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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/15/2025 has been entered.
Claim Status
An amendment, filed 7/15/2025, 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 Claims 1, 4-17, and 20 are currently pending, claims 9-15, 17, and 20 are withdrawn.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 Hasegawa et al. (JP2008266786A)(machine translation provided) alone or in the alternative, in view of Hong (CN-101918607-A)(of record).
With respect to Claim 1, Hasegawa teaches a high strength steel, the steel having a composition, in weight%, as detailed below (pg. 1, 5-8 of translation):
Claim 1
Hasegawa
C
0.02-0.038
0.01-0.20
Si
0.1-0.5
0.02-0.50
Mn*
0.4-1.7
0.05-1.0
P
≤ 0.02
≤ 0.02
Cr
5.1-5.7
0.4-12.0
Ni
1.7-2.5
≤ 2.0
S*
≤ 0.007
≤ 0.01
N
0.004-0.01
0.002-0.15
Sol. Al
< 0.001
≤ 0.02
B
0.001-0.004
0.0003-0.0050
O (total)
0.007-0.02
≤ 0.01
Nb
0.02-0.05
0.01-0.50
V**
0.01-0.08
0.01-0.50
Cu**
0.1-0.6
≤ 2.0
Sn**
0.005-0.05
-
Ti
-
0.005-0.20
Zr
-
0.003-0.20
Ta
-
0.01-0.15
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, Hasegawa teaches a steel having compositional ranges overlapping each of the instantly required ranges, including the Mn/S ratio. It is further noted that Hasegawa teaches examples wherein the Mn/S ratio exceeds 250. (see Table 2). 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.
In the alternative, Hong teaches a high strength, high heat steel with compositional ranges of major elements such as C, Si, Mn, Ni, substantially overlapping those of Hasegawa and the instant claims. (Title, ¶ [1], [14]). 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 Hasegawa, 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, Hasegawa or Hasegawa in view of Hong teach a steel having overlapping composition and drawn to high strength and wherein the steel may be formed into a steel plate. (pgs. 8, 11, 14 of translation). Iit would have been obvious to one of ordinary skill in the art to modify the steel of Hasegawa or Hasegawa 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 Hasegawa or Hasegawa in view 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, Hasegawa teaches a steel having a structure comprising “bainite and / or martensite” (pgs. 3, 5-7 of translation) and therefore, is deemed to meet the claimed microstructure.
With respect to Claims 5, 7, and 8, Hasegawa is silent as to the yield strength, tensile strength, elongation, yield ratio and corrosion rate of the steel. However, as Hasegawa or Hasegawa in view of Hong teach a steel having substantially the same composition and structure the steel of the prior art/combination would be expected to necessarily result in a steel having the same properties, including yield strength, tensile 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 Hasegawa et al. (JP2008266786A)(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).
With respect to Claim 6 and 16, Hasegawa teaches a method of making the steel comprising hot rolling and further processing to a desired shape (pg. 14 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 Hasegawa or Hasegawa 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 7/15/2025, with respect to the rejection(s) of claim(s) 1, 4-5, 7-8 under 35 U.S.C. 103 over Beguinot in view of Hong and Claims 6 and 16 over Beguinot 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 carbon outside the ranges taught by prior art Beguinot. Therefore, the rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Hasegawa or alternatively Hasegawa 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
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