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 Status
Applicant’s response, dated 9/26/2025, is acknowledged. No amendment was filed with the response. Claims 1-3 and 5-20 are currently pending.
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.
Claims 1-3, 5-11, 13, 17-18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Sano et al. (US 2020/0087764)(previously cited).
With respect to Claims 1 and 17, Sano teaches a steel with a composition, in wt%, as follows (para. 25-50, 83-106):
Claim 1
Claim 17
Sano
C
0.2-0.3
0.2-0.3
0.10-0.24
Mn
3.0-5.0
3.0-5.0
3.5-12.0
Si
0.5-2.5
0.5-2.5
0.005-5.0
Al
0.5-2.0
0.5-2.0
0.005-5.0
Mo
0.25-0.5
0.25-0.5
0-5.0
Ni
>1 to 1.5
0.5-1.5
0-5.0
Nb
0-0.05
0-0.05
0-0.50
Cr
0-1.0
0-1.0
0-5.0
Fe
Balance with impurities
Balance with impurities
Balance with impurities
Microstructure
15-50% austenite
>40 to 50% austenite
10-55% austenite
Compositional ranges including zero are interpreted as optional elements. Thus, Sano teaches a steel with compositional ranges overlapping each of the instantly claimed compositional ranges of claim 1 and claim 17. It is noted, that the compositional ranges of Sano (as detailed above), including each of the required elements, are provided with relevant motivations for their respective inclusion in the alloy. (para. 25-50, 83-106; teaching, for example, the inclusion of Si and Al as deoxidizers and microstructural stabilizers and Mo and Ni for improving strength). It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
The instant specification discloses that the claimed “austenite” is retained austenite. (para. 3 of PG Pub. “austenite (also referred to as retained austenite)” and para. 28 “resulting retained austenite at room temperature is maximized.”). Sano teaches an steel with a retained austenite content of 10-55 area% (area ratio)(para. 52, 133-137), overlapping the claimed ranges of Claims 1 and 17. It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. MPEP § 2144.05.
With respect to Claims 2-3, 5-10, and 18, Sano teaches compositional ranges of Mo, Ni, Si+Al, Mn, Si, Al, and Cr overlapping the respectively claimed ranges. It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. MPEP § 2144.05. Furthermore, regarding the composition-based formula of claim 6, the claimed formula fully depends on the composition of the alloy. 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 the instant case, as the steel alloy of the prior art is capable of falling within the boundaries of the claimed composition formula, it would have been obvious to one of ordinary skill in the art to have selected any portion of the disclosed ranges which fall within the boundaries of the claimed composition-based formula because the reference discloses utility throughout the disclosed ranges. See also MPEP § 2144.05.
With respect to Claim 11, the claim is drawn to a product (see claim 1 “A steel”) that is not defined as a slab and therefore the phrase “as-cast slab” may be interpreted as a conditional or contingent limitation if the steel were to be formed into an “as-cast slab.” “Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure.” MPEP 2111.04. Therefore, the limitation may be treated as optional and not provided patentable weight. Moreover, the steel of Sano, teaching substantially overlapping composition and structure and drawn to enhanced ductility (see para. 134, “Retained austenite (hereafter, also referred to as “residual γ”) is steel micro-structure that exerts transformation induced plasticity, enhancing ductility, particularly uniform elongation.”) would be expected to be capable of achieving the same result if processed under the same condition. See also MPEP 2112.01.
With respect to Claims 13 and 20, Sano teaches a method of making the steel as described in claim 1 above, wherein the steel is subjected to a second annealing step at a temperature of 550°C to less than the Ac1 point, wherein the Ac1 temperature may be determined by a formula in paragraph 186 of Sano. (para. 183-187). Based on the formula, hypothetical examples of compositions falling within the claimed ranges and those of Sano, result in an Ac1 temperature exceeding 700°C. (for example, Ac1=723+(29.1*(Si:2))-(10.7*(Mn:3.5))+(16.9*(Cr:0))-(16.9*(Ni:1.1))=725.16° C). Accordingly, Sano teaches a method comprising an intercritical annealing at a temperature overlapping the instantly claimed ranges of claims 13 and 17, respectively. It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Claims 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Sano et al. (US 2020/0087764)(previously cited), as applied to Claim 13 above, in view of Garza-Martinez et al. (US 2016/0340761)(previously cited).
With respect to Claims 14-16, Sano teaches a method of making a steel with a composition and microstructure as in Claim 1, wherein the method comprises annealing the steel at an intercritical annealing temperature of 550°C to the Ac1 temperature, overlapping the instantly claimed range (see rejection of claim 13 above). Sano, however, is silent as to annealing the steel as a “hot band,” “in a hot dip coating line,” and/or “in a continuous annealing line.”
