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 .
DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/25/2026 has been entered.
Status of claims
Claim 3 has been cancelled, Claim 1 has been amended (After PBAI decision dated 1/26/2026); claims 7-10 have been withdrawn as non-elected claims; Claims 1-2 and 4-6 remain in the application, wherein claim 1 is an independent claim.
Claim Objections
Claim 1 is objected to because of the following informalities: the limitation of “3mm” on line 10 of the instant claim should be amended as “3 mm”. Appropriate correction is required.
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 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.
Claims 1-2 and 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kawata et al (US-PG-pub 20140287263 A1, thereafter PG’263) in view of Kaneko et al (US-PG-pub 2013/0048155 A1, listed in IDS filed on 6/22/2023, thereafter PG’155).
Regarding claims 1-2 and 4-6, PG’263 teaches a high-strength hot-dip galvanized steel sheet and the like excellent in mechanical cutting property, which are capable of obtaining high ductility while ensuring high strength with a hot-dip galvanized coating layer (Abstract, examples, and claims of PG’263), which reads on the steel sheet as claimed in the instant claims and the zinc-based plating as recited in the instant claim 5. The comparison between the alloy composition ranges disclosed by Example #Y in table 1, corresponding to the microstructure and properties as #99 in table 12 of PG’263 and those disclosed in the instant claims are listed in the following table. All of the essential alloy composition ranges, microstructures, and properties disclosed by Example #Y in table 1 of PG’263 (#99 in table 12) are within the claimed ranges as recited in the instant claims. It is noted that the Example #Y in table 1 of PG’263 does not specify including 0.05wt% Sb or less (excluding 0) in the alloy. PG’155 teaches a high-strength galvanized steel sheet (Abstract of PG’155). All of the alloy composition ranges (Abstract, claims, and par.[0027]-[0046] of PG’155) overlap the claimed alloy composition ranges as recited in the instant claims. MPEP 2144 05 I. PG’155 specify applying 0.002 wt % to 0.2 wt % Sb to prevent nitriding or oxidation of the surface of a steel sheet or decarbonization of a region having a thickness of several tens of micrometers in an oxidized steel sheet surface layer. This can prevent a decrease in formation of martensite on the surface of a steel sheet and improve fatigue characteristics and anti-aging effects. (par.[0045]-[0046] of PG’155). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to apply proper amount of Sb as demonstrated by PG’155 for the steel sheet of PG’263 in order to improve the properties of the steel sheet (par.[0045]-[0046] of PG’155).
Element
From instant Claim 1 (wt%)
Example #Y in table 1 of PG’263(wt%)
From PG’155
within range
(wt%)
C
0.08-0.15
0.134
0.04-0.10
0.134
Si
1.2 or less (not 0)
1.15
0.7-2.3
1.15
Mn
1.4-2.4
1.73
0.8-2.0
1.73
Cr
1.0 or less
Trace amount
0.05-1.0
0-trace amount
P
0.1 or less (not 0)
0.0121
0.03 or less
0.0121
S
0.01 or less (not 0)
0.0040
0.003 or less
0.0040
Al (sol)
1.0 or less (not 0)
0.024
0.1 or less
0.024
N
0.01 or less (not 0)
0.0021
0.008 or less
0.0021
Sb
0.05 or less (not 0)
--
0.002-0.2
--
Overlapping 0.002-0.05 (PG’155)
Ti
0.008 or less
Trace amount
Optional 0.01-0.1
0-trace amount
Nb
0.008 or less
Trace amount
Optional 0.01-0.1
0-trace amount
Fe
Balance + impurities
Balance + impurities
Balance+ impurities
Relational Expression 1
0.42-0.48
About 0.76
General equation
Microstructure
60 area% or more ferrite
66 area%
75 area % or more
66 area%
From claim 2
Microstructure
5-20 area% of Martensite
7 area%
7 area%
From claim 4
Microstructure
8-30 area% of Bainite phase
18 area% (B+BF)
18 area%
From claim 6
TS (MPa)
490 or more
1096
1096
Relational Expression 2 (MPa)
1,900 or more
About 2603 (TSxUExN)
2603
PG’263 specify the grain size of the #99 in table 12 is 0.8 mm, which reads on the claimed average grain size range of 3 mm or less as recited in the instant claim. PG’263 does not specify amount of martensite grain with aspect ratio less than 4 as claimed in the instant claim. However, the aspect ratio of martensite grain is a feature fully depend on the alloy composition and recrystallization process. PG’263 not only teaches the same alloy as disclosed in the instant invention, but also teaches the same recrystallization treatment (par.[0140] of PG’263) and slow cooling after coiling (par.[0135] of PG’263), which reads on the slow cooling after coiling with cooling rate of 0.1oC/s as disclosed in the instant invention (par.[0109] and [0119] of PG-pub 2022/0298596 A1, corresponding to the instant specification) (Notes: 1 hr. cooling form 650oC to 400oC corresponding to cooling rate of about 0.042oC/s—noted by the Examiner). Therefore, the amount of martensite grain with aspect ratio less than 4 as claimed would be inherent exist to the steel sheet of PG’263. MPEP 2112 III&IV.
