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
An amendment, filed 12/8/2025, is acknowledged. Claims 1-2, 10, and 19 are amended. Claims 1-20 are currently pending.
The rejection of claims 2, 10, and 19 under 35 U.S.C. 112(b) is withdrawn in view of Applicant’s amendments to the claims.
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.
Claims 1, 3, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Cho (US 2016/01312331)(previously cited) alone or in the alternative, in view of Thomas (US 2009/0242086)(previously cited).
With respect to claim 1, Cho teaches a method for forming a steel sheet for forming automotive components (i.e. vehicle components), the method comprising heating a steel blank to an austenitization temperature, pressing (i.e. stamping) the blank with a die assembly to form a component, wherein the pressed/stamped steel is cooled in the die and the microstructure of the steel is converted from austenite to martensite (thus, teaching a vehicle component having a martensitic microstructure), wherein the blank is hot stamped and cooled in the die for a time of, for example, 8-12 seconds to a temperature lower than 200° C, and the resulting steel component has a tensile strength of 1700 MPa or higher and teaches examples with yield strength exceeding 1400 MPa. (para. 1-3, 12-13, 14-16, 89-92, 97, 106; Tables 2, 4).
It is known in the art that the standardized/commercial alloy composition known as “36MnB5” represents a steel comprising a maximum of 0.37 mass% carbon, 1.4 mass% manganese, and 50 ppm max boron (see, e.g., Instant Application: para. 17). Cho teaches that the steel blank used in the hot stamping process may have a composition (para. 10-13, 22-50; Tables 1, 3) with compositional ranges of C, Mn, Si, and B overlapping the standardized ranges of a 36MnB5 steel. It would have been obvious to one of ordinary skill in the art to form a vehicle component, using the method of Cho, wherein the steel composition is selected 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. Moreover, selecting a standardized and/or commercially available steel with a substantially similar composition, useful for the same purposes, would have been obvious to one of ordinary skill in the art to reduce the time and/or costs associated with developing a steel composition for forming a hot stamped component.
As detailed above, Cho teaches removing the hot stamped steel at a temperature of lower than 200° C, overlapping the instantly claimed range of “being at or below 130°C.” It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. MPEP § 2144.05. With respect to the limitation “yield strength equal to or greater than 1400 MPa as a result of the removing at or below 130°C,” Cho teaches a method with overlapping removal temperature and resulting in a yield strength meeting the claimed range. (see discussion above). As a result, the reference teaches the claimed limitation. In other words, one of ordinary skill in the art would recognize that the final mechanical properties of the vehicle component result from the process parameters. As Cho teaches the claimed method and the resulting property, it meets the limitation.
Moreover, even if the reference does not specifically link a particular processing parameter (here removal temperature) and property (yield strength) the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In the alternative, Thomas teaches a method for hot stamping of steel components (para. 11). Thomas teaches that after, hot stamping, the steel component is removed from the stamping tool at a temperature of around 80°C (para. 39). Moreover, Thomas teaches that removing the steel component at this temperature promotes maintenance of final shape after final air cooling (para. 39).
It would have been obvious to one of ordinary skill in the art to modify the method of Cho, teaching removal of a hot stamped component at a temperature of lower than 200°C, to remove the vehicle component from the die assembly at a temperature of around 80°C, as taught by Thomas. One of ordinary skill would be motivated to make this modification as Thomas discloses the benefit of removing at this temperature range promotes maintenance of final shape after final air cooling. As the removal temperature of about 80°C overlaps with the claimed removal temperature range (between 80°C and 130°C), a prima facie case of obviousness exists. MPEP § 2144.05.
With respect to Claim 3, Cho teaches wherein the steps of hot stamping and quenching in a die take a time of, for example, 8-12 seconds. (see rejection of claim 1 above). While the reference does not specifically separate the time of stamping and quenching, the reference is deemed to teach a quench time range of 12 seconds or less, overlapping the instantly claimed range, and moreover, teaches quenching at a high cooling rate in order to achieve the same martensitic microstructure. Accordingly, it would have been obvious to one of ordinary skill in the art to select a time in which the blank is retained within the die assembly for a quench time selected from the overlapping portion of the ranges. Overlapping ranges, in particular, where the ranges of a claim overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claim 8, Cho teaches a method comprising a steel blank (para. 10-13, 22-50; Tables 1, 3) with compositional ranges deemed to overlap the standardized ranges of a “Usibor 2000” steel. 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. Moreover, selecting a standardized and/or commercially available steel with a substantially similar composition, useful for the same purposes, would have been obvious to one of ordinary skill in the art to reduce the time and/or costs associated with developing a steel composition for forming a hot stamped component.
