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 Interpretation
Claim 1 recites “REM” in Line 23. Claim 2 recites “REM” in Line 11. The instant Specification recites at [0040] “In the present embodiment, REM refers to a total of 17 elements that are composed of Sc, Y and lanthanoid, and the REM content refers to the total content of these elements. For purposes of examination, “REM” will be interpreted as the 17 rare earth metals including scandium, yttrium, and the 15 lanthanoid in the periodic table of elements.
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 1-2 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 “sheet thickness” in Line 30. The term “sheet thickness” lacks a literal antecedent basis as Claim 1 is to a “hot-stamping formed body” and not to a sheet. The recitation “sheet thickness” therefore renders the claim indefinite. Appropriate correction is required to establish a sufficient nexus between the “hot-stamping formed body” and “a sheet thickness.”
Claim 1 recites “pole density of a texture” in Line 32. It is unclear the nexus between the “pole density” and “a texture” in reference to the “hot-stamping formed body” of Line 1. While “pole density” and “texture” are individual terms of art, it is unclear what the phrase “pole density of a texture” means or what crystalline structure this phrase imparts, when there has been no establishment of a texture within the hot-stamping formed body. It is unclear whether this a metallurgical reference, a physical reference to metal texture, a visual reference, or some other meaning entirely. This is further complicated by the recitation of both a “formed body” and a “sheet thickness” as established above. The recitation “pole density of a texture” renders the claim indefinite and does not permit persons of ordinary skill in the art to ascertain the metes and bounds of a “pole density.” Appropriate correction is required.
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 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Toda et al. WO 2021230149 A1 as evidenced by NPL Arkhangel’skaya et al.
Regarding Claim 1, Toda et al. ‘149 teaches a hot stamped molded body having a chemical composition by mass% of C: 0.15 to 0.50%, Si: 0.0010-3.000%, Mn: 0.30 to 3.00%, Al: 0.0002 to 2.000%, P: 0.100% or less, S: 0.1000% or less, N: 0.0100% or less, Nb: 0 to 0.15%, Ti: 0 to 0.15%, V: 0 to 0.15%, Mo: 0-1.0%, Cr: 0-1.0%, Cu: 0-1.0%, Ni: 0-1.0%, B: 0 to 0.0100%, Ca: 0 to 0.010%, and REM: 0 to 0.30%, the balance consists of Fe and impurities [0011-0015]. This chemical composition overlaps the instantly claimed composition. Toda et al. ‘149 further teaches the hot stamped molded body has an area ratio of 10 to 30% in total, and a residual structure consisting of one or more of martensite, bainite, and tempered martensite, overlapping the instantly claimed area ratio of bainite of more than 10%.
See MPEP 2144.05. In the case where the 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).
Notwithstanding the 112(b) rejections above, Toda et al. ‘149 does not expressly teach measuring the area ratio of bainite from a surface to 1/25 depth of a sheet thickness from the surface, a maximum value of pole density of a texture, or a deboronization index. However, this does not negate that Toda et al. ‘149 teaches a hot stamped molded body overlapping and encompassing the crystallography, chemical composition, and material properties of the hot stamping body instantly claimed. Therefore, the hot stamped molded body of Toda et al. ‘149 is expected to present the same or about the same properties of the hot stamping formed body of the instant Claims.
"[T]he 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." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), the court held that the claimed promoter sequence obtained by sequencing a prior art plasmid that was not previously sequenced was anticipated by the prior art plasmid which necessarily possessed the same DNA sequence as the claimed oligonucleotides. The court stated that "just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel." Id.
One of ordinary skill in the art at the time of filing the invention would expect a hot stamp molded body heat treated by the method of Toda et al. ‘149 to present the same or similar properties of the instantly claimed hot stamping formed body. That Toda et al. ‘149 does not expressly teach measuring an area ratio of bainite from the instantly claimed depth, does not negate that bainite is formed within the body of Toda et al. ‘149, and overlaps in ratio at a depth even lower (1/4 a position from the surface) than the depth instantly claimed [0011]. That Toda et al. ‘149 does not expressly teach measuring a maximum value of pole density, or a deboronization index does not negate that boron is removed during heat treatment and a pole density of a texture is formed during annealing and quenching [0075-0085]. As evidenced by NPL Arkhangel’skaya et al., a pole density of a n a hot-deformed steel sheet texture is influenced by heat treatment variables including annealing and quenching temperatures (Pages 506-507). The heat treatment method of Toda et al. ‘149 includes annealing at temperatures from 700 to 950 °C [0085]. Per the instant Specification at [0073], the instantly claimed formed body is annealed at overlapping temperatures between 730 and 900 °C.
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). See MPEP § 2112.01 I. “Products of identical chemical composition can not 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). See MPEP § 2112.01 II. Therefore, it is expected that hot stamping body of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (a hot stamped formed body), b) the claimed and prior art products are identical or substantially identical in structure (present overlapping chemical composition and area ratio of bainite), and c) the claimed and prior art products are produced by identical or substantially identical processes (are formed by overlapping heat treatments).
Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980). The hot stamped molded body of Toda et al. ‘149 overlaps the instantly claimed formed body in composition and structure, meeting the limitations of the instant Claim.
