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 1-3 and 5-10 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 1-3 and 5-10, 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
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.
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.
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(s) 1-3 and 5-10 is/are rejected under 35 U.S.C. 102a1 as being anticipated by 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. Regarding the final limitation that “an average size of the austenite grains is 15 μm or less,” 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. 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. 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. Therefore, the recited property of the average size of the austenite grains being 15 µm or less is presumed inherent.
Similarly for claims 2, 3, and 5-10, 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. Examiner notes that, at present, neither the Specification nor the record have any evidence that the composition of the steel plate of Kim et al. is different from that claimed by Applicant, or that it is made by a different process than Applicant.
Response to Arguments
Applicant's arguments filed 12/03/2025 have been fully considered but they are not persuasive.
Applicant’s argument 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.
First of all, 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. 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.
Secondly, Applicant states that the hot-stamping process used in the invention is “well-established and predictable,” but has not supported the statement with a showing that it is indeed the case.
Thirdly, Applicant has not given any indication of the processes required such that austenite grains are present, let alone at the recited grain size.
Finally, Applicant even seems to suggest that the examples are “prophetic” (Applicant’s reply, sentence bridging pages 4 and 5 of Applicant’s reply), implying that the data shown by Tables 1 and 2 are not Experimental results at all. This only serves to bolster Examiner’s assertion that the claims are not enabled. Indeed, 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. If the data shown in the Tables is actually Experimental, Examiner requests that Applicant give the actual values.
For all of the above reasons, it is still deemed that one having ordinary skill in the art would have to undertake undue experimentation in order to arrive at applicant’s invention; consequently, the claims are not deemed to be enabled by Applicant’s disclosure.
Applicant’s argument that Kim does not disclose the range of Inequality 1 with sufficient specificity is not persuasive. In this instance, Examiner notes that Kim discloses explicit ranges of each of Ti, V, Nb, and Mo in paragraphs 47 and 49. Examiner asserts that one having ordinary skill in the art could at once 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.
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.
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/JOSHUA D ZIMMERMAN/Primary Examiner, Art Unit 2853