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
An amendment, filed 10/28/2025, is acknowledged. Claim 1 is amended. No new matter is present. Claims 1, 4-17, and 20 are currently pending, claims 9-15, 17, and 20 are withdrawn.
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) 1, 4-5 and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Ugi et al. (JP2002212682A)(machine translation provided) alone or in the alternative, in view of Hong (CN-101918607-A)(of record).
With respect to Claim 1, Ugi teaches a high strength steel, the steel having a composition, in weight%, as detailed below (pgs. 1 and 3-6 of translation):
Claim 1
Ugi
C
0.02-0.038
0.001-0.3
Si
0.1-0.5
0.1-4.0
Mn*
1.1-1.7
0.1-4.0
P
≤ 0.02
≤ 0.04
Cr
5.1-5.7
5.0-15.0
Ni
1.7-2.5
≤ 3.0
S*
≤ 0.007
≤ 0.03
N
0.004-0.01
0.001-0.3
Sol. Al
< 0.001
≤ 0.04
B
0.001-0.004
≤ 0.01
O (total)
0.007-0.02
-
Nb
0.02-0.05
≤ 1.0
V**
0.01-0.08
≤ 1
Cu**
0.1-0.6
≤ 3.0
Sn**
0.005-0.05
-
Co
-
0.01-1.0
Mo
-
≤ 3.0
Ti
-
≤ 1.0
Fe
Balance
Balance
* - The composition requires that Mn/S ≥ 250
** - Optionally further comprises V and/or one or both of Cu and Sn (interpreted such that V, Cu, and Sn are all optional elements).
Compositional ranges including zero (e.g. S, Al) are interpreted as optional elements. Thus, Ugi teaches a steel having compositional ranges overlapping each of the instantly required ranges with the exception of oxygen and teaches ranges of Mn and S overlapping the claimed Mn/S ratio. It is further noted that Ugi teaches examples wherein the Mn/S ratio exceeds 250. (see Tables 1-4; for example, Ex. D, Table 1). It would have been obvious to one of ordinary skill in the art to select from the portions of the overlapping compositional ranges and the compositional relationship. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Hong teaches a high strength, high heat steel with compositional ranges of major elements such as C, Si, Mn, Ni, substantially overlapping those of Ugi and the instant claims. (Title, ¶ [1], [14]). Hong further teaches the addition of 0.01-0.03 wt% oxygen for improving the mechanical properties of welded portions of the steel as it combines with titanium. (¶ [58]-[60]). Ugi teaches a steel that may comprise titanium and wherein the steel is used in applications where it is welded and thus, is drawn to the problem of improving welded performance. (pg. 4 of translation). It would have been obvious to one of ordinary skill in the art to modify the steel of Ugi to include 0.01-0.03 wt% oxygen, as taught by Hong, in order to improved the welded performance of the material. Additionally, it would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping compositional ranges. MPEP 2144.05.
Hong further teaches that a Mn/S range of between 220-400 avoids low temperature toughness reduction and cracking (¶ [29],[67]-[68]). Accordingly, it would have been obvious to one of ordinary skill in the art to modify the steel of Ugi, teaching ranges of Mn and S overlapping the claimed Mn/S ratio, to select contents of Mn and S to obtain a Mn/S range of between 220 and 400, as taught by Hong, in order to obtain a steel that avoids low temperature toughness reduction and cracking. It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping compositional ratio range. MPEP § 2144.05.
With respect to the preamble limitations “high-strength, thin-gauge and high-corrosion resistance steel,” these limitations do not require any specific property values or measurements. As detailed above, Ugi in view of Hong teach a steel having overlapping composition and drawn to high strength and wherein the steel may be rolled into a bar or wire. (pgs. 6 of translation). It would have been obvious to one of ordinary skill in the art to modify the steel of Ugi in view of Hong to form a desired thickness with a predictable result of success. See MPEP 2144.05; Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). Finally, as Ugi of Hong teach a high-strength steel with a composition substantially the same as instantly claimed, one of ordinary skill in the art would necessarily expect that it be capable of forming a “thin-gauge” steel product and would exhibit high corrosion resistance. MPEP 2112.01.
