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 .
Election/Restrictions & Status of Claims
Claims 1-2, 5-6, 14-16 and 18 are under examination of which claims 1-2, 5-6 and 16 were amended in Applicant’s reply. Claims 3-4 and 12-13 were canceled in Applicant’s reply.
Claims 7-11, 17 and 19-20 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 19 May 2025. Claims 21-22 are also withdrawn as the newly added claims 21-22 depend on withdrawn claim 19.
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.
Claims 1-2, 5-6, 14-16 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over US 2011/0168301 A1 of Song (US’301). 1-2, 5-6, 14-16 and 18
Regarding claims 1-2, 5-6, 14-16 and 18, US 2011/0168301 A1 of Song (US’301) teaches [0001] “a hot dip galvanized steel sheet having ultrahigh strength by using steel including a martensitic structure as a base material, and a manufacturing method thereof” and teaches the method comprises as follows and as depicted in Fig .2 of the prior art which points out heating to a temperature, holding at that temperature (S20), cooling to a temperature and holding (S30), followed by either a) cooling (S50) or b) heating to a temperature and holding (S40) followed by cooling (S50).
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The prior art further teaches: “[0052] In the stage S20, the steel sheet is heated to be maintained at a predetermined temperature to transform the steel sheet into austenite. When the steel sheet is heated at a regular heating speed, the temperature of the steel sheet is maintained at 750° C. to 950° C.” “[0053] In the stage S30, the heated steel sheet is dipped into the hot dip galvanizing bath to hot dip galvanize the steel sheet. Therefore, the melted zinc is coated on the surface of the steel sheet and a hot dip galvanized steel sheet is accordingly manufactured. Here, the hot dip galvanizing bath can be heated at a temperature of 430° C. to 490° C.” “[0054] In the stage S40, the hot dip galvanized steel sheet is annealed to alloy the hot dip galvanized layer. Therefore, since the hot dip galvanizing bath includes Fe, a Zn—Fe alloy is formed. This process corresponds to the case of manufacturing a galvanized annealed (GA) steel sheet. Here, the annealing temperature of the steel sheet can be 480° C. to 520° C.” “[0055] When a galvanized steel (GI) sheet is manufactured, the steel sheet is not annealed. Therefore, the hot dip galvanized steel sheet requiring no alloying process undergoes the stage S30 and then goes to the stage S50 without performing the stage S40. [0056] In the stage S50, the hot dip galvanized steel sheet is quenched to martensite transform the steel sheet. Here, the quenching speed of the hot dip galvanized steel sheet can be 10° C./s to 60° C./s.”“[0057] The content of the martensitic structure of the quenched steel sheet can be greater than 60 vol % and less than 100 vol %.” “The amount of bainite included in the quenched steel sheet is greater than 0 and less than 40 vol %.” “[0059] FIG. 2 shows a process for heating a steel sheet and a process for cooling the steel sheet according to the respective stages of S20, S30, S40, and S50 in FIG. 1. That is, the stage S20 includes heating the steel sheet to perform austenite transformation, and the stage S30 includes dipping the heated steel sheet into the hot dip galvanizing bath to hot dip galvanize it. The hot dip galvanizing temperature (TGI) of S30 is lower than the austenite transformation temperature of S20. [0060] In the stage S40, the hot dip galvanized steel sheet is annealed at the temperature (TGA). The annealing temperature (TGA) of S40 is somewhat greater than the hot dip galvanizing temperature (TGI) of S30. Bainite can be formed on a part of the steel sheet structure when the steel sheet undergoes the stages S30 and S40. [0061] In the stage S50, the hot dip galvanized steel sheet is quenched to reduce the temperature of the hot dip galvanized steel sheet to be less than a martensite transformation starting temperature (Ms) and a martensite finish temperature (Mf). Therefore, the steel sheet is martensite transformed. When a GI sheet is manufactured, the stage S50 is performed without performing the stage of S40 after performing the stage S30. When