DETAILED ACTION
Response to Amendment
The Amendment filed 07/30/2026 has been entered. The Examiner notes that the changes in the amended claims filed 07/30/2026 were not indicated by strike-through as required by 37 C.F.R. 1.121 and MPEP § 714 II C. See Claim Objections below.
As a courtesy, the Examiner has examined the improperly marked claim set, rather than returning it to Applicant for correction.
Claims 1, 4, 6, and 7 remain pending in the application. Claims 2, 3, 5, and 8 have been canceled. No new claims have been added.
Claim Objections
Claim 1 is objected to because of the following informalities: the changes in the amended claims were not indicated by strike-through. Specifically, the limitation “such that the reinforced portion and the softened portion are formed in a thickness direction of the product” of amended claim 1 of 02/11/2026 does not appear anywhere in the amended claims of 07/30/2026.
Applicant is reminded of 37 C.F.R. 1.121 and MPEP § 714 II C which states that: (B) Markings to Show the Changes: All claims being currently amended must be presented with markings to indicate the changes that have been made relative to the immediate prior version. The changes in any amended claim must be shown by strike-through (for deleted matter) or underlining (for added matter) with 2 exceptions: (1) for deletion of five or fewer consecutive characters, double brackets may be used (e.g., [[eroor]]); (2) if strike-through cannot be easily perceived (e.g., deletion of number "4" or certain punctuation marks), double brackets must be used (e.g., [[4]]). As an alternative to using double brackets, however, extra portions of text may be included before and after text being deleted, all in strike-through, followed by including and underlining the extra text with the desired change (e.g., number 4 as number 14 as ).
Appropriate correction is required.
Claim Interpretation
Regarding claim 1, amended claim 1 recites the limitation “the heated heating pad contacts the heated base metal together with an upper surface of the first die so as to suppress rapid cooling of a surface of the heated base metal configured to come into contact with the first die” (emphasis added). The court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" See MPEP 2111.04. In this case, the limitation “so as to suppress rapid cooling of a surface of the heated base metal configured to come into contact with the first die” is interpreted as the intended result of the positively recited method step “the heated heating pad contacts the heated base metal together with an upper surface of the first die”. Additionally, one of ordinary skill in the art understands contacting a heated heating pad and heated base metal together will suppress rapid cooling since both surfaces are heated. Prior art teaching contacting the heated heating pad and heated base metal together will be interpreted as reading on the claimed “so as to suppress rapid cooling of a surface of the heated base metal configured to come into contact with the first die”.
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.
Claim 6 is rejected under 35 U.S.C. 112(d), 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.
Claim 6 recites the limitation “wherein, in the cooling the product, the softened portion is formed such that a ratio of a thickness of the softened portion to a total thickness of the product is equal to or less than 30%”. Amended claim 1, on which claim 6 depends, recites “wherein the softened portion is formed such that a ratio of a thickness of the softened portion to a total thickness of the product is equal to or less than 30%”. Since the claimed ratio of a thickness of the softened portion is already included in claim 1, claim 6 fails to further limit the subject matter of the claim upon which it depends.
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.
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, 4, 6, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over US 2015/0000802 A1 of Naitou (as cited in prior Office action) in view of US 2019/0390295 A1 of Nakagawa.
Regarding claims 1, 4, 6, and 7, Naitou teaches a hot-press formed product used for structural members of automobile components and capable of adjusting the strength and ductility according to different regions within the formed product and a method for manufacturing the same ([0001], a method for manufacturing a hot-press formed product reads on the claimed method for manufacturing a hot stamped part since “hot pressing” and “hot stamping” are synonyms).
Regarding claims 1, 4, and 6, Naitou teaches a hot-press forming method for manufacturing components in which a steel sheet is heated to a predetermined temperature, forming is facilitated, the steel sheet is thereafter formed using a tool of a temperature that is lower compared with the case of a thin steel sheet, thereby impartation of a shape and quenching utilizing the temperature difference of the both are executed simultaneously, and the strength after forming is secured ([0003], a steel sheet reads on the claimed preparing a plate-type base metal using an iron-based alloy since a sheet is a plate and steel is an iron-based alloy; steel sheet is heated reads on the claimed heating the prepared base metal; the steel sheet is formed using a tool reads on the claimed forming a product; quenching reads on the claimed cooling the product).