With respect to Claim 4, Ugi is silent as to the microstructure comprising bainite and/or acicular ferrite; however, the reference teaches subjecting the steel to heat treatment to modify the mechanical properties of the material (pg. 6 of translation, “The steel bars manufactured by hot rolling can be used as they are, but the strength is adjusted by appropriate heat treatment as needed.”) and therefore, is deemed to contemplate heat treatment resulting in microstructural change to obtain desired properties. Hong teaches that the steel comprises 85% or more acicular ferrite, deemed to meet the instant claim as the claim does not use a closed transitional phrase nor does it specify minimum contents of the recited microstructural phase(s). (¶ [16],[33]). Hong teaches that this structure improves the strength and impact toughness of the steel. (¶ [34],[86]). It would have been obvious to one of ordinary skill in the art to modify the steel of Ugi in view of Hong, to control the processing parameters of the steel treatment to obtain a microstructure comprising 85% or more acicular ferrite, in order to obtain a steel with improved impact toughness and strength.
With respect to Claims 5, 7, and 8, Ugi teaches a high strength steel with corrosion resistance measurements falling within the claimed range (see Tables 5-6) and teaches subjecting the steel to heat treatment to adjust the strength as needed (pg. 6 of translation), but the reference does not specifically teach yield strength, tensile strength, elongation, and yield ratio of the steel.
Hong teaches wherein the steel exhibits a tensile strength of more than 600 MPa. (see Table 3). It would have been obvious to one of ordinary skill in the art to modify the steel of Ugi in view of Hong, to form a steel having a tensile strength of more than 600 MPa, in order to maximize the strength of the steel enhancing its utility. Additionally, as Ugi in view of Hong teach a steel having substantially the same composition and structure, as well as tensile strength and corrosion resistance, the combination would be expected to necessarily result in a steel having the same properties, including yield strength, yield ratio, elongation, and the recited corrosion rates. "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.” In re Best, 195 USPQ 430, 433 (CCPA 1977). Thus, the burden is shifted to the applicant to prove that the product of the prior art does not necessarily or inherently possess the characteristics attributed to the claimed product. See In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (“When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not."); MPEP 2112.01. Therefore, the prima facie case can only be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product.
Claim(s) 6 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Ugi et al. (JP2002212682A)(machine translation provided) alone or in the alternative, in view of Hong (CN-101918607-A)(of record) as applied to claim 1 above (with respect to claim 6), further in view of Sun (US 8435363)(of record).
With respect to Claim 6 and 16, Ugi teaches rolling the steel to a final dimension (see pg. 6 of translation); however, the reference is silent as to forming the steel with a thickness as recited in claims 6 and 16.
Sun teaches a method of forming a steel sheet or foil using conventional methods, specifically, casting and rolling a plate/sheet to a thickness of, for example, 25-100 mm, and wherein portions of the sheet may be mechanically and/or chemically thinning the sheet to 1.5 mm or less. (col. 11, lns. 1-21; col. 14, lns. 4-24). Thus, Sun teaches the ability to mechanically thin a steel from relatively thick initial plate thickness to a foil with a thickness of 1.5 mm or less.
It would have been obvious to one of ordinary skill in the art to modify the steel of Ugi in view of Hong to any reasonable desired thickness by rolling, mechanical thinning, and/or chemical thinning, including a thickness of 1.5 mm, as taught by Sun, in order to form a steel sheet/foil for a desired application. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05. Moreover, a mere change in form, such as reducing the thickness of a steel sheet would have been prima facie obvious to one of ordinary skill in the art. MPEP 2144.05; Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.").
Response to Arguments
Applicant’s arguments, filed 10/28/2025, with respect to the rejection(s) of claim(s) 1, 4-5, 7-8 under 35 U.S.C. 103 over Hasegawa in view of Hong and Claims 6 and 16 over Hasegawa in view of Hong and Sun have been fully considered and are persuasive in view of Applicant’s amendments to the claims. Specifically, Claim 1 is amended to require a content of manganese (Mn) outside the ranges taught by prior art Hasegawa. Therefore, the rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Ugi in view of Hong, and further in view of Sun (with respect to claims 6 and 16), as detailed above.
Applicant’s arguments as they relate to prior art Hong and/or Sun are moot in view of the new grounds of rejection.
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 JOHN A HEVEY whose telephone number is (571)270-0361. The examiner can normally be reached Monday-Friday 9:00-5:30.
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/JOHN A HEVEY/Primary Examiner, Art Unit 1735
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