Claims 2 is rejected under 35 U.S.C. 103 as being unpatentable over Cho (US 2016/01312331)(previously cited) alone or in the alternative, in view of Thomas (US 2009/0242086)(previously cited) as applied to claim 1 above, further in view of Allely (US 20180044774).
With respect to Claim 2, Cho teaches a method comprising a steel composition overlapping a 36MnB5 steel, including alloying content of titanium, molybdenum, and chromium, but is silent as to the addition of niobium and a coating of AlSi10Fe3.
Allely teaches a method of making a high strength hot stamped steel part, such as a vehicle component, the method comprising hot stamping a steel blank, wherein the resulting stamped component may have a martensitic structure and a tensile strength exceeding 1500 MPa, and wherein the method may comprise hot stamping a steel meeting the Usibor 2000 commercial standard alloy composition comprising a 36MnB5-type steel with optional alloying content of Ti, Mo, Cr, and Nb. (para. 1, 31, 43-58, 92-94).
Allely further wherein the steel blank may further comprise an aluminum-silicon-iron alloy coating, for example, one comprising 9 wt% Si, 3 wt% Fe, balance aluminum. (para. 106, 109; Table 1). It is noted that the instant specification does not define the composition of AlSi10Fe3. One of ordinary skill in the art would recognize that in such composition naming schemes the actual content of the recited elements may vary, and often include less than the numerical values in the name. Thus, Allely is deemed to teach a steel blank coating comprising AlSi10Fe3 or in the alternative, teaches a coating sufficiently close to establish a prima facie case of obviousness. See MPEP 2144.05. (“Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of ‘having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium’ as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. ‘The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.’”).
It would have been obvious to one of ordinary skill in the art to substitute the 36MnB5-type steel blank comprising Cr, Ti, and Mo of Cho for the 36MnB5-type steel blank comprising alloying content of Cr, Ti, Mo, and Nb, and having an AlSi10Fe3 coating, as taught by Allely, in order to obtain a high strength hot stamped vehicle component. The substitution of one steel blank for another, both capable of obtaining martensitic structure and high strength would have been prima facie obvious to one of ordinary skill in the art. Furthermore, it would have been obvious to ordinary skill in the art to include the coating of Allely to improve the hot stamping, press-hardening, and paint adhesion properties of the resulting component. (see, e.g., Allely, para. 1, 6). Additionally, 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.
Claims 4-7, 9, 11-16, 18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Cho (US 2016/01312331)(previously cited) alone or in the alternative, in view of Thomas (US 2009/0242086)(previously cited) as applied to Claim 1 above (with respect to Claim 6) and claim 3 above (with respect to Claim 4), further in view of “Investigations on the thermal behavior of ultra high strength boron manganese steels within hot stamping”, 2009. Int J Mater Form, Vol 2, Suppl 1, pp 259-262 (“Merklein”)(previously cited).
With respect to Claims 4-5, Cho does not explicitly teach that the die surfaces are thermo-stabilized to a predetermined temperature.
Merklein teaches hot stamping of boron steels, wherein the tools, or dies, are maintained at predetermined temperatures of 20°C, 100°C, and 300°C (S 5, L 12-15). Merklein teaches that setting the tool temperature leads to differences in measured cooling rate of the formed blank and the heat transfer coefficient between the formed blank and the dies (Fig. 4). Moreover, Merklein teaches that the heat transfer coefficient is responsible for the thermal behavior and respective cooling of the blanks throughout the forming operation (S 5, L 1-3). It appears setting the tools, or dies, to 100°C provides a reasonable balance between a high cooling rate and high heat transfer coefficient (Fig. 4, 100°C).
