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 Interpretation
The examiner interprets the term “sheet” in the claims to be interchangeable with the term “plate” in the instant claims in light of the instant specification interchangeably using the terms “sheet” and “plate” when referring to the product and includes stating that the plate has a thickness of 8-15 mm [0034, instant spec].
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 3-4, and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al. (KR 20090069872 A, machine translation referred to herein as English equivalent) herein Choi.
Regarding claims 1 and 3:
Choi discloses producing steel [page 2, Choi] that may be in a sheet form [page 12, Choi], wherein the steel comprises a composition shown below in Table 1. The examiner notes that the overlap of the steel compositions of the instant claim and Choi is prima facie obvious. See MPEP 2144.05(I).
The microstructure of Choi contains 70-95% by area of polygonal ferrite and 5-30% pearlite or degenerated pearlite wherein the combination of polygonal ferrite and pearlite or degenerated pearlite is ≥98% wherein other tissues such as bainite may be included [page 5, Choi]. The examiner notes that Choi does not require microstructures other than ferrite, pearlite, and bainite and thus meets the limitation of consisting of. See MPEP 2111.03(II). The examiner notes that the overlap of the steel microstructures of the instant claim and Choi is prima facie obvious. See MPEP 2144.05(I).
The ferrite of Choi has an average grain size of ≤5µm [page 5, Choi]. The examiner notes that the overlap of the ferrite grain sizes of the instant claim and Choi is prima facie obvious. See MPEP 2144.05(I).
Choi does not limit the thickness of the steel sheet however the inventive examples of Choi have thicknesses of 4.2-21.4 mm [Tables 2-1 and 2-2, Choi], the examiner submits it would have been obvious to use thicknesses of 4.2-21.4 mm for the steels of Choi as known suitable thicknesses for the steel sheets of Choi. The examiner notes that the overlap of the sheet thicknesses of the instant claim and Choi is prima facie obvious. See MPEP 2144.05(I).
Table 1
Instant claims, wt%
Choi, weight% [page 6]
C
0.05-0.12 (claim 1)
0.03-0.18 [page 6]
Si
0.23-0.5 (claim 1)
0.01-0.8 [page 6]
Mn
1.2-1.8 (claim 1)
1.4-1.7 (claim 8)
0.3-2..5 [page 6]
P
≤0.012 (claim 1)
≤0.02 [page 6]
S
≤0.005 (claim 1)
≤0.01 [page 6]
Al
0.01-0.06 (claim 1)
0.005-0.5 [page 6]
Ti
0.005-0.02 (claim 1)
0.005-0.1 [page 7]
Nb
0.01-0.03 (claim 1)
0.005-0.1 [page 7]
N
0.002-0.006 (claim 1)
15-200ppm [page 8]
Ni
≤0.5 (claim 1)
0.01-2* [page 9]
Fe and impurities
Balance (claim 1)
Balance [page 9]
*optional
The steel of Choi has a tensile strength of ≥570 MPa [page 5, Choi]. The examiner notes that the overlap of the tensile strengths of the instant claim and Choi is prima facie obvious. See MPEP 2144.05(I).
The steel has an elongation of ≥30% [page 14, Choi]. The examiner notes that the overlap of the tensile strengths of the instant claim and Choi is prima facie obvious. See MPEP 2144.05(I).
Choi does not specify a yield strength however the examiner notes that yield strength depends upon the steel composition and microstructure and so an overlapping yield strength would naturally flow from Choi because as discussed above Choi and the instant application disclose overlapping compositions and microstructures. See MPEP 2144.05(I) and 2145. The examiner’s position is bolstered by the instant application and Choi disclosing overlapping tensile strength and elongation as discussed above which indicates the instant application and Choi have overlapping and similar mechanical properties. The examiner’s position is further bolstered by Choi disclosing inventive examples with yield strengths of 486-675 MPa [Tables 3-1 and 3-2, Choi].
Regarding claim 4, Choi does not specify an impact toughness at -40°C however the examiner notes that impact toughness depends upon the steel composition and microstructure and so an overlapping impact toughness would naturally flow from Choi because as discussed above Choi and the instant application disclose overlapping compositions and microstructures. See MPEP 2144.05(I) and 2145. The examiner’s position is bolstered by the instant application and Choi disclosing overlapping tensile strength and elongation as discussed above which indicates the instant application and Choi have overlapping and similar mechanical properties.
Regarding claim 8, as shown above in Table 1 the compositions of the instant claim and Choi overlap. The examiner notes that the overlap of the steel compositions of the instant claim and Choi is prima facie obvious. See MPEP 2144.05(I).
Claim(s) 1, 3-4, and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oda et al. (KR 20120026641 A, machine translation referred to herein as English equivalent) herein Oda.
Regarding claims 1 and 3:
Oda discloses a steel sheet [page 1, Oda] comprising a composition shown below in Table 2. The examiner notes that the overlap of the steel compositions of the instant claim and Choi is prima facie obvious. See MPEP 2144.05(I).