Regarding the amended features in the [Relational Expression 1] in the instant claim 1, the calculated value from the Example #Y in table 1 of PG’263 is outside the claimed range. However, the [Relational Expression 1] is recognized as general formula fully depended on the steel composition ranges of C, Si, Al, Mn, Cr, Nb and Ti in the alloy. It is well settled that there is no invention in the discovery of a general formula if it covers a composition and dimension described in the prior art. In re Cooper and Foley 1943 C.D.357, 553 O.G.177; 57 USPQ 117, Taklatwalla v. Marburg. 620 O.G.685, 1949 C.D.77, and In re Pilling, 403 O.G.513, 44 F(2) 878, 1931 C.D.75. In the instant case in the absence of evidence to the contrary, the selection of the proportions of C, Si, Al, Mn, Cr, Nb and Ti from PG’263 in order to meet the claimed equation would appear to require no more than routine investigation by those ordinary skilled in the art. In re Austin, et al., 149 USPQ 685, 688.
Claim(s) 1-2 and 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Han et al (US-PG-pub 2018/0002771 A1, listed in IDS filed on 8/1/2022, thereafter PG’771).
Regarding claims 1 and 5, PG’771 teaches a high-strength cold-rolled steel sheet and a hot-dipped galvanized steel sheet with low deviation of material properties and excellent formability (Abstract, examples, and claims of PG’263), which reads on the steel sheet as claimed in the instant claims and the zinc-based plating as recited in the instant claim 5. The comparison between the alloy composition ranges disclosed by Example #28 in table 1, and corresponding microstructure as #28 in table 3 of PG’771 and those disclosed in the instant claims are listed in the following table. All of the major alloy composition ranges, microstructures disclosed by Example #28 in table 1 of PG’771 are within the claimed ranges as recited in the instant claim 1. It is noted that the Sb range of Example #28 in table 1 of PG’771 is outside the claimed Sb range as recited in the instant claim 1. However, PG’771 specify adding 0.5wt% or less of Sb in order to effectively improve in inhibiting the enrichment of oxides (par.[0071]-[0072] of PG’771), which overlapping the claimed Sb range as recited in the instant claim. Overlapping in Sb range creates a prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize Sb from the disclosure of PG’771 since PG’771 teach the same steel sheet throughout whole disclosing range and PG’771 teaches adding proper amount Sb in order to effectively improve in inhibiting the enrichment of oxides (par.[0071]-[0072] of PG’771).
Element
From instant Claim 1 (wt%)
Example #28 in table 1 of PG’771 (wt%)
within range
(wt%)
C
0.08-0.15
0.15
0.15
Si
1.2 or less (not 0)
1.1
1.1
Mn
1.4-2.4
2.4
2.4
Cr
1.0 or less
0
0
P
0.1 or less (not 0)
0.01
0.012
S
0.01 or less (not 0)
0.003
0.002
Al (sol)
1.0 or less (not 0)
0.07
0.07
N
0.01 or less (not 0)
0.0035
0.0035
Sb
0.05 or less (not 0)
0.5 or less
Overlapping in 0.05 or less (not 0)
Ti
0.008 or less
0
0
Nb
0.008 or less
0
0
Fe
Balance + impurities
Balance + impurities
Balance+ impurities
Relational Expression 1
0.42 or more
About 0.52
About 0.52
Still regarding claim 1, the claimed martensite grain size and aspect ratio are recognized as material properties fully depended on the alloy composition and recrystallization process. PG’771 not only teaches the similar alloy as disclosed in the instant invention, but also teaches the same recrystallization treatment with similar conditions (par.[0083] of PG’771) compared to the disclosure of the instant invention (refer to par.[0119] of PG-pub 2022/0298596 A1, corresponding to the instant specification). Therefore, the feature of martensite grain size and the aspect ratio as claimed would be highly expected in the steel sheet of PG’771. MPEP 2112 01 and 2145 II. Regarding the amended features in the [Relational Expression 1] in the instant claim 1, the calculated value from the Example #28 in table 1 of PG’771 is outside the claimed range. However, the [Relational Expression 1] is recognized as general formula fully depended on the steel composition ranges of C, Si, Al, Mn, Cr, Nb and Ti in the alloy. It is well settled that there is no invention in the discovery of a general formula if it covers a composition and dimension described in the prior art. In re Cooper and Foley 1943 C.D.357, 553 O.G.177; 57 USPQ 117, Taklatwalla v. Marburg. 620 O.G.685, 1949 C.D.77, and In re Pilling, 403 O.G.513, 44 F(2) 878, 1931 C.D.75. In the instant case in the absence of evidence to the contrary, the selection of the proportions of C, Si, Al, Mn, Cr, Nb and Ti from PG’771 in order to meet the claimed equation would appear to require no more than routine investigation by those ordinary skilled in the art. In re Austin, et al., 149 USPQ 685, 688.
