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 Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a hot press-formed member comprising: a base steel sheet with a composition as set forth in para [0026-0069] of the instant specification; and a plating layer comprising Zn or Zn alloy on the base steel sheet, wherein a Mn(wt%)/Zn(wt%) content ratio measured at a point 1 µm from a surface of the plating layer is 0.1 or more, wherein a maximum crack depth penetrating the base steel sheet from an interface between the base steel sheet and the plating layer is 10 µm or less, does not reasonably provide enablement for a hot press-formed member comprising: a base steel sheet with an unrestricted composition; and a plating layer comprising Zn or Zn alloy on the base steel sheet, wherein a Mn(wt%)/Zn(wt%) content ratio measured at a point 1 µm from a surface of the plating layer is 0.1 or more, wherein a maximum crack depth penetrating the base steel sheet from an interface between the base steel sheet and the plating layer is 10 µm or less. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to practice the invention commensurate in scope with these claims.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)
The broadest reasonable interpretation of claim(s) 1-11 encompasses a hot press-formed member comprising: a base steel sheet with an unrestricted composition; and a plating layer comprising Zn or Zn alloy on the base steel sheet, wherein a Mn(wt%)/Zn(wt%) content ratio measured at a point 1 µm from a surface of the plating layer is 0.1 or more, wherein a maximum crack depth penetrating the base steel sheet from an interface between the base steel sheet and the plating layer is 10 µm or less. The specification discloses sufficient information for one of ordinary skill in the art to produce a hot press-formed member comprising: a base steel sheet with a composition as set forth in para [0026-0069] of the instant specification; and a plating layer comprising Zn or Zn alloy on the base steel sheet, wherein a Mn(wt%)/Zn(wt%) content ratio measured at a point 1 µm from a surface of the plating layer is 0.1 or more, wherein a maximum crack depth penetrating the base steel sheet from an interface between the base steel sheet and the plating layer is 10 µm or less. However, the specification does not provide direction on how to create a hot press-formed member comprising: a base steel sheet with a composition substantially different from para [0026-0069] of the instant specification; and a plating layer comprising Zn or Zn alloy on the base steel sheet, wherein a Mn(wt%)/Zn(wt%) content ratio measured at a point 1 µm from a surface of the plating layer is 0.1 or more, wherein a maximum crack depth penetrating the base steel sheet from an interface between the base steel sheet and the plating layer is 10 µm or less. More specifically, all of the inventive examples of the instant specification are directed to base steel sheets with a composition as set forth in para [0026-0069] of the instant specification, with comparative examples showing that steel outside of the composition as set forth in para [0026-0069] of the instant specification are unable to achieve the instantly claimed limitations of wherein a Mn(wt%)/Zn(wt%) content ratio measured at a point 1 µm from a surface of the plating layer is 0.1 or more, wherein a maximum crack depth penetrating the base steel sheet from an interface between the base steel sheet and the plating layer is 10 µm or less. At the time of filing, the state of the art was such that one of ordinary skill in the art would not be able to produce a hot press-formed member comprising: a base steel sheet with a composition substantially different from that of the instant specification; and a plating layer comprising Zn or Zn alloy on the base steel sheet, wherein a Mn(wt%)/Zn(wt%) content ratio measured at a point 1 µm from a surface of the plating layer is 0.1 or more, wherein a maximum crack depth penetrating the base steel sheet from an interface between the base steel sheet and the plating layer is 10 µm or less without extensive undue experimentation, requiring a research program to determine which of an unrestricted composition of steels would be able to achieve the claimed properties and what processing conditions would be necessary to achieve the claimed properties. Thus, the disclosed examples and guidance provided in the specification does not bear a reasonable correlation to the full scope of the claim. Taking these factors into account, undue experimentation would be required by one of ordinary skill in the art to practice the full scope of claim(s) 1-11.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 8 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR 101406670 B1 to Sohn et al (an English language machine translation has been relied upon for examination purposes).
