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/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-13, drawn to a steel, classified in C22C 38/38.
II. Claims 14-20, drawn to a method of forming the steel, classified in C21D 1/18.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the product as claimed can be made by another and materially different process.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The product as claimed can be made by drawing, forging or extrusion rather than roll-forming.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Gerald Keller on 08/24/2026 a provisional election was made with traverse to prosecute the invention of I, claims 1-13. Affirmation of this election must be made by applicant in replying to this Office action. Claims 14-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign mentioned in the description: reference number 38, identified in [0054], is not in the drawings. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Status of Claims
Claims 1-20 are as originally filed.
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 1-13 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.
Claims 1 and 13 both recite the same component composition. However, neither Claim 1 nor Claim 13 recites a composition reflecting a sum of 100%. It is not clear if the component has a balance of iron, which is assumed since the component is steel, or if the component contains other elements or compounds.
Claims dependent on any of the rejected claims are likewise rejected under this statute.
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 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 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over CN 113859390 A, based on the machine translation, in view of Chai et al in Metals and Biller in “PHS Tailed Products” and evidenced by Magmaweld.
CN 113859390 A (CN ‘390) teaches a closed cross-section structural component that are combined and fixed by welding [0057, 0074]. The component is bent using a bending device [0026]. The corner radius is based on the representation in the instant application in FIG. 4, which is the hypotenuse based on the thickness of the corners from a right triangle bisecting a 90° angle. For fitting 1, the wall thickness is variable at 1.2, 1.6, and 2.1 mm [0075]. For fitting 2, the wall is 1.2 mm with a uniform thickness design [0077]. An analysis of the thicknesses and corner radii are represented below in the table:
Thickness
Radius
(mm)
(mm)
0.5t
2t
1.2
1.697056
0.6
2.4
1.6
2.262742
0.8
3.2
2.1
2.969848
1.05
4.2
The three thicknesses are within the claimed range of 0.8 mm and 5.0 mm. The corner radius is within the range of 0.5t and 2t as represented above in the table. The tensile strength of the parts and fittings is > 1300 MPa [0069], or > 1.3 GPa. However, CN ‘390 does not teach the steel is press hardened and uncoated, the composition of the steel as recited, and the weld seam hardness as claimed.
Regarding the composition of the uncoated press-hardened steel, Chai et al teaches an uncoated press-hardened steel with Cr (abstract) from Tables 1 and 2 with respect to Claim 1:
% by wt
Claim 1
Chai et al
C
0.05 to 0.35
0.2
Mn
0.5 to 5.0
0.8 to 1.4
Si
0.5 to 2.0
≤ 2.5
Cr
0.6 to 4.0
≤ 2.5
Fe (steel)
not recited
balance
UTS (GPa)
1.5 to 2.1
1.731 ± 8
The microstructure is martensitic (page 1) and contains chromium carbides (page 6). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the steel of Chai et al for the cross-sectional component in CN ‘390, since Chai et al teaches excellent oxidation resistance and excellent tensile and pending performances at the coupon and component levels (page 12).
Regarding the hardness, Billur teaches automotive components may require higher stiffness, strength, or energy absorbing capacity in a confined local area by spot weld separate reinforcement panels to the main component (page 1). In 2023, the European Standard for Laser Welded Tailored Blanks clearly defines the average hardness in the weld zone shall not drop below the base material’s average hardness minus 30 HV as shown in Figure 2 on page 4. The standard defines a maximum hardness in the weld zone. This cannot be more than 15% of the hardness of the stronger base material if the UTS of the stronger base material is over 1200 MPa (page 4). Magmaweld teaches as evidence the hardness of the steel with a tensile strength of at least 1.5 GPa can be approximated to have a hardness of greater than 460 HV. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the weld seam in CN ‘390 to have the hardness as taught by Billur and evidenced by Magmaweld, since Billur teaches avoiding fail at the weld zone (page 3).
Regarding Claim 2, CN ‘390 teaches the claimed yield strength.
Regarding Claim 3, CN ‘390 as evidenced by Magamweld teaches the steel has a hardness of greater than 460 HV.
Regarding Claim 4, Chai et al teaches the thickness of the oxide layer for an uncoated steel is 200-300 nm (page 11), or 0.2-0.3 µm.
Regarding Claim 5, CN ‘390 does not teach ferrite. Chai et al teaches the presence of ferrite (page 11) but does not teach an amount.
Regarding Claim 6, CN ‘390 does not teach bainite or austenite. Chai et al teaches the presence of bainite (page 11) but does not teach an amount.
