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 .
Claim Status
No amendment was filed in the response dated 4/1/2026. Claims 1-7 are currently pending, claims 5-7 are withdrawn.
Terminal Disclaimer
The terminal disclaimer filed on 4/1/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US App. Nos. 18267082, 18267435, and 18267428 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hasegawa (US 9290834)(previously cited).
With respect to Claim 1, Hasegawa teaches a high strength steel sheet with excellent formability (i.e. workability), the steel having a composition, in weight%, as follows (col. 4, ln. 41-56; col. 8, ln .27 to col. 9, ln. 55; Table 1):
Claim 1
Hasegawa
Hasegawa, Ex. C
C
0.1-0.25
0.05-0.50
0.20
Si
0.01-1.5
0.01-2.5
1.0
Mn
1.0-4.0
0.5-3.5
2.0
Al
0.01-1.5
0.010-0.5
0.40
P
≤ 0.15
0.003-0.10
0.02
S
≤ 0.03
≤ 0.02
0.003
N
≤ 0.03
≤ 0.0125*
0.002
B
0.0005-0.005
0.0002-0.005
0.002
Fe
Balance with unavoidable impurities
Balance with unavoidable impurities
balance
Other
-
Ti: ≤ 0.05*
Ti: 0.02
*Ti>4N
Compositional ranges including zero are interpreted as optional elements. Thus, Hasegawa teaches a steel sheet with compositional ranges overlapping each of the instantly claimed ranges and examples, such as Ex. C falling within each of the instantly claimed ranges, and therefore, sufficiently specific to anticipate the claimed ranges under 35 U.S.C. 102.
Hasegawa further teaches and teaches specific examples, such as Ex. 12 (having the corresponding composition Ex. C above), comprising fresh martensite, tempered martensite, retained austenite, and bainite and thus, includes each of the required microstructural phases. (Tables 1, 2, and 4; see also col. 4, ln. 52-61; col. 6, ln. 46 to col. 7, ln. 40).
Hasegawa, therefore, teaches a high strength steel sheet having excellent workability, the steel having a composition with sufficient specificity to anticipate the claimed ranges and comprising each of the required microstructural phases. Hasegawa is silent as to the “Relational Expression 1,” drawn to a relationship between the boron content in the fresh martensite and tempered martensite; however, as the reference teaches a steel sheet with the same composition (including boron) and microstructure (including fresh martensite and tempered martensite) it would necessarily be expected to result in the same properties, including the claimed Relational Expression 1.
"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, 195 USPQ 430, 433 (CCPA 1977). Thus, the burden is shifted to the applicant to prove that the product of the prior art does not necessarily or inherently possess the characteristics attributed to the claimed product. See In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (“When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not."); MPEP 2112.01. Therefore, the prima facie case can only be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product.
With respect to Claim 2, the claim requires only one of the limitations (1) to (8). Hasegawa teaches a content of titanium, including specific examples such as Ex. 3, with a content of 0.02 wt% Ti falling within the instantly claimed range of limitation (1) of claim 2. (see rejection of claim 1 above).
Claim Rejections - 35 USC § 103
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.
Claim(s) 3 is rejected under 35 U.S.C. 103 as being unpatentable over Hasegawa (US 9290834)(previously cited) as applied to claim 1 above.
With respect to Claim 3, Hasegawa teaches wherein the steel sheet comprises 60-95% of tempered martensite, 5-20% retained austenite, 10% or less fresh martensite, and 15% or less of bainite and other optional phases, overlapping the instantly claimed ranges. (col. 4, ln. 52-61; col. 6, ln. 46 to col. 7, ln. 40). It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Response to Arguments
Applicant's arguments filed 4/1/2026 have been fully considered but they are not persuasive.
Applicant argues that the claimed ratio of boron content in fresh martensite and the boron content in tempered martensite is critical to achieving desired properties of strength and workability. Applicant further argues that prior art Hasegawa fails to teach this claimed ratio and because the reference does not teach an “identical or substantially identical” method to that instantly disclosed, the claimed feature cannot be inherent to the reference. (Remarks, pgs. 6-8). These arguments have been fully considered but are not found persuasive.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., strength and workability) are not recited in claim 1. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to the claim 1 ratio relating boron content in fresh martensite and the boron content in tempered martensite, it is noted that "[w]here 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, 195 USPQ 430, 433 (CCPA 1977). Thus, the burden is shifted to the applicant to prove that the product of the prior art does not necessarily or inherently possess the characteristics attributed to the claimed product. See In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (“When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not."); MPEP 2112.01. Therefore, the prima facie case can only be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product.
Hasegawa teaches a steel sheet with a composition anticipating that recited in the instant claim 1 and a structure comprising fresh martensite, tempered martensite, retained austenite, and bainite and wherein the steel has both good strength and workability. (see rejection of claim 1). As detailed in the MPEP detailed above, “[w]here 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.”(emphasis added). In other words, it is not necessary to show that the prior art is made by an identical or substantially identical method, where the prior art teaches a structure and composition anticipating or rendering obvious the instant claim. Accordingly, the rejection as presented is sufficient to establish a prima facie case of anticipation or obviousness, as detailed above. MPEP 2112.01.
Furthermore, Applicant fails to provide evidence, commensurate with the scope of the claims to rebut the prima facie case established by Hasegawa. The instant specification contains 43 examples with the boron ratio at issue. (see Tables 8-9). Only two examples, XJ and XK, have a boron ratio outside the claimed range and both examples have a compositional boron content outside the claimed range. (see Table 1, and para. 141-142). As detailed in the rejection, Hasegawa has a compositional boron content anticipating the claimed range of claim 1. Therefore, the evidence of records contains no support that the disclosed method is critical to achieving the boron ratio of claim 1, Applicant fails to rebut the prima facie case of inherency, and Applicant’s arguments are not found persuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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 JOHN A HEVEY whose telephone number is (571)270-0361. The examiner can normally be reached Monday-Friday 9:00-5:30.
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/JOHN A HEVEY/Primary Examiner, Art Unit 1735
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