The steel comprises an area ratio of ferrite of ≥85% and other structures including pearlite and bainite are ≤15% [page 8, Oda]. The examiner notes that Oda does not require microstructures other than ferrite, pearlite, and bainite and thus meets the limitation of consisting of. See MPEP 2111.03(II). The examiner notes that the overlap of the steel microstructures of the instant claim and Oda is prima facie obvious. See MPEP 2144.05(I).
Oda discloses that the ferrite has a grain size of 5-40 µm [page 8, Oda]. The examiner notes that the overlap of the ferrite grain sizes of the instant claim and Oda is prima facie obvious. See MPEP 2144.05(I).
Oda discloses a sheet thickness of ≥8mm [page 9, Oda]. The examiner notes that the overlap of the sheet thicknesses of the instant claim and Choi is prima facie obvious. See MPEP 2144.05(I).
Table 2
Instant claims, wt%
Oda, mass% [page 8]
C
0.05-0.12 (claim 1)
0.03-0.1 [page 8]
Si
0.23-0.5 (claim 1)
0.03-1* [page 9]
Mn
1.2-1.8 (claim 1)
1.4-1.7 (claim 8)
0.1-1.5* [page 9]
P
≤0.012 (claim 1)
≤0.05 [page 8]
S
≤0.005 (claim 1)
≤0.05 [page 8]
Al
0.01-0.06 (claim 1)
0.002-0.1 [page 9]
Ti
0.005-0.02 (claim 1)
0.002-0.04* [page 9]
Nb
0.01-0.03 (claim 1)
0.002-0.02* [page 9]
N
0.002-0.006 (claim 1)
0.0005-0.008* [page 9]
Ni
≤0.5 (claim 1)
0.02-0.5* [page 9]
Fe and impurities
Balance (claim 1)
Remainder [page 11]
*optional
Oda discloses a yield strength of ≥235 MPa [page 6, Oda]. The examiner notes that the overlap of the yield strengths of the instant claim and Oda is prima facie obvious. See MPEP 2144.05(I).
Oda discloses a tensile strength of ≥460 MPa [page 6, Oda]. The examiner notes that the overlap of the tensile strengths of the instant claim and Oda is prima facie obvious. See MPEP 2144.05(I).
Oda discloses an elongation of ≥15% [page 6, Oda]. The examiner notes that the overlap of the yield strengths of the instant claim and Oda is prima facie obvious. See MPEP 2144.05(I).
Regarding claim 4, Oda does not specify an impact toughness at -40°C however the examiner notes that impact toughness depends upon the steel composition and microstructure and so an overlapping impact toughness would naturally flow from Oda because as discussed above Oda and the instant application disclose overlapping compositions and microstructures. See MPEP 2144.05(I) and 2145. The examiner’s position is bolstered by the instant application and Oda disclosing overlapping tensile strength, yield strength, and elongation which indicates the instant application and Oda have overlapping and similar mechanical properties.
Regarding claim 8, as shown above in Table 2 the compositions of the instant claim and Oda overlap. The examiner notes that the overlap of the steel compositions of the instant claim and Oda is prima facie obvious. See MPEP 2144.05(I).
Response to Arguments
Applicant argues Choi is directed to a high strength structural steel having excellent low temperature toughness and tensile strength of the weld head affected zone having B and Mo. Applicant further argues that “the claimed steel sheet does not include B and Mo.” The examiner disagrees. Applicants use of the term “comprising” allows for the inclusion of additional, unrecited elements such as B and Mo.
Applicant argues the steel sheet of the present invention achieves impact toughness of 100J or more at -40C and that Choi is silent to such a technical idea and effects. Applicant, however, does not dispute the examiner’s rationale that the claimed toughness and microstructure would naturally flow from the suggestions of Choi.
Applicant argues the conditions under which the claimed steel is manufactured and Choi’s is different and thus the properties are different. The examiner notes, however, that once a product appears to be substantially identical is made the basis of the rejection, the burden shifts to the applicant. Specifically, the “PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) (footnote and citation omitted). The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (citing Best, 562 F.2d at 1255).
Applicant argues that Oda’s steel plates with a tensile strength of 460 MPA or less should be used for hull materials is different than the ones targeted by applicants. The examiner disagrees. While Oda appears to teach a preferred embodiment, Oda’s disclosure is not limited to this teaching. Applicants do not challenge the examiner’s rationale regarding the properties. Nor do applicants dispute the examiner’s position that the impact toughness would naturally flow from Oda.
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 JONATHAN J JOHNSON whose telephone number is (571)272-1177. The examiner can normally be reached Monday-Friday, 6:30 AM - 3 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexa Neckel can be reached at 571-272-2450. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JONATHAN JOHNSON
Primary Examiner
Art Unit 1734
/JONATHAN JOHNSON/Primary Examiner, Art Unit 1734