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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 24, 2026 has been entered.
Claims 1, 3, 4 and 6-14 are pending, claim 1 is independent. Any rejections and/or objections, made in the previous Office Action, and not repeated below, are hereby withdrawn.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 3, 4 and 6-14 are rejected under 35 U.S.C. 103 as being unpatentable over Usami et al. (US 2005/0013722 A1), hereinafter Usami, in view of Kawamura et al. (US 2019/0017156 A1), hereinafter Kawamura (both of record in the application).
Regarding claims 1, 3 and 4, Usami teaches Usami teaches a steel excellent in hydrochloric acid corrosion resistance and sulfuric acid corrosion resistance that contains the elements shown below in Table 1 ([0052]) that forms a steel sheet ([0262]). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and Formulas and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no persuasive objective evidence of criticality to the claimed ranges has been presented.
Table 1
Instant claim 1
Usami [0071]-[0074]; [0082]; [0052]-[0067]
C
0.04-0.10
0.001-0.2
Si
>0-0.10
0.01-2.5
Cu
0.20-0.35
0.1-1
Ni
0.1-0.2
Optional 0.10-1
Sb
0.05-0.15
0.01-0.2
Sn
0.07-0.22
Optional 0.01-0.3
Ti
0.05-0.15
0.005-0.1 (or Nb, Ta, V, W)
S
>0-0.01
≤ 0.05
N
>0-0.005
0.001-0.007
Fe & inevitable impurities
balance
balance
Ni/Cu (formula 1)
≥ 0.5
Calculates to 0 to 10
48x(Ti/48-S/32-N/14) (formula 2)
≥ 0.04
Calculates to -0.099 to 0.097
12Sn+22Sb+50Cu (formula 3)
≥ 16
Calculates to 5.23 to 58
Usami does not specifically teach the steel sheet includes a TiC precipitate and the TI precipitate and an aggregate formed of it are included at 1016 or more per 1 cm3, nor the precipitate has particle diameter of 1-10 nm.
One of ordinary skill in the art, before the effective filing date of the invention, would have expected substantially identical materials (compositional as discussed above) treated in a substantially identical manner as applicants to have substantially identical properties (including the claimed precipitate properties). Applicant teaches the process shown below in Table 2 produces their claimed product. Usami teaches processing ranges (Table 2 below) that overlap (excepting thickness and residence time) those taught by applicant; where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP 2144.05 I). Specifically, regarding the thickness after hot-rolling, the courts have held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art, but are merely close and the proportions are so close that prima facie one skilled in the art would have expected them to have the same properties (MPEP 2144.05). As of the writing of this Office Action, no patentable distinction between the upper limit of applicant at 5.5 mm (which rounds to 6 mm) and the example of Usami at 6 mm has been presented.
Table 2
Instant Specification Pg. 23 Lns 12 to Pg. 24 Ln. 24
Usami ([0260]-[0265])
Heating the slab to ≥1200⁰C
Residence time of ≥ 150 minutes
Reheating the steel to 1000-1300⁰V
Hot Rolling to finish rolling temperature 850-1000⁰C
Thickness 2.5-5.5 mm
Hot rolling finish delivery preferably 800-1000⁰C
Thickness 6 mm (example [0265])
Winding at 450-750⁰C
Coiled 600-750⁰C
Pickling
Pickling (Example [0265])
Cold rolling at 54-70% reduction
Cold Rolling Reduction 30-90%
Annealing 750-880⁰C
Annealing 700-900⁰C
Regarding the residence time of applicant, Kawamura is in a similar field of invention of a steel sheet with improved corrosion resistance ([0067]) and Ti carbides ([0063]; TiC precipitate). Kawamura teaches the slab heating time is preferably 1 hour or more ([0100]), where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP 2144.05 I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Usami to incorporate the slab heating time of Kawamura, the motivation for doing so would have to prevent a deterioration in the workability of the steel sheet ([0100]). This workability is desired in Usami ([0309]) for use in smoke exhausting equipment ([0002]).
Given substantially identical materials and processing parameters, (as discussed above), one of ordinary skill in the art before the effective filing date of the invention would have expected the product of Usami in view of Kawamura to have substantially identical properties to that of applicant; including the precipitate properties, meeting applicant’s claimed requirements.
The examiner has provided a basis in technical reasoning that the processing and compositions are substantially identical in support of the determination that the inherent characteristic the properties of the precipitates necessarily flows from the teachings of Usami in view of Kawamura (MPEP 2112 IV).
As Usami in view of Kawamura teaches a substantially identical steel sheet, produced by a substantially identical process as that which applicant claims and discloses in their specification as producing claimed precipitate properties, one of ordinary skill in the art, before the effective filing date of the invention, would expect the steel sheet of Usami in view of Kawamura to possess the claimed properties, absent an objective showing (MPEP 2112). The PTO can require an applicant to prove that the prior art products do not necessarily possess the characteristics of the claimed product, whether the rejection is based on inherency under 35 U.S.C. 102 or prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same (MPEP 2112 V).
