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 & Status of Claims
Applicant’s election without traverse of Group II, claims 29-33, drawn to a steel part in the reply filed on 12 JUNE 2026 is acknowledged.
Claims 17-28 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12 JUNE 2026.
Specification
The disclosure is objected to because of the following informalities:
The prior art documents listed in paragraphs [0003]-[0004] should be written in proper format including kind code. For example, WO2016/158470 should be written as WO 2016/158470 A1.
Paragraphs [0026]-[0027] contain illegible characters.
Appropriate correction is required.
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 29-33 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 29-33, instant claim 29 recites “A steel part made of an alloy comprising, by weight” (line 1). It is unclear whether the compositional requirements are directed to the alloy or the steel part. Claims 30-33 depend on claim 1, do not resolve the aforementioned issue and thereby also indefinite.
Regarding claims 29-33, instant claim 29 recites “A steel part made of an alloy comprising, by weight” as well “a remainder consisting of iron and unavoidable impurities”. However, the presence of both “comprising” as well as “consisting of” with respect to the composition makes it unclear whether or not the steel part can have elements not explicitly recited in the claim. Claims 30-33 depend on claim 1, do not resolve the aforementioned issue and thereby also indefinite.
Regarding claim 30, instant claim recites “The steel part as recited in claim 29 wherein the martensite of the steel has iron carbides in stick form with sticks being 50 to 200 nm long.” However, claim 29 requires “wherein the steel part has a microstructure comprising, at least 80 area % of bainite and a cumulative presence of martensite and residual austenite from 1 area % to 25 area %” meaning that martensite is not a required phase as long as residual austenite appears from 1 to 25 area%. Therefore, it is unclear whether claim 30 is requiring the presence of martensite in the microstructure or whether it is only requiring the properties of iron carbides in the martensite if martensite is present in the microstructure.
Regarding claim 33, instant claim recites “The steel part as recited in claim 29 wherein the steel part has a reduction in area of more than 58%”. It is unclear what is required by this limitation, whether this is directed to the processing such as a rate of reduction such as cold rolling rate or whether it refers to a property that can be measured such as hardness of the steel part.
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.
Claims 29-33 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/226301A1 via its US English equivalent US 2022/0186335A1 of Kim (US’335).
List 1
Element
Instant Claims
(mass%)
Prior Art
(mass%)
C
0.05 – 0.15
0.06 – 0.14
Si
0.01 – 1
0.1 – 0.8
Mn
1.2 – 2
1.6 – 2.2
Cr
0.1 – 2
0.005 – 0.8
Al
0.001 – 0.1
0.01 – 0.1
N
0.003 – 0.01
0.001 – 0.01
S
0 – 0.015
0.001 – 0.01
P
0 – 0.015
0.001 – 0.05
Fe + impurities
Balance
Balance
Regarding claims 29-33, WO 2020/226301A1 via its US English equivalent US 2022/0186335A1 of Kim (US’335).teaches{abstract} “The present invention relates to a steel sheet which is suitable to be used as the material of a part such as a friction plate for a vehicle automatic transmission.” [0001] “The present disclosure relates to a steel sheet appropriately used as a material for a friction plate, or the like, of an automatic transmission, and more particularly, to an ultra-high strength steel sheet having excellent shear workability and a method for manufacturing the same.” “[0013] An aspect of the present disclosure is to provide an ultra-high strength steel sheet, having excellent shear workability, capable of suppressing cracking caused by shearing, and a method for manufacturing same.” with {[0028]-[0070]}a composition wherein the claimed ranges of the constituent elements of the instant alloy of the instant claims overlap or lie inside the ranges of various elements of the alloy of the prior art as shown in the List 1 above. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed composition over the prior art disclosure since the prior art teaches the similar property/utility throughout the disclosed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Regarding the recited limitation of instant claim 29 of “the steel part has a microstructure comprising, at least 80 area % of bainite and a cumulative presence of martensite and residual austenite from 1 area % to 25 area %”, the prior art teaches “[0071] The steel sheet according to the present disclosure, having the above-described alloy composition, may have a microstructure including a bainite phase as a main phase and a martensite phase as a remainder. [0072] The steel sheet according to the present disclosure may include the bainite phase in an area fraction of 80% or more, and the martensite phase in an area fraction of 10% or less. In addition, the steel sheet according to the present disclosure may include at least one of a retained austenite phase, a ferrite phase, and a pearlite phase as a residual structure, other than the bainite phase and the martensite phase. In this case, each of the retained austenite phase and the ferrite phase may be included in an area fraction of 5% or less. [0073] When the fraction of the bainite is less than 80%, it may be difficult to secure desired ultra-high strength. When the fractions of the martensite phase and the ferrite phase are relatively increased, the structure may be formed to be non-uniform, and thus, microcracking may easily occur in a sheared portion during a shearing process. [0074] That is, according to the present disclosure, formation of the ferrite phase and the martensite phase, disadvantageous in securing initial strength, may be suppressed to significantly reduce occurrence of microcracking during the shearing process. [0075] The steel sheet according to the present disclosure may include the bainite phase in an area fraction of 100%.” thereby meeting the instant recited limitation.
Regarding the recited limitation of instant claim 29 of “the steel part has a tensile strength of 1100 MPa or more”, the prior art teaches [0078] “The steel sheet according to the present disclosure, having the above-described microstructure, may have ultra-high strength with a tensile strength of 1350 MPa or more” thereby meeting the instant recited limitation.
Regarding the recited limitation of instant claim 30 of “The steel part as recited in claim 29 wherein the martensite of the steel has iron carbides in stick form with sticks being 50 to 200 nm long”, the prior art teaches {Fig. 1, [0022], [0127]} “As can be seen from FIG. 1, in the steel “A” of the present disclosure, a bainite phase was formed as a matrix structure, a fraction of a martensite phase was 10% or less, and a small amount of carbide was finely formed.” which reads on the instant limitation. Alternatively, the prior art does not require the presence of martensite which means that the prior art can have bainite and retained austenite that would meet the claimed microstructure phases range. This means that as the instant claim does not require the presence of martensite with carbides in stick form rather martensite with carbides in stick form if martensite is present, the prior art microstructure without martensite would also meet the instant claimed recitation.
Regarding the recited limitation of instant claim 31 of “The steel part as recited in claim 29 wherein the steel part has a hardness from 360 HV to 405 HV”, the prior teaches its steel as having [0078] “Vickers hardness value of 360 Hv or more” thereby meeting the instant recited limitation.
Regarding the recited limitation of instant claim 33 of “The steel part as recited in claim 29 wherein the steel part has a reduction in area of more than 58%”, the prior art teaches [0104] “the cold-rolling process may be performed at a cold-rolling reduction ratio of 60 to 80%” thereby meeting the instant recited limitation.
Regarding the recited limitation of instant claim 32 of “The steel part as recited in claim 29 wherein the steel part has a hydrogen embrittlement index of less than 0.09”, the prior art is silent regarding its alloy having the properties as recited in the instant claims. 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). See MPEP § 2112.01 I. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Therefore, it is expected that the alloy of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (see compositional analysis above) and b) the claimed and prior art products are identical or substantially identical in structure (see microstructure analysis above). Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOPHY S. KOSHY whose telephone number is (571)272-0030. The examiner can normally be reached M-F 8:30 AM- 5:00 PM.
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/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
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