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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/14/2026 has been entered.
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 § 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.
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. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kim et al. (US 2021/0187583).
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. 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 04/14/2026 have been fully considered but they are not persuasive.
Applicant’s arguments that Kim et al. do not teach elements of claim 1 are erroneous.
With respect to Inequality 1, it is not required that the formula of Inequality 1 be disclosed; rather, the claim only requires that Inequality 1 be “satisfied.” As discussed supra in the rejection of claim 1, Kim et al. disclose values of each component such that Inequality 1 is met.
With respect to the yield strength, Kim et al. clearly disclose that the yield strength is 900 MPa or more, which clearly encompasses the recited value of 1150 MPa.
With respect to the recited size of the austenite grains, since the steel plate of Kim et al. is at least substantially identical in composition, and it has not been shown that its method of manufacture is any different from that of Applicant, the property is presumed inherent. See MPEP §2112.01.
Applicant’s argument that the Office has not established inherency is not correct. It has been held that once a reference teaching a product to be substantially identical has been made the basis of a rejection, and the Examiner presents reasoning to show inherency, the burden is on Applicant to show that the prior art product does not necessarily have the characteristics claimed. See MPEP §2112(V). In this instance, Applicant has not shown, via objective evidence, that a steel plate having the composition used in the rejection does not have the properties recited. Specifically, Applicant has not shown that a steel plate having 0.03 wt% [Ti], 0.0175 wt% [Mo], 0.05 wt% [Nb], and 0.05 wt% [V] does not have the properties recited.
Applicant’s arguments that the claims are enabled are not persuasive.
Applicant’s arguments are based on, in some form or another, that since the specification describes structural or compositional features of the steel plate, the amount of experimentation would not be undue . However, 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.
Giving a suitable range of each alloying component merely serves to narrow the amount of possibilities for the amount of each component. Examiner still points out that not a single value for any of the TWELVE components was given in any of the comparative or inventive examples. One having ordinary skill in the art must pick a value for one of the twelve components from the disclosed range for that component, decide where in the range is best, and then do that for ELEVEN more components. Additionally, one having ordinary skill in the art must be left to experiment to determine how each parameter affects each other parameter. The interrelation of each component with the each other component creates an enormous amount of possibilities. Furthermore, one having ordinary skill in the art must decide, from somewhere, how to combine the components, and how to process them, since no processing parameters or examples were shown by Applicant.
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.
Applicant’s argument that the specification includes comparative and inventive examples with measured results is not persuasive. that “the specification provides detailed element-by-element guidance on the role and suitable range of each alloying component, explains what occurs when each limit is exceeded, and correlates composition and hot-stamping conditions with austenite grain size, precipitate characteristics, and tensile/yield strength, in the context of a well-established and predictable hot-stamping process” is not sufficient to establish enablement.
Finally, Examiner reiterates his request for information regarding the data used in the tables. Applicant merely asserts that the Comparative Examples 1-12 and Embodiments 1-8 each have values of the twelve components within respective ranges without giving the actual values, and asserts that the Comparative Examples 1-12 do not meet the Inequality 1 (similarly, without providing actual values for [Ti], [Nb] or [V]). Each of the twelve components must have a specific value, and it is not clear why Applicant did not show the actual value of each of the twelve components. Furthermore, 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, Applicant makes no statement as to the composition of those examples; the components could be outside of all of the requirements set forth in the specification. Furthermore, nowhere in the specification has Applicant discussed what those process control conditions are.
If the data shown in the Tables is actually Experimental, Examiner requests that Applicant give the actual values.
Conclusion
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
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