Regarding Claim 7, CN ‘390 teaches roll forming, welding, induction heating at 930 °C, and online cooling to quench and cool [0079-0082]. Since CN ‘390 substantially claims the same process to form the component, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the component taught in CN ‘390 in view of Chai et al and Billur would at least overlap the claimed property of the carbide fraction in vol. % and size as claimed.
Regarding Claim 8, CN ‘390 in view of Chai et al and Billur does not teach the chromium content of carbides as recited. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the chromium carbides taught in Chai et al would be present in at least overlapping the claimed range, since CN ‘390 in view of Chai et al and Billur teaches substantially the same material.
Regarding Claim 9, Chai et al teaches 0.025% Nb (page 3).
Regarding Claim 10, Chai et al does not teach yttrium, which reads on zero.
Regarding Claim 11, Chai et al does not teach cerium, which reads on zero.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over CN ‘390 in view of Chai et al and Billur and as evidenced by Magmaweld.
CN ‘390 teaches a closed cross-section structural component that are combined and fixed by welding [0057, 0074]. The component is bent using a bending device [0026]. The corner radius is based on the representation in the instant application in FIG. 4, which is the hypotenuse based on the thickness of the corners from a right triangle bisecting a 90° angle. For fitting 1, the wall thickness is variable at 1.2, 1.6, and 2.1 mm [0075]. For fitting 2, the wall is 1.2 mm with a uniform thickness design [0077]. An analysis of the thicknesses and corner radii are represented below in the table:
Thickness
Radius
(mm)
(mm)
0.5t
2t
1.2
1.697056
0.6
2.4
1.6
2.262742
0.8
3.2
2.1
2.969848
1.05
4.2
The three thicknesses are within the claimed range of 0.8 mm and 5.0 mm. The corner radius is within the range of 0.5t and 2t as represented above in the table. The tensile strength of the parts and fittings is > 1300 MPa [0069], or > 1.3 GPa. However, CN ‘390 does not teach the steel is press hardened and uncoated and the surface oxidation, the composition of the steel as recited, and the component and weld seam hardness as claimed.
Regarding the composition of the uncoated press-hardened steel and surface oxidation, Chai et al teaches an uncoated press-hardened steel with Cr (abstract) from Tables 1 and 2 with respect to Claim 13:
% by wt
Claim 13
Chai et al
C
0.05 to 0.35
0.2
Mn
0.5 to 5.0
0.8 to 1.4
Si
0.5 to 2.0
≤ 2.5
Cr
0.6 to 4.0
≤ 2.5
Fe (steel)
not recited
balance
UTS (GPa)
1.5 to 2.1
1.731 ± 8
The microstructure is martensitic (page 1) and contains chromium carbides (page 6). Regarding the surface oxidation, Chai et al teaches the thickness of the oxide layer for an uncoated steel is 200-300 nm (page 11), or 0.2-0.3 µm. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the steel of Chai et al for the cross-sectional component in CN ‘390, since Chai et al teaches excellent oxidation resistance and excellent tensile and pending performances at the coupon and component levels (page 12).
Regarding the hardness of both the component and the weld seam, Billur teaches automotive components may require higher stiffness, strength, or energy absorbing capacity in a confined local area by spot weld separate reinforcement panels to the main component (page 1). In 2023, the European Standard for Laser Welded Tailored Blanks clearly defines the average hardness in the weld zone shall not drop below the base material’s average hardness minus 30 HV as shown in Figure 2 on page 4. The standard defines a maximum hardness in the weld zone. This cannot be more than 15% of the hardness of the stronger base material if the UTS of the stronger base material is over 1200 MPa (page 4). Magmaweld teaches as evidence the hardness of the steel with a tensile strength of at least 1.5 GPa can be approximated to have a hardness of greater than 460 HV. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the weld seam in CN ‘390 to have the hardness as taught by Billur and evidenced by Magmaweld, since Billur teaches avoiding fail at the weld zone (page 3).
Allowable Subject Matter
Claim 12 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Regarding Claim 12, CN ‘390 in view of Chai et al and Billur do not suggest that the radius of the curvature be less than the hypotenuse as described above. CN ‘390 teaches consistent thickness.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Teng et al (US 2025/0236937 A1) teaches a hot stamping alloy with improved weldability. Lu et al (US 2023/0235424 A1) teaches wear-resistant high-strength roll-formed components.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tima M. McGuthry-Banks whose telephone number is (571)272-2744. The examiner can normally be reached Monday through Friday, 7:30 am to 4:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith D. Hendricks can be reached at (571) 272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Tima M. McGuthry-Banks
Primary Examiner
Art Unit 1733
/Tima M. McGuthry-Banks/Primary Examiner, Art Unit 1733
Prosecution Insights