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 .
Status of Claims
Claims 10-18 are examined in the office action.
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.
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 10-18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 10-18, claim 10 recites “a remainder of the composition being iron and unavoidable impurities resulting from processing”. However, the specification do not recite limitation as the specification teaches the impurities are from the specific process of smelting.
“The remainder of the composition of the steel is iron and impurities resulting from the smelting. In this respect, P, S and N at least are considered as residual elements which are unavoidable impurities. Their content below or equal to 0.010% for S, below or equal to 0.020% for P and below or equal to 0.008% for N.” (abstract, [0006], [0018])
Therefore, the claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 10-18 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 10-18, claim 10 requires “comprising optionally one or more of the following elements, in weight percentage: Cr: 0-0.5% Mo: 0-0.25%”. It is unclear how the optionally modifies the ranges of Cr and Mo required by the claims. For instance, it is unclear whether a) the claim is requiring that is optional for Cr: 0-0.5% and/or Mo: 0-0.25% or in other words it is requiring that it is optional for these elements to be in the recited ranges or whether b) the claim is requiring if either Cr and/or Mo are present in the composition, they are to be in the recited ranges of 0-0.5 and 0-0.25 respectively. However, the latter is complicated by the lower limit of 0 which also means that these elements may not be present. Claims 11-18 are dependents of claim 10, do not resolve the aforementioned issue and thereby also indefinite.
Regarding claims 10-18, claim 10 recites “a carbon [C]A content in austenite, strictly more than 0.4% in weight and strictly less than 0.7% in weight”. It is unclear how the term “strictly” modifies the range – does it require to be above/below a certain value/percentage of the endpoints recited? It is also unclear whether the austenite refers to the 10% to 50% of retained austenite or whether it refers to other austenite. Claims 11-18 are dependents of claim 10, do not resolve the aforementioned issue and thereby also indefinite.
Regarding claims 10-18, claim 10 recites “a remainder of the composition being iron and unavoidable impurities resulting from processing”. The only process step provided prior to this It is unclear how the term “strictly” modifies the range – does it require to be above/below a certain value/percentage of the endpoints recited? Claims 11-18 are dependents of claim 10, do not resolve the aforementioned issue and thereby also indefinite.
Regarding claims 10-18, claim 10 recites “the weight percent of nitrogen % N, silicon % Si, manganese % Mn, chromium % Cr, nickel % Ni, copper % Cu, molybdenum % Mo, and carbon in austenite [C]A, being such that Md30 is comprised from 200°C to 350°C, Md30 being defined as
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30
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”.
The transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See MPEP § 2111.03. It is unclear what other than a value dependent on the composition of the steel can be part of the Md30 temperature as required by the phrase “Md30 is comprised from 200°C to 350°C” since the term “comprised” is an open-ended term. Claims 11-18 are dependents of claim 10, do not resolve the aforementioned issue and thereby also indefinite.
Claim 11 recites the limitation "the hot rolled steel sheet" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Regarding claims 11-13, claims 11-13 recites “hot rolling of a steel slab having the composition” (claim 11), “hot rolling a steel slab having the composition to obtain a hot rolled steel sheet” (claim 12), and “hot rolling a steel slab having a composition according to claim 1 to obtain a hot rolled steel sheet” (claim 13). However, the composition recited in claim 10 is directed to a steel sheet and not a steel slab.
Regarding claims 15-18, instant claims recite the limitations "the steel" (claims 16-18) and “the heat-treated steel” (claim 15). There is insufficient antecedent basis for these limitations in the claims. Regarding the term “steel”, it is unclear what it refers to as claim 10 recites various forms of steel including steel part, steel sheet, steel blank, etc. Regarding the term “the heat-treated steel” (claim 15), it is unclear what it refers to as claim 10 recites a heat-treated steel blank, followed by being punched or sheared and further followed by forming.
Claim 13 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 13, claim 13 is an incomplete claim as claim 13 recites “hot rolling a steel slab having a composition according to claim 1 to obtain a hot rolled steel sheet”. In other words, claim 13 depends on claim 1 which has been canceled thereby making it an incomplete claim. If the base claim has been canceled, a claim which is directly or indirectly dependent thereon should be rejected as incomplete. See MPEP § 608.01(n).