Further, Usami does not specifically teach wherein when the steel is immersed in a mixed solution of 28.5 wt% of a sulfuric acid solution and 0.5 wt% of a hydrochloric acid solution at 40-80⁰C, a concentrated layer is produced on a surface of the steel sheet. However, as discussed in the claim interpretation section (June 13, 2025 Non-Final Rejection), for claim 5 (from which this limitation was added to claim 1) this is a conditional/contingent limitation. This means it possesses language that suggests or makes a feature or step optional but does not require that feature or step (“when the steel sheet is…”), which does not limit the scope of a claim under the broadest reasonable claim interpretation (MPEP 2143.03). Additionally, the broadest reasonable interpretation of a product claim having structure that performs a function, which only needs to occur if a condition precedent is met, requires structure for performing the function should the condition occur. (MPEP 2111.04 II).
As Usami in view of Kawamura teaches the structure and composition of claims 1, 3 and 4 (as discussed above), it is considered to have the structure that is capable of performing the claimed functions should the condition claimed occur and meet the limitation conditional/contingent limitation of claim 1.
Regarding claims 6-9 and 11-14, Usami in view of Kawamura teaches each limitation of claims 1, 3 and 4, as described above. Usami does not specifically teach the limitations of claims 6-9 and 11-14. However, as discussed in the claim interpretation section (June 13, 2025 Non-Final Rejection), these limitations are all conditional/contingent limitations. This means they possess language that suggests or makes a feature or step optional but does not require that feature or step (“when the steel sheet is…” or “after subjecting the steel sheet to”), which does not limit the scope of a claim under the broadest reasonable claim interpretation (MPEP 2143.03). Additionally, the broadest reasonable interpretation of a product claim having structure that performs a function, which only needs to occur if a condition precedent is met, requires structure for performing the function should the condition occur. (MPEP 2111.04 II).
As Usami in view of Kawamura teaches the structure and composition of claims 1, 3 and 4 (as discussed above), it is considered to have the structure that is capable of performing the claimed functions should the conditions claimed occur and meet the limitations of claims 6-8 and 11-14.
Regarding claim 10, Usami in view of Kawamura teaches each teaches each limitation of claim 1, as described above. Usami does not specifically teach the limitations of claim 10. However, as discussed in the claim interpretation section above, the limitation of claim 10 is a contingent limitation. This means it possesses language that suggests or makes a feature or step optional but does not require that feature or step ( “after subjecting the steel sheet to”), which does not limit the scope of a claim under the broadest reasonable claim interpretation (MPEP 2143.03). Additionally, the broadest reasonable interpretation of a product claim having structure that performs a function, which only needs to occur if a condition precedent is met, requires structure for performing the function should the condition occur. (MPEP 2111.04 II).
As Usami in view of Kawamura teaches the structure and composition of claims 1, from which claim 10 depends (as discussed above), it is considered to have the structure that is capable of performing the claimed functions should the condition claimed occur and meet the limitations of claim 10.
Response to Arguments
Applicant's arguments filed June 24, 2026 have been fully considered but they are not persuasive regarding the 35 U.S.C. 103 rejections in view of Usami in view of Kawamura.
Applicant argues that as Usami and Kawamura do not teach solving the same problems or use the same design rules as applicant, and does not have the same motivation, they cannot teach the claimed relationships or properties. This is not persuasive as the prior art overlaps the claimed relationships (see arguments above) and “the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant” (MPEP 2144 IV). Additionally, the argument to contrary concepts is not persuasive as a “ reference may be directed to an entirely different problem than the one addressed by the inventor, or may be from an entirely different field of endeavor than that of the claimed invention, yet the reference is still anticipatory if it explicitly or inherently discloses every limitation recited in the claims” (MPEP 2131.05).
Applicant argues that Kawamura does not provide a reasoned motivation to combine, but does not argue that the motivation to combine provided by the examiner in the above rejections is improper, insufficient or inoperable. General arguments to differences in their focus and problems solved are not persuasive when they are in related fields of endeavor to that of applicant and a reasonable motivation to combine has been provided.
Similarly, arguments to lack of reasonable expectation of success are not persuasive, as the motivation to combine remains unaddressed. Applicants’ general assertions to Tables 1 and 2 and Fig. 1 of their disclosure to the resulting corrosion resistance, tensile strength and concentrated layer are not persuasive for the reasons noted in the Response to Arguments of the Non-Final Rejection of 12/09/2026 in the paragraph that begins on Pg. 8 and continues to Pg. 9). Applicant fails to provide sufficient evidence of unexpected results commensurate in scope with the claims (MPPE 716.02(d)).
Therefore, for the reasons above, the arguments of applicant are not persuasive regarding Usami in view of Kawamura.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE CHRISTY whose telephone number is (303)297-4363. The examiner can normally be reached Monday-Thursday, 7am-4pm MT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERINE A CHRISTY/Primary Examiner, Art Unit 1784
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