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 allowance. 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, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 04/24/2026 has been entered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 04/24/2026, is being considered by the examiner.
Election/Restrictions
As the product claim 20 is no longer considered to be allowable, accordingly, claims 32 – 40 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Groups II –V, there being no allowable generic or linking claim, withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03 and therefore, not eligible for rejoinder.
Newly claims 41-45, submitted on 12/16/2005 are directed to an invention that is dependent from the invention originally claimed product Group I, claims 20 to 29, in the reply filed on 05/16/2025, and therefore, based on Applicant's previous election of Group I, claims 20 to 23, 25-29 and new claim 41-45, drawn to a heat treated and cold rolled steel sheet are now subjected to examination.
Status of the previous Examiner’s Amendment
For the interest of the compact prosecution, the previous Examiner’s Amendment in the previous Notice of Allowance dated 02/10/2026, as authorized in a telephonic interview with Loselevich, Oleg (Reg. No 56963) on January 21, 2026, is being considered. Should the changes and/or additions be unacceptable to applicant, an amendment may be filed as provided by 37 CFR 1.312. The application was amended as follows:
Cancel claim 24, as claim 24 recites the same limitation of claim 20 from which it depends, and
In line 2 of claim 42, replace the unit “Mpa” with “MPa”.
Therefore, claims 20-23, 25-29 and 41-45 are now under examination on merit.
Claim Objections
Claim 20, and 27 are objected to because of the following informalities:
Claim 20, recites “Residual Austenite”, i.e. “R” in residual and “A” in austenite, both are capital letter, then claim 27, recites “residual austenite”, i.e. “r” in residual and “a” in austenite, both are small letter. Although, Applicant may use their own lexigraphy, Applicant is advised to use either “Residual Austenite”, or “residual austenite” in all the claims for keeping the claim language uniform.
It is further to be noted, in US language customary, use of “residual austenite” would be more acceptable as similar found in the cited prior art.
Appropriate correction is required.
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.
Claim 20-22, 25-29 and 41-44 are rejected under 35 U.S.C. 102 (a)(2) as being anticipated by Katsutoshi Takashima et.al. [US20220275471A1] (provided in the IDS) (Foreign Application Priority Date, Aug 6, 2019) (Takashima hereafter).
Regarding claim 20-22, 26, 28-29, 41 and 44, Takashima discloses a heat treated and cold rolled steel sheet (both heat treatment and cold rolling are performed, see Takashima’s Sample No 3, Steel sample C in TABLE 2) having a composition comprising by mass % (see Takashima’s Steel C in TABLE 1) in following table,
Element
Instant Claim 20 (weight %)
Takashima's Composition (mass %) (Steel C in TABLE 1)
Within/Overlaps with claimed range
Carbon (C)
0.09 – 0.15% (Claim 20)
0.12%
Within
Manganese (Mn)
1.8 – 2.5% (Claim 20)
2.43%
Within
Silicon (Si)
0.2 – 0.7% (Claim 20)
0.3 – 0.7% (Claim 21)
0.54%
Within
Aluminum (Al)
– 0.1% (Claim 20)
0.01 – 0.08% (Claim 22)
0.03%
Within
Phosphorous (P)
0 – 0.09% (Claim 20)
0.01%
Within
Sulfur (S)
0 – 0.09% (Claim 20)
0.002%
Within
Nitrogen (N)
0 – 0.09% (Claim 20)
0.002%
Within
Niobium (Nb)
0 – 0.1%
0
Within
Titanium (Ti)
0 – 0.1%
0
Within
Chromium (Cr)
0 – 1%
0
Within
Molybdenum (Mo)
0 – 1%
0.12%
Within
Vanadium (V)
0 – 0.1%
0.02%
Within
Calcium (Ca)
0 – 0.005%
0.0011%
Within
Boron (B)
0 – 0.01%
0
Within
Cerium (Ce)
0 – 0.1%
0
Within
Magnesium (Mg)
0 – 0.05%
0
Within
Zirconium (Zr)
0 – 0.05%
0
Within
Iron (Fe)
Remainder
Balance (Takashima’s [0124])
Within
It is to be noted, shaded area is optionally one or more of these elements and Takashima’s example steel composition has three Mo, V and Ca.