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Allowable Subject Matter
Claim 10 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph and 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claims 11-18 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, and 35 U.S.C. 112(d) or 35 U.S.C. 112 (pre-AIA ), 4th paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art, WO 2018/055425 A1 via its US English equivalent US 2021/0115528 A1 of Magar (US’528) teaches “a method for producing a high strength steel sheet having high ductility and formability and to a sheet obtained with this method” “to be able to produce a steel sheet or part having an improved combination of strength, ductility and formability” {abstract, [0001] – [0005]} [008] “a cold-rolled and heat-treated steel sheet, having a composition comprising, by weight percent: [0009] 0.10%≤C≤0.40% [0010] 3.5%≤Mn≤8.0% [0011] 0.5%≤Si≤2.5% [0012] 0.003%≤Al≤3.0% [0013] with Si+Al≥0.8% [0014] 0.001%≤Mo≤0.5% [0015] S≤0.010% [0016] P≤0.020% [0017] N≤0.008% [0018] and optionally one or more elements selected from amongst Cr, Ti, Nb, V and B, such that: [0019] 0.01%≤Cr≤2.0% [0020] 0.010%≤Ti≤0.080% [0021] 0.010%≤Nb≤0.080% [0022] 0.010%≤V≤0.30% [0023] 0.0005%≤B≤0.003%, [0024] the remainder of the composition being iron and unavoidable impurities resulting from the smelting, [0025] said cold-rolled steel sheet having a microstructure consisting of, in surface fraction, between 10% and 50% of retained austenite, at most 8% of fresh martensite, and tempered martensite, said retained austenite comprising: Mn-enriched austenite, having a Mn content higher than 1.3*Mn %, Mn % designating the Mn content of the steel sheet, and Mn-poor austenite, having an Mn content comprised between 0.5*Mn % and 1.3*Mn %, [0028] the surface fraction of said Mn-enriched austenite with respect to the whole microstructure being comprised between 2% and 12%. [0029] Preferably, the Mn-poor austenite and Mn-enriched austenite have an average C content comprised between 0.4% and 1.0%.”
US’528 further teaches that its method of making the steel sheet includes “casting a steel so as to obtain a slab” “reheating the slab at a temperature Treheat comprised between 1150° C. and 1300° C., hot rolling the reheated slab at a temperature higher than Ar3 to obtain a hot rolled steel, coiling the hot rolled steel at a temperature comprised between 20° C. and 600° C., annealing the hot-rolled steel at a temperature THBA lower than Ac1-20° C., for a time tHBA comprised higher than or equal to a minimal batch annealing time tHBAmin” “cold rolling the steel so as to obtain a cold rolled steel sheet, reheating the cold-rolled steel sheet to an annealing temperature TA comprised between Ae3 and Ae3+150° C. so as to obtain, upon annealing, a structure consisting of austenite, and maintaining the cold-rolled steel sheet at the annealing temperature TA for a holding time tA comprised between tAmin and tAmax” “quenching the cold-rolled steel sheet at a cooling rate high enough to avoid the formation of ferrite and pearlite upon cooling, to a quenching temperature QT comprised between Mf+20° C. and Ms−50° C., reheating the cold-rolled steel sheet to a partitioning temperature TP comprised between 350° C. and 500° C., and maintaining the cold-rolled steel sheet at said partitioning temperature TP for a partitioning time tP comprised between 3 s and 1000 s, cooling the cold-rolled steel sheet to the room temperature, to obtain a cold-rolled and heat treated steel sheet.” {[0039]-[0075], [0093]-[0164]}. However, the prior art does not teach all of the required limitations of the instant claims such as “cutting the steel sheet to a predetermined shape, so as to obtain a steel blank; heating the steel blank to a temperature Twarm from (Md30-150° C) to (Md30-50° C) to obtain a heat-treated steel blank; punching or shearing the heat-treated steel blank at the Twarm temperature; and forming the heat-treated steel blank at the Twarm temperature to obtain the steel part” wherein Md30 being defined as
M
d
30
(
°
C
)
=
551
-
462
*
(
[
C
]
A
+
%
N
)
-
9.2
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%
S
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-
8.1
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13.7
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29
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%
N
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+
%
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18.5
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(
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” wherein Md30 has a value of 200°C to 350°C.
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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