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 without traverse of claims 1-10 in the reply filed on 6/16/2026 is acknowledged.
Claims 11-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 6/16/2026.
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) 1-8 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR 20120074798 A to Seong et al (cited by applicant in IDS, the English language machine translation provided by applicant has been relied upon for examination purposes) in view of US 2019/0071757 A1 to Murata et al.
Regarding claim 1, Seong discloses a cold rolled steel sheet alloy comprising the following composition (Seong, translation pages 3 and 4) which overlaps the instantly claimed composition as follows:
Element
Claimed wt%
Seong wt%
Overlaps?
C
0.10-0.16
0.10-0.27
Yes
Si
0.3-0.8
0.001-1.0
Yes
Al
0.01-0.5
0-1.0
Yes
Mn
2.0-3.0
2.3-3.5
Yes
Cr
0.001-0.5
0-2
Yes
Mo
0.001-0.5
0-0.2
Yes
B
0.0001-0.001
0-0.005
Yes
Nb
0.001-0.05
0-0.05
Yes
Ti
0.001-0.05
0.004-0.03
Yes
P
>0-0.04
0-0.02
Yes
S
>0-0.01
0-0.01
Yes
N
>0-0.01
0-0.01
Yes
Fe
Balance
Balance
Yes
Wherein the steel has a microstructure comprising bainite, tempered martensite and martensite of 90% or more, at least one of the bainite and tempered martensite is 40% or more, 1-10% ferrite and 1-5% of austenite (Seong, translation page 6), which overlaps the instantly claimed ranges of ferrite: 10% or less (excluding 0%), retained austenite: more than 1% to 5% or less, martensite: 25% or more but less than 50%, and bainite: 35% or more but less than 70%.
Seong discloses that the martensite has a phase of 2 µm or less (Seong, translation page 6) but is silent as to a size of martensite-austenite in the bainite.
Murata discloses that in a cold rolled steel sheet, an average size of martensite-austenite should be suppressed to 1.0 µm or less, more preferably 0.7 µm or less because martensite-austenite having a coarser size more causes concentration of strain in the interface between the parent phase and the hard phase to easily generate fracture from the void, as a base point, formed in the vicinity of the interface between the parent phase and the hard phase, which results in a decrease of the hole expandability (Murata, para [0033]).
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 suppress the average size of the martensite-austenite of Seong to 1.0 µm or less, preferably 0.7 µm or less, as suggested by Murata. The motivation for doing so is that martensite-austenite having a coarser size more causes concentration of strain in the interface between the parent phase and the hard phase to easily generate fracture from the void, as a base point, formed in the vicinity of the interface between the parent phase and the hard phase, which results in a decrease of the hole expandability (Murata, para [0033]).
Regarding the overlapping ranges of Seong in view of Murata, 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 Seong in view of Murata including the instantly claimed because Seong in view of Murata discloses the same utility throughout the disclosed ranges.
Regarding claims 2-4, the composition based equations in the instant claims, the instantly claimed equations fully depends on the composition of the alloy. It is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art, In re Cooper and Foley 1943 C.D.357, 553 O.G.177; 57 USPQ 117, Taklatwalla v.Marburg. 620 O.G.685, 1949 C.D.77, and In re Pilling, 403 O.G.513, 44 F(2) 878, 1931 C.D.75. In the instant case, as the *** of *** is capable of falling within the boundaries of the instantly claimed composition formulas, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected any portion of the disclosed ranges of each element of Seong in view of Murata including those which fall within the boundaries of the instantly claimed composition based formulas because Seong in view of Murata discloses the same utility throughout the disclosed ranges.
Regarding claims 5-8, the microstructure of the cold-rolled sheet of Seong in view of Murata overlaps the instantly claimed ranges.
Regarding claim 10, 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 Seong in view of Murata would be expected to have the same or similar properties as the instantly claimed steel because the steel of Seong in view of Murata has the same or substantially the same composition and microstructure.
Allowable Subject Matter
Claim 9 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including 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:
Instant claim 9 is directed to a cold-rolled steel sheet as set forth in the instant claim. The closest prior art of record is KR 20120074798 A to Seong et al (cited by applicant in IDS, the English language machine translation provided by applicant has been relied upon for examination purposes) in view of US 2019/0071757 A1 to Murata et al as set forth in the above 35 USC 103 rejection. Seong in view of Murata differs from instant claim 9 at least in that Seong discloses a tensile strength of more than 1.5 GPa (Seong, abstract) whereas instant claim 9 requires a tensile strength of 980 to 1150 MPa.
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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