Regarding claims 2 and 4, PG’771 specify the microstructure of the steel sheet includes 40% or more of ferrite, 10% or less of bainite, 3% or less of residual austenite, and a balance of martensite (Abstract, claims, par.[0013] and [004]-[0043] of PG’771), which overlaps the claimed fraction of martensite (cl.2) and bainite (cl.4). Overlapping in fraction of microstructure ranges creates a prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize fractions of microstructures from the disclosure of PG’771 since PG’771 teach the same steel sheet throughout whole disclosing range and PG’771 teaches optimizing proper fractions of microstructures for desired properties (Abstract, claims, par.[0013] and [004]-[0043] of PG’771).
Regarding claim 6, the claimed TS and relationship between Nu, TS and EL are recognized as material properties fully depended on the alloy composition and manufacturing process. PG’771 not only teaches the similar alloy as disclosed in the instant invention, but also teaches the similar hot-rolling, cold-rolling, recrystallization treatment, and hot-dipping coating as disclosed in PG’771 (par.[0078]-[0092 of PG’771) compared to the disclosure of the instant invention (refer to par.[0097]-[0140] of PG-pub 2022/0298596 A1, corresponding to the instant specification). Therefore, the properties as claimed would be highly expected in the steel sheet of PG’771. MPEP 2112 01 and 2145 II. Actually PG’771 provides TS 822.6 MPa, T-EL 22.4%, bendability (R/t) of 0.1, and a HER of 65% (table 2 of PG’771), which reads on the claimed TS.
Response to Arguments
Applicant’s arguments to the art rejection to Claims 1-2 and 4-6 have been considered but they are not persuasive. Regarding the arguments related to the amended features in the instant claims, the Examiner’s position has stated as above.
Since this case is a RCE after BPAI decision dated 1/26/2026, the response to the arguments related to the non-amended features in the instant claims could refer to the BPAI decision (Examiner affirmed) dated 1/26/2026.
The Applicant’s arguments are summarized as following:
the Applicant argued the criticality of the [Relational Expression 1] in term of the alloy’s property (TSxUExNu).
In response,
Regarding the argument, Firstly, as pointed out in the rejection for the instant claims above, the [Relational Expression 1] is recognized as general formula fully depended on the steel composition ranges of C, Si, Al, Mn, Cr, Nb and Ti in the alloy. It is well settled that there is no invention in the discovery of a general formula if it covers a composition and dimension described in the prior art. Secondly, it is noted that the applicant only provides figure on page 13/15 of the “Applicant argument/remark” dated 3/25/2026 to show that when [Relational Expression 1] less than 0.42, the (TSxUExNu) less than 1900 MPa%. There is no data to show the criticality of [Relational Expression 1] greater than 0.48. Actually, as shown in the rejection above, Example #Y in table 1 of PG’263 having about 2603 MPa% (TSxUExN) with [Relational Expression 1] value about 0.76. Therefore, The applicant is suggested to provide proper evidence (for example 132 declaration) with comparison data to the closest example in the cited prior art(s) to show the criticality of the claimed range for [Relational Expression 1].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIE YANG whose telephone number is (571)270-1884. The examiner can normally be reached on IFP.
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/JIE YANG/Primary Examiner, Art Unit 1734