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 .
Status of Claims
No amendments to the claims have been filed. Claims 1-4 are pending and currently considered in this office action.
Declaration
The Declaration of Katsuya Nakano, recognized inventor of the instant invention, under 37 CFR 1.132 filed April 14, 2026, is insufficient to overcome the rejection of Claim 1 based upon Hasegawa, as set forth in the last Office action because:
Examiner thanks the Declarant for the additional data provided in Table 4 and Table 5 of the amended Declaration. The composition of steel no. 28 (Table 2) and the processing parameters within Table 4 appear to be commensurate in scope with the composition and requirements of Hasegawa (see below tables provided).
Element
Claim 1
No. 28 of decl.
Hasegawa
Hasegawa, preferred range
Citation
C
0.18-0.40%
0.21%
0.07-0.25%
0.10-0.23%
[0023]
Si
0.01-2.50%
0.34%
0.01-3.00%
0.01-0.70%
[0025]
Mn
0.60%-5.00%
2.3%
1.5-4.0%
1.8-3.5%
[0027]
P
0-0.0200%
0.0079%
0-0.100%
0.001-0.015%
[0029]
S
0-0.0200%
0.0029%
0-0.02%
0.0005-0.02%
[0031]
N
0-0.0200%
0.0011%
0.001-0.008%
[0034]
O
0-0.0200%
0.003%
silent, 0%
**
Al
0-1.00%
0.172%
0.01-1.50%
0.01-0.10%
[0033]
Mo
0-0.50%
0.15%
0.01-2.00% (at least one of Cr, Mo, V, Ni, Cu)
0.01-0.80% Mo
[0044]
Ti
0-0.10%
0.014%
0.003-0.200%
0.003-0.030%
[0037]
B
0-0.0100%
0.0008%
0.0003-0.005%
0.0003-0.002%
[0039]
Balance
Fe, impurities
Fe, impurities
[0042]
Hasegawa
Pref. ranges of Hasegawa
Citation
process BZ (Table 4 of Decl.)
Hot rolling reheating temp
1100-1300C
[0079]
1166C
Hot rolling finish temp
Ac3 or more
[0080]
956C (steel no. 28 has Ac3 of 827C)
Retention 600-700C
10s or less
8s or less
[0076]
Silent (0s)
Coiling temp.
600C or less
400-600C
[0078]
80C
Rolling reduction
20% or more
20-90%
[0084]
88%
Heating rate for annealing
15C/ or less
1-8C/s
[0087]
5 C/s
Heating temp for annealing
750-950
[0088]
885C
Hold time for annealing
30s or more
30-1000s
[0090]
210s
Cooling rate to galv. Bath
3C/s or more
5-40C/s
[0093]
6C/s
Galv. Bath temp.
Galvanizing (GI)/ Galvannealing (GA)
440-500C for GI
460-600, 1-40s for GA
[0095]
460C for GI
Cooling rate to 1st stop
1C/s or more
1-50C/s
[0098]
5C/s
1st stop temp.
Ms or higher
Ms to 500C
[0099]
400C (Ms of steel no. 28 is about ~380C)
Cooling rate to 2nd stop
100C/s or more
[0102]
250 C/s
2nd stop temp.
100C or less
60C or less
[0104]
95C
Tempering temp.
350C or less
80-350C
[0107]
250C
Tempering hold time
1s or more
1s to 10 days
[0109]
100 s
The data provided by Table 5 of Declarant demonstrates that while the standard deviation of steel no. 28 processed under method BZ is within the claimed range for variation in macrohardness at t/2 (24 reads on the 30 or less), the differences in nanohardness are outside the claimed nanohardness values (16 its outside the claimed range of 10 or less; Declarant clarifies that the micro-hardness of the declaration equates to the claimed nanohardness features – see declaration. Pg. 6).
However, it is unclear if steel no. 28 processed by method BZ fully represents the invention of Hasegawa, which requires a hole expansion ratio of 30% or more, because steel no. 28 processed under conditions BZ comprises a hole expansion ratio of 29% (see Table 5 and comparison Table provided below).
Hasegawa
Citation
Steel. No. 28 with processing BZ
thickness
0.4-3.0mm
[0113]
1.6mm
microstructure
90% TM or more
[0055]
100% TM
Tensile strength
1180MPa or more
[0113]
1402 MPa
standard dev. of macrohardness at t/4
20 or less, pref. 15 or less
Abstract; [0062]
8
Hole expansion ratio
30% or more
[0125]
29%
Grain size TM
20um or less
[0060]
Silent
carbides >0.05um in TM
3x106 particles/mm2 or less
[0064]
Silent
Therefore, an assessment cannot be made that Table 5 represents a steel which represents the invention of Hasegawa, and the Declaration is insufficient to fully demonstrate that the steel of Hasegawa does not possess the claimed features.
