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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 5, 8, and 9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Regarding claims 1, 5, 8, and 9, the invention would require an undue amount of experimentation to arrive at the claimed invention.
The claims are specific in what component is present, and the amounts of each component, in the steel plate, requiring TWELVE separate components, and further requires a certain tensile strength, yield strength, as well as requiring certain microstructures and precipitates, and requires a certain average grain size of austenite. However, the specification does not give any actual, useful, examples of how to arrive at the inventive steel plate.
Applicant does not give any direction for any specific values of any of the TWELVE components, nor does Applicant discuss any process parameters or conditions which would result in the claimed invention. The specification skips steps which would be needed to arrive at the invention.
Applicant does not actually give any working examples. Ostensibly, Table 2 displays 16 comparative examples and 8 inventive examples. However, Table 1, which is the basis for making the 24 examples, merely repeats the requirements for the range of amounts of each of the components, but does not actually disclose the amount of each component which is in each example, which is a requirement for one having ordinary skill in the art to be able to make the examples.
With respect to comparative examples 13-16, Applicant states that they “do not satisfy the conditions of the precipitate and the like due to a difference in the process control conditions.” (penultimate paragraph on page 19). However, nowhere in the specification has Applicant discussed what those process control conditions are. Thus, one having ordinary skill in the art is left with no guidance as to how many process control conditions affect the desired precipitate conditions, let alone how to go about changing them to get the desired precipitate conditions.
Thus, with TWELVE individual components, each one having a range of values that one having ordinary skill in the art must choose from, the amount of experiments required to find the correct combination of all TWELVE components would be daunting. Furthermore, with no guidance on what process one having ordinary skill in the art would use to make the steel plate, one having ordinary skill in the art must additionally experiment with the process parameters to arrive at the claimed invention.
Thus, it is deemed that the quantity of experimentation required by one having ordinary skill in the art to make the invention would be undue, and therefore the claims are not enabled.
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.
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, 5, 8, and 9 is/are rejected under 35 U.S.C. 103 as obvious over Kim et al. (US 2021/0187583) in view of Hong (US 2020/0347478)
Regarding claim 1, Kim et al. disclose “a hot stamping part (title) comprising: a steel plate that comprises carbon (C) in an amount of 0.26 to 0.40 wt %, silicon (Si) in an amount of 0.02 to 2.0 wt %, manganese (Mn) in an amount of 0.3 to 1.60 wt %, phosphorus (P) in an amount of 0.03 wt % or less, sulfur(S) in an amount of 0.008 wt % or less, chromium (Cr) in an amount of 0.05 to 0.90 wt %, boron (B) in an amount of 0.0005 to 0.01 wt %, molybdenum (Mo) in an amount of 0.05 to 0.2 wt %, titanium (Ti) in an amount of 0.001 to 0.095 wt %, niobium (Nb) in an amount of 0.001 to 0.095 wt %, vanadium (V) in an amount of 0.001 to 0.095 wt %, the balance of iron (Fe), and other inevitable impurities (paragraph 49), the hot stamping part having tensile strength of 1,700 MPa or more (paragraphs 49 and 106) and yield strength of 1,150 MPa or more (paragraph 106), wherein the hot stamping part comprises microstructure including austenite grains and carbon-based precipitates including at least one of niobium (Nb), titanium (Ti), molybdenum (Mo), and vanadium (V) (paragraph 47), and wherein, when contents of titanium (Ti), niobium (Nb), vanadium (V), and molybdenum (Mo) included in the steel plate are represented by [Ti], [Nb], [V], and [Mo] in wt %, respectively, [Inequality 1] below is satisfied,
0.015≤0.25([Ti]+[Nb]+[V]+0.25[Mo])≤0.060(unit: wt %). [Inequality 1] (paragraphs 47 and 49).” Examiner notes that in each recitation of the composition of each component, the associated range disclosed by Kim et al. overlaps the recited ranges, and does so in a manner that the ranges are sufficiently close so that each range has enough specificity so as to anticipate each associated recited range. With respect to [Inequality 1], Kim et al. disclose that the range of [Ti] is 0.01 to 0.05 (paragraph 47) and that the range for each of [Nb], [V], and [Mo] is greater than 0 to 0.1 (paragraph 49). Thus, the range of 0.25([Ti]+[Nb]+[V]+0.25[Mo]) disclosed by Kim et al. is 0.0025 to 0.06875, which completely encompasses the recited range of from 0.015 to 0.060, thus anticipating the range. Regardless, Examiner asserts that one having ordinary skill in the art could clearly envisage: the value of 0.03 for [Ti] from the disclosed range of 0.01 to 0.05 (because it is in the middle of the disclosed range and is specifically used in the example in Table 1); the value of 0.0175 for [Mo] (because it is the midpoint of the disclosed range); the value of 0.05 for [Nb] (because it is the midpoint of the disclosed range); and the value of 0.05 for [V] (because it is the midpoint of