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 .
Claim Status
Applicants’ January 20, 2026 response to the October 20, 205 Non-Final Rejection is acknowledged. Claims 1, 4-15, 19 and 20 are pending, claim 1 is independent. Any objections or rejections present in the most recent office action and not repeated here, are hereby withdrawn.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, 4-15, 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Kawamura et al. (US 2019/0017156 A1), hereinafter Kawamura (previously of record).
Regarding claims 1 and 4, Kawamura teaches a steel sheet with improved corrosion resistance ([0067]) with a chemical composition shown below in Table 1. 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 including values that overlap the claimed 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 objective evidence of criticality to the claimed ranges has been presented.
Table 1
Instant claim 1
Kawamura [0017]-[0024]
C
0.04-0.10
0.07-0.30
Si
>0-0.10
0.10-2.5
Cu
0.20-0.35
Optionally 0.01-0.5
Ni
0.1-0.2
Optionally 0.01-0.5
Sb
0.05-0.15
Optionally 0.005-0.05
Sn
0.07-0.22
Optionally 0.001-0.1
Ti
0.05-0.15
Optionally 0.01-0.1
S
>0-0.01
≤ 0.0020
N
>0-0.005
0.0006-0.0055
Mo
0.05-0.15
Optionally 0.01-0.20
Fe & inevitable impurities
balance
balance
Ni/Cu (formula 1)
≥ 0.5
Calculates to 0 to 50
48x(Ti/48-S/32-N/14) (formula 2)
≥ 0.04
Calculates -0.012-0.098
10Mo+12Sn+22Sb+50Cu (formula 3)
≥ 16
Calculates to 0-29.3
Kawamura further teaches Ti carbides ([0063]; TiC precipitate), but does not specifically teach the TiC 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. Kawamura teaches processing ranges (Table 2 below) that overlap 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).
Table 2
Instant Specification Pg. 24 Lns. 21 to Pg. 26 Ln. 5
Kawamura [0099]-[0112]; claim 9; [0125]
Heating the slab to ≥1200⁰C
Residence time of ≥ 150 minutes
Slab heating 1220-1300⁰C
Preferably 1 hour or more
Hot Rolling to finish rolling temperature of 850-1000⁰C
Thickness 2.5-5.5 mm
Finish delivery of hot rolling temperature Ar3 point-1000⁰C
Thickness 2.6 mm (example [0125])
Winding at 450-750⁰C
Coiling 400-550⁰C
Pickling
Pickling
Cold rolling at 54-70% reduction
Cold Rolling Reduction ≥ 40%
Annealing 750-880⁰C
Annealing 800-880⁰C
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 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 Kawamura (MPEP 2112 IV).
As 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 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).
Regarding claims 5-15, 19 and 20, Kawamura teaches each limitation of claims 1 and 4, as described above. Kawamura does not specifically teach the limitations of claims 5-15, 19 and 20. However, as discussed in the claim interpretation section above, 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 Kawamura teaches the structure and composition of claims 1 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 5-15, 19 and 20.
Response to Arguments
Applicant's arguments filed January 20, 2026 have been fully considered but they are not persuasive regarding the 35 U.S.C. 103 rejections in view of Kawamura (Pgs. 6-7). The lack of an example of Kawamura to meet the equations and claimed ranges is unpersuasive. Per MPEP 2123 II, mere disclosed examples do not constitute a teaching away from a broader disclosure, because mere disclosure does not criticize, discredit or otherwise discourage the claimed composition range. Also, according to MPEP 2123 I, a reference maybe relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including non-preferred embodiments. In the ranges taught by the prior art, there are values that meet the claimed expressions (see above discussion of the rejection). The composition of the prior art overlaps applicants claimed proportions, which establishes 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 satisfying the presently claimed relational and compositional requirements (MPEP 2144.05). Further “wear resistance” and “composite corrosion resistance” are not quantitatively claimed in independent claims and no argument is made to unexpected results. Additionally, the argument to the prior art addressing a different problem is not persuasive as “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)
Therefore, arguments of applicant are not persuasive regarding Kawamura.
For these reasons, and for those reasons as advanced in the rejections above, the present claims are not found to distinguish over the prior art and this action is made FINAL.
.Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KATHERINE A CHRISTY/Primary Examiner, Art Unit 1784