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 Objections
Claim 8 is objected to because of the following informalities: In the last line, “(m/mx10-6))” should read –m/(mx10-6)–. Appropriate correction is required.
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) 8 and 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2016/0244857), as cited in the IDS dated 4/2/2021, hereinafter “Kim.”
Regarding claims 8 and 10-11, Kim teaches a steel material having a chemical composition comprising, by wt%, 0.3% or less C, 13-22% Mn, 0.8% or less P, 0.05% or less S, 0.015% or less N, 0.01-0.2% Ti, 0.0005-0.005% B, at least one of Nb and V, wherein Ti+Nb+V is preferably in a range of 0.02-0.20%, and a balance of Fe and inevitable impurities ([0010], [0044]), which satisfies or overlaps with the ranges recited. 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.
Kim further teaches that its steel material has a microstructure including epsilon martensite and austenite, wherein epsilon martensite may be included in an area fraction of 30% or greater ([0049]-[0050]), which overlaps with the instantly claimed range. 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. Kim further teaches that its steel material is continuously annealed at a temperature range in which recrystallization occurs sufficiently, preferably 650⁰C or higher and 900⁰C ([0072]). One of ordinary skill in the art would expect the steel material of Kim to be fully recrystallized in the upper portion of the preferred temperature range, such as near or at 900⁰C.
Note that the limitations “manufactured by the manufacturing method of claim 1” in claim 8 and “wherein the steel material is manufactured without a post-heat treatment” in claim 11 are product-by-process limitations. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." See MPEP §2113. Note that Kim teaches/renders obvious all of the features of claim 8, as detailed above.
Kim does not explicitly teach wherein the steel material has a loss rate of 0.05 or more at a strain of 900 m/(mx10-6). However, paragraph ([00108]) states that the instantly claimed loss rate is achieved when the Relational Expression 1: FDT(⁰C) ≥ 928 + (480xC) + (450xN) + (0.9xMn) + (65xTi) is met. Kim teaches a method of producing the steel material comprising finish hot rolling the reheated steel slab within a range of 800⁰C to 950⁰C to manufacture a hot-rolled steel sheet ([0010]-[0014]), wherein when using the overlapping ranges of Kim, the lower bound when substituted into relational expression 1 is : FDT(⁰C) ≥ 928 + (480x0) + (450x0) + (0.9x13) + (65x0.01), FDT ≥ 940.35⁰C. Thus, as Kim teaches an FDT that is overlapping with the relational expression 1, one of ordinary skill in the art would expect the steel material of Kim to have a loss rate at a strain of 900 m/(mx10-6) that is the same or overlapping with the instantly claimed range. 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.
Regarding claim 12, Kim teaches that its steel material may have B: 0.0005-0.0050% ([0025], [0036]-[0037]), whereas claim 12 excludes B. However, Kim teaches that “in the exemplary embodiment, a small amount of boron (B) is added to enhance grain boundaries of a steel slab. To this end, it may be preferable that the content of boron (B) be 0.0005 or greater. However, if the content of boron (B) is excessively high, manufacturing costs of the steel sheet increase. Thus, the upper limit of the content of boron (B) may preferably be 0.0050” ([0037]). Therefore, it would have been obvious to one of ordinary skill in the art to not include B in the steel material of Kim when prioritizing lower production costs over enhancing grain boundaries.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim (US 2016/0244857) as applied to claim 8 above, and further in view of WO 2017/111473, wherein Cho (US 2018/0371586) is used and cited herein as an English language equivalent.
Kim teaches/renders obvious the subject matter of claim 8, as detailed above. However, Kim is silent as to its steel material further comprising, in percentages by weight, one or more of 0.005 to 2.0% Ni and 0.005-5.0 Cr, as required by claim 9.
However, in the same field of endeavor of high-manganese steel sheets with excellent damping properties, Cho teaches that 0.005-0.5% Cr may be added to stabilize the structure of the surface layer and improving plating surface properties, and 0.005-2.0% Ni may be added to improve elongation and high temperature ductility ([0022]-[0024]). Note that Kim desires good surface quality, elongation, and ductility ([0018], [0029], [0060], [0063]). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to add at one or more of 0.005-0.5% Cr to stabilize the structure of the surface layer and improving plating surface properties, and 0.005-2.0% Ni to improve elongation and high temperature ductility to the steel material of Kim, as taught by Cho ([0022]-[0024]).
Response to Arguments
Applicant's arguments filed 12/31/2025 have been fully considered but they are not persuasive.
Applicant argues the steel material of Kim would not be expected to have the claimed loss ratio, because it does not disclose finish hot-rolling with a finishing delivery temperature (FDT) satisfying Relational Expression 1: FDT(⁰C) ≥ 928 + (480xC) + (450xN) + (0.9xMn) + (65xTi). In particular, Applicant notes that the finishing hot rolling temperature range is limited by Kim to 800-950⁰C, while the alloy composition of an example of Kim substituted into relational expression 1 is 966⁰C.
In response to Applicant’s argument that the finishing hot rolling temperature range is limited by Kim to 800-950⁰C, while the alloy compositions disclosed in the examples of Kim substituted into relational expression 1 is 966⁰C, Examiner notes that when using the overlapping ranges of Kim, the lower bound when substituted into relational expression 1 is : FDT(⁰C) ≥ 928 + (480x0) + (450x0) + (0.9x13) + (65x0.01), FDT ≥ 940.35⁰C. Thus, as Kim teaches an FDT that is overlapping with the relational expression 1, one of ordinary skill in the art would expect the steel material of Kim to have a loss rate at a strain of 900 m/(mx10-6) that is the same or overlapping with the instantly claimed range. 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.
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.
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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/ANTHONY M LIANG/Primary Examiner, Art Unit 1734
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