Naitou teaches forming is started in a state the steel sheet (4, Fig. 1, reads on the claimed base metal using an iron-based alloy) is heated to a single-phase zone temperature of Ac3 transformation point or above and is softened, the steel sheet in a high temperature state is sandwiched between the die (2, Fig. 1, reads on the claimed first die and the steel sheet in high temperature state reads on the claimed heated base metal is placed on the first die) and the blank holder (3, Fig. 1), the steel sheet is pressed in to the inside of a hole of the die by the punch (1, Fig. 1, reads on the claimed second die) and is formed into a shape corresponding to the shape of the outer shape of the punch while reducing the outside diameter of the steel sheet ([0006]). Naitou teaches by cooling the punch and the die in parallel with forming, heat removal from the steel sheet to the punch and die is executed, holding and cooling are further executed at a forming bottom dead point, and thereby quenching of the raw material is executed ([0006]).
Naitou teaches passages (1a and 2a, Fig. 1) through which a cooling medium such as water can pass are formed inside of the punch and die, and it is configured that the punch and die are cooled by making the cooling medium pass through these passages ([0005]). Naitou teaches controlling the temperature of the die and punch using these passages to control the average cooling rate during forming ([0063]).
Naitou teaches in the hot-press forming method, by properly controlling the conditions thereof according to each region of the formed product, the metal structure of each region can be adjusted while making retained austenite of a proper amount exist, and the strength and elongation can be properly controlled according to each region by combination of the heat treatment condition and the structure of the steel sheet before forming ([0024], forming multiple regions of different metal structures is the result of using different heating and cooling rates and therefore reads on the claimed while differently maintaining a cooling speed of one surface of the product configured to come into contact with the first die and a cooling speed of a remaining surface of the product configured to come into contact with the second die). Naitou teaches forming at least two regions, for example, a high strength region and a low strength region ([0044]). Since Naitou teaches controlling the temperature of the die and punch to control the average cooling rate during forming and consequently the metal structure of each region, one of ordinary skill in the art understands that the die and the punch can maintain different cooling rates to form the high strength and low strength regions of Naitou in any variety of locations of the hot-press molded article.
Naitou therefore reads on the limitation a method for manufacturing a hot stamped part, the method comprising: preparing a plate-type base metal using an iron-based alloy; heating the prepared base metal; forming a product by inserting the heated base metal between a first die and a second die and then pressing the base metal; and cooling the product formed between the first die and the second die while differently maintaining a cooling speed of one surface of the product configured to come into contact with the first die and a cooling speed of a remaining surface of the product configured to come into contact with the second die of claim 1, and wherein in forming the product, the first die is a heated die and the second die is a cooled die, the heated base metal is placed on the first die of claim 1.
Since the steel sheets of Naitou are heated at 930°C in the first region and 725-800°C in the second region and the tool releasing temperature is 200°C in all steel sheets ([0094], Table 2), the first die is heated to a temperature range of 300-450°C at some point in the process given that those temperatures are between the heating and the final cooling temperature.
Naitou therefore reads on the limitation the first die is heated to a temperature range of 300-450˚C of claim 1.
Naitou teaches the punch has a protrusion and the die has a cavity with a pad, as shown in Fig. 2. Since the pad is in contact with the heated steel sheet and die, one of ordinary skill in the art would reasonably expect the pad to also be heated and the configuration of Naitou therefore reads on the claimed when the heated base metal is placed on the first die, the heated heating pad contacts the heated base metal together with an upper surface of the first die so as to suppress rapid cooling of a surface of the heated base metal configured to come into contact with the first die of claim 1. Additionally, one of ordinary skill in the art also understands the pad moves within the cavity when the punch is pressed onto the steel sheet and allows for the steel sheet to be shaped within the resulting space.
Naitou therefore reads on the limitation wherein: in forming the product, a cavity having a recessed shape is formed in the first die, a protrusion having a protruding shape is formed on the second die so as to be inserted into the cavity, and a heated heating pad is disposed in the cavity of the first die of claim 1, wherein, when the heated base metal is placed on the first die, the heated heating pad contacts the heated base metal together with an upper surface of the first die so as to suppress rapid cooling of a surface of the heated base metal configured to come into contact with the first die of claim 1 and wherein: in forming the product, while the second die comes close to the first die and thus presses the heated base metal placed on the first die, the heating pad is inserted into a recess of the first die by pressing force of the second die of claim 4.