a GA sheet is manufactured, the stages S30, S40, and S50 are performed. Through the above-described stages, the hot dip galvanized steel sheet can be martensite transformed.” [0069] “The sample is dipped into a salt bath heated at 870° C. for one minute. The sample heated at 870° C. is dipped into a salt bath heated at 460° C. for 10 seconds. The dipped sample is drawn out, cooled with water, and then quenched.” [0070] “The sample heated at 870° C. is dipped into a salt bath at 460° C. for 10 seconds. The dipped sample is drawn out, dipped 20 seconds into a salt bath at 500° C., is drawn out a, and is cooled with water to reach room temperature. That is, the GA process is simulated in Experimental Example 1.” [0073] “The sample is heated to reach 870° C. at a heating rate of 10° C./s from room temperature by using a resistive heating method. The sample is maintained at 870° C. for one minute and is then cooled to 460° C. at a cooling rate of 30° C./s by using compressed air. The steel sheet is maintained at 460° C. for ten seconds, and is then cooled to reach room temperature at the rate of 30° C./s by using compressed air.” [0075] “The sample is maintained at 850° C. for 53 seconds, and compressed air is applied to cool the sample to reach 480° C. at a cooling rate of 14.2° C./s.” thereby reading on the method and all of the limitations of instant claim 1 of heating to a first temperature, holding at the first temperature, air quenching to a second temperature less than the first temperature and greater than the Ms temperature and cooling to room temperature.
US 2011/0168301 A1 of Song (US’301) further teaches: “[0052] In the stage S20, the steel sheet is heated to be maintained at a predetermined temperature to transform the steel sheet into austenite. When the steel sheet is heated at a regular heating speed, the temperature of the steel sheet is maintained at 750° C. to 950° C.” “[0053] In the stage S30, the heated steel sheet is dipped into the hot dip galvanizing bath to hot dip galvanize the steel sheet. Therefore, the melted zinc is coated on the surface of the steel sheet and a hot dip galvanized steel sheet is accordingly manufactured. Here, the hot dip galvanizing bath can be heated at a temperature of 430° C. to 490° C.” “[0054] In the stage S40, the hot dip galvanized steel sheet is annealed to alloy the hot dip galvanized layer. Therefore, since the hot dip galvanizing bath includes Fe, a Zn—Fe alloy is formed. This process corresponds to the case of manufacturing a galvanized annealed (GA) steel sheet. Here, the annealing temperature of the steel sheet can be 480° C. to 520° C.” “[0055] When a galvanized steel (GI) sheet is manufactured, the steel sheet is not annealed. Therefore, the hot dip galvanized steel sheet requiring no alloying process undergoes the stage S30 and then goes to the stage S50 without performing the stage S40. [0056] In the stage S50, the hot dip galvanized steel sheet is quenched to martensite transform the steel sheet. Here, the quenching speed of the hot dip galvanized steel sheet can be 10° C./s to 60° C./s.”“[0057] The content of the martensitic structure of the quenched steel sheet can be greater than 60 vol % and less than 100 vol %.” “The amount of bainite included in the quenched steel sheet is greater than 0 and less than 40 vol %.” “[0059] FIG. 2 shows a process for heating a steel sheet and a process for cooling the steel sheet according to the respective stages of S20, S30, S40, and S50 in FIG. 1. That is, the stage S20 includes heating the steel sheet to perform austenite transformation, and the stage S30 includes dipping the heated steel sheet into the hot dip galvanizing bath to hot dip galvanize it. The hot dip galvanizing temperature (TGI) of S30 is lower than the austenite transformation temperature of S20. [0060] In the stage S40, the hot dip galvanized steel sheet is annealed at the temperature (TGA). The annealing temperature (TGA) of S40 is somewhat greater than the hot dip galvanizing temperature (TGI) of S30. Bainite can be formed on a part of the steel sheet structure when the steel sheet undergoes the stages S30 and S40. [0061] In the stage S50, the hot dip galvanized steel sheet is quenched to reduce the temperature of the hot