Takashima’s composition of the cold rolled steel including all the elements falls within the range as recited in the instant claims.
Takashima’s disclosed microstructure of the cold rolled have been listed along with the claimed microstructure in the following table,
Microstructure
Instant claim 20 (area %)
Takashima’s Microstructure (area %) (Sample No 3, Steel sample C in TABLE 3)
Within/Overlaps with claimed range
Tempered Martensite
65 to 85% (claim 20)
65 to 80% (claim 28)
75%
Within
Residual Austenite
0 to 5%
0%
Within
Cumulative Ferrite and Bainite
between 15 and 35% (claim 20)
between 22 and 35%, and Ferrite : at least 15% (claim 26)
Bainite : 0 to 10% (claim 29)
comprises Bainite (claim 44)
Ferrite : 16
Bainite : 9
Cumulative Ferrite and Bainite : 25
Within
It is to be noted, when claim recites the area fraction, Takashima’s TABLE 3 teaches volume fraction, however, Takashima teaches the area ratio of each phase is measured, and the area ratio is taken as the volume fraction, (see Takashima’s [0136]).
Takashima’s disclosed microstructure of the cold rolled steel comprising an area fraction including all phases falls within the range as recited in the instant claims.
Takashima’s disclosed properties of the cold rolled steel have been listed along with the claimed properties in the following table,
Properties
Instant claim 20
Takashima’s Properties (Sample No 3, Steel sample C in TABLE 3-continued)
Within/Overlaps with claimed range
Ultimate tensile strength (TS) in MPa
950 or more
1311
Within
Elongation (EL) in %
8% or more
14.2%
Within
Hole expansion ratio in %
> 55% (claim 20)
57% or more (claim 41)
68
Within
Takashima’s all the disclosed properties of the cold rolled steel falls within the range as recited in the instant claims.
Takashima’s composition of the cold rolled steel including all the elements, microstructure including all the phases and the mechanical properties all fall within the range as recited in the instant claims.
Therefore, it is anticipatory when the prior art is within a claimed range. [See MPEP § 2131.03].
Although, Takashima is silent about “measuring in accordance of ISO 6892 standard and as per ISO 16630:2009 standard”, it is anticipatory, that Takashima’s structure would have the similar ultimate tensile strength, total elongation are measuring in accordance of ISO 6892 standard and the similar hole expansion ratio is measured as per ISO 16630:2009 standard, because, “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, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "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." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In this case, claim is directed to a cold rolled steel sheet having a composition, microstructure and properties and the Prior art Takashima discloses an identical composition, microstructure and properties but silent about claimed measurement standard. As because the prior art product and as the claimed product are identical, therefore, Prior art Takashima’s disclosed cold rolled steel sheet must necessarily would exhibit the same properties, when measuring in accordance of ISO 6892 standard and as per ISO 16630:2009 standard.
Regarding claim 25, all the discussions above claim 20 are applicable for claim 25, wherein Takashima’s heat treated and cold rolled steel sheet, comprises silicon of 0.54 and aluminum of 0.03 (see Takashima's Steel C in TABLE 1). As such, the cumulative amount of silicon and aluminum based on the teachings of Takashima is 0.57%, which is within the range as recited in the instant claim.
Therefore, it is anticipatory when the prior art is within a claimed range. [See MPEP § 2131.03].
Regarding claim 27, all the discussions above claim 20 are applicable for claim 27, wherein Takashima’s heat treated and cold rolled steel sheet, microstructure comprises tempered martensite of 75 area%, ferrite 16 area% and bainite 9 area% (see Takashima's Sample No 3 (Steel C) in TABLE 3), and remainder is 0% residual austenite, which meets the claimed range.