Regarding the portions of claim 1, Naitou teaches the hot-press molded article having a first region having a metal structure containing both 80-97 area % of martensite and 3-20 area % of residual austenite, the remaining structure comprising no more than 5 area %, and a second region having a metal structure comprising 30-80 area % of ferrite, less than 30 area % (exclusive of 0 area %) of bainitic ferrite, no greater than 30 area % (exclusive of 0 area %) of martensite, and 3-20 area % of residual austenite ([0019], [0105], first region reads on the claimed reinforced portion having a martensite structure; second region reads on the claimed softened portion having ferrite and bainite structures; bainitic ferrite is also known as ferritic bainite as is considered a bainite structure).
Naitou therefore reads on the limitation wherein, in the cooling the product, a softened portion having ferrite and bainite structures is formed from the surface of the product and a reinforced portion configured to have a martensite structure is formed from the remaining surface of the product of claim 1.
Regarding the sequential layer limitation of claim 1, Naitou teaches forming regions of different structures, but does not limit the location of said regions. Naitou teaches the method can be applied to more complex shapes ([0064]) and can apply more than two forming regions ([0042]).
However, Naitou does not explicitly disclose wherein, in the cooling the product, a softened portion having ferrite and bainite structures is formed from the surface of the product configured to come into contact with the first die, and a reinforced portion configured to have a martensite structure is formed from the remaining surface of the product configured to come into contact with the second die of claim 1, wherein, in a portion of the product corresponding to the cavity and the protrusion, the softened portion is formed from the surface configured to come into contact with the first die, the reinforced portion is formed from the remaining surface configured to come into contact with the second die, and a transition portion having ferrite, bainite, and martensite structures is formed between the softened portion and the reinforced portion, wherein the softened portion, the transition portion, and the reinforced portion are sequentially formed in this order in the thickness direction of the product, and wherein the softened portion is formed such that a ratio of a thickness of the softened portion to a total thickness of the product is equal to or less than 30% of claim 1 and wherein, in the cooling the product, the softened portion is formed such that a ratio of a thickness of the softened portion to a total thickness of the product is equal to or less than 30% of claim 6.
Regarding the sequential layer structure of claim 1, Nakagawa teaches a hot pressed part comprising a steel microstructure in which, in a thickness direction of the hot pressed part, a surface layer is a soft layer, an inside is a hard layer, a layer between the soft layer and the hard layer is a transition layer, and a total thickness of the soft layer is 5% or more and 25% or less of a thickness of the hot pressed part (claim 1).
Nakagawa and Naitou are considered analogous art since they are similarly concerned with hot stamped steel parts with regions of varying microstructures for automobile applications and are therefore in the same field of endeavor and solve similar technical problems.
Nakagawa teaches it is important to form the steel microstructure of the hot pressed part as a gradient microstructure that changes in the thickness direction, that is, a gradient microstructure made up of a hard layer contributing to strength, a soft layer contributing to bendability, and a transition layer between the hard layer and the soft layer in the thickness direction to achieve both high strength and bendability for automotive parts ([0018], [0003], hard layer is analogous to claimed reinforced portion; soft layer is analogous to claimed softened portion; transition layer reads on claimed transition portion). Nakagawa teaches the soft layer thickness improves bendability of the hot pressed part and that if the total thickness is less than 5%, the bendability is insufficient, and if the thickness of the soft layer is more than 25% of the thickness of the pressed part, the desired strength cannot be achieved ([0122]-[0125], the soft layer thickness meets the claimed equal to or less than 30%). Nakagawa teaches the gradient microstructure is obtained by appropriately adjusting the manufacturing conditions of a steel sheet for hot press, appropriately adjusting the forming start temperature in press forming ([0018]).
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 Naitou with the gradient microstructure of Nakagawa to obtain a soft layer, transition layer, and hard layer in a thickness direction, and adjusting and varying the soft layer thickness, such as within claimed ranges, to achieve both high strength and bendability required for automotive parts, as taught by Nakagawa.