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hasegawa (previously cited, US 20180023154 A1).
Regarding Claim 1, Hasegawa discloses a steel sheet having a tensile strength of 1100 MPa or more (para. [0055]; para. [0113]; see Table 3, examples 9, 19 and 20 – examples 9, 19 and 20 read on compositions C, H and I in Table 1, respectively),
wherein the steel sheet has a microstructure containing, in volume fraction, tempered martensite: 95% or more, and one or more kinds of ferrite, pearlite, bainite, as-quenched martensite, and retained austenite: less than 5% in total (Abstract; para. [0055]; Table 3, examples 9, 19 and 20; see also para. [0051]-[0057] wherein remaining phases are ferrite, bainite and retained austenite),
wherein the steel sheet has a chemical composition comprising, in mass%:
Hasegawa, Table 1
Element
Claim 1
Hasegawa
Citation
Steel C
Steel H
Steel I
C
0.18-0.40%
0.07-0.25%
[0022]
0.22%
0.21%
0.18%
Si
0.01-2.50%
0.01-3.00%
[0024]
0.04%
0.15%
0.02%
Mn
0.60%-5.00%
1.5-4.0%
[0026]
2.3%
2.5%
2.7%
P
0-0.0200%
0-0.100%
[0028]
0.011%
0.006%
0.012%
S
0-0.0200%
0-0.02%
[0030]
0.005%
0.003%
0.002%
N
0-0.0200%
0.001-0.008%
[0034]
0.003%
0.004%
0.005%
O
0-0.0200%
silent, 0%
**
Al
0-1.00%
0.01-1.50%
[0032]
Cr
0-2.00%
0.01-2.00%
[0043]
Mo
0-0.50%
0.01-2.00%
[0043]
Ti
0-0.10%
0.003-0.200%
[0036]
0.014%
0.019%
0.021%
Nb
0-0.100%
0.003-0.200%
[0045]
B
0-0.0100%
0.0003-0.005%
[0038]
0.001%
0.0010%
0.0015%
V
0-0.50%
0.01-2.00%
[0043]
Cu
0-0.500%
0.01-2.00%
[0043]
0.11%
W
0-0.100%
silent, 0%
**
Ta
0-0.100%
silent, 0%
**
Ni
0-1.00%
0.01-2.00%
[0043]
Co
0-1.00%
silent, 0%
**
Sn
0-0.050%
0-0.002%
[0042]
Sb
0-0.050%
0-0.002%
[0042]
As
0-0.050%
silent, 0%
**
Mg
0-0.050%
0-0.002%
[0042]
Ca
0-0.050%
0.001-0.005%
[0047]
0.001%
Y
0-0.050%
0.01-2.00%
[0043]*
Zr
0-0.050%
0-0.002%
[0042]
La
0-0.050%
0-0.002%
[0042]
Ce
0-0.050%
0-0.002%
[0042]
Balance
Fe, impurities
Fe, impurities
[0042]
Fe
Fe
Fe
*One of ordinary skill in the art would appreciate that Y reads on the REM (rare earth elements) disclosed by Hasegawa (see para. [0043] and table above).
**Hasegawa is silent regarding the elements O, W, Ta and As, and one of ordinary skill in the art would appreciate these elements to be absent from the composition of Hasegawa and therefore 0%.
Hasegawa further discloses wherein the Vickers hardness of the martensite phase has a standard deviation of 20 or less, which overlaps with the claimed range of 30 or less (para. [0061]). One of ordinary skill in the art would appreciate that for a steel with preferably 90% or more tempered martensite (see para. [0055] of Hasegawa, see also Table 3, inventive steel 20, which comprises 100% tempered martensite), the standard deviation of the Vickers hardness of the tempered martensite phase, as measured from an interior portion of the steel (see para. [0069]), would be representative of the standard deviation of the Vickers hardness of the steel sheet.
Thus, while Hasegawa does not disclose the claimed method of measuring the standard deviation of the Vickers hardness, and is silent towards the nanohardness of the steel, one of ordinary skill in the art would appreciate that the steel of Hasegawa comprises the claimed hardness properties because Hasegawa discloses the same composition and microstructure as claimed, and discloses the claimed standard deviation for the Vickers hardness in an interior portion of the steel sheet.
When 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01.
Regarding Claim 3, Hasegawa discloses wherein the steel sheet includes a galvanized layer, a galvannealed layer, or an electrogalvanized layer on its surface (Abstract).