Regarding Claim 2, Toda et al. ‘149 teaches the limitations set forth above. Toda et al. ‘149 further teaches adding Ca: 0-0.010% and REM: 0-0.30% in order to improve deformability and suppress the formation of oxides at [0030].
It would have been obvious to one having ordinary skill in the art at the time of filing the invention to add Ca and REM in amounts overlapping the instantly claimed amounts in order to enhance the workability of hot-stamped molded bodies based on the teachings of Toda et al. ‘149 at [0030], meeting the limitations of the instant Claim.
Claims 1-2 are additionally rejected under 35 U.S.C. 103 as being unpatentable over Sakiyama et al. WO 2020241762 A1 as evidenced by NPL Arkhangel’skaya et al.
Regarding Claim 1, Sakiyama et al. ‘762 teaches a hot stamped molded body having a chemical component by mass%, C: 0.15% or more, less than 0.70%, Si: 0.005% or more, 0.250% or less, Mn: 0.30% or more, 3.00% or less, sol. Al: 0.0002% or more, 0.500% or less, P: 0.100% or less, S: 0.1000% or less, N: 0.0100% or less, Nb: 0% or more, 0.150% or less, Ti: 0% or more, 0.150% or less, Mo: 0% or more, 1.000% or less, Cr: 0% or more, 1.000% or less, B: 0% or more, 0.0100% or less, Ca: 0% or more and 0.0100% or less, REM: 0% or more and 0.30% or less, and the balance being Fe and impurities. This chemical composition overlaps the instantly claimed composition.
Sakiyama et al. ‘762 further teaches the hot stamped molded body has an area ratio of 15% or higher for martensite and bainite [0014], overlapping the instantly claimed area ratio of bainite of more than 10%.
See MPEP 2144.05. In the case where the 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).
Notwithstanding the 112(b) rejections above, Sakiyama et al. ‘762 further teaches the area ratio of bainite at the instantly claimed depth is 15% or more of bainite, overlapping the instantly claimed range of more than 10% [0051]. Sakiyama et al. ‘762 teaches the overlapping area ratio is at a depth of 50 microns into the surface of a thickness that is not limited and can preferably range from 0.5 to 3.5 mm [0064]. A thickness of 1.25 mm meets the limitation of the instant claim for a surface layer region at a depth of 1/25 a sheet thickness from the surface. One of ordinary skill in the art at the time of filing the invention would expect a hot stamp molded body heat treated by the method of Sakiyama et al. ‘762 to present the same or similar properties of the instantly claimed hot stamping formed body.
Sakiyama et al. ‘762 does not expressly teach a maximum value of pole density of a texture, or a deboronization index. However, this does not negate that Sakiyama et al. ‘762 teaches a hot stamped molded body overlapping and encompassing the crystallography, chemical composition, and material properties of the hot stamping body instantly claimed. Therefore, the hot stamped molded body of Sakiyama et al. ‘762 is expected to present the same or about the same properties of the hot stamping formed body of the instant Claims.
"[T]he 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." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), the court held that the claimed promoter sequence obtained by sequencing a prior art plasmid that was not previously sequenced was anticipated by the prior art plasmid which necessarily possessed the same DNA sequence as the claimed oligonucleotides. The court stated that "just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel." Id.
That Sakiyama et al. ‘762 does not expressly teach measuring a maximum value of pole density, or a deboronization index does not negate that boron is removed during heat treatment and a pole density of a texture is formed during annealing and quenching [0022]. As evidenced by NPL Arkhangel’skaya et al., a pole density of a n a hot-deformed steel sheet texture is influenced by heat treatment variables including annealing and quenching temperatures (Pages 506-507). The heat treatment method of Sakiyama et al. ‘762 includes annealing at temperatures above 500 °C [0088]. Per the instant Specification at [0073], the instantly claimed formed body is annealed at overlapping temperatures between 730 and 900 °C.
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). See MPEP § 2112.01 I. “Products of identical chemical composition can not 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). See MPEP § 2112.01 II. Therefore, it is expected that hot stamping body of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (a hot stamped formed body), b) the claimed and prior art products are identical or substantially identical in structure (present overlapping chemical composition and area ratio of bainite), and c) the claimed and prior art products are produced by identical or substantially identical processes (are formed by overlapping heat treatments).
Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980). The hot stamped molded body of Sakiyama et al. ‘762 overlaps the instantly claimed formed body in composition and structure, meeting the limitations of the instant Claim.
Regarding Claim 2, Sakiyama et al. ‘762 teaches the limitations set forth above. Sakiyama et al. ‘762 further teaches adding REM: 0-0.30% in order to restore the integrity of molten steel and suppress the formation of oxides at [0048].
It would have been obvious to one having ordinary skill in the art at the time of filing the invention to add REM in amounts overlapping the instantly claimed amounts in order to reduce the formation of oxides within its hot-stamped molded body based on the teachings of Sakiyama et al. ‘762 at [0048], meeting the limitations of the instant Claim.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5-6, and 9-10 of U.S. Patent No. US 12134810 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they teach hot formed metal bodies with overlapping elemental compositions and overlapping area ratios of bainite.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 10301699 B2 teaches a high-strength hot stamp forming part.
US 12157286 B2 teaches a hot formed body composition overlapping the instant claims.
JP 2005068548 A teaches increasing the area ratio of bainite in order to increase resistance in a hot formed body to hydrogen embrittlement.
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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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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