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.
Since Naitou teaches controlling conditions to adjust the metal structure of each region and teaches the punch has a protrusion and the die has a cavity with a pad, as shown in Fig. 2, as described above, one of ordinary skill in the art would reasonably adjust the die of Naitou to form the second region of Naitou, the punch to form the first region of Naitou, and would reasonably expect a transition region to form between the first and second region of Naitou, as taught by Nakagawa.
Additionally, the change in form or shape, without any new or unexpected results, is an obvious engineering design. See In re Dailey, 149 USPQ 47 (CCPA 1976) (see MPEP § 2144.04). In this case, applying the method of Naitou to obtain the hot stamped part with the layered structure of Nakagawa is an obvious engineering design since the broader disclosure of Naitou allows for the formation of regions with different microstructures without limiting their location in the hot stamped part and Nakagawa teaches a layered structure is advantageous to obtain a hot stamped part with both strength and bendability.
Modified Naitou therefore reads on the limitations wherein, in the cooling the product, a softened portion having ferrite and bainite structures is formed from the surface of the product configured to come into contact with the first die, and a reinforced portion configured to have a martensite structure is formed from the remaining surface of the product configured to come into contact with the second die of claim 1, wherein, in a portion of the product corresponding to the cavity and the protrusion, the softened portion is formed from the surface configured to come into contact with the first die, the reinforced portion is formed from the remaining surface configured to come into contact with the second die, and a transition portion having ferrite, bainite, and martensite structures is formed between the softened portion and the reinforced portion, wherein the softened portion, the transition portion, and the reinforced portion are sequentially formed in this order in the thickness direction of the product, and wherein the softened portion is formed such that a ratio of a thickness of the softened portion to a total thickness of the product is equal to or less than 30% of claim 1 and wherein, in the cooling the product, the softened portion is formed such that a ratio of a thickness of the softened portion to a total thickness of the product is equal to or less than 30% of claim 6.
Modified Naitou therefore reads on all limitations of claims 1, 4, and 6.
Regarding claim 7, modified Naitou teaches the method of claim 1 as described above.
Naitou teaches, for the first forming region, the heating temperature is preferably (Ac3 transformation point+50°C) or above, and 950°C or below and the average cooling rate of 20° C./s or more inside the tool ([0049]-[0050], reads on the claimed the cooling speed of the remaining surface of the product configured to come into contact with the second die is equal to or higher than 27 ˚C/s in a temperature section of 850-250˚C). 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.
Naitou teaches, for the second forming region, it is preferable to execute cooling with the average cooling rate of 10° C./s or less to a temperature of 700° C or below and 500° C or above ([0059], reads on the claimed the cooling speed of the surface of the product configured to come into contact with the first die is 3-5 ˚C/s in a temperature section of 850-500˚C). 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 Naitou therefore reads on the limitation wherein, in the cooling the product, the cooling speed of the surface of the product configured to come into contact with the first die is 3-5 ˚C/s in a temperature section of 850-500˚C, and the cooling speed of the remaining surface of the product configured to come into contact with the second die is equal to or higher than 27 ˚C/s in a temperature section of 850-250˚C of claim 7.
Modified Naitou therefore reads on all limitations of claims 1, 4, 6, and 7.
Response to Arguments
Applicant's arguments filed 07/30/2026 have been fully considered but they are not persuasive.
Applicant argues that Naitou does not disclose or suggest the amended claim 1 configuration in which, in a portion of the product corresponding to the cavity and the protrusion, the heated heating pad contacts the heated base metal together with the upper surface of the first die to suppress rapid cooling of the first-die-contact surface, and the softened portion, the transition portion, and the reinforced portion are sequentially formed in this order in the thickness direction of that product portion (remarks, pages 6-7).
In response, the Examiner notes that the arguments are directed to amended limitations that were introduced after the Non-Final Rejection mailed 04/30/2026. The amended claims are rejected in this Office action under 35 U.S.C. 103 as being unpatentable over US 2015/0000802 A1 of Naitou (as cited in prior Office action) in view of US 2019/0390295 A1 of Nakagawa, as described in the 35 U.S.C. 103 section herein.
