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 .
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) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Toda (EP3778954A1). Toda is an earlier-published English language family member of US-US20210102270, cited in the IDS filed June 3, 2024.
Regarding claim 1, Toda discloses a hot stamped body (hot-stamped article [0001]). Toda discloses that the hot-stamped body has a chemical composition [0012]. The chemical composition ranges disclosed by Toda [0012] and the composition of steel no. 8 disclosed by Toda are compared in the table below with values given in mass%:
Alloying Element
Toda
Present Invention (claim 1)
Steel. No 8 (Table 1-1)
Ranges
C
0.42
0.35 to less than 0.75 [0024]
0.40 to 0.70
Si
0.21
0.005 to 0.25 [0025]
0.010 to 3.00
Mn
1.5
0.5 to 3.0 [0026]
0.50 to 3.00
P
0.012
0.10 or less [0034]
0.100 or less
S
0.0005
0.10 or less [0035]
0.0100% or less
N
0.0032
0.010 or less [0036]
0.0200 or less
O
—
—
0.0200 or less
Al
0.051
0.0002 to 3.0 [0027]
0.0010 to 0.500
Nb
0.084
0.01 to 0.15 [0030]
0.0010 to 0.100
Ti
0.029
0 to 0.15 [0032]
0.010 to 0.200
Cr
0.48
0.05 to 1.00 [0028]
0.010 to 1.00
Mo
0.012
0.005 to 1.00 [0031]
0.0010 to 1.000
B
0.0023
0.0005 to 0.010 [0029]
0.0005 to 0.0200
Co
—
—
0 to 4.00
Ni
—
0 to 3.00 [0033]
0 to 3.00
Cu
—
—
0 to 3.00
V
—
—
0 to 3.00
Ca
—
—
0 to 1.000
Mg
—
—
0 to 1.000
REM
—
—
0 to 1.000
Sb
—
—
0 to 1.00
Sn
—
—
0 to 1.00
Zr
—
—
0 to 1.00
As
—
—
0 to 0.100
at least one of W, Ta, Re, Os, Ir, and Tc
—
—
0 to 1.00 in total
Fe and impurities
Balance
Balance [0037]
balance
The composition ranges disclosed by Toda [0012], [0024-37] overlap the ranges recited in claim 1. When claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. See MPEP 2144.05(I). Note that the presently claimed elements which are absent from the compositions disclosed by Toda [0024-36] are presently claimed with a lower limit of 0.
Toda discloses that the hot stamped body has a microstructure comprising, by area ratio of at least one or more of lower bainite, martensite and tempered martensite [0055], which meets the presently claimed area ratio of at least one of martensite, bainite, and tempered martensite of 90% or more in total.
Toda discloses that the stamped body has an average grain size of former austenite grains of 3.0 µm or less [0039]. As an average is a value representative of a distribution, which would necessarily have some standard deviation, in disclosing former austenite grain size as an average [0039-46], Toda discloses that the hot stamped body is a structure which would necessarily have a former austenite grain size distribution which would have some standard deviation. Toda is silent on the ranges of the standard deviation of former austenite grain size encompassed by the disclosed hot-stamped body.
The standard deviation of a distribution of former austenite grain sizes is a material property that is inseparable from the chemical composition of the material and conditions for manufacturing the material. See MPEP2112.01(II). When the claimed and prior art products are substantially identical in structure or composition, or are produced by substantially identical processes, a prima facie case of obviousness has been established. See MPEP.2112.01(I). The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer See MPEP2112(I).
Toda discloses Mn in an amount of 0.5% to 3.0% [0026]. Toda discloses an average grain size of former austenite of 3.0 µm or less [0039]. Toda discloses a rolling reduction in the final stage of hot rolling of 12% or more [0070], and Toda discloses coiling at less than 500
°
C [0072]. It would have been obvious for one of ordinary skill in the art, at the time of filing, to produce the steel disclosed by Toda from within the parameters which Toda discloses for producing such a steel.
