Detailed Office Action
Notice of Pre-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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections – U.S.C. §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 – 4 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 claim 1, the phrase “when an interface where an orientation difference between adjacent martensite and tempered martensite is 15 degrees of more...” in combination with the formula (i.e. Expression (1)) is indefinite. The phrase is indefinite because it is not clear whether the formula is optional or not given the use of “when”. That is, it is not clear whether Expression (1) is required only when a prior austenite grain boundary is defined as claimed, or for any boundary that meets the described limitation.
Moreover, it is unclear whether the phrase is requiring that every interface with an orientation difference of 15 degrees or more is required to meet the formula, or whether it must be satisfied at least once throughout the whole of the sheet. The interpretation is taken that Expression (1) is required to be satisfied for any grain boundary between adjacent martensite and tempered martensite with an orientation difference of 15° or more.
Claims 2 – 4 are rejected by virtue of dependency.
Claim Rejections – U.S.C. §102
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 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 – 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takeda (WO2020/203158, using US2022/0282351 as translation, cited in IDS of 02/10/25)
Regarding claim 1, Takeda teaches a steel sheet [Title]. Takeda teaches an example with a composition of: [Table 1, Example C]
Element
Claimed Invention (mass%)
Takeda (mass%)
Relation
Carbon (C)
0.15 – 0.4%
0.34%
Falls within
Silicon (Si)
0.01 – 2.0%
1.94%
Falls within
Manganese (Mn)
0.8 – 2.0%
1.29%
Falls within
Phosphorous (P)
0.0001 – 0.02%
0.0059%
Falls within
Sulfur (S)
0.0001 – 0.02%
0.003%
Falls within
Aluminum (Al)
0.001 – 1.0%
0.154%
Falls within
Nitrogen (N)
0.0001 – 0.02%
0.0107%
Falls within
Oxygen (O)
0.0001 – 0.02%
0.0019%
Falls within
Cobalt (Co)
0 – 0.5%
0.1%
Falls within
Nickel (Ni)
0 – 1.0%
0.05%
Falls within
Molybdenum (Mo)
0 – 1.0%
0.08%
Falls within
Chromium (Cr)
0 – 2.0%
0.223%
Falls within
Titanium (Ti)
0 – 0.5%
0.084%
Falls within
Boron (B)
0 – 0.01%
0.0008%
Falls within
Niobium (Nb)
0 – 0.5%
0.031%
Falls within
Vanadium (V)
0 – 0.5%
0.044%
Falls within
Copper (Cu)
0 – 0.5%
0.036%
Falls within
Tungsten (W)
0 – 0.1%
0.011%
Falls within
Tantalum (Ta)
0 – 0.1%
0.013%
Falls within
Magnesium (Mg)
0 – 0.05%
0.0053%
Falls within
Calcium (Ca)
0 – 0.05%
0.004%
Falls within
Yttrium (Y)
0 – 0.05%
0.007%
Falls within
Zirconium (Zr)
0 – 0.05%
0.003%
Falls within
Lanthanum (La)
0 – 0.05%
0.005%
Falls within
Cerium (Ce)
0 – 0.05%
0.026%
Falls within
Tin (Sn)
0 – 0.05%
0.028%
Falls within
Antimony (Sb)
0 – 0.05%
0.004%
Falls within
Arsenic (As)
0 – 0.05%
0.026%
Falls within
Iron (Fe)
Remainder
Remainder
Meets
*Shaded indicates optional
Takeda teaches that the example has a microstructure of 98.5% of martensite and tempered martensite with the remaining structure being 1.5% of bainite, pearlite, and/or retained austenite [Table 2, Example C-1; 0163]. Takeda teaches that the tensile strength is 1704 MPa [Table 2, Example C-1], which meets the claimed range.
"[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962))
Takeda does not expressly teach the concentration of the alloying elements at boundaries defined in the claim as prior austenite grain boundaries. However, given that Takeda teaches a steel sheet with a substantially identical composition, microstructure, and property (tensile strength) as the claimed steel sheet, there is a reasonable expectation that the steel sheet would meet the claimed limitation of Expression (1). 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, in this case composition, microstructure, and properties, a prima facie case of anticipation is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (MPEP 2112.01 I).
Moreover, Takeda describes that the sheet is excellent in hydrogen embrittlement resistance [Abstract], which the instant invention describes as being correlated with Expression (1) [See Fig. 1 of instant invention], and also teaches a substantially identical method including hot-rolling, finishing – rolling, cooling, coiling, cold-rolling, annealing, and tempering [0186 – 0206] further providing a reasonable expectation that the example of Takeda would possess the claimed limitation.
To this, the USPTO does not possess the capability to test samples of the prior art to determine the properties/microstructure as claimed. As such, given the substantially similarities between the example of Takeda and the claimed invention, the burden is shifted to applicant to demonstrate that the prior art does not possess such feature(s) (In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980)
Regarding claim 2, Takeda teaches the invention as applied in claim 1. Takeda teaches an example with a composition of: [Table 1, Example C]
Element
Claimed Invention (mass%)
Takeda (mass%)
Relation
Cobalt (Co)
0.01 – 0.5%
0.1%
Falls within
Nickel (Ni)
0.01 – 1.0%
0.05%
Falls within
Molybdenum (Mo)
0.01 – 1.0%
0.08%
Falls within
Chromium (Cr)
0.001 – 2.0%
0.223%
Falls within
Titanium (Ti)
0.001 – 0.5%
0.084%
Falls within
Boron (B)
0.0001 – 0.01%
0.0008%
Falls within
Niobium (Nb)
0.001 – 0.5%
0.031%
Falls within
Vanadium (V)
0.001 – 0.5%
0.044%
Falls within
Copper (Cu)
0.001 – 0.5%
0.036%
Falls within
Tungsten (W)
0.001 – 0.1%
0.011%
Falls within
Tantalum (Ta)
0.001 – 0.1%
0.013%
Falls within
Magnesium (Mg)
0.001 – 0.05%
0.0053%
Falls within
Calcium (Ca)
0.001 – 0.05%
0.004%
Falls within
Yttrium (Y)
0.001 – 0.05%
0.007%
Falls within
Zirconium (Zr)
0.001 – 0.05%
0.003%
Falls within
Lanthanum (La)
0.001 – 0.05%
0.005%
Falls within
Cerium (Ce)
0.001 – 0.05%
0.026%
Falls within
Tin (Sn)
0.001 – 0.05%
0.028%
Falls within
Antimony (Sb)
0.001 – 0.05%
0.004%
Falls within
Arsenic (As)
0.001 – 0.05%
0.026%
Falls within
*Shaded indicates one or more of
Regarding claims 3 – 4, Takeda teaches the invention as applied in claims 1 – 2. Takeda teaches that the sheet is galvanized including zinc, aluminum, and/or magnesium [0207, 0210], meeting the claimed limitation.
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US2020/0172991 – Cold-rolled steel with tensile strength of 1780 MPa, hydrogen embrittlement resistance, and martensitic microstructure. Overlapping composition
US2019/0153575 – Ultra-high strength martensitic steel plate with overlapping composition
WO2022/138894 – Steel sheet member with high martensitic fraction, tensile strength, and overlapping composition
KR2021/0120477 – Tailored cold-rolled blanks with high tensile strength and martensitic fraction
CN102345076 – steel plate with anticipatory composition, tensile strength, and microstructure
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUSTIN POLLOCK whose telephone number is (571)272-5602. The examiner can normally be reached M - F (8 - 5).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached on (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738
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