DETAILED ACTION
Claims 1-2 and 4-10 are pending, and claims 1-2 and 4-6 are currently under review.
Claim 3 is cancelled.
Claims 7-10 are withdrawn.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/13/2025 has been entered.
Response to Amendment
The amendment filed 10/13/2025 has been entered. Claims 1-2 and 4-10 remain(s) pending in the application. Applicant’s amendments to the Claims have overcome each and every objection previously set forth in the Final Office Action mailed 6/13/2025.
Claim Interpretation
The examiner interprets the term “excellent low temperature impact toughness” in claim 1 to refer to the claimed impact absorption energy as further recited in claim 1.
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(s) 1-2 and 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (CN104451403, machine translation referred to herein) in view of Mar (2017, Chemical composition of steel); and alternatively over the aforementioned prior art and further in view of Beguinot et al. (US 5,714,116) and Kawano et al. (US 2015/0344996).
Regarding claim 1, Li et al. discloses a steel [0002]; wherein said steel has a composition as seen in table 1 below [0011]. The examiner notes that the overlap between the composition of Li et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I).
Li et al. does not expressly teach an inclusion of Ca as claimed. Mar discloses that it is known to include Ca in an amount of about 0.003 weight percent to steels to enhance formability [p.3]. Therefore, it would have been obvious to one of ordinary skill to modify the steel of Li et al. by including Ca for the aforementioned benefit as taught by Mar. The examiner notes that the overlap between the Ca amount of Mar and that as claimed is prima facie obvious. See MPEP 2144.05(I).
Li et al. further achieving a steel impact energy of greater than 47 J at -40 degrees C and a duplex microstructure of martensite and bainite, along with residual retained austenite [0011, 0032]; however, Li et al. does not expressly teach an amount of austenite or a lath size as claimed. However, the examiner submits that overlapping ratios of austenite and lath sizes would have naturally flowed from the disclosure of Li et al. Specifically, the instant specification discloses obtaining the claimed invention by following the manufacturing steps as further shown in table 1 below [0124-0150 spec.]. Li et al. discloses an overlapping manufacturing method as also shown in table 1 [0046-0048]. Since Li et al. discloses an overlapping steel composition and overlapping method of manufacture, overlapping amounts of retained austenite would have naturally flowed from the disclosure of Li et al., wherein said overlap is prima facie obvious. See MPEP 2144.05(I). The examiner’s position is further bolstered by the overlapping properties of Li et al. as shown further below, which are directly affected by the claimed microstructure.
Alternatively, Li et al. does not expressly teach an amount of retained austenite as claimed. Beguinot et al. discloses that it is known to control steel inclusions in order to obtain steel having good hardness and wear resistance having a martensite-bainite structure with 5 to 15 weight percent austenite remainder to achieve desirable hardness [col.3 ln.21-29, 55-67]. Therefore, it would have been obvious to one of ordinary skill to modify the steel of Li et al. by specifying an amount of austenite for the aforementioned benefit as taught by Beguinot et al. The examiner notes that the overlap between the austenite amount of Beguinot et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I).
Alternatively, Li et al. does not expressly teach a lath size as claimed. Kawano et al. discloses that it is known to control lath size of martensitic-bainitic steels during manufacturing (ie. during hot rolling and cooling) to be 1 micrometer or less such that desirable strength properties can be achieved [0056, 0108]. Therefore, it would have been obvious to one of ordinary skill to modify the steel of the aforementioned prior art by specifying a lath size for the benefit disclosed by Kawano et al. The examiner notes that the overlap between the lath size of Kawno et al. and the claimed range is prima facie obvious. See MPEP 2144.05(I).
Table 1.
Element (wt.%)
Claim 1
Li et al.