Regarding claims 1 and 9, Sohn discloses a hot press-formed member comprising: a base steel sheet; and a plating layer comprising Zn or Zn alloy on the base steel sheet, wherein a Mn(wt %)/Zn(wt %) content ratio measured at measured in an oxide layer of the plating layer (i.e. a point 1 μm from a surface of the plating layer) is up to 30/70 (overlapping the instantly claimed range of 0.1 or more), wherein a maximum crack depth penetrating the base steel sheet from an interface between the base steel sheet and the plating layer is 10 μm or less (Sohn, abstract, para [0038], Examples, para [0076-0083], Tables 1 and 2).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of Sohn including the instantly claimed because Sohn discloses the same utility throughout the disclosed ranges.
Regarding claim 8, Sohn discloses that the hot press-formed member comprises a metal coating comprising Fe between the base steel sheet and plating layer (Sohn, para [0033])
Claim(s) 2-7, 10 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR 101406670 B1 to Sohn et al (an English language machine translation has been relied upon for examination purposes) as applied to claims 1, 8 and 9 above and further in view of WO 2016/063467 to Nakagawa et al (cited by applicant in IDS, US 2017/0306437 to Nakagawa, also cited by applicant in IDS, has been relied upon as an English language translation).
Regarding claims 2-8, 10 and 11, Sohn does not disclose the instantly claimed microstructure or composition of the base steel sheet, but instead discloses that the base steel sheet applied to the hot press formed article of Sohn in not particularly limited, and any steel sheet applied to general hot press forming is sufficient (Sohn, para [0029]).
Nakagawa discloses a hot press-formed member comprising a base steel sheet and with a Zn-based coating layer comprising the following composition (Nakagawa, abstract, para [0070-0160]) which overlaps the instantly claimed composition as well as numerous examples lying within the instantly claimed composition, such as Example O (Nakagawa, Table 1-1, Example O, para [0161-0173])
Element
Claimed wt%
Nakagawa wt%
Nakagawa O wt%
Overlaps/Lies within?
C
0.08-0.30
0.12-0.18
0.155
Yes
Si
0.01-2.0
0.01-2.5
0.20
Yes
Mn
3.1-8.0
3.5-11.0
6.30
Yes
Al
0.001-0.5
0.005-0.1
0.035
Yes
P
0.001-0.05
0-0.05
0.030
Yes
S
0.0001-0.02
0-0.05
0.002
Yes
N
0-0.02
0-0.01
0.003
Yes
Fe
Balance
Balance
Balance
Yes
Wherein the steel of Nakagawa contains 3.0% to 20.0% of retained austenite (Nakagawa, para [0118-0119]) and Example 15 of steel O comprises martensite and a retained austenite content of 4.5% (Nakagawa, Table 4-1, Example 15), overlapping and lying within the instantly claimed retained austenite contents, respectively.
Regarding claims 2-4 and 10, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ the base steel of Nakagawa as the base steel of the hot-press formed member of Sohn. The motivation for doing so is that the base steel sheet applied to the hot press formed article of Sohn in not particularly limited, and any steel sheet applied to general hot press forming is sufficient (Sohn, para [0029]) and the base steel of Nakagawa is capable of achieving good mechanical properties in the form of a high TS of 1500 MPa or more and a uniform elongation of 6.0% or more (Nakagawa, abstract).
Regarding claims 5-7, Nakagawa discloses controlling both composition and processing conditions in order to minimize austenite grain size during annealing (Nakagawa, para [0100-103, 0109, 0130]) and further discloses that a prior austenite grain size of 8 µm or less is readily achievable in conventional steels by conventional means (Nakagawa, para [0010-0012]). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 [R-5]. In the instant case, Nakagawa recognizes both composition and processing as result effective variable for minimizing austenite grain size during annealing, and that a prior austenite grain size of 8 µm or less is readily achievable in conventional steels by conventional means. It would require little more than routine experimentation by one of ordinary skill in the art to determine the optimal or workable ranges of composition and processing conditions in order to achieve as small of a prior austenite grain size as possible, including to within the conventional ranges of a prior austenite grain size of 8 µm or less.
Regarding claim 11, Nakagawa discloses numerous examples lying within the instantly claimed ranges, such as example AP with 0.03% Ti and example AQ containing 0.03% Nb (Nakagawa, Table 1-2, Examples AP and AQ).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN D WALCK whose telephone number is (571)270-5905. The examiner can normally be reached Monday-Friday 10 AM - 6:30 PM.
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/BRIAN D WALCK/ Primary Examiner, Art Unit 1738
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