dip galvanized steel sheet to be less than a martensite transformation starting temperature (Ms) and a martensite finish temperature (Mf). Therefore, the steel sheet is martensite transformed. When a GI sheet is manufactured, the stage S50 is performed without performing the stage of S40 after performing the stage S30. When a GA sheet is manufactured, the stages S30, S40, and S50 are performed. Through the above-described stages, the hot dip galvanized steel sheet can be martensite transformed.” [0069] “The sample is dipped into a salt bath heated at 870° C. for one minute. The sample heated at 870° C. is dipped into a salt bath heated at 460° C. for 10 seconds. The dipped sample is drawn out, cooled with water, and then quenched.” [0070] “The sample heated at 870° C. is dipped into a salt bath at 460° C. for 10 seconds. The dipped sample is drawn out, dipped 20 seconds into a salt bath at 500° C., is drawn out a, and is cooled with water to reach room temperature. That is, the GA process is simulated in Experimental Example 1.” [0073] “The sample is heated to reach 870° C. at a heating rate of 10° C./s from room temperature by using a resistive heating method. The sample is maintained at 870° C. for one minute and is then cooled to 460° C. at a cooling rate of 30° C./s by using compressed air. The steel sheet is maintained at 460° C. for ten seconds, and is then cooled to reach room temperature at the rate of 30° C./s by using compressed air.” [0075] “The sample is maintained at 850° C. for 53 seconds, and compressed air is applied to cool the sample to reach 480° C. at a cooling rate of 14.2° C./s.” [0010]-[0011], [0013], [0038]-[0050] “a steel sheet including C of 0.05 wt % to 0.30 wt %, Mn of 0.5 wt % to 3.5 wt %, Si of 0.1 wt % to 0.8 wt %, Al of 0.01 wt % to 1.5 wt %, Cr of 0.01 wt % to 1.5 wt %, Mo of 0.01 wt % to 1.5 wt %, Ti of 0.001 wt % to 0.10 wt %, N of 5 ppm to 120 ppm, B of 3 ppm to 80 ppm” thereby reading on the method and its steps of heating to a first temperature, holding at the first temperature, air quenching to a second temperature less than the first temperature and greater than the Ms temperature and cooling to room temperature (claim 16), first temperature being 800-950°C, second temperature being 300-500°C, the cooling rate being 2-15°C/s (claim 2, 16), the holding time at second temperature (claim 12), the composition (claims 6, 14, 15, 18), microstructure limitations of phases of martensite and bainite (claims 6, 13). . 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Regarding the amended limitation of a second air quenching directly following the first air quenching of instant claim 1 and 16, it is noted that the prior art does not teach three distinct cooling steps in sequence as recited in instant claims. However, the prior art teaches first cooling and second cooling and the second cooling reads on the second and third cooling as recited in the instant claims as explained below. Specifically, the prior art teaches “[0053] In the stage S30, the heated steel sheet is dipped into the hot dip galvanizing bath to hot dip galvanize the steel sheet. Therefore, the melted zinc is coated on the surface of the steel sheet and a hot dip galvanized steel sheet is accordingly manufactured. Here, the hot dip galvanizing bath can be heated at a temperature of 430° C. to 490° C. By” “[0056] In the stage S50, the hot dip galvanized steel sheet is quenched to martensite transform the steel sheet. Here, the quenching speed of the hot dip galvanized steel sheet can be 10° C./s to 60° C./s.” This means, for example, going from 490°C to room temperature of 20°C at 10°C/s yields a time of 47s {(490-20)/10} meaning that temperatures below 490°C is encountered for a period of time during the cooling to room temperature thereby reading on the instant claimed second air quenching and the third temperatures of the instant claims. Moreover, making an integral or continuous step into separate steps and this would be obvious to one of ordinary skill in the art as this would provide a more controlled cooling. Moreover, the prior art teaches a range for the cooling rate therefore rendering obvious to one of ordinary skill in the art to select various cooling rates for the separate steps.
