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 .
Upon amendment, applicant is cautioned against the introduction of new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention.
Applicant is encouraged to point to the passage in the instant Specification which identifies support for each claim amendment.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: “M” and “α” In Figs. 2(a)-(b). Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of 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.
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 1-7 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.
Claim 1 recites in Line 14 and Claim 2 recites in Line 4: “recrystallized ferrite bridge.” This term does not appear to have a universally accepted meaning within the art. Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “recrystallized ferrite bridge” is indefinite because the instant Specification does not clearly define or redefine the term. Appropriate correction is required to establish the meaning of “recrystallized ferrite bridge.”
Claims 3-7 are rejected for their dependency on a rejected claim.
Claim Rejections - 35 USC § 103
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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Obata et al. US 20190203315 A1.
Regarding Claim 1, Obata et al. ‘315 teaches C: 0.04% or more and 0.12% or less, Si: 0.15% or more and 0.95% or less, Mn: 2.00% or more and 3.50% or less, P: 0.050% or less, S: 0.0050% or less, N: 0.0100% or less, Al: 0.010% or more and 2.0% or less, Ti: 0.005% or more and 0.075% or less, Nb: 0.005% or more and 0.075% or less, B: 0.0002% or more and 0.0040% or less (claim 1), Cr: 0.05% or more and 0.20% or less [0026], and the balance being Fe and unavoidable impurities [0025], overlapping the instantly claimed composition.
Obata et al. ‘315 further teaches the steel sheet includes a steel microstructure comprising, by volume fraction, 35% or less of ferrite, 1% or more and 10% or less of retained austenite, 2% or more and 12% or less of as-quenched martensite, and a total of 25% to 70% of bainite and tempered martensite, overlapping the instantly claimed ranges, meeting the limitations of the instant Claim.
See MPEP 2144.05. In cases where 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).
Regarding a percentage of recrystallized ferrite bridge, this meaning is undefined and renders the claim indefinite for lack of clarity as set forth above. Nonetheless, the ferrite and residual austenite ranges overlap in composition, meeting the limitations of the instant Claim.
Regarding Claim 2, notwithstanding the 112(b) rejections above, Obata et al. ‘315 teaches the steel microstructure has “an average crystal grain diameter of the ferrite: 5.0 μm or less, an average crystal grain diameter of the retained austenite: 2.0 μm or less, an average crystal grain diameter of the as-quenched martensite: 3.0 μm or less, an average crystal grain diameter of the bainite and the tempered martensite phase: 4.0 μm or less, and an average intergrain distance of the as-quenched martensite of 1.0 μm or more [0018].” While the meaning of recrystallized ferrite bridge remains unclear, the average crystal grain diameter (meeting the limitation for average equivalent circular diameter) values of Obta et al. ‘315 overlap the instantly claimed range of 1 to 6 μm, meeting the limitations of the instant Claim.
Regarding Claim 3, Obata et al. ‘315 teaches the steel sheet includes a steel microstructure comprising, by volume fraction, 2% or more and 12% or less of as-quenched martensite, and a total of 25% to 70% of bainite and tempered martensite. As tempered martensite values are included in a percentage of 25% to 70%, Obata et al. ‘315 teaches ranges of total martensite overlapping the instantly claimed ranges and meeting the limitations of the instant Claim.
See MPEP 2144.05. In cases where 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). So too, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap but are merely close. See MPEP 2144.05(I).
Regarding Claim 4, as set forth above, Obata et al. ‘315 teaches the steel sheet includes a steel microstructure comprising, by volume fraction, 1% or more and 10% or less of retained austenite (meeting the limitation for residual austenite), overlapping the instantly claimed range of 3% or less (including 0%), meeting the limitations of the instant Claim.
See MPEP 2144.05. In cases where 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).
Regarding Claim 5, Obata et al. ‘315 teaches a tensile strength of 980 MPa or more and a total elongation of 12% or more [0077], meeting and overlapping the instantly claimed ranges of 980 MPa or more and 14% or more respectively.
See MPEP 2144.05. In cases where 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).
Obata et al. ‘315 does not expressly teach measuring a yield strength of its steel sheet.
However, persons of ordinary skill in the art at the time of filing the invention would expect a steel sheet formed by the method of Obata et al. ‘315 to present yield strength values overlapping the instantly claimed range of 550 to 700 MPa, meeting the limitations of the instant Claim.
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) “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990) “Products of identical chemical composition cannot 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).
Regarding Claim 6, Obata et al. ‘315 teaches a hole expansion ratio of 40% or more [0077], overlapping the instantly claimed range of 30% or more, meeting the limitations of the instant Claim.
See MPEP 2144.05. In cases where 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).
Regarding Claim 7, Obata et al. ‘315 teaches a steel sheet thickness of 0.8 to 2.5 mm [0075], overlapping the instantly claimed range of 1 to 3 mm, meeting the limitations of the instant Claim.
See MPEP 2144.05. In cases where 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).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 12006562 B2 teaches a steel sheet having overlapping crystal structure, tensile strength, and hole expansion.
US 8828557 B2 teaches a steel sheet having an overlapping elemental composition.
US 10941467 B2 teaches a steel sheet having overlapping microstructure and strength characteristics.
US 11572610 B2 teaches a steel sheet having overlapping crystal structure.
US 8460481 B2 teaches a steel with increased hole expansibility, strength, and fatigue resistance.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MORIAH S. SMOOT whose telephone number is (571)272-2634. The examiner can normally be reached M-F 8:30am - 5pm EDT.
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 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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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/M.S.S./Examiner, Art Unit 1733
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