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 of claims 1-5 in the reply filed on 5/19/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 6-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 5/19/2026.
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 1-5 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.
The term “high-strength” in claims 1-5 as well as the term “excellent hole expandability” are relative terms which renders the claim indefinite. The terms are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. This renders the properties of the steel indefinite which renders the scope of the claims indefinite.
Additionally, instant claim 1 recites the limitation “wherein a microstructure comprises ferrite of 20 to 30% by area fraction, non- equilibrium (quasi-equilibrium) ferrite of 5 to 15% by area fraction.” This limitation is indefinite because it is unclear whether or not the non- equilibrium (quasi-equilibrium) ferrite fraction of the microstructure is included as part of the instantly claimed ferrite fraction. The instant specification suggests that the ferrite and non-equilibrium ferrite fractions are two distinct fractions, but the instant claim does not clarify that the “ferrite fraction” apparently refers to only “equilibrium” (i.e. polygonal) ferrite.
Additionally, it is unclear what structures are included by the term “non-equilibrium (quasi-equilibrium) ferrite” in instant claim 1. The instant specification at instant para [0119] states “In the present disclosure, the non-equilibrium (quasi-equilibrium) ferrite phase is a structure advantageous to minimizing a difference in hardness between the soft phase and the hard phase and is a structure distinct from existing equilibrium ferrite (polygonal ferrite). The non-equilibrium (quasi-equilibrium) ferrite may be an acicular ferrite or a bainitic ferrite. In addition, Widmanstatten ferrite, massive ferrite, and the like may be included depending on cooling conditions. Specifically, non-equilibrium (quasi-equilibrium) ferrite includes relatively high C and Mn compared to equilibrium ferrite, while being affected by components constituting a mother phase. For example, if the C concentration of equilibrium ferrite is taken to be 0.02%, non-equilibrium (quasi-equilibrium) ferrite has a higher C content of 0.03 to 0.04%.” Thus, while it is clear that applicant considers acicular ferrite and bainitic as “non-equilibrium (quasi-equilibrium) ferrite,” it is unclear what other structures fall under the term “non-equilibrium (quasi-equilibrium) ferrite” given that Widmanstatten ferrite, massive ferrite, and the like may or may not be included depending on cooling conditions, but the specification does not specify what said cooling conditions actually are.
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) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2013/0167980 A1 to Kawata et al.
Regarding claim 1, Kawata discloses an alloy comprising the following composition, which overlaps the instantly claimed composition as follows:
Element
Claimed wt%
Kawata wt%
Overlaps?
C
0.05-0.12
0.050-0.400
Yes
Mn
2.5-3.0
1.00-3.50
Yes
Si
>0-1.2
0.10-2.50
Yes
Cr
>0-0.1
Opt. 0.01-2.00
Yes
Mo
>0-0.1
Opt.0.01-0.80
Yes
Nb
>0-0.1
Opt. 0.005-0.090
Yes
Ti
>0-0.1
Opt. 0.005-0.090
Yes
B
>0-0.002
Opt. 0.0001-0.0100
Yes
Al
0.02-0.05
0.001-2.500
Yes
P
>0-0.05
0.001-0.030
Yes
S
>0-0.01
0.0001-0.010
Yes
N
>0-0.01
0.0001-0.0100
Yes
Fe
Balance
Balance
Yes
Wherein a microstructure comprises ferrite of 10 to 50%, preferably 20 to 40%, by volume (overlapping the instantly claimed range of ferrite of 20 to 30% by area fraction) and may contain bainitic ferrite (i.e. “non-equilibrium (quasi-equilibrium) ferrite”) in an amount from 10 to 45% by volume, overlapping the instantly claimed range of 5 to 15% by area fraction, and residual martensite.
(Kawata, abstract, para [0083-0141], examples, para [0200-0246], Tables 1-33)
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 Kawata including the instantly claimed because a prima facie case of obviousness exists in the case of overlapping ranges.
Regarding the limitations “high-strength” and “excellent hole expandability,” these limitations are indefinite as set forth in the above 35 USC 112 rejections. Regardless, 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 of Kawata would be expected to have the same or similar properties as the instantly claimed steel because the steel of Kawata has the same or substantially the same composition and microstructure.
Regarding claim 2, Kawata discloses the steel contains 10-50% by volume of tempered martensite and 10% or less of fresh martensite (Kawata, para [0091, 0095]), overlapping the instantly claimed range of “a martensite phase of 50% or more by area fraction.”
Regarding claim 3, the steel of Kawata does not contain a retained austenite phase, lying within the instantly claimed range of “a retained austenite phase of 3% or less (including 0%) by area fraction.”
