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 § 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 (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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Toda (EP3778954A1). Toda is an earlier-published English language family member of US20210102270, cited in the IDS filed June 18, 2024.
Regarding claim 1, Toda discloses a hot stamped body (hot-stamped article). Toda discloses that the hot-stamped body has a chemical composition [0012]. The chemical composition ranges disclosed by Toda [0012] and the composition of manufacturing example 8 disclosed by Toda are compared in the table below with values given in mass%:
Alloying Element
Toda
Present Invention (claim 1)
Man. No 8 (Tables 1-1, 3-1)
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]
0.01 to 1.30
Mn
1.5
0.5 to 3.0 [0026]
0.05 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]
0.001 to 1.000
Cr
0.48
0.05 to 1.00 [0028]
0.01 to 1.00
Nb
0.084
0.01 to 0.15 [0030]
0 to 0.200
Ti
0.029
0 to 0.15 [0032]
0 to 0.200
Mo
0.012
0.005 to 1.00 [0031]
0 to 1.00
B
0.0023
0.0005 to 0.010 [0029]
0 to 0.1000
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
W
—
—
0 to 1.00
Ca
—
—
0 to 1.000
Mg
—
—
0 to 1.000
REM
—
—
0 to 1.000
Sb
—
—
0 to 1.000
Zr
—
—
0 to 1.000
Sn
—
—
0 to 1.000
As
—
—
0 to 0.100
Fe and impurities
Balance
Balance [0012]
balance
The composition of manufacture no. 8 disclosed by Toda (Tables 1-1, 3-1) meets the composition recited in present claim 1. Note that the presently claimed elements which are absent from manufacture no. 8 of Toda are presently claimed with a lower limit of 0.
Manufacture no. 8 of Toda has an average grain size of former austenite grains of 1.9 µm (Table 3-1), which is 3.0 μm or less.
Manufacture no. 8 of Toda has a metallographic structure comprising 97% martensite (Table 3-1). Toda reports the proportion of martensite as the proportion of an area of a cross-sectional sample taken vertical to the sheet surface [0057-64]. The present disclosure indicates that the volume fraction of martensite is calculated by extrapolating a volume fraction from a measurement of a proportion of martensite of a cross-sectional area vertical to the sheet surface (parallel to the sheet thickness direction) (paragraph [0047] of the disclosure as filed). Manufacture no. 8 disclosed by Toda must necessarily have some volume fraction of martensite. Considering manufacture no. 8 of Toda has an area fraction of 97% martensite (Table 3-1), the area fraction of martensite disclosed by Toda is a proportion of martensite in a cross-sectional area in a sample taken vertical to the sheet surface [0057-64], and the volume fraction of martensite in the present disclosure is an extrapolation of a proportion of martensite measured in a cross-sectional sample taken in a direction vertical to the sheet surface (paragraph [0047] of the present disclosure), Toda establishes a sound basis for believing that manufacture no. 8 of Toda would have a metallographic structure comprising, by volume ratio, martensite in 90% or more.
Toda discloses that manufacture no. 8 has a Vickers hardness (Table 3-1), and Toda measures Vickers hardness as an average of hardness measurements in a sheet thickness direction (vertical to the sheet surface) [0086-87]. Toda discloses that manufacture no. 8 has an average prior austenite grain size of 1.9 µm (Table 3-1). As an average is a value representative of a distribution, which would necessarily have some standard deviation, in disclosing Vickers hardness and prior austenite grain size as an average ([0086-87], Table 3-1), Toda discloses that manufacture no. 8 is a structure which would necessarily have some Vickers hardness distribution between maximum and minimum values, and have a prior austenite grain size distribution which would have some standard deviation. Toda is silent on the Vickers Hardness distribution and the standard deviation of prior austenite grain size.
Vickers hardness distribution and prior austenite grain size distributions are material properties that are inseparable from the chemical composition of the material and the process of manufacturing the material. See MPEP2112.01(II). When 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(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).