It would have been obvious to an ordinarily skilled artisan to incorporate the teachings of Merklein into Cho and thermo-stabilize the surface of the dies to a predetermined temperature of 100°C. Heat transfer coefficient and cooling rate have both been found to be functions of die temperature, and a temperature of 100°C provides a balance between a high cooling rate and high heat transfer coefficient. It would have been obvious to one of ordinary skill in the art to select a thermostabilized die temperature of 200°C or less, in order to achieve the desired cooling of Cho, and in particular, a temperature of approximately 100°C or less, in order to obtain a reasonable balance between the cooling rate and heat transfer coefficient of the die. Overlapping ranges, in particular, where the ranges of a claim overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claims 6, 9, and 14, Cho or Cho in view of Thomas teach a method as in claim 1, from which claim 6 depends and that teaches each of the steps of claim 9 (see rejection above, incorporated here by reference) with the exception that Cho is silent as to the contact pressure at which the blanks are hot stamped.
Merklein teaches hot stamping blanks at contact pressures of 0 MPa to 30 MPa (S 4.2, L 17-20). An ordinarily skilled artisan would appreciate that mega Pascals and Newtons per square millimeter are equivalent units; thus, Merklein teaches contact pressures of 0-30 N/mm2. Merklein teaches that an elevated contact pressure results in an increased heat transfer coefficient (Fig. 3), due to an increase in real contact surface area between the formed component and dies (S 5, L 47-50; S 6, L 14-17). Moreover, Merklein teaches that the heat transfer coefficient is responsible for the thermal behavior and respective cooling of the blanks throughout the forming operation (S 5, L 1-3).
It would have been obvious to one of ordinary skill in the art to modify the method of Cho or Cho in view of Thomas to perform hot stamping at a contact pressure of 0-30 MPa or N/mm2, as taught by Merklein. An elevated contact pressure results in an increased heat transfer coefficient due to an increase in real contact surface area between the formed component and dies. As the pressure of 10 N/mm2, or 10 MPa, falls within the range taught by Cho in view of Merklein, a prima facie case of obviousness exists. MPEP § 2144.05.
Finally, with respect to Claims 9 and 14, Cho in view of Thomas and Merkelin teach a method with overlapping extraction/removal temperature and contact pressure and resulting in a yield strength meeting the claimed range. (see discussion above). One of ordinary skill in the art would recognize that the final mechanical properties of the vehicle component result from the process parameters. As the prior art teach the methods of Claim 9 and 14 and the resulting property, the combination is therefore deemed to teach a relationship between the process parameters, including extraction temperature and/or contact pressure, and the resulting properties, including yield strength and meets the claimed limitations.
Moreover, even if the reference does not specifically link a particular processing parameter (here removal temperature and/or contact pressure) and property (yield strength) the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
With respect to Claims 7, 15-16, as detailed above Cho does not explicitly teach that the die surfaces are thermo-stabilized to a predetermined temperature.
Merklein teaches hot stamping of boron steels, wherein the tools, or dies, are maintained at predetermined temperatures of 20°C, 100°C, and 300°C (S 5, L 12-15). Merklein teaches that setting the tool temperature leads to differences in measured cooling rate of the formed blank and the heat transfer coefficient between the formed blank and the dies (Fig. 4). Moreover, Merklein teaches that the heat transfer coefficient is responsible for the thermal behavior and respective cooling of the blanks throughout the forming operation (S 5, L 1-3). It appears setting the tools, or dies, to 100°C provides a reasonable balance between a high cooling rate and high heat transfer coefficient (Fig. 4, 100°C).