The present disclosure states “[t]o make the standard deviation in the grain size distribution of former austenite grains the desired range, the Mn content is 0.50% or more” (paragraph [0019] of the present disclosure as filed); “if the Mn content is more than 3.00%, transformation from austenite to pearlite in a hot rolled steel sheet is promoted too much and the standard deviation in the grain size distribution of former austenite grains in a hot stamped body cannot be controlled to a desired range” (paragraph [0019] of the present disclosure as filed); “[b]y making the rolling reduction of the final stage in the finish rolling 40% or more, the pearlite is evenly dispersed in the hot rolled steel sheet after rolling. This pearlite becomes starting points of austenite at the time of heating in the preheating step explained later in detail. For this reason, if the pearlite is evenly dispersed, at the hot stamped body, the standard deviation at the grain size distribution of the former austenite grains becomes smaller” (paragraph [0065] of the present disclosure as filed); “[b]y making the coiling temperature 750°C or less, it is possible to keep the ferrite from being arranged connected at the hot rolled steel sheet after rolling and the pearlite evenly disperses. This pearlite acts as starting points for austenite at the time of heating in the preheating step. For this reason, if the pearlite evenly disperses, in the hot stamped body, the standard deviation at the grain size distribution of the former austenite grains becomes smaller. As a result, the early fracture resistance of the hot stamped body can be improved” (paragraph [0069] of the present disclosure as filed); “when measuring the standard deviation in the grain size distribution of the former austenite grains, the grain size of the former austenite grains of the hot stamped bodies in the invention examples in Table 3 was 10 µm or less in all cases” (paragraph [0105] of the present disclosure as filed).
Considering the composition of the hot-stamped body disclosed by Toda [0024-37], particularly the amount of Mn [0026]; considering the microstructure disclosed by Toda [0055]; considering the average former austenite grain size disclosed by Toda [0039], and considering the rolling reduction and coiling parameters disclosed by Toda [0070] ,[0072], when compared with the parameters by which the present disclosure obtains the presently claimed former austenite grain size standard deviation, Toda establishes a sound basis for believing that in producing the steel disclosed by Toda from within the parameters disclosed by Toda, one of ordinary skill in the art would obtain a hot-stamped body wherein a standard deviation in grain size distribution of former austenite grains is 5.0 μm or less.
Toda discloses that refractory metal elements (Mo and Nb) segregate at prior austenite grain boundaries (making the Nb and Mo form solid solutions at the grain boundaries of the prior austenite [0019]). Toda discloses that the ratio of the amount of Mo and Nb at the prior austenite grain boundary to the overall amount of Mo and Nb in the hot stamped body is 30-100% (0.3 or more with a theoretical upper limit of 1) [0047-48]. Toda discloses that the hot-stamped body comprises 0.005% to 1.00% Mo [0031], 0.01% to 0.15% Nb [0030], and W, Ta, Re, Os, Ir, and Tc are absent from the composition disclosed by Toda [0024-37]. Toda discloses benefits of segregating Mo and Nb at the prior austenite grain boundaries, and Toda does not place an upper limit on the proportion of Mo and Nb segregated on the prior austenite grains [0047-49]. The range of structures defined by a hot-stamped body comprising 0.005% to 1.00% by mass Mo [0031], 0.01% to 0.15% by mass Nb [0030], from which W, Ta, Re, Os, Ir, and Tc are absent [0024-37], wherein the total amount of Mo and Nb segregated at the grain boundary is 30% or more with an upper limit of full grain boundary segregation (theoretical upper limit of 1) [0047-49] overlaps a range of structures defined by a total amount of segregation of at least one of Mo, W, Ta, Re, Os, Ir, and Tc at former austenite grain boundaries is 0.10 atm % or more. When claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists, and generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See MPEP 2144.05(I, II). Prior austenite Mo segregation is a material property that is inseparable from the chemical composition of the material. See MPEP2112.01(II). When the claimed and prior art products are substantially identical in structure or composition, or are produced by substantially identical processes, a prima facie case of obviousness has been established. See MPEP.2112.01(I). The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer See MPEP2112(I). Considering Toda discloses 0.005% to 1.00% Mo [0031], 0.01% to 0.15% Nb [0030], and W, Ta, Re, Os, Ir, and Tc are absent from the composition disclosed by Toda [0024-37], considering the microstructure disclosed by Toda [0055], the prior austenite grain size disclosed by Toda [0039], and particularly considering Toda’s disclosure of segregating molybdenum at the prior austenite grain boundaries [0047-49], Toda establishes a sound and strong basis for believing that the Mo segregation at former austenite grain boundaries is 0.15 atm % or more.
Regarding claims 2-4, as a hot-stamped boy with Mo segregation at former austenite grain boundaries is 0.15 atm % or more meets the additional limitations recited in each of claims 2-4, in establishing a sound and strong basis for believing that the hot-stamped body has a Mo segregation at former austenite grain boundaries is 0.15 atm % or more, applied to claim 1 above, the hot-stamped body, disclosed by Toda, applied to claim 1 above, meets the additional imitations recited in each of dependent claims 2-4.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN P O'KEEFE whose telephone number is (571)272-7647. The examiner can normally be reached MR 8:00-6:30.
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/SEAN P. O'KEEFE/ Examiner, Art Unit 1738
/SALLY A MERKLING/ SPE, Art Unit 1738
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