It is noted that the prior art is silent regarding the recited properties of “a yield strength greater than or equal to about 1150 MPa, an ultimate tensile strength greater than or equal to about 1600 MPa, and a total elongation greater than or equal to about 3%” of instant claims 6 and 13. 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). See MPEP § 2112.01 I. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Therefore, it is expected that the alloy of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (see compositional analysis above), b) the claimed and prior art products are identical or substantially identical in structure (see microstructure analysis above), and c) the claimed and prior art products are produced by identical or substantially identical processes (see above as to how the prior art reads on all of the recited limitations). Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
With respect to the recited limitation of “to enhance flatness” (claims 1 and 16), it is interpreted as a preamble statement reciting purpose or intended use and not a claim limitation. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (The court found that the preamble in one patent’s claim is limiting but is not in a related patent); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) ("where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation"); Kropa v. Robie, 187 F.2d at 152, 88 USPQ2d at 480-81 (preamble is not a limitation where claim is directed to a product and the preamble merely recites a property inherent in an old product defined by the remainder of the claim); STX LLC. v. Brine, 211 F.3d 588, 591, 54 USPQ2d 1347, 1350 (Fed. Cir. 2000) (holding that the preamble phrase "which provides improved playing and handling characteristics" in a claim drawn to a head for a lacrosse stick was not a claim limitation). See MPEP § 2111.02. As the prior art reads on all of the recited limitations of the body of the instant claims, the prior art meets the instant claim.
Response to Arguments
Applicant's arguments filed 12/08/2025 have been fully considered but they are not persuasive.
With respect to the arguments that the embodiments provided by the prior art do not teach the claimed matter, the arguments have been fully considered but they are not persuasive. Patents are relevant as prior art for all they contain. "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).See MPEP § 2123.
It is noted that the prior art does not teach three distinct cooling steps in sequence as recited in instant claims. However, the prior art teaches first cooling and second cooling and the second cooling reads on the second and third cooling as recited in the instant claims as explained below. Specifically, the prior art teaches “[0053] In the stage S30, the heated steel sheet is dipped into the hot dip galvanizing bath to hot dip galvanize the steel sheet. Therefore, the melted zinc is coated on the surface of the steel sheet and a hot dip galvanized steel sheet is accordingly manufactured. Here, the hot dip galvanizing bath can be heated at a temperature of 430° C. to 490° C. By” “[0056] In the stage S50, the hot dip galvanized steel sheet is quenched to martensite transform the steel sheet. Here, the quenching speed of the hot dip galvanized steel sheet can be 10° C./s to 60° C./s.” This means, for example, going from 490°C to room temperature of 20°C at 10°C/s yields a time of 47s {(490-20)/10} meaning that temperatures below 490°C is encountered for a period of time during the cooling to room temperature thereby reading on the instant claimed second air quenching and the third temperatures of the instant claims. Moreover, making an integral or continuous step into separate steps and this would be obvious to one of ordinary skill in the art as this would provide a more controlled cooling. Moreover, the prior art teaches a range for the cooling rate therefore rendering obvious to one of ordinary skill in the art to select various cooling rates for the separate steps.
As noted above, the prior art renders the instant claims obvious. If a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990). Rebuttal evidence and arguments can be presented in the specification, In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed. Cir. 1995), by counsel, In re Chu, 66 F.3d 292, 299, 36 USPQ2d 1089, 1094-95 (Fed. Cir. 1995), or by way of an affidavit or declaration under 37 CFR 1.132, e.g., Soni, 54 F.3d at 750, 34 USPQ2d at 1687; In re Piasecki, 745 F.2d 1468, 1474, 223 USPQ 785, 789-90 (Fed. Cir. 1984). However, arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). See MPEP § 2145. Attorney argument is not evidence unless it is an admission, in which case, an examiner may use the admission in making a rejection. See MPEP § 2129 and § 2144.03 for a discussion of admissions as prior art. The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) ("An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness."). See MPEP § 716.01(c) for examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration. See MPEP § 2145 I.
Conclusion
THIS ACTION IS MADE FINAL. 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 JOPHY S. KOSHY whose telephone number is (571)272-0030. The examiner can normally be reached M-F 8:30 AM- 5:00 PM.
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/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733