the disclosed range).Since values for each of [Ti], [Mo], [Nb], and [V] are disclosed with sufficient specificity, the value of Inequality 1 is implicitly disclosed and has a value of 0.034, which lies squarely in the middle of the recited range. Therefore, the recited value of Inequality 1 is deemed to be anticipated by Kim et al. See MPEP §2131.03(II). In the event that it cannot be said that the values are disclosed with sufficient specificity as to anticipate the ranges recited, Examiner asserts that choosing the values would be obvious for the same reasons, such as the value(s) being the midpoint(s) of the disclosed range(s), which would be a clear and logical choice to one having ordinary skill in the art. Kim et al. fail to disclose “calcium (Ca) in an amount of 0.00001 to 0.0060 wt%.” However, Hong teaches including calcium in an amount of 0.0005 to 0.005% in order to suppress formation of MnS (paragraph 50). Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to include calcium in an amount of 0.0005 to 0.005% in order to suppress formation of MnS. Regarding the remaining limitations that “an average size of the austenite grains is 15 μm or less,” or “wherein a fraction of the austenite grains having a size of 10 µm or more is 67% or less, wherein a fraction of the austenite grains having a size of 20 µm or more is 10% or less, wherein an average particle size of the precipitates is 10 nm or less, wherein the precipitates include 60 wt% or less of titanium (Ti) and 30 wt% or more of molybdenum (Mo), and wherein the hot stamping part satisfies a bending angle of 60° or more,” it has been held that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by an identical or substantially identical process, a prima facie case of either anticipation or obviousness has been established. See MPEP §2112.01. In this instance, the composition of the hot stamping part of Kim et al. has the same composition of components as claimed (see the discussion above for how Examiner interprets each value of each component to be anticipated by Kim et al.). Furthermore, the specification does not show any data which indicates a particular percentage of which components, or combination of which components, would result in the austenite grains having an average size of 15 µm or less, or the other properties recited. Additionally, the specification does not disclose any methods of making the hot stamping part, so no differences in the production of the steel plate can be shown. Absent a showing that the method of production used by Kim et al. is different from that used by Applicant, and that the steel plate produced by Kim et al. having the composition as suggested above does not have the properties recited, the recited properties are presumed inherent. See MPEP §2112(V). Similarly for claims 2, 3, 5, and 8, since the composition of the steel plate of Kim et al. is substantially identical to that claimed, the properties recited in claims 2, 3, an 5-10 are presumed inherent.
Response to Arguments
Applicant's arguments filed 08/05/2026 have been fully considered but they are not persuasive.
At the outset, Examiner points out that Applicant still has not responded to the Examiner’s request for information, which has been in the past two office actions. Examiner hereby reiterates this request for information, and respectfully requests that Applicant comply with the request, or give sufficient reasons why Applicant cannot provide the information. Failure to do so in the next reply may result in the Examiner finding the response to be non-responsive.
Specifically, Applicant has stated that the data in the tables is experimental data. If the data shown in the Tables is actually Experimental, Examiner requests that Applicant give the actual values.
Furthermore, failure by Applicant to provide the requested information will be taken as an admission that may be used as evidence that Applicant was not actually in possession of the claimed invention.
Applicant argues that because Wands factors (B)-(E) were not specifically addressed, the Examiner has not established a lack of enablement. However, the eight Wands factors are not a checklist, and each factor need not be addressed specifically in order to establish undue experimentation. Applicant has not shown how factors (B)-(E) inform the other factors, or how they outweigh the factors addressed by the Examiner. Applicant has merely made a conclusory statement that factors (F)-(H) “would necessarily require determinations regarding factors” (B)-(E), without providing any rationale or evidence.
Examiner notes that in the prior rejection, in the response to arguments section, Examiner stated that “[h]owever, as has been stated previously, no processing conditions or parameters are disclosed which would enable one having ordinary skill in the art to arrive at the structural or compositional features. Nor has Applicant pointed to any evidence that such processing conditions or parameters would be known by one having ordinary skill in the art.” Examiner considers this to implicitly address Wands factors (C)-(E).
Thus, it is still deemed that, without more, one having ordinary skill in the art is still left with an amount of experimentation that is undue.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA D ZIMMERMAN whose telephone number is (571)272-2749. The examiner can normally be reached Monday-Thursday, 9:30AM-6:30PM, First Fridays: 9:30AM-5:30PM.
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/JOSHUA D ZIMMERMAN/ Primary Examiner, Art Unit 2853