Regarding the sequential portions of claim 1, Applicant argues that the first region and second region in Naitou, including those shown in Fig. 3, do not disclose this through-thickness sequential formation in a single corresponding product portion (remarks, page 7). Applicant argues that Naitou does not disclose forming the softened portion from the first-die-contact surface in the claimed through-thickness sequential structure, and therefore, Naitou also does not disclose or suggest forming that softened portion such that the ratio of the thickness of the softened portion to the total thickness of the product is equal to or less than 30% (remarks, page 8). Applicant argues that the region-based cooling conditions of Naitou do not provide a technical reason or specific means to arrive at the amended thickness-direction sequential formation (remarks, page 8).
In response, the amended claims are rejected under 35 U.S.C. 103 as being unpatentable over US 2015/0000802 A1 of Naitou (as cited in prior Office action) in view of US 2019/0390295 A1 of Nakagawa, as set forth in this Office action. Specifically, Nakagawa teaches it is important to form the steel microstructure of the hot pressed part as a gradient microstructure that changes in the thickness direction, that is, a gradient microstructure made up of a hard layer contributing to strength, a soft layer contributing to bendability, and a transition layer between the hard layer and the soft layer in the thickness direction to achieve both high strength and bendability for automotive parts ([0018], [0003], hard layer is analogous to claimed reinforced portion; soft layer is analogous to claimed softened portion; transition layer reads on claimed transition portion). Nakagawa teaches the soft layer thickness improves bendability of the hot pressed part and that if the total thickness is less than 5%, the bendability is insufficient, and if the thickness of the soft layer is more than 25% of the thickness of the pressed part, the desired strength cannot be achieved ([0122]-[0125], the soft layer thickness meets the claimed equal to or less than 30%). Nakagawa teaches the gradient microstructure is obtained by appropriately adjusting the manufacturing conditions of a steel sheet for hot press, appropriately adjusting the forming start temperature in press forming ([0018]).
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 Naitou with the gradient microstructure of Nakagawa to obtain a soft layer, transition layer, and hard layer in a thickness direction, and adjusting and varying the soft layer thickness, such as within claimed ranges, to achieve both high strength and bendability required for automotive parts, as taught by Nakagawa.
Regarding the heating pad of claim 1, Applicant argues that even if Naitou is understood to include a punch, a die, and a pad for forming a hat-shaped product, Naitou does not disclose that the pad is a heated heating pad that contacts the heated base metal together with an upper surface of the first die so as to suppress rapid cooling of the surface configured to come into contact with the first die (remarks, page 7). Applicant argues that Naitou also does not disclose using such rapid-cooling suppression to form a softened portion from that surface while forming a reinforced portion from the opposite surface and a transition portion between them (remarks, page 7).
In response, Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections. In this case, the amended claims are rejected under 35 U.S.C. 103 as being unpatentable over US 2015/0000802 A1 of Naitou (as cited in prior Office action) in view of US 2019/0390295 A1 of Nakagawa, as set forth in this Office action. While Naitou does not explicitly disclose the term “suppressing rapid cooling”, one of ordinary skill in the art understands this limitation is the result of the positively recited method step of contacting the heating pad and heated base metal together (see Claim Interpretation in this Office action), which is taught by Naitou as described in this Office action. Furthermore, Naitou and Nakagawa both teach forming a second region or soft layer containing ferrite and bainite, which reads on the claimed softened region. One of ordinary skill in the art understands forming the soft layer of modified Naitou cannot be achieved unless “rapid cooling suppression” happens since rapid cooling would form a martensitic structure instead of a ferritic structure.
Citation of Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2018/0363079 A1 of Wilden is considered relevant to claim 1. Wilden teaches a device for heat treating a component setting a temperature difference between at least one first sub-region and at least one second sub-region of the component and forming and/or cooling the component in a press hardening tool (claim 1, Fig. 2 shows 3 and 13 as different sub-regions in a thickness direction).
Conclusion
Applicant’s amended claim 1 now recites, among other things, the limitation “wherein the softened portion, the transition portion, and the reinforced portion are sequentially formed in this order in the thickness direction of the product” which requires a hot stamped structure that was not present in prior claim sets. 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