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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/23/2026 has been entered.
Status of Claims
Claims 1-22 are pending. Claims 2-5 and 11-21 are presented for this examination. Claims 1 and 6-10 are withdrawn. Claims 12-13, 15-17 are amended. Claim 22 is newly added.
Status of Previous rejections
All prior art rejections are withdrawn from previous office action 11/21/2025.
A new ground of art rejection is rendered in view of amendment of claim 2 and newly added claim 22.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 02/24/2026 and is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claim(s) 2-5 and 11-12, 14-22 are rejected under 35 U.S.C. 103 as being unpatentable over Press_hardened_Steel (NPL document “Press Hardened Steels”) in view of Takashima (US20200172991A1).
As for claims 2, 11 and 22, Press_hardened_Steel discloses hot pressed member made of 22MnB5 steel having broad range compositions (Page 3 Table 1) overlapping claimed ranges as illustrated in Table 8 below. The steel is fully hardened which suggests it is almost fully martensitic microstructure (Page 3 paragraph 5). Hence, instant claim 2 required 95% or more and instant claim 11 required 98% or more are met. UTS is 1300-1700 MPa (Page 3 last paragraph) which overlaps instant claim 22 required 950-1491 MPa. No presence of Nb meets instant claim 2 amended Nb=0%.
A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
Table 8
Element
Applicant
(weight %)
Press_hardened_Steel et al.
Table 1
(weight %)
Overlaps
(weight %)
C
0.05-0.4
0.2-0.5
0.2-0.4
Mn
0.5-4
1.1-1.5
1.1-1.5
Si
0.1-1.3
0-0.5
0.1-1.3
Al
0.01-0.1
0.02-0.06
0.02-0.06
Cr
0.01-1
0.15-0.35
0.15-0.35
B
0.0005-0.08
0.001-0.005
0.001-0.005
Ti
0.01-0.1
0.02-0.05
0.02-0.05
Cu
0.05-0.4
Sn
0.002-0.1
P
<=0.02
0-0.025
0-0.02
S
<=0.01
0-0.0015
0-0.0015
N
<=0.02
0
0
Ni
<=0.4
0
0
Mo
<=0.4
0
0
Nb (Claim 2)
0
0
0
Nb (Claim 22)
<=0.08
0
0
Ca
<=0.1
0
0
Press_hardened_Steel does not disclose presence of Cu and Sn as claimed.
Takashima discloses a hot pressed member made of similar composition as Press_hardened_Steel. Takashima explicitly disclose Cu is 0.05-0.5% [0044] and Sn 0.05-0.5% [0046] for improving corrosion resistance and delayed fracture resistance.
Hence, one skill in the art, at the time the invention is made, would have been obvious to add Cu and Sn in the amounts as suggested by Takashima, in the press hardened steel part of Press_hardened_steel for the benefit of improving corrosion resistance and delayed fracture resistance to arrive at claimed press hardened steel part.
As for claims 3-5, they are inherent mechanical properties due to same press hardened steel part which comprises substantially similar compositions and same microstructure.
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, the prior art products necessarily possess the characteristics of the claimed product. See MPEP 2112.01.
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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)
As for claim 12, Press_hardened_Steel’s broad ranges of steel sheet disclosed in Table 9 below meets instant claimed “consists of” language as illustrated in Table 9 below.
Table 9
Element
Applicant
(weight %)
Press_hardened_Steel et al.
(weight %)
Overlap
(weight %)
C
0.05-0.4
0.2-0.5
0.2-0.4
Mn
0.5-4
1.1-1.5
1.1-1.5
Si
0.1-1.3
0-0.5
0.1-0.5
Al
0.01-0.1
0.02-0.06
0.02-0.06
Cr
0.01-1
0.15-0.35
0.15-0.35
B
0.0005-0.08
0.001-0.005
0.001-0.005
Ti
0.01-0.1
0.02-0.05
0.02-0.05
Cu
0.05-0.4
Sn
0.002-0.1
P
<=0.02
0-0.025
<=0.02
S
<=0.01
0-0.0015
0-0.0015
N
<=0.02
0
0
Ni
<=0.4
0
0
Mo
<=0.4
0
0
Nb
<=0.08
0
0
Ca
<=0.1
0
0
Press_hardened_Steel does not disclose presence of Cu and Sn as claimed.
Takashima discloses presence of Cu and Sn would have been obvious for the reason set forth in the rejection of claims 2 and 22.
As for claim 14, Press_hardened_Steel discloses overlapping broad range compositions as illustrated in Table 10 below.
Table 10
Element
Applicant
(weight %)
Press_hardened_Steel (weight %)
Overlap
(weight %)
C
0.15-0.4
0.2-0.5
0.2-0.4
Mn
0.5-3
1.1-1.5
1.1-1.5
Si
0.1-0.5
0-0.5
0.1-0.5
Al
0.01-0.1
0.02-0.06
0.02-0.06
Cr
0.01-0.1
0.15-0.35
0.15 is close to 0.1
B
0.0005-0.08
0.001-0.005
0.001-0.005
Ti
0.01-0.1
0.02-0.05
0.02-0.05
Cu
0.05-0.4
Sn
0.002-0.1
P
<=0.02
0-0.025
<=0.02
S
<=0.01
0-0.0015
0-0.0015
N
<=0.02
0
0
Press_hardened_Steel does not disclose presence of Cu and Sn as claimed.
Takashima discloses presence of Cu and Sn would have been obvious for the reason set forth in the rejection of claims 2 and 22.
As for claim 15, Press_hardened_Steel discloses overlapping broad range compositions as illustrated in Table 11 below.
