter; and Yoo et al. does not expressly teach an amount of activated hydrogen as claimed. However, as stated above, since Yoo et al. discloses an overlapping steel composition and method of manufacture, substantially similar, overlapping precipitate parameters of number density, diameter, and interparticle distance would have naturally flowed absent concrete evidence to the contrary. See MPEP 2112 & MPEP 2144.05(I). The examiner’s position is further bolstered by the similar mechanical properties of tensile strength above 1400 MPa and bendability of up to approximately 60 degrees achieved by Yoo et al. [0012, table4], which is substantially similar to the mechanical properties achieved by the instant application and expressly disclosed to be directly affected by the claimed features of precipitate number density, diameter, and activated hydrogen amount [table3 instant spec.].
Table 1.
Element (wt.%)
Claim 1 (wt.%)
Yoo et al. (wt.%)
C
0.28 – 0.5
0.2 – 0.5
Si
0.15 – 0.7
0.05 – 1
Mn
0.5 – 2
0.1 – 2.5
P
0 – 0.05
0 – 0.015
S
0 – 0.01
0 – 0.005
Cr
0.1 – 0.5
0.05 – 1
B
0.001 – 0.005
0.001 – 0.009
Ti, Nb, and/or V
0 – 0.1
Ti: 0.01 – 0.09
Fe & Impurities
Balance
Balance
Processing Parameters
Instant spec. [0076-0087]
Yoo et al. [0060-0072]
Slab heating at 1180 to 1280 degrees C
Slab heating at 1200 to 1250 degrees C
Hot rolling and finish rolling at 830 to 930 degrees C
Hot rolling and finish rolling at 880 to 950 degrees C
Cooling and coiling at 700 to 780 degrees C
Cooling and coiling at 680 to 800 degrees C
Optional cold rolling at 30 to 70% reduction
Cold rolling at 60 to 80% reduction
Annealing at 700 degrees C or higher
Annealing at 740 to 820 degrees C
Optional hot dip galvanizing at 650 to 700 degrees C
Hot dip galvanizing at 650 to 660 degrees C
Regarding claims 4-6, Yoo et al. discloses the steel of claim 1 (see previous). Yoo et al. does not teach further precipitate parameters of number density, diameter, and interparticle distance as claimed. However, as stated above, since Yoo et al. discloses an overlapping steel composition and method of manufacture, substantially similar, overlapping precipitate parameters of number density, diameter, and interparticle distance would have naturally flowed absent concrete evidence to the contrary. See MPEP 2112 & MPEP 2144.05(I).
Alternatively, regarding claims 4-5, Hayashi et al. further teaches controlling precipitate parameters to have a size of 0.001 to 5 micrometers and a density of 100 to 10^13 per square millimeter (or approximately 0.0001 to 10^7 per square micrometer) to achieve desirable properties [0015-0017]. Hayashi et al. further discloses a narrow standard deviation overlapping with the claimed range (ie. includes all 100% of the particles meeting the aforementioned parameter) [0018]. The examiner notes that the above parameters overlap with those as claimed. See MPEP 2144.05(I).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoo et al. (KR20190001493, US 2021/0147955 referred to as English translation) alone or alternatively further in view of Hayashi et al. (JP2005068548, machine translation referred to herein) as applied to claim 1 above, and further in view of Kikuchi et al. (JP2006063360, machine translation referred to herein).
Regarding claim 6, the aforementioned prior art discloses the steel of claim 1 (see previous). The aforementioned prior art does not expressly teach an interparticle spacing as claimed. Kikuchi et al. discloses that it is known to control the distance between fine Ti precipitates in steel to be 30 to 300 nanometers to improve properties such as strength [0056-0057]. Therefore, it would have been obvious to one of ordinary skill to modify the steel of the aforementioned prior art by controlling a distance between Ti precipitates to be 30 to 300 nanometers for the aforementioned benefit disclosed by Kikuchi et al., which overlaps with the claimed range. 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 4-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-8 of copending Application No. 18/718,328 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the overlap between the limitations of the instant claims and the copending claims is prima facie obvious. 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 filed 12/15/2025 regarding the rejections over Yoo et al. have been fully considered but they are not persuasive.
Applicant argues that Yoo et al. is silent regarding the claimed precipitate features and further argues that the claimed ranges achieve critical and unexpected results of good mechanical properties after hot stamping in view of specimens K-T in the instant specification. The examiner cannot concur. Firstly, as stated above, although Yoo et al. is indeed silent regarding the claimed features, since Yoo et al. discloses a substantially similar steel (as explained above), overlapping substantially similar precipitate properties and activated hydrogen amounts would have naturally flowed. Secondly, the examiner cannot consider the claimed features to achieve unexpected and critical results because the purported benefits of improved mechanical properties are entirely disclosed by Yoo et al. See MPEP 716.02(c). Specifically, as stated above, Yoo et al. discloses mechanical properties of tensile strength above 1400 MPa and bendability of up to approximately 60 degrees [0012, table4], which is substantially similar to the properties purported to be unexpected and significant by applicant [table3 instant spec.]. In other words, the beneficial results of controlling precipitate parameters and activated hydrogen amounts as claimed are entirely expected rather than unexpected as they are expressly disclosed by Yoo et al.
Applicant then argues that the claims further recite a particular cooling temperature to control precipitate parameters. The examiner cannot concur. The instant claims under review do not recite any limitation of cooling behaviors. Even if the claims did recite cooling parameters, the examiner notes that the instant claims are directed to a product, not a process, wherein the patentability of a product does not depend on its method of production. See MPEP 2113.
Applicant's arguments filed 12/15/2025 regarding the double patenting rejections have been fully considered but they are not persuasive.
Applicant requests the double patenting rejections be held in abeyance. This is not proper. Double patenting rejections may be overcome through substantial amendment or filing of a terminal disclaimer. See MPEP 804. Accordingly, the double patenting rejections still stand.
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 NICHOLAS A WANG whose telephone number is (408)918-7576. The examiner can normally be reached usually M-Th: 7-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 5712721177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734