C
0.25 – 0.5
0.2 – 0.28
Si
1 – 1.6
0.9 – 1.4
Mn
0.6 – 1.6
1.3 – 1.6
P
0 – 0.05
0 – 0.013
S
0 – 0.02
0 – 0.012
Al
0 – 0.07
0.02 – 0.05
Cr
0.5 – 1.5
0.5 – 0.8
Ca
0.0005 – 0.004
0.003 (Mar)
N
0 – 0.006
0.005 – 0.008
Fe & Impurities
Balance
Balance
Manufacturing conditions
Instant specification
Li et al.
Slab reheating at 1050 to 1250 degrees C
Slab heating at 1180 to 1230 degrees C
Hot rolling with rough rolling at 950 to 1150 degrees C and finish rolling at 850 to 950 degrees C
Hot rolling with final rolling at 790 to 850 degrees C (one of ordinary skill would understand that rough rolling naturally occurs before final rolling and at a higher temperature, ie. rough rolling at greater than 850 degrees C)
Water quenching at 25 degrees C per second or faster to 200 to 400 degrees C, followed by air cooling to 150 degrees C or lower
Cooling at up to 25 degrees C per second to less 300 degrees C
Regarding claim 2, the aforementioned prior art discloses the steel of claim 1 (see previous). Li et al. further teaches an inclusion of 0.2 to 0.5 weight percent Mo, which overlaps with the claimed Mo range [0011]. See MPEP 2144.05(I).
Regarding claim 4, the aforementioned prior art discloses the steel of claim 1 (see previous). The examiner notes that the above austenite ranges of Beguinot et al. further overlap with the claimed ranges. See MPEP 2144.05(I). Alternatively, as stated above, overlapping austenite ranges would have naturally flowed from the disclosure of Li et al. which teaches an overlapping steel composition and overlapping method of manufacture.
Regarding claim 5, the aforementioned prior art discloses the steel of claim 1 (see previous). Li et al. further teaches achieving a hardness of greater than 450 HB, which overlaps with the claimed ranges [0011]. See MPEP 2144.05(I).
Regarding claim 6, the aforementioned prior art discloses the steel of claim 1 (see previous). Li et al. further teaches a thickness of up to 15 to 40 mm, which falls within the claimed range [0011].
Claim(s) 1-2 and 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hara et al. (JP2016125065, machine translation referred to herein) alone or alternatively further in view of Kawano et al. (US 2015/0344996).
Regarding claim 1, Hara et al. discloses a steel having a composition as shown in table 2 [0017]. Hara et al. further teaches a microstructure of martensite and bainite (ie. complex structure), retained austenite in an amount of up to 5 percent, as well as a charpy impact toughness of at least 27 J at -40 degrees C [0045-0047, 0069]. The examiner notes that the aforementioned composition, microstructure, and properties of Hara et al. overlaps with those as claimed, which is prima facie obvious. See MPEP 2144.05(I).
Hara et al. does not expressly teach a lath size as claimed. However, the examiner submits that overlapping lath sizes would have naturally flowed from the disclosure of Hara et al. which is prima facie obvious. See MPEP 2112 & MPEP 2144.05(I). Specifically, the instant specification discloses obtaining the claimed invention by following the manufacturing steps as further shown in table 2 below [0124-0150 spec.]. Hara et al. discloses an overlapping manufacturing method as also shown in table 2 [0057-0062]. Since Hara et al. discloses an overlapping steel composition and overlapping method of manufacture, overlapping ratios of lath sizes would have naturally flowed from the disclosure of Hara et al., wherein said overlap is prima facie obvious. See MPEP 2144.05(I). The examiner’s position is further bolstered by the overlapping microstructure and properties of Hara et al. of charpy impact energy and hardness as shown further below, which one of ordinary skill would recognize to be directly affected by the claimed microstructure.
Alternatively, Hara et al. does not expressly teach a lath size as claimed. Kawano et al. discloses that it is known to control lath size of martensitic-bainitic steels during manufacturing (ie. during hot rolling and cooling) to be 1 micrometer or less such that desirable strength properties can be achieved [0056, 0108]. Therefore, it would have been obvious to one of ordinary skill to modify the steel of the aforementioned prior art by specifying a lath size for the benefit disclosed by Kawano et al. The examiner notes that the overlap between the lath size of Kawno et al. and the claimed range is prima facie obvious. See MPEP 2144.05(I).