Garza-Martinez teaches a method of making a steel with compositional ranges of C, Mn, Si, Al, and Nb overlapping the instantly claimed ranges and those of Sano, wherein the method comprises annealing the steel at an intercritical temperature greater than 700° C in order to obtain a desired content of austenite (20-80% austenite) and wherein the annealing step may comprise “hot band,” “in a hot dip coating line,” and/or “in a continuous annealing line.” (para. 7-11, 34-37, 48-60; abstract).
Thus, Sano and Garza-Martinez are both drawn to annealing a steel composition to obtain overlapping austenite contents. It would have been obvious to one of ordinary skill in the art to substitute the intercritical temperature annealing step of Sano with an intercritical temperature annealing step comprising hot band annealing, annealing in a hot dip coating line, and/or in a continuous annealing line,” as taught by Garza-Martinez, in order to obtain an annealed steel with a desired austenite content and with additional utility, such as improved efficiency, increased strip size, and/or corrosion resistance. Garza-Martinez teaches annealing the steel composition using batch and continuous annealing lines, as well as hot band annealing and annealing in a hot dip coating line. Thus, it would have been obvious to one of ordinary skill in the art to substitute one method of annealing steel at the same temperature, for another, with a predictable result of success.
Allowable Subject Matter
Claims 12 and 19 are 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.
The following is a statement of reasons for the indication of allowable subject matter: prior art Sano is silent as to a Charpy V-notch impact testing measurement under the claimed conditions.
Response to Arguments
Applicant's arguments filed 9/26/2025 with respect to the rejection of claims 1-3, 5-11, 13, 17-18, and 20 under 35 U.S.C. 103 over Sano and claims 14-16 further in view of Garza-Martinez have been fully considered but they are not persuasive.
Applicant argues that the 103 rejection over prior art Sano fails to establish a prima facie case of obviousness. Applicant first cites passages from MPEP 2143 and 2144 and related caselaw drawn to the standard for establishing obviousness under 35 U.S.C. 103. Applicant then argues that the rejection applies a per se rule and does not recognize “that a claimed species or subgenus that might be encompassed by a prior art genus is not sufficient on its own to establish a prima facie case of obviousness.” (Remarks, p. 3). Applicant further argues that Sano is drawn to addressing different problems, including differing properties, and concludes that one of ordinary skill in the art would not look to Sano “to improve toughness with reduction in DBTT and cracking.” (Remarks, p. 3). Finally, Applicant argues that one of ordinary skill in the art would not be motivated to “cherry-pick” from the disclosure of Sano and repeats earlier arguments, including for example, those drawn to cracking properties and establishing obviousness. (Remarks, p. 4). These arguments have been fully considered but are not found persuasive.
Sano teaches a steel with compositional ranges overlapping each of the instantly claimed compositional ranges of claim 1 and claim 17. The compositional ranges of Sano (as detailed above), including each of the required elements, are provided with relevant motivations for their respective inclusion in the alloy. (para. 25-50, 83-106; teaching, for example, the inclusion of Si and Al as deoxidizers and microstructural stabilizers and Mo and Ni for improving strength). Overlapping ranges have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05 (“In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)”). Thus, the rejection, as presented, is sufficient to establish a prima facie case of obviousness over the instant claims.
Further, "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also In re Harris, 409 F.3d 1339, 74 USPQ2d 1951 (Fed. Cir. 2005) (claimed alloy held obvious over prior art alloy that taught ranges of weight percentages overlapping, and in most instances completely encompassing, claimed ranges; furthermore, narrower ranges taught by reference overlapped all but one range in claimed invention). MPEP 2144.05.
Applicant fails to provide sufficient evidence, commensurate with the scope of the claims, to demonstrate criticality of the claimed ranges and prior art Sano does not represent a situation in which the disclosed ranges or examples are so broad as to disclose a genus as described in MPEP 2144.05 and 2144.08 and do not require “cherry-picking” to arrive at a composition overlapping the claimed ranges.
Applicant’s arguments ignore the clear standard for establishing a prima facie case of obviousness over overlapping compositional ranges and as a result, are not found persuasive.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., DBTT and cracking properties) are not recited in Claims 1 or 17. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Conclusion
THIS ACTION IS MADE FINAL. 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 JOHN A HEVEY whose telephone number is (571)270-0361. The examiner can normally be reached Monday-Friday 9:00-5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN A HEVEY/Primary Examiner, Art Unit 1735