It would have been obvious to an ordinarily skilled artisan to incorporate the teachings of Merklein into Cho and thermo-stabilize the surface of the dies to a predetermined temperature of 100°C. Heat transfer coefficient and cooling rate have both been found to be functions of die temperature, and a temperature of 100°C provides a balance between a high cooling rate and high heat transfer coefficient. It would have been obvious to one of ordinary skill in the art to select a thermostabilized die temperature of 200°C or less, in order to achieve the desired cooling of Cho, and in particular, a temperature of approximately 100°C or less, in order to obtain a reasonable balance between the cooling rate and heat transfer coefficient of the die. Overlapping ranges, in particular, where the ranges of a claim overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claim 12, Cho teaches wherein the steps of hot stamping and quenching in a die take a time of, for example, 8-12 seconds. (see rejection of claim 1 above). While the reference does not specifically separate the time of stamping and quenching, the reference is deemed to teach a quench time range of 12 seconds or less, overlapping the instantly claimed range, and moreover, teaches quenching at a high cooling rate in order to achieve the same martensitic microstructure. Accordingly, it would have been obvious to one of ordinary skill in the art to select a time in which the blank is retained within the die assembly for a quench time selected from the overlapping portion of the ranges. Overlapping ranges, in particular, where the ranges of a claim overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claim 13, the method of Cho in view of Merklein or Cho in view of Thomas and Merklein teach applying an overlapping pressure and removing the blank at an overlapping temperature. (see rejections of claim 9 above). One of ordinary skill in the art would recognize that the contact resulting from the die touching (with pressure) the blank, would lead to heat transfer. Therefore, the above combination is deemed to teach the instant limitation of claim 13.
With respect to Claim 18, Cho teaches wherein the steel blank has a thickness of, for example 1.5 mm, deemed to meet or be sufficiently close to establish a prima facie case of obviousness over the claimed “approximate 1.6mm thickness.” (“Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of ‘having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium’ as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. ‘The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.’”).
With respect to Claims 11 and 20, Cho teaches a method comprising a steel blank (para. 10-13, 22-50; Tables 1, 3) with compositional ranges deemed to overlap the standardized ranges of a “Usibor 2000” steel. 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. Moreover, selecting a standardized and/or commercially available steel with a substantially similar composition, useful for the same purposes, would have been obvious to one of ordinary skill in the art to reduce the time and/or costs associated with developing a steel composition for forming a hot stamped component.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Cho (US 2016/01312331)(previously cited) alone or in the alternative, in view of Thomas (US 2009/0242086)(previously cited) and in view of “Investigations on the thermal behavior of ultra high strength boron manganese steels within hot stamping”, 2009. Int J Mater Form, Vol 2, Suppl 1, pp 259-262 (“Merklein”)(previously cited) as applied to claim 15 above, further in view of “Thermal Equilibrium”, 2017. Energy Education (“Hanania”)(previously cited).
Regarding claim 17, Cho and Merkelin do not explicitly teach the length of time that the surface of the die assembly is thermo-stabilized for prior to performing the quenching operation.
Hanania teaches that heat is the flow of energy from a high temperature to a low temperature. When these temperatures balance out, heat stops flowing, then the system is said to be in thermal equilibrium (Par 1, L 1-3). All systems tend towards thermal equilibrium over time (Par 2, L 1).
An ordinarily skilled artisan would appreciate that once temperature control of a die begins, there exists a lag time between the initial flow of coolant/source of thermal energy to the surface temperature of the die reaching the desired temperature, i.e. achieving thermal equilibrium between the dies and heating/cooling source. It would have been obvious to one of ordinary skill in the art to modify the method of modified Cho to adjust the waiting time from initiating temperature control to use of the dies for the reason of allowing the dies enough time to reach both thermal equilibrium with the heating/cooling source and their intended temperature before hot forming.
Claims 10 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Cho (US 2016/01312331)(previously cited) alone or in the alternative, in view of Thomas (US 2009/0242086)(previously cited), and in view of “Investigations on the thermal behavior of ultra high strength boron manganese steels within hot stamping”, 2009. Int J Mater Form, Vol 2, Suppl 1, pp 259-262 (“Merklein”)(previously cited), as applied to Claims 9 and 14 above, respectively, further in view of Allely (US 20180044774).
With respect to Claims 10 and 19, Cho teaches a method comprising a steel composition overlapping a 36MnB5 steel, including alloying content of titanium, molybdenum, and chromium, but is silent as to the addition of niobium and a coating of AlSi10Fe3.
Allely teaches a method of making a high strength hot stamped steel part, such as a vehicle component, the method comprising hot stamping a steel blank, wherein the resulting stamped component may have a martensitic structure and a tensile strength exceeding 1500 MPa, and wherein the method may comprise hot stamping a steel meeting the Usibor 2000 commercial standard alloy composition comprising a 36MnB5-type steel with optional alloying content of Ti, Mo, Cr, and Nb. (para. 1, 31, 43-58, 92-94).