Table 2.
Element (wt.%)
Claim 1
Hara et al.
C
0.25 – 0.5
0.15 – 0.25
Si
1 – 1.6
0.5 – 1.2
Mn
0.6 – 1.6
0.8 – 1.5
P
0 – 0.05
0 – 0.015
S
0 – 0.02
0 – 0.004
Al
0 – 0.07
0.01 – 0.1
Cr
0.5 – 1.5
0.2 – 1.2
Ca
0.0005 – 0.004
0.0005 – 0.008
N
0 – 0.006
0 – 0.005
Fe & Impurities
Balance
Balance
Manufacturing conditions
Instant specification
Li et al.
Slab reheating at 1050 to 1250 degrees C
Slab reheating at 900 to 1200 degrees C
Hot rolling with rough rolling at 950 to 1150 degrees C and finish rolling at 850 to 950 degrees C
Hot rolling at 1000 degrees C with final rolling at up to 850 degrees C
Water quenching at 25 degrees C per second or faster to 200 to 400 degrees C, followed by air cooling to 150 degrees C or lower
Cooling at 5 to 60 degrees C per second down to 200 degrees C or less
Regarding claim 2, the aforementioned prior art discloses the steel of claim 1 (see previous). Hara et al. further teaches an inclusion of 0.005 to 0.05 weight percent Ti among others, which overlaps with the claimed range [0017]. See MPEP 2144.05(I).
Regarding claim 4, the aforementioned prior art discloses the steel of claim 1 (see previous). Hara et al. further teaches martensite in an amount of at least 70 percent and bainite in an amount of up to 8 percent, which overlaps with the claimed range [0045-0047]. See MPEP 2144.05(I).
Regarding claim 5, the aforementioned prior art discloses the steel of claim 1 (see previous). Hara et al. further teaches a surface hardness range of 400 to 500 HB, which overlaps with the claimed range [0017]. See MPEP 2144.05(I).
Regarding claim 6, the aforementioned prior art discloses the steel of claim 1 (see previous). Hara et al. further discloses embodiments achieving thicknesses of 12 to 40 mm [table3]. Although said embodiment compositions are not particularly relied upon in the current rejections, the examiner submits that one of ordinary skill would recognize the embodiments of Hara et al. to suggest a desired thickness range of 12 to 40 mm as encompassed by the disclosure of Hara et al, which falls within the claimed range.
Response to Arguments
The previous rejections over Beguinot et al. have been withdrawn in view of applicant’s amendments.
Applicant's arguments filed 10/13/2025 regarding the rejections over Li et al. have been fully considered but they are not persuasive.
Applicant argues that Li et al. does not teach the claimed microstructure and further only teaches cooling at 18 to 25 degrees C per second which does not meet the processing method used to achieve the examples of the instant specification. The examiner cannot concur. As stated in the previous office actions, Li et al. teaches cooling at up to 25 degrees C per second, which overlaps with the cooling of the instant specification as disclosed in [0124-0150 instant spec.]. The examiner notes that these cooling speeds overlap and therefore overlapping features would have naturally flowed absent evidence to the contrary which has not been provided. See MPEP 2144.05(I) & MPEP 2112. If applicant is of the position that different structures would be present due to the differences in cooling rates, the examiner cannot concur with applicant’s mere conclusory remarks absent concrete evidence to the contrary which applicant has not indicated.
The examiner further notes that alternative rejections over Li et al. in view of other prior art references teaching the claimed microstructure have been provided and not addressed by applicant. Accordingly, these rejections still stand.
Applicant’s arguments are further moot in view of the new grounds of rejection above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS A WANG whose telephone number is (408)918-7576. The examiner can normally be reached usually M-Th: 7-5.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734