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 .
DETAILED ACTION
Status of claims
Claim 2 has been cancelled; Claim 1 has been amended; Claims 5-9 are withdrawn as non-elected claims; claims 1 and 3-4 remain for examination, wherein claim 1 is an independent claim. There is no amendment since last office action dated 8/7/2025.
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 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.
Claim(s) 1 and 3-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsuda et al (US-PG-pub 2011/0146852 A1, corresponding to US 9,121,087 B2, thereafter PG’852) in view of Tada et al ( US-PG-pub 2006/0057417 A1, thereafter PG’417) and Hasegawa et al (US-PG-pub 2004/0238082 A1, thereafter PG’082).
Matsuda et al (PG’852) in view of Tada et al (PG’417) and Hasegawa et al (PG’082) is applied to the instant claims 1 and 3-4 for the same reason as stated in the previous office action dated 8/7/2025.
Response to Arguments
Applicant’s arguments to the art rejection to Claims 1 and 3-4 have been considered but they are not persuasive.
The Applicant’s arguments have been summarized as following:
1, The steel example #E in table 1 of PG’852 does not show the claimed hole expandability of 56.6% or more as claimed in the instant claim 1. The steel example #E in table 3 of PG’852 indicates hole expandability of 2-22% and claim 17 of PG’852 indicates hole expandability of 14-44%. Therefore, PG’852 clearly teaches away from the claimed hole expandability of 56.6% or more as claimed in the instant claim 1.
2, The steel example #E in table 1 of PG’852 has 0.417 mass% C, which is different to the claimed C range of 0.06-0.2 mass%.
3, PG’852 has its own alloy system to achieve its own original purposes, without adding Sb. There is no reason, for a person of ordinary skill in the art, to be tempted to combine the Sb from PG’417 into PG’852. Further, if the Sb from PG’417 is combined into PG’852, PG’852 itself would not work for (inoperable for) its own purposes as originally intended.
4, The PTO must provide more specific and explicit explanations, as to how PG’852 can meet the claimed “TM/FM ratio being 2.8 or more,” while maintaining the other microstructural phases of the steel example #13 within the claimed ranges, and also while satisfying all the other requirements of the claimed invention, as discussed above.
In response
Regarding the argument 1, Firstly, as pointed out in the rejection for the instant claims in the previous office action dated 8/7/2025, It is noted that PG’852 in view of PG’417 does not specify the hole expandability range as claimed in the instant claim. PG’082 teaches a cold rolled steel sheet with all of the essential alloy composition ranges (Abstract, claims, and par.[0029]-0036] of PG’082) overlap the claimed composition ranges. MPEP 2144 05 I. PG’082 indicates obtaining hole-expanding ratio is 60% or more (abstract, par.[0023], [0027], and examples of PG’082), which reads on the claimed hole expandability as claimed in the instant claim. It would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the hole expandability from the disclosure of PG’082 for the steel sheet of PG’852 in view of PG’417 since all of PG’082, PG’417 and PG’852 teach the same cold rolled sheet throughout whole disclosing range. Secondly, there is no evidence to show the PG’852 teach away from the claimed hole expandability of 56.6% or more as claimed in the instant claim 1. Treating a steel sheet for different properties would have been obvious to one of ordinary skill in the art at the time the invention was made. Finally, it is noted that the Applicant argued against the combined prior arts individually, one should not show non-obviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the instant case, PG’852 in view of PG’417 and PG’082 is applied to the instant claims 1 and 3-4. Detail discussion and motivation for the combination of these prior arts can refer to the rejection for the instant claims in the previous office action dated 8/7/2025.
Regarding the arguments 2-4, the response can refer to the previous “Examiner’s Answer to Appeal brief” dated 2/2/2024 and the “Patent Board Decision -- Examiner affirmed” dated 5/15/2025.
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 extension fee 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 JIE YANG whose telephone number is (571)270-1884. The examiner can normally be reached on IFP.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan J Johnson can be reached on 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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/JIE YANG/Primary Examiner, Art Unit 1734
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