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 .
Election/Restrictions
Applicant's election with traverse of claims 11, 12, 14 and 18-19 in the reply filed on 5/19/2026 is acknowledged. The traversal is on the ground(s) that Zhong does not disclose the newly amended limitations of instant claim 11. This is not found persuasive because the newly amended limitations of claim 1 are found in at least US 2019/0071757 A1 to Murata as set forth in the below 35 USC 103 rejection of the claims over US 2019/0071757 A1 to Murata et al in view of “Batch Hot Dip Galvanized Coatings” by Wetzel and “Quenching and Partitioning Steel Heat Treatment” by Wang et al.
The requirement is still deemed proper and is therefore made FINAL.
Claims 15-17 and 21-27 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 5/19/2026.
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) 11, 12, 14, 18 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0071757 A1 to Murata et al in view of “Batch Hot Dip Galvanized Coatings” by Wetzel and “Quenching and Partitioning Steel Heat Treatment” by Wang et al.
Regarding claim 11, Murata discloses a steel plate which overlaps the instantly claimed composition, microstructure and properties as follows:
Element
Claimed wt %
Murata wt %
Overlaps?
C
0.17-0.21
0.15-0.35
Yes
Si
1.2-1.7
Si+Al: 0.5-2.6
Yes
Al
0.02-0.05
Si+Al: 0.5-2.6
Yes
Mn
1.60-2.1
1.0-4.0
Yes
N
≤0.008
≤impurity
Yes
Fe
Balance
Balance
Yes
Ferrite
30-50%
>5-50%
Yes
Partitioned martensite
40-60%
Bainite + Tempered Martensite: ≥30%
See below
Metastable austenite
10-20%
≥10%
Yes
YS
400-600 MPa
≥780*0.6 MPa (508-771 MPa*)
Yes
TS
730-900 MPa
≥780 MPa (841-1211 MPa*)
Yes
EL
25-35%
19.8-28.0%*
Yes
λ
35-60%
≥20% (26-42%*)
Yes
*from experimental values of Murata
(Murata, abstract, para [0022-0076], Examples, para [0110-0155], Tables 1-4)
Murata differs from the instant claims in that Murata does not disclose that the steel plate is hot-dip galvanized and Murata discloses the presence of bainite and tempered martensite instead of partitioned martensite.
Wetzel discloses that hot dip galvanized coatings are applied to steel to provide protection of the base metal against corrosion (Wetzel, page 360, “Applications”).
Wang discloses that C-Si-Mn-Al automotive steels with a composition overlapping that of Murata may be subjected to quenching and partitioning in order to produce a microstructure composed of 50-80% partitioned martensite, 20-40% ferrite and 5-10% retained austenite (overlapping both the instantly claimed microstructure and the microstructure of Murata) to obtain a new type of ultrahigh-strength steel with excellent balance between high strength and ductility to improve fuel economy while promoting passenger safety (Wang, pages 317-318, Introduction, “Chemical Composition and Annealing Process,” “Microstructure and Mechanical Properties,” Table 1).
Regarding claim 1, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to subject the steel plate of Murata to hot dip galvanizing as suggested by Wetzel and to subject the steel plate of Murata to quenching and partitioning to replace the bainite and tempered martensite phase with a partitioned martensite phase. The motivation for hot dip galvanizing would be to provide protection of the base metal against corrosion (Wetzel, page 360, “Applications”) and the motivation for quenching and partitioning would be to obtain a new type of ultrahigh-strength steel with excellent balance between high strength and ductility to improve fuel economy while promoting passenger safety (Wang, pages 317-318, Introduction, “Chemical Composition and Annealing Process,” “Microstructure and Mechanical Properties,” Table 1).
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 Murata in view of Wetzel and Wang including the instantly claimed because Murata in view of Wetzel and Wang discloses the same utility throughout the disclosed ranges.
Regarding claims 12, 14 and 18, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. 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 (see MPEP 2112.01 [R-3].) In the instant case, the steel plate of Murata in view of Wetzel and Wang would be expected to have the same or similar properties as the instantly claimed steel plate because the steel plate of Murata in view of Wetzel and Wang would have the same or substantially the same composition and microstructure.
Regarding claim 19, Murata discloses the alloy has a tensile strength of 780 MPa or more (Murata, para [0005]), overlapping the instantly claimed range.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US-20210040577-A1, US-20200283862-A1, US-20190062863-A1, US-20190048436-A1, US-20160083819-A1, US-20160047011-A1 all disclose steel plates with compositions, microstructure and properties relevant to the instant claims.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at 571-272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN D WALCK/Primary Examiner, Art Unit 1738
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