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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/5/2026 has been entered.
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.
Claim(s) 2-5 and 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kawasaki et al. (US 2013/0095347), as cited in the IDS dated 2/6/2026, hereinafter “Kawasaki.”
Regarding claims 2 and 11-13, Kawasaki teaches hot-stamped (i.e., press hardened) steel part having a chemical composition comprising, by mass, C: 0.20-0.35%, a total of at least one selected from Mn and Cr: 1-3%, Si: 0.1-0.5%, Al: 0.005-0.06%, B: 0.005% or less, Ti: 0.002-0.1, Cu: 0.5% or less, P: 0.015% or less, S: 0.01% or less, N: 0.004% or less, Sn: 0.1% or less, Ni: 0.5% or less, Mo: 0.5% or less, Nb: 0.002-0.1%, Ca: 0.03% or less, and a balance of Fe and inevitable impurities (Abstract, [0001], [0009]-[0010], [0012]-[0013]), which overlaps with the instantly claimed chemical composition ranges. In the case where the claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP §2144.05. Kawasaki further teaches that its steel product has a microstructure comprising, in area%, 98% or more martensite, with a balance of at least one selected from bainite and residual austenite (i.e., retained austenite), or 100% martensite (Abstract, [0069]), which satisfies the instantly claimed ranges.
Regarding claims 3-5, Kawasaki is silent as to the properties as claimed. However, Kawasaki teaches a press hardened steel part having an overlapping chemical composition and the same microstructure as claimed. Note that paragraph [0075] of the instant specification states that the claimed properties are a result of the claimed composition and microstructure. Thus, as Kawasaki teaches a press hardened steel part having an overlapping chemical composition and the same microstructure as claimed, one of ordinary skill in the art would expect the press hardened steel part of Kawasaki to have properties that are the same or overlap with those recited in claims 3-5. In the case 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.” See MPEP §2112.01.
Response to Arguments
Applicant's arguments filed 10/1/2025 have been fully considered but they are not persuasive.
Applicant argues that the claimed Cu content is critical, citing paragraphs [0077]-[0079] of the instant specification as well as examples in the specification. In response, Examiner notes that the cited paragraphs and examples do not provide sufficient evidence to demonstrate criticality of the claimed Cu range. Objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP §716.02. “To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range.” See MPEP §716.02(d). For example, Applicant has not provided any data points near the upper endpoint of the Cu range.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY M LIANG whose telephone number is (571)272-0483. The examiner can normally be reached M-F: 9:00am-5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at (571)272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY M LIANG/Primary Examiner, Art Unit 1734
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