Detailed Office Action
Notice of Pre-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
Request for Continued Examination
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/09/2026 has been entered.
Response to Amendments
The amendment filed on 02/09/2026 has been entered. Claims 1 – 13 remain pending. Claims 3 – 6 remain withdrawn. Claims 1 – 2 and 7 – 13 are pending and under examination.
Claim Rejections – U.S.C. §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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1 – 2 and 7 – 13 are rejected under 35 U.S.C. 103 as being unpatentable over Zheng (CN102899569, using espacenet translation) in view of Steel Number (“S355G8”, NPL) and Wang (CN106222558, using espacenet translation)
Regarding claims 1 and 7 – 13, Zheng teaches a steel plate for ocean-based wind power that is subjected to hot-rolling and normalizing, and does not include cold rolling [0006], meeting the claimed limitation of normalizing hot-rolled steel. Zheng teaches that the steel plate is within European standard EN 10225 S355G8+N and contains a composition of [0007]:
Element
Claimed invention (wt%)
Zheng (wt%)
Relation
Carbon (C)
0.04 – 0.1%
0.06 – 0.1% (Claim 7)
0.06 – 0.13%
Overlaps
Silicon (Si)
0.05 – 0.5%
0.2 – 0.5% (Claim 8)
0.2 – 0.5%
Falls within
Manganese (Mn)
1.0 – 2.0%
1.3 – 1.6%
Falls within
Aluminum (Al)
0.015 – 0.04%
0.02 – 0.03% (Claim 9)
≥0.015%
Overlaps
Niobium (Nb)
0.003 – 0.03%
0.02 – 0.04%
Overlaps
Titanium (Ti)
0.005 – 0.02%
0.01 – 0.015% (Claim 10)
0.01 – 0.02%
Falls within
Overlaps
Copper (Cu)
0.35% or less
0.25% or less (Claim 11)
0.1 – 0.3%
Falls within
Overlaps
Nickel (Ni)
0.05 – 0.8%
0.2 – 0.7% (Claim 12)
0.1 – 0.4%
Falls within
Overlaps
Nitrogen (N)
0.002 – 0.008%
0.003 – 0.006% (Claim 13)
Does not expressly disclose
Phosphorous (P)
0.01% or less
<0.01
Overlaps
Sulfur (S)
0.003% or less
<0.007%
Overlaps
Iron (Fe)
Balance
Remainder
Meets
Zheng does not explicitly teach the presence of nitrogen but notes the inclusion of impurities [0007]. As taught by “Steel Number”, which describes EN 10225 S355G8 steel material, nitrogen is present as an impurity/minor element in an amount of up to 0.01 wt% max [page 1], which overlaps with the claimed range. As such, it would have been obvious to one of ordinary skill in the art before the effective filing date to have included nitrogen in the steel material of Zheng in an amount of up to 0.01 wt%, as taught by “Steel Number”, to achieve predictable results. An ordinarily skilled artisan would have had a reasonable expectation of success because nitrogen is included in this amount within the European Standard, as disclosed by Steel Number.
Zheng in view of Steel Number does not explicitly teach the microstructure of the steel plate.
Wang teaches a normalized steel plate for wind powder and ocean based structural components [0004, 0007]. Wang disclose the steel plate having a similar composition to Zheng and claimed invention [0008]. Wang states that the microstructure of the steel plate for this purpose should have a microstructure of ferrite between 70 – 90% and pearlite between 10 – 30% [0011], which fall within their respective claimed ranges, and that the ferrite should have a grain size of 8 – 36 µm [0011], which overlaps with the claimed range. Wherein Wang teaches that the normalization treatment results in pearlite bands breaking down [0025, 0038], meeting the broadest reasonable interpretation of spheroidized pearlite.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have controlled the microstructure of the steel plate of Zheng in view of Steel Number to be ferrite 70 – 90%, pearlite 10 – 30%, and a ferrite grain size of 8 – 36 µm [0011], as taught by Wang. Zhang, Steel Number, and Wang are in the same field of endeavor of steel for ocean-based purpose and disclose similar compositions. Moreover, Zheng and Wang are directed to hot-rolled and normalized steel and Wang explicitly states that the composition is beneficial for a steel plate in the same field of endeavor. Moreover, Wang discloses that the formed microstructure/steel plate has good low temperature impact toughness and strength [0025, 0026]. Therefore, an ordinarily skilled artisan would have a reasonable expectation of success in applying the teachings of Wang to the steel plate of Zheng in view of Steel Number and would have motivation to do so as well.
With regards to the overlapping ranges taught, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to have selected overlapping ranges as disclosed. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I). “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)”
Regarding claim 2, Zheng in view of Steel Number and Wang teaches the invention as applied above in claim 1. Zheng teaches that the steel plate achieves a yield strength of 355 – 410 MPa [0006] and an impact toughness at -60°C of 100 – 240 J [0006], which overlaps with the claimed range.
Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I).
Response to Arguments
Applicant's arguments filed 02/09/2026 have been fully considered but they are not persuasive.
Applicant argues that the steel of Wang does not disclose that the normalizing heat treatment spheroidizes the pearlite and as such, Zheng (CN102899569) in view of Steel Number (“S355G8”, NPL) and Wang (CN106222558) does not teach the claimed microstructure. This has been fully considered but is not persuasive because the instant invention describes the normalizing treatment as heating the steel to a temperature range of 850 – 960°C (which is the overlapping/similar to the temperature range of normalizing in Zheng [0010] and in Wang [0019, Table 2 – 3]) in order to form spherical pearlite by dissolving carbon/cementite. Wang states that the normalizing treatment diffuses carbon and breaks down the banded structure (i.e. bands of ferrite and pearlite) [0025, 0026]. Thus, given this disclosure and that both Zheng and Wang are subjected to a heat treatment in an overlapping/similar temperature range (a temperature in which the microstructure is broken down/carbon dissolved), the pearlite resulting from the heat treatment of Wang and/or Zeng can reasonably be said to have been subjected to a spheroidizing (and thus be spheroidized) via the normalizing heat treatment.
Applicant argues that Wang discloses a lower impact toughness at -40°C than the instant invention. This is not found persuasive of distinguishing the claims from the prior art because the claimed product does not require an impact toughness at -40°C and Wang is not relied upon for the disclosure of particular properties, wherein Zheng is directed to a steel plate with an overlapping composition, yield strength, and impact toughness at -60°C.
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
JP2016089188 – Thick steel plate with overlapping composition subjected to normalizing and having a ferrite-pearlite structure and overlapping yield strength
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUSTIN POLLOCK whose telephone number is (571)272-5602. The examiner can normally be reached M - F (8 - 5).
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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738