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 .
Election/Restrictions
Applicant’s election of Group II, claims 9-12 in the reply filed on 11/14/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1-8 and 13-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group II, there being no allowable generic or linking claim.
Status of Claims
Claims 1-18 are pending. Claims 9-12 and 17-18 are presented for this examination. Claims 1-8 and 13-16 are withdrawn. Claims 17-18 are newly added.
Priority
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 07/21/2023, 08/18/2023 and 09/12/2025 and is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 12, 17 and 18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 12 recites the limitation "the aerospace industry" in line 3. There is insufficient antecedent basis for this limitation in the claim.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 17 first recites the broad recitation for the claimed elements, and then the claim also recites “particularly preferably” and “in a particularly preferred manner” which are both the narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 18 recitation TRIP-/TWIP- steel” is unclear as to whether term “-/” means (TRIP and TWIP) or (TRIP or TWIP) steel. Clarification is required.
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.
(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.
Claim(s) 9-10, 12 and 17-18 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Okamoto (JP2019073763).
As for claim 9, instant claim required “for producing a component by cold forming the prepared plate at room temperature” is preamble reciting intended use of claimed product.
Because the preamble merely states the purpose or intended use of the invention, rather than a claim limitation, no patentable weight would be given. See MPEP 2111.02 II or if a Prior Art structure is capable of performing the intended use as recited in the preamble, then it meets the claim.
Okamoto discloses (Abstract) a steel processed part (i.e. claimed prepared plate) prepared by shearing a steel plate (i.e. claimed original plate). Since shearing is to cut the steel plate by applying a shearing force and hence is a mechanical separation, instant claimed at least one separation edge of a mechanical separation from an original plate is expected.
Table 1 ([0057]) Inventive Steel Plate C has Mn=7% with TRIP effect ([0004]) at room temperature.
Instant claimed “wherein the at least one separating edge determines or at least co-determines the dimension of the prepared plate” has been considered. However, since terms “determines” or at least “co-determines” means deciding and reaching conclusion performed by human mind, which a mental function, no patentable distinction is given over prior art.
Instant claimed “wherein TWIP effect induced deformation twins are present in the microstructure at the separation edge” is an inherent characteristic of claimed product due to same Mn containing steel wherein the separating edge is locally heated.
When the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the prior art products necessarily possess the characteristics of the claimed product. See MPEP 2112.01.
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). "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." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)
In the instant case, Okamoto discloses Inventive Steel Plate C with same Mn content wherein the sheared area (i.e. claimed separation edge) is locally heated at similar heating temperature range as required by applicant, claimed inherent characteristic is expected absent evidence of the contrary.
When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either Section 102 or Section 103 is proper. See MPEP 2113.
As for claim 10, Okomoto’s steel processed part reads on claimed component.
As for claim 12, instant claimed wherein clause is a recitation with respect to the manner in which the claimed product is intended to be employed, not what the claimed product is. Hence, it does not patentably distinct from the prior art product. See MPEP 2114.
As for claim 17, Okamoto discloses same Inventive Steel Plate C has every elemental composition within claimed ranges as illustrated in Table 1 below.
Table 1
Element
Applicant
(weight %)
Okamoto et al.
(weight %)
Inventive Steel Plate C
Within
(weight %)
C
0.0005-0.9
0.1
0.1
Mn
4-12
7
7
Al (option)
0-10
0.03
0.03
Si(option)
0-6
0.1
0.1
P(option)
<0.1
0.005
0.005
S(option)
<0.1
0.008
0.008
N(option)
<0.1
0.006
0.006
As for claim 18, Okamoto discloses Inventive Steel Plate C with same Mn content and same TRIP effect. Instant claimed temperature-dependent TTWIP effect is an inherent effect of same TRIP Mn containing steel produced by locally heating the separating edge at 60-250 degree C.
Since Okamoto’s Inventive Steel Plate C is locally heated at the sheared area (i.e. the separation edge) at 200 degree C as required by applicant, claimed inherent effect is expected absent evidence of the contrary.
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) 11 is rejected under 35 U.S.C. 103 as being unpatentable over Okamoto.
As for claim 11, Okamoto’s steel process part is produced by locally heating the sheared area ([0018]) at 200-600 degree C, which overlaps at claimed 60-250 degree C, followed by cold pressing (i.e. claimed cold forming) to form the steel processed part at room temperature ([0038]). Hence, locally heating at 200-600 degree C supports claimed wherein clause. The sheared area suggests mechanically separating with desired dimension as claimed.
A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
That is, based on the teaching of Okamoto, it would have been obvious to one skill in the art, to select the heating temperature within the ranges disclosed by Okamoto in order to arrive at steel of claimed invention.
Claim(s) 9-12 and 17-18 rejected under 35 U.S.C. 103 as being unpatentable over Spitzer (US20100059196).
As for claim 9, Spitzer discloses a hot strip prepared by a shear to separate the hot strip ([0037]) transversely. The sheared hot strip is suitable for cold drawing which suggests cold forming at room temperature as claimed. Presence of a shear (Figures 1-3) suggests claimed at least one separation edge of a mechanical separation from an original plate.
The sheared hot strip has both TRIP and/or TWIP properties (Abstract line 5) comprising a steel having Mn 9-18% (claim 47) which overlaps claimed 4-12%.
A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
Hence, based on the teaching of Spitzer, it would have been obvious to one skill in the art, to select the amount of Mn within the ranges disclosed by Spitzer in order to arrive at steel of claimed invention.
Instant claimed “wherein the at least one separating edge determines or at least co-determines the dimension of the prepared plate” is rejected for the same reason set forth in the rejection of Okamoto.
Instant claimed “wherein TWIP effect induced deformation twins are present in the microstructure at the separation edge” is inherently present due to Spitzer’s explicit disclosure of TWIP properties.
As for claim 10, Spitzer’s sheared hot strip reads on claimed component.
As for claim 11, instant claimed limitations after “produced by” is product by process limitations in a product claim according to MPEP 2113.
According to MPEP 2113, determination of patentability of product is based on the product itself. That is, the patentability of product does not depend on its method of production unless the process of making the claimed product imparts any structural and/or functional limitation and characteristic on the claimed product.
As for claim 12, it is rejected for the same reason set forth in the rejection of Okamoto.
As for claim 17, Table 2 below illustrates overlapping elemental composition range. (claims 41-47)
A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
Hence, based on the teaching of Spitzer, it would have been obvious to one skill in the art, to select the amount of each element within the ranges disclosed by Spitzer in order to arrive at steel of claimed invention.
Table 2
Element
Applicant
(weight %)
Spitzer et al.
(weight %)
Overlaps
(weight %)
C
0.0005-0.9
0.04-1
0.04-0.9
Mn
4-12
9-18
9-12
Al (option)
0-10
0.05-12
0.05-10
Si(option)
0-6
0-6
0-6
P(option)
<0.1
0
0
S(option)
<0.1
0
0
N(option)
<0.1
0
0
As for claim 18, Spitzer’s sheared hot strip has both TRIP and TWIP properties (Abstract). Hence, it is inherently to be temperature dependent TWIP effect. Limitations with respect to how the TWIP effect occurs has been considered. However, it does not provide a patentable distinction over prior art because patentability of product does not depend on its method of production unless the process of making the claimed product imparts any structural and/or functional limitation and characteristic on the claimed product according to MPEP 2113.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNY R WU whose telephone number is (571)270-5515. The examiner can normally be reached on 8:30 AM-5:00 PM.
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/JENNY R WU/Primary Examiner, Art Unit 1733