In discussing the hot stamping step, the present disclosure states “by rapidly heating by an average heating speed of more than 100°C/s from 600° C to the above heat treatment temperature, it is possible to avoid a temperature region in which recrystallization proceeds, and therefore it is possible to keep the austenite nucleation sites formed in the steps up to then from being reduced or eliminated due to progression of recrystallization” (paragraph [0069] of the present disclosure). Toda heats manufacture no. 8 at a rate of 173°C/s (Table 3-1).
The present disclosure states “[b]y cold rolling by a rolling reduction of 30% or more, as explained above, it is possible to increase the fineness of the metallographic structure to increase the interfaces with the substructures of martensite and change the relative orientations of the carbides precipitated at the tempering step so as to reliably randomize the relative orientations of the austenite formed using the interfaces of these carbides and the substructures as nucleation sites. If the rolling reduction of the cold rolling is low, such an effect cannot be sufficiently obtained” (paragraph [0065] of the disclosure as filed). Toda cold-rolls manufacture no. 8 at a rolling reduction of 55% (Table 2-1).
The range of heat treatment temperatures for inventive examples int eh present disclosure is hot stamp treating at 931-978
°
C (Table 3), and manufacture no. 8 of Toda is hot stamp treated at
929
°
C (Table 3-1).
Considering the chemical composition, microstructure, prior austenite grain size, and manufacturing steps disclosed by Toda for manufacture no. 8 (Tables 1-1, 2-1, 3-1), Toda establishes a sound basis for believing that manufacture no. 8 would have a standard deviation in grain size distribution of former austenite grains is 1.5 μm or less, and a difference of a maximum value and a minimum value in a Vickers hardness distribution in a sheet thickness direction is 35% or less of an average value of the Vickers hardness distribution.
Regarding claim 2, the chemical composition of manufacture no. 8 meets the Nb, Ti, Mo, and B alternatives (Table 3-1).
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) 1-2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Toda (EP3778954A1).
Regarding claim 1, Toda discloses a hot stamped body (hot-stamped article). Toda discloses that the hot-stamped body has a chemical composition [0012]. The chemical composition ranges disclosed by Toda [0012] and the composition of manufacturing example 8 disclosed by Toda are compared in the table below with values given in mass%:
Alloying Element
Toda
Present Invention (claim 1)
Man. No 8 (Tables 1-1, 3-1)
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]
0.01 to 1.30
Mn
1.5
0.5 to 3.0 [0026]
0.05 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]
0.001 to 1.000
Cr
0.48
0.05 to 1.00 [0028]
0.01 to 1.00
Nb
0.084
0.01 to 0.15 [0030]
0 to 0.200
Ti
0.029
0 to 0.15 [0032]
0 to 0.200
Mo
0.012
0.005 to 1.00 [0031]
0 to 1.00
B
0.0023
0.0005 to 0.010 [0029]
0 to 0.1000
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
W
—
—
0 to 1.00
Ca
—
—
0 to 1.000
Mg
—
—
0 to 1.000
REM
—
—
0 to 1.000
Sb
—
—
0 to 1.000
Zr
—
—
0 to 1.000
Sn
—
—
0 to 1.000
As
—
—
0 to 0.100
Fe and impurities
Balance
Balance [0037]
balance
The composition ranges disclosed by Toda [0012], [0024-37] overlaps 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 stamped body has an average grain size of former austenite grains of 3.0 µm or less [0039], which is identical to the claimed range.
Toda discloses that the stamped body has a metallographic structure comprising 90% or More of Microstructures Comprised of At Least One of Lower Bainite, Martensite, and Tempered Martensite [0055], and discloses several examples wherein the microstructure is martensite (Tables 3-1 to 3-3). Toda reports the proportion of martensite as the proportion of an area of a cross-sectional sample taken vertical to the sheet surface [0057-64]. The present disclosure indicates that the volume fraction of martensite is calculated by extrapolating a volume fraction from a measurement of a proportion of martensite of a cross-sectional area vertical to the sheet surface (parallel to the sheet thickness direction) (paragraph [0047] of the disclosure as filed). The hot stamped body disclosed by Toda must necessarily have some volume fraction of martensite. Considering Toda discloses a hot stamped body with 90% or more in some proportion of martensite [0055], [0012], the area fraction of martensite disclosed by Toda is a proportion of martensite in a cross-sectional area in a sample taken vertical to the sheet surface [0057-64], and the volume fraction of martensite in the present disclosure is an extrapolation of a proportion of martensite measured in a cross-sectional sample taken in a direction vertical to the sheet surface (paragraph [0047] of the present disclosure), Toda establishes a sound basis for believing that the disclosure of Toda encompasses embodiments which have a metallographic structure comprising, by volume ratio, martensite in 90% or more. 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).