Allely further wherein the steel blank may further comprise an aluminum-silicon-iron alloy coating, for example, one comprising 9 wt% Si, 3 wt% Fe, balance aluminum. (para. 106, 109; Table 1). It is noted that the instant specification does not define the composition of AlSi10Fe3. One of ordinary skill in the art would recognize that in such composition naming schemes the actual content of the recited elements may vary, and often include less than the numerical values in the name. Thus, Allely is deemed to teach a steel blank coating comprising AlSi10Fe3 or in the alternative, teaches a coating sufficiently close to establish a prima facie case of obviousness. See MPEP 2144.05. (“Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of ‘having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium’ as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. ‘The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.’”).
It would have been obvious to one of ordinary skill in the art to substitute the 36MnB5-type steel blank comprising Cr, Ti, and Mo of Cho for the 36MnB5-type steel blank comprising alloying content of Cr, Ti, Mo, and Nb, and having an AlSi10Fe3 coating, as taught by Allely, in order to obtain a high strength hot stamped vehicle component. The substitution of one steel blank for another, both capable of obtaining martensitic structure and high strength would have been prima facie obvious to one of ordinary skill in the art. Furthermore, it would have been obvious to ordinary skill in the art to include the coating of Allely to improve the hot stamping, press-hardening, and paint adhesion properties of the resulting component. (see, e.g., Allely, para. 1, 6). Additionally, 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 12/8/2025 have been fully considered but they are not persuasive.
Applicant argues that prior art Cho “does not disclose any extraction temperature threshold.” (Remarks, p. 5). This argument is not found persuasive. Cho teaches an extraction temperature, and thus, extraction threshold, of 200°C or less, overlapping the claimed range. (see rejection above).
Applicant further argues that Cho “does not describe any dependency between extraction temperature and strength or microstructure” and “Thomas discloses removal at approximately 80C only to address shape retention.” (Remarks, pg. 5). Similarly, with respect to Claims 9 and 14, Applicant argues that “the prior art does not teach stamping contact pressure of approximately 10 N/mm2 or removing at or below 130°C, resulting in a martensitic microstructure and a yield strength of at least 1400 MPa.” (Remarks, p. 5). These arguments are not found persuasive.
Cho and Cho in view of Thomas teach a method with overlapping extraction/removal temperature and resulting in a yield strength meeting the claimed range. (see rejection above). One of ordinary skill in the art would recognize that the final mechanical properties of the vehicle component result from the process parameters. As the prior art teach the methods of Claims 1, 9, and 14 and the resulting property, it therefore teaches a relationship between the process parameters, including extraction temperature and/or contact pressure, and the resulting properties, including yield strength and meets the claimed limitations.
Moreover, even if the reference does not specifically link a particular processing parameter (here removal temperature and/or contact pressure) and property (yield strength) the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant argues that “The discovery of this relationship is not a predictable optimization of known parameters because the prior art provides no teaching or expectation that extraction temperature play any role in achieving the mechanical properties recited in the claim.” (Remarks, p. 5). This argument is not found persuasive.
Prior art Cho teaches a method resulting in a yield strength far exceeding the claimed value, and therefore, no optimization is required to meet the limitation. Accordingly, Applicant’s arguments are not relevant to the teachings of the prior art nor the rejections of record.
Applicant mischaracterizes the rejection, stating “The Examiner characterized stamping pressure as inherent.” The rejection clearly sets forth prior art Merklein teaching hot stamping blanks at contact pressures of 0 MPa to 30 MPa, overlapping the claimed range.
Finally, Applicant appears to argue that contact pressure and removal/extraction temperature are critical to the claimed yield strength. These arguments are not found persuasive.
Prior art Cho teaches a method resulting in a yield strength far exceeding the required value, and therefore, would not be rebutted by a showing of criticality and/or demonstrates that such parameters are indeed not critical to achieving the claimed property.
Finally, it is noted that new grounds of rejection necessitated by Applicant’s amendments to claims 2, 10, and 19, respectively, are made as detailed above. Applicant’s arguments as they may apply to said claims are moot in view of the new grounds of rejection.
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.
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/JOHN A HEVEY/Primary Examiner, Art Unit 1735