Regarding claims 4 and 5, Kawata discloses a tensile strength of 900 MPa or more (Kawata, para [0017]) with experimental TS ranging as high as 1532 MPa with an accompanying elongation of 15% (Kawata, Table 28, Experiment Example 104). Although Kawata is silent as to a yield strength and hole expansion ratio 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 of Kawata would be expected to have the same or similar properties as the instantly claimed steel because the steel of Kawata has the same or substantially the same composition, microstructure and disclosed mechanical properties.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0230918 A1 to Morishita et al.
Regarding claim 1, Morishita discloses an alloy comprising the following composition, which overlaps the instantly claimed composition as follows as well as a specific example, example 43 composition N close to the instantly claimed composition as follows:
Element
Claimed wt%
Morishita wt%
Morishita N wt%
Overlaps?
C
0.05-0.12
0.040-0.280
0.055
Yes
Mn
2.5-3.0
0.50-3.50
2.73
Yes
Si
>0-1.2
0.05-2.00
1.20
Yes
Cr
>0-0.1
0-2.00
Silent
Yes/No
Mo
>0-0.1
0-2.00
Silent
Yes/No
Nb
>0-0.1
0-0.100
Silent
Yes/No
Ti
>0-0.1
0-0.150
Silent
Yes/No
B
>0-0.002
0-0.0100
Silent
Yes/No
Al
0.02-0.05
0.001-1.500
0.025
Yes
P
>0-0.05
0.0001-0.1000
0.010
Yes
S
>0-0.01
0.0001-0.0100
0.0011
Yes
N
>0-0.01
0.0001-0.0100
0.0025
Yes
Fe
Balance
Balance
Balance
Yes
Wherein a microstructure comprises ferrite of 0 to 50% by volume (overlapping the instantly claimed range of ferrite of 20 to 30% by area fraction) and a volume fraction of a total of a bainite, bainitic ferrite (i.e. “non-equilibrium (quasi-equilibrium) ferrite”) fresh martensite and tempered martensite phase is 50% or more, overlapping the instantly claimed range of non-equilibrium (quasi-equilibrium) ferrite of 5 to 15% by area fraction, and residual martensite.
(Morishita, abstract, para [0029-0054, 0085-0148], examples, particularly 43N para [0255-0306], Tables 1-11)
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 Morishita including the instantly claimed because a prima facie case of obviousness exists in the case of overlapping ranges.
Furthermore, Morishita example 43N contains 22% ferrite, 13% bainitic ferrite, 5% fresh martensite and 55% tempered martensite (within the instantly claimed ranges of ferrite of 20 to 30% by area fraction and non-equilibrium (quasi-equilibrium) ferrite of 5 to 15% by area fraction, and residual martensite) and composition N explicitly contains every recited element in the claimed amount except for Cr, Mo, Nb, Ti and B, all of which are permissible in instant claim 1 in amount as little as one atom and all of which are optional elements in Morishita (Morishita, Tables 1, 2, 8 and 10, Example 43N). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the optional elements Cr, Mo, Nb, Ti and B to example 43N of Morishita. The motivation for doing so is that Morishita states that the Cr, Mo, Nb, Ti and B may be optionally added to the alloy of Morishita (Morishita, para [0104-0124])
Regarding the limitations “high-strength” and “excellent hole expandability,” these limitations are indefinite as set forth in the above 35 USC 112 rejections. Regardless, 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 of Morishita would be expected to have the same or similar properties as the instantly claimed steel because the steel of Morishita has the same or substantially the same composition and microstructure.
Regarding claim 2, Morishita example N contains 5% fresh martensite and 55% tempered martensite (Morishita, Tables 1, 2, 8 and 10, Example 43N), lying within the instantly claimed range of “a martensite phase of 50% or more by area fraction,” and Morishita further discloses a total of a bainite, bainitic ferrite fresh martensite and tempered martensite phase is 50% or more (Morishita, abstract), overlapping the instantly claimed range of non-equilibrium (quasi-equilibrium) ferrite of 5 to 15% by area fraction, and residual martensite.
Regarding claim 3, Morishita example N contains 2% residual austenite (Morishita, Table 8, Example 43N), lying within the instantly claimed range of “a retained austenite phase of 3% or less (including 0%) by area fraction,” and furthermore the steel of Morishita more broadly discloses a retained austenite amount of 0-8%, overlapping the instantly claimed range of “a retained austenite phase of 3% or less (including 0%) by area fraction.”
Regarding claims 4 and 5, the experimental examples of Morishita have tensile strengths ranging from 663-1195 MPa, yield strengths ranging from 373-859 Mpa, elongation ranging from 10-29% and hole expandability (i.e. hole expansion ratio) ranging from 33-93% (Morishita, Table 10), overlapping the instantly claimed ranges.
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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