Toda discloses that the hot stamped body has a Vickers hardness (Tables 3-1, 3-2, 3-3), and Toda measures Vickers hardness as an average of hardness measurements in a sheet thickness direction (vertical to the sheet surface) [0086-87]. Toda discloses that the hot stamped body has an average prior austenite grain size 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 Vickers hardness and prior austenite grain size as an average [0039], [0086-87], Toda discloses that the hot stamped body is a structure which would necessarily have some Vickers hardness distribution between a maximum and minimum value, and have a prior austenite grain size distribution which would have some standard deviation. Toda is silent on the Vickers Hardness distribution and the standard deviation of prior austenite grain size.
Vickers hardness distribution and prior austenite grain size distributions are material properties that are inseparable from the chemical composition of the material and the process of manufacturing the material. See MPEP2112.01(II). When 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(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 manufacturing the hot stamped body comprises cooling a hot rolled steel sheet from finish hot-rolling at 100°C/s or more and coiled at a temperature less than 500°C [0067]. Toda discloses tempering the steel at 200-500
°
C [0074], [0076]. Toda discloses cold rolling the steel sheet [0074]. The degrees of cold-rolling reduction of inventive examples ranging from 54% (manufacture no. 7) to 58% (manufacture no. 16) (Tables 2-1, 2-2, 2-3). Toda discloses forming a plating layer [0073]. Toda discloses that hot stamping comprises heating at a rate of 100°C/s to less than 200°C/s; stamping temperature at a range of A3 point+10°C to the A3 point+150°C, and cooling from stamping at rate of 10°C/s or more [0075], [0078-79]. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation” and “[g]enerally, 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” (MPEP 2144.05(II)). It would have been obvious to one of ordinary skill in the art to manufacture the formed body disclosed by Toda from within the range of parameters disclosed by Toda to arrive at optimal properties for a stamped body from within the manufacturing constraints disclosed by Toda ([0067-79], Tables 2-1, 2-2, 2-3, 3-1, 3-2, 3-3). Considering the extent to which the conditions disclosed by Toda ([0067-79], Tables 2-1, 2-2, 2-3, 3-1, 3-2, 3-3) overlap the manufacturing conditions to which the present disclosure attributes prior austenite grain distribution and Vickers hardness distribution (paragraphs [0062-69] of the present disclosure) in view of the composition disclosed by Toda [0012], [0024-37] and microstructure disclosed by Toda [0055], Toda establishes a sound basis for believing that one of ordinary skill in the art, at the time of filing, would arrive at a hot stamped body with a standard deviation in grain size distribution of former austenite grains is 1.5 μm or less, and a difference of a maximum value and a minimum value in a Vickers hardness distribution in a sheet thickness direction is 35% or less of an average value of the Vickers hardness distribution.
Regarding claim 2, the ranges for Nb, Ti, Mo, and B disclosed by Toda [0029-32] overlap or encompass the ranges for alternatives recited in claim 2. 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).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Takashima discloses a hot stamped body with an overlapping chemical composition [0044-91], 95-100% by volume martensite [0033], and a range of Vickers hardness standard deviation with a lower limit of 0 [0021], [0041]. The reference discloses that the body comprises prior austenite grains and that nan-sized cementite grains are present within the prior austenite grains, but Takashima does not provide direction on assessing the prior austenite grain size.
US20220118741 discloses a hot stamped (hot pressed) body with a similar composition to that presently claimed; proportion of martensite of 95% or greater, prior austenite grain size of 8 µm or less, and low Vickers hardness standard deviation.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (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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/SEAN P. O'KEEFE/ Examiner, Art Unit 1738
/SALLY A MERKLING/ SPE, Art Unit 1738
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