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.
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.
Claims 2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Hasegawa (previously cited, US 20180023154 A1), as applied to Claim 1 above, in further view of Kawamura (previously cited, US 20130048151 A1).
Regarding Claim 2, Hasegawa discloses the substrate layer of Claim 1 (see above), but is silent towards a soft layer formed on at least one of the surfaces of the substrate layer.
Kawamura discloses a soft layer formed on the surface of a tempered martensite substrate layer (para. [0017]), wherein the thickness of the soft layer is 10-30% the thickness of the steel sheet, and a Vickers hardness of the soft layer is 80% or less the Vickers hardness at a t/2 point of the substrate layer (Abstract, see equation 1 and equation 2). One of ordinary skill in the art would appreciate that 10-30% of the thickness of the steel sheet (i.e., 0.10t to 0.30t), reads on the claimed range of up to 0.15t, and a Vickers hardness of the soft layer which is 80% or less than the Vickers hardness of the substrate layer reads on the claimed Vickers hardness of the soft layer which is 0.9 times or less (90% or less) than the Vickers hardness of the steel sheet.
Kawamura teaches wherein the soft layer with these characteristics provides a steel sheet with improved bendability and delayed fracture resistance, while improving the fatigue properties of the steel sheet (para. [0043] and para. [0047]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a soft layer formed on at least one of the surfaces of the substrate layer, wherein the thickness of the soft layer is up to 0.15t or less per side, such as at least 0.10t, and wherein the average Vickers hardness of the soft layer is 80% or less of (0.8 times or less than) the average Vickers hardness at a t/2 point of the substrate layer, as taught by Kawamura, for the invention disclosed by Hasegawa. One would be motivated to include a soft layer in order to improve bendability, improve delayed fracture resistance, and improve fatigue properties (see teachings by Kawamura above).
Kawamura is silent towards the standard deviation of the Vickers hardness of the soft layer; However, the microstructure, composition and tensile strength of the steel sheet layer of Hasegawa and Kawamura overlap each other and are the same claimed (see Kawamura, para. [0014] and para. [0017]-[0018]), and the structure of soft layer and method of Kawamura to produce the soft layer by decarburization is the same as claimed (see para. [0051]-[0052] of Kawamura; see para. [0074] of instant invention wherein “decarburization progresses in an outer layer of the steel sheet, as a result of which a soft layer is formed”).
Therefore, the soft layer taught by Kawamura anticipates/renders obvious the claimed standard deviation of Vickers hardnesses as claimed, as the microstructure, composition, and tensile strength of the steel sheet (substrate) layer, and the soft layer formation method (decarburization of the steel sheet) and soft layer structure (thickness, average Vickers hardness) of Hasegawa and Kawamura are the same as claimed. When 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01.
Regarding Claim 4, Hasegawa discloses wherein the steel sheet includes a galvanized layer, a galvannealed layer, or an electrogalvanized layer on its surface (Abstract).
Response to Arguments
Applicant's arguments filed April 14, 2026 have been fully considered but they are respectfully not found persuasive.
Regarding Hasegawa:
Applicant argues that a steel must be subjected to the above multi-step heat treatment in order to reduce coarse carbides and segregation, and therefore in order to obtain a steel sheet satisfying the claimed hardness features (Remarks, Pg. 4).
Applicant argues the newly submitted data in the declaration filed April 14, 2026 demonstrates that Hasegawa, even with annealing, galvanizing and tempering, would not have achieved the claimed nanohardness features (Remarks, Pg. 5).
This argument is respectfully not found persuasive.
As discussed above, the declaration has not fully and sufficiently shown that the invention of Hasegawa fails to possess the claimed nanohardness features because the processes BZ of example no. 28 does not appear to be within the inventive scope of Hasegawa whom requires a hole expansion ratio of 30% or more (Table 5 discloses steel no. 28 and process BZ produces a hole expansion ratio of 29%). Therefore, the declaration and arguments are insufficient to overcome the previous grounds of rejection.
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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Takashima (previously cited, US 20200131596 A1): discloses a hot-pressed steel sheet having a tensile strength of 1100 MPa or more, comprising 95% or more martensite (Abstract), an overlapping composition (see para. [0018]-[0019]), and a standard deviation of Vickers hardness of 40 or less (para. [0039]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE P SMITH whose telephone number is (303)297-4428. The examiner can normally be reached Monday - Friday 9:00-4:00 MT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached on (571)-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CATHERINE P. SMITH
Patent Examiner
Art Unit 1735
/CATHERINE P SMITH/Examiner, Art Unit 1735
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735
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