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 .
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/09/2026 has been entered.
Status of the Claims
Claim 8-11, 13, and 16-17 have been cancelled; Claims 1 and 12 have been amended; Claims 4-7, 15-19, 23-24, 27, and 29 are withdrawn as non-elected claims, Claims 1-3, 12, 14, 20-22, 25-26, and 28 remain in examination, wherein claim 1 is an independent claim.
Claim Objections
Claim 1 is objected to because of the following informalities: proper up limit should be added for the weight percent Cr since the instant steel alloy based on Fe. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 12 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. In the instant case, Claim 12 depends on claim 1 and claim 1 indicates including at least 1 weight percent of Cr. Therefore, proper up limit for Cr in the instant claim 12 should be added in the claimed limitation. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. Proper amendment is necessary.
. 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 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.
Claim(s) 1-3, 12, 14, 20-22, 25-26, and 28 are rejected under 35 U.S.C. 103 as being unpatentable over by Hoffmann et al (US-PG-pub 2003/0145911 A1, thereafter PG’911) alone, or further in view of Scott et al (US-PG-pub 2019/0211428 A1, listed in IDS field on 3/22/2024, corresponding to US 11,131,011 B2, thereafter PG’428).
Regarding claims 1-3, 12, 14, 20-22, 25-26, and 28, PG’911 teaches an Fe--Mn--Al--Si light steel and steel strip or sheet steel having good cold formability and high strength (Abstract, examples, and claims of PG’911), which reads on the claimed steel as recited in the instant claims. The comparison between the claimed alloy composition ranges in the instant claims and alloy composition disclosed in the example #B in table 1 of PG’911 has been listed in following table. All of the essential alloy composition ranges disclosed in the example #B in table 1 of PG’911 are within the claimed alloy composition ranges. PG’911 specify forming up to purely austenite microstructure in the alloy (par.[0015] of PG’911). It is noted that the example #B in table 1 of PG’911 does not specify the claimed Cu range (cl.1), Cr range (cl.12), Ti range (cl.14), and Ni range cl.25), however, PG’911 specify adjusting the element amount in the range of < 3wt%Cu (cl.1); < 10 wt% Cr (par.[0003]-[0004]); < 0.3 wt% Ti (Cl.1); and < 10 wt% Ni (par.[0003]-[0004]), which overlaps the claimed Cu range (cl.1), Cr range (cl.1,12), Ti range (cl.14), and Ni range cl.25). Overlapping in the alloy element ranges creates a prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize amount of Cu range (cl.1), Cr range (cl.1,12), Ti range (cl.14), and Ni range cl.25) form the disclosures of PG’911 since PG’911 teaches the same austenitic Fe-Mn-Al-Si steel throughout whole disclosing range. The claimed relative reduction is recognized as process limitation in a product-by-process claim. The claimed steel alloy in the instant claim manipulated by the alloy product composition and property itself. Therefore, the relative reduction in the instant claim do not add weight on the patentability of the instant claims. MPEP 2113 [R-1].
In alternate, still regarding claims 1 and 21, PG’911 does not specify the claimed relative reduction as claimed in the instant claims 1 and 21. PG’428 teaches TWIP austenitic Fe-Mn-C steel to improve hydrogen degradation property (Abstract, examples, and par.[0021] of PG’428), All of the alloy composition ranges disclosed by PG’428 (claims, examples, and par.[0024]-[0038] and [0076]-[0097] of PG’428) and applying less than 30% reduction (Cl.14 par.[0050] and [0071] of PG’428), which overlap the claimed alloy composition ranges and relative reduction in as claimed in the instant claims 1 and 21, which create a prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the relative reduction from the disclosure of PG’428 for the alloy PG’911 in order to obtain a TWIP austenitic Fe-Mn-C steel to improve hydrogen degradation property throughout whole disclosing range. (Claims, examples, and abstract of PG’428). Regarding the amended features in the instant claims 1 and 12, PG’428 indicates adding from trace amount to 2 wt% Cr in the alloy (par.[0037] of PG’428), which overlaps the claimed Cr range in the instant claims 1 and 12, which creates prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the Cr amount from the disclosure of PG’428 for the alloy PG’911 in order to obtain a TWIP austenitic Fe-Mn-C steel to improve hydrogen degradation property throughout whole disclosing range. (Claims, examples, and abstract of PG’428).
Element
From instant Claims 1-3, 20-21, 26, and 28 (wt%)
Example #B in table 1 of PG’911 (wt%)
within range
(wt%)
Mn
15-30 (cl.1)
18-30 (cl.3)
20
20
C
0.15-1 (cl.1)
0.2-1 (cl.2)
0.5
0.5
Al
0.05-3 (cl.1)
1.2-3 (cl.26)
3
3
Cu
0.2-2
--
Adjusting < 3 (cl.1)
Overlapping range: 0.2-3
Si
1-4 (cl.1)
1.5-3.5 (cl.28)
3
3
Cr
At least 1
--
< 10 (par.[0003]-[0004])
>0-2 (par.[0037] of PG’428)
Overlapping range: 1-<10 (PG’911)
1-2 (PG’428)
Austenite vol%
At least 99 (cl.1)
At least 99.5 (cl.20)
100% (par.[0015] of PG’911)
100%
Relative Reduction area%
< 20 (cl.1)
<15 (cl.21)
Process limitations in a P-B-P claim
Fe
Balance
Balance
Balance
From instant claim 12
Cr
Up to 3.5
< 10 (par.[0003]-[0004] of PG’911)
>0-2 (par.[0037] of PG’428)
Overlapping range: up to 3.5 (PG’911)
0-2 (PG’428)
From instant claim 14
Ti
0.02-0.5
< 0.3 (Cl.1)
Overlapping range: 0.02-0.5
From claim 25
Ni
0.8-2.5
< 10 (par.[0003]-[0004])
Overlapping range 0.8-2
From instant claim 22
Example #11 in table 2 of PG’428
Within range
TS (MPa)
>700
825
949
Total elongation (%)
>50
Reduction 30-75%
Overlapping >50-75
Notes: Frommeyer et al (US 6,387,192 B1) is cited as reference only.
. Response to Arguments
Applicant’s arguments to the art rejection to Claims 1-3, 12, 14, 20-22, 25-26, and 28 have been considered but they are moot in view the new ground rejection as stated above. Regarding the Applicant’ arguments related to the amended features in the instant claims, the Examiner’s position has been sated as above.
The Applicant’s arguments are summarized as following:
Hoffmann et al (PG’911) does not include Cr in the alloy (refer to the table on par.[0009] of PG’911). The Cr range is from cited prior art(s), which should not be considered as alloy element in the PG’911’ alloy.
In response,
Regarding the Applicant’s argument, although table on par.[009] of Hoffmann et al (PG’911) does not included Cr, there is no evidence in Hoffmann et al (PG’911) to exclude Cr from the alloy. As indicated by the Applicant, the cited reference in Hoffmann et al (PG’911) indicates including < 10 wt% Cr (par.[0003]-[0004]), which overlaps the claimed Cr range. MPEP 2144 05 I. In alternately, PG’428 indicates adding from trace amount to 2 wt% Cr in the alloy (par.[0037] of PG’428), which overlaps the claimed Cr range in the instant claims, which creates prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the Cr amount from the disclosure of PG’428 for the alloy PG’911 in order to obtain a TWIP austenitic Fe-Mn-C steel to improve hydrogen degradation property throughout whole disclosing range. (Claims, examples, and abstract of PG’428).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIE YANG whose telephone number is (571)270-1884. The examiner can normally be reached on IFP.
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/JIE YANG/Primary Examiner, Art Unit 1734
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