As because Takashima meets the claimed range of residual austenite and residual austenite is not recited to be required in claims 20 or 27, therefore, Takashima meets the broadest reasonable interpretation of the claimed limitation of claim 27.
Regarding claim 42 and 43, all the discussions above claim 20 are applicable for claim 42 and 43, wherein Takashima’s composition of the cold rolled steel including all the elements, microstructure including all the phases and the mechanical properties including hole expansion ratio is 68% all fall within the range as recited in the instant claims (see Takashima's Sample No 3 (Steel C) in TABLE 1, TABLE 3, and TABLE 3-continued).
Although, Takashima is silent about “the yield strength value greater than 750 MPa”, it is anticipatory, that Takashima’s structure would have the similar yield strength value, because, “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, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "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." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In this case, claim is directed to a cold rolled steel sheet having a composition, microstructure and properties and the Prior art Takashima discloses an identical composition, microstructure and especially, identical mechanical properties, tensile strength, elongation and hole expansion ratio. As because the prior art product and as the claimed product are identical, therefore, Prior art Takashima’s disclosed cold rolled steel sheet must necessarily and inherently would exhibit the same yield strength value.
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 (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 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.
Claim 23 and 45 are rejected under 35 U.S.C. 103 as being unpatentable over Katsutoshi Takashima et.al. [US20220275471A1] (provided in the IDS) (Foreign Application Priority Date, Aug 6, 2019) (Takashima hereafter).
Regarding claim 23, Takashima discloses a heat treated and cold rolled steel sheet having a composition comprising manganese content from 1.2 mass % to 2.5 mass % (see Takashima’s [0025], [0075]), which is overlapping with a range as recited in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have selected and produced a heat treated and cold rolled steel sheet with a manganese content from the teachings of Takashima that falls within the instantly-claimed ranges, because “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)” [See MPEP § 2144.05.I].
Takashima further teaches Mn contributes to increasing the strength of a steel sheet by promoting solid solution strengthening and the formation of the second phase as well as stabilizes austenite during annealing, when Mn contains 1.2% or more. On the other hand, when Mn excess band-shaped micro segregation deteriorates elongation, hole expansion formability and delay fracture resistance. Therefore, the Mn content is set to 2.5% or less. (see Takashima’s [0076]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have selected a manganese content from the teachings of Takashima to produce a heat treated and cold rolled steel sheet with increasing the strength of a steel sheet by promoting solid solution strengthening without deterioration of elongation, hole expansion formability and delay fracture resistance.
Regarding claim 45, Takashima discloses a heat treated and cold rolled steel sheet having a composition comprising Si content from 0.5 mass % to 1.5 mass % (see Takashima’s [0024] and [0073]).
Takashima’s silicon content differs by only 1%, with claimed content of 0.495%, which would be considered as overlapping with a range as recited in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have selected and produced a heat treated and cold rolled steel sheet with a silicon content from the teachings of Takashima that falls within the instantly-claimed ranges, because “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.)”; In this case, Takashima teaches Si content from 0.5 mass % while claim recites 0.2 to 0.495%, which is similar as In re Wertheim. Also “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) [See MPEP § 2144.05.I].
Takashima further teaches Si strengthens ferrite by solid solution that contributes increasing the strength of a steel sheet and a content of 0.5%, is required to secure strength as well as to have appropriate hardness difference between ferrite and martensite and the hole expansion ratio (see Takashima’s [0074]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have selected a silicon content from the teachings of Takashima to produce a heat treated and cold rolled steel sheet with increasing strength and appropriate hardness difference between ferrite and martensite and the hole expansion ratio of a steel sheet.
Response to Arguments
Applicant’s arguments with respect to claims submitted on 12/16/2025, before the notice of allowances, have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NAZMUN NAHAR SHAMS whose telephone number is (571)272-5421. The examiner can normally be reached M-F 11:00 AM-7:00PM (EST).
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/NAZMUN NAHAR SHAMS/Examiner, Art Unit 1738
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