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
Claims 23-29 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/17/2026.
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 15-22 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 15 and 20 recite “Martensite” while reference in the instant Specification is to “fresh martensite” e.g. at Page 7. Due to the recitation of untempered martensite as “fresh martensite” in the instant Specification, it is unclear whether the reference to “Martensite” in Claims 15 and 20 refers to “fresh martensite,” “tempered martensite,” or has some other meaning entirely. Appropriate correction is required to describe the presence of a martensitic phase within the claimed steel sheet with specificity.
Claims 16-19 and 21-22 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 15-22 are rejected under 35 U.S.C. 103 as being unpatentable over Yokoyama et al. US 20210230712 A1.
Regarding Claim 1, Yokoyama et al. ‘712 teaches a cold rolled and heat treated steel sheet having a composition comprising the following elements by weight percent: C: 0.150% to 0.500%, Mn: 1.00% to 5.00%, Si: 0.01% to 2.50%, Al: 0.001% to 1.000%, Ti: 0% to 0.30%, B: 0% to 0.010%, P: 0.100% or less, S: 0.0100% or less, , N: 0.0100% or less, and a remainder of the composition being composed of iron and unavoidable impurities, overlapping the instantly claimed composition.
Yokoyama et al. ‘712 further teaches the steel sheet includes a microstructure comprising, by area percentage, 70% or more tempered martensite, 0% to 20% bainite, 0% to 10% fresh martensite (meeting the limitation for martensite), and 0% to 10% retained austenite (meeting the limitation for residual austenite), 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 Claims 16-19, Yokoyama et al. ‘712 teaches a cold rolled and heat treated steel sheet having a composition comprising the following elements by weight percent: C: 0.150% to 0.500%, Mn: 1.00% to 5.00%, Al: 0.001% to 1.000%, Si: 0.01% to 2.50%, meeting the limitations of the instant Claims.
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 20, Yokoyama et al. ‘712 teaches the steel sheet includes a microstructure comprising, by area percentage, 0% to 10% fresh martensite (meeting the limitation for martensite), overlapping the instantly claimed range of 1% to 6%, 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 21, Yokoyama et al. ‘712 teaches the steel sheet includes a microstructure comprising, by area percentage, 70% or more tempered martensite, overlapping the instantly claimed range of 80% to 95%, 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 22, Yokoyama et al. ‘712 further teaches the steel sheet includes a tensile strength of 1470 MPa or more, overlapping the instantly claimed range of 1440 MPa or more.
Yokoyama et al. ‘712 teaches a stress equivalent to 1200 MPa may be applied at [0166] but does not expressly measure a yield strength value. However, as Yokoyama et al. ‘712 teaches a tempering temperature of 200 °C, it would be expected to present the same or similar properties as the instantly claimed sheet, which is also tempered at 200 °C (Instant Specification Page 6).
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).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 12215402 B2 teaches a hot-rolled steel sheet with an overlapping microstructure.
US 20190003009 A1 teaches a high strength steel sheet
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.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/M.S.S./Examiner, Art Unit 1733
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