Table 11
Element
Applicant
(weight %)
Press_hardened_Steel et al.
(weight %)
Overlap
(weight %)
C
0.15-0.25
0.2-0.5
0.2-0.25
Mn
0.5-1.8
1.1-1.5
1.1-1.5
Si
0.1-1.25
0-0.5
0.1-0.5
Al
0.01-0.1
0.02-0.06
0.02-0.06
Cr
0.1-1
0.15-0.35
0.15-0.35
B
0.001-0.004
0.001-0.005
0.001-0.004
Ti
0.01-0.1
0.02-0.05
0.02-0.05
Cu
0.05-0.4
Sn
0.002-0.1
P
<=0.02
0-0.025
<=0.02
S
<=0.01
0-0.0015
0-0.0015
N
<=0.02
0
0
Mo
<=0.4
0
0
Nb
<=0.08
0
0
Ca
<=0.1
0
0
Press_hardened_Steel does not disclose presence of Cu and Sn as claimed.
Takashima discloses presence of Cu and Sn would have been obvious for the reason set forth in the rejection of claims 2 and 22.
As for claim 16, Press_hardened_Steel discloses overlapping broad range compositions as illustrated in Table 12 below.
With respect to claimed formula , it is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art, in re Cooper and Foley 1943 C.D. 357, 553 O.G. 177; 57 USPQ 117, Taklatwalla v. Marburg, 620 O.G. 685, 1949 C.D. 77, and In re Pilling, 403 O.G. 513, 44 F(2) 878, 1931 C.D. 75. In the absence of evidence to the contrary, the selection of the proportions of elements would appear to require no more than routine investigation by those ordinary skilled in the art. In re Austin, et al., 149 USPQ 685, 688.
Table 12
Element
Applicant
(weight %)
Press_hardened_Steel (weight %)
Overlap
(weight %)
C
0.24-0.4
0.2-0.5
0.24-0.4
Mn
0.5-3
1.1-1.5
1.1-1.5
Si
0.1-1.3
0-0.5
0.1-0.5
Al
0.015-0.07
0.02-0.06
0.02-0.06
Cr
0.1-1
0.15-0.35
0.15-0.35
Ni
0.25-0.4
Nb
0-0.06
0
0
B
0.0005-0.004
0.001-0.005
0.001-0.004
Ti
0.01-0.1
0.02-0.05
0.02-0.05
Cu
0.05-0.4
Sn
0.002-0.1
P
<=0.02
0-0.025
<=0.02
S
<=0.01
0-0.0015
0-0.0015
N
<=0.02
0
0
Press_hardened_Steel does not disclose presence of Ni, Cu and Sn as claimed.
Takashima discloses presence of Cu and Sn would have been obvious for the reason set forth in the rejection of claims 2 and 22.
Takashima further discloses Ni is 0.05-0.5% for improving corrosion resistance and delayed fracture resistance. ([0045])
Hence, it would have been obvious to one skill in the art, at the time the invention is made, to add Ni, Cu and Sn in the amounts as suggested by Takashima, in the press hardened steel part of Press_hardened_steel for the benefit of improving corrosion resistance and delayed fracture resistance to arrive at claimed press hardened steel part.
As for claim 17, Press_hardened_Steel discloses overlapping broad range compositions as illustrated in Table 13 below.
Table 13
Element
Applicant
(weight %)
Press_hardened_Steel et al.
(weight %)
Overlap
(weight %)
C
0.3-0.4
0.2-0.25
0.25 is close to 0.3
Mn
0.5-1
1.1-1.5
1.1 is close to 1
Si
0.4-0.8
0-0.5
0.4-0.5
Cr
0.1-1
0.15-0.35
0.15-0.35
Mo
0.1-0.4
Nb
0.01-0.08
Al
0.01-0.1
0.02-0.06
0.02-0.06
Cu
0.05-0.4
Sn
0.002-0.1
Ti
0.01-0.03
0.02-0.05
0.02-0.03
B
0.0005-0.003
0.001-0.005
0.001-0.003
P
<=0.02
0-0.025
<=0.02
Ca
<=0.001
0
0
S
<=0.01
0-0.0015
0-0.0015
N
<=0.02
0
0
Press_hardened_Steel does not disclose presence of Mo, Nb, Cu and Sn as claimed.
Takashima discloses presence of Cu and Sn would have been obvious for the reason set forth in the rejection of claims 2 and 22.
Takashima further discloses Mo 0.005-0.5% [0039] for increasing quench hardenability during hot pressing and Nb at 0 .001-0.1% [0035] for increasing toughness.
Hence, it would have been obvious to one skill in the art, at the time the invention is made, to add Mo, Nb, Cu and Sn in the amounts as suggested by Takashima, in the press hardened steel part of Press_hardened_steel for the benefit of improving corrosion resistance and delayed fracture resistance, quench hardenability and toughness to arrive at claimed press hardened steel part.
As for claims 18-21, Takashima discloses broad range of Cu 0.05-0.5% which overlaps instant claimed Cu ranges.
Allowable Subject Matter
Claim 13 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Argument
In response to argument filed on 02/23/2026 that neither Allely nor Takashima discloses amended TS 950-1491 MPa, argument is moot since both Allely and Takashima have been withdrawn.
In response to argument that neither Allely nor Takashima discloses Nb=0% as required by instant claim 2, argument is moot since both Allely and Takashima have been withdrawn.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNY R WU whose telephone number is (571)270-5515. The examiner can normally be reached on 8:30 AM-5:00 PM.
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/JENNY R WU/Primary Examiner, Art Unit 1733