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 .
Priority
Receipt is acknowledged of a certified copy of JP 2020-057273 filed March 27, 2020 as required by 37 CFR 1.55. Receipt is also acknowledged of WO 2021/193632, the WIPO publication of PCT/JP2021/011993 filed March 23, 2021.
Claim Status
This Office Action is in response to Applicant’s Remarks filed September 26, 2025.
Claims Filing Date
September 2, 2022
Under Examination
1-5
Response to Arguments
Kawata in view of Paik and Fujii and Kawata in view of Kondo and Fujii
Applicant’s arguments, see Remarks p. 8 paras. 2-3, filed September 26, 2025, with respect to Fujii have been fully considered and are persuasive. The rejections of Kawata in view of Paik and Fujii and of Kawata in view of Kondo and Fujii have been withdrawn.
The applicant persuasively argues Fujii and Kawata use different plating formation processes (Remarks p. 8 para. 2). Kawata galvanizes (Kawata [0027]-[0028]) and Fujii galvanneals (Fujii[0007]). During galvannealing an Al-Fe alloy layer formed between a base material and coating disappears (applicant’s specification [0062]) (Remarks p. 8 para. 3).
Kawata in view of Paik and Warnecke and Kawata in view of Kondo and Warnecke
Applicant's arguments filed September 26, 2025 with respect to Kawata in view of Paik and Warnecke and to Kawata in view of Kondo and Warnecke have been fully considered but they are not persuasive.
The applicant argues that when the C content differs a manufacturing method to achieve the same microstructure will differ, such that a standard deviation of grain size of 2.0 um or less cannot be achieved even if the manufacturing method to achieve the feature disclosed in Paik is applied to Kawata (Remarks p. 5 para. 4).
Paik discloses the claimed standard deviation of (ferrite) grain sizes of 2.0 um or less (uniform microstructure of the surface layer with standard deviation of 8 or less) ([0064], [0068], [0088]-[0089]) advantageously forms a uniform microstructure (Paik [0023]) that prevents poor formability and sharpness (Paik [0064], [0068]). Paik discloses the uniform microstructure of the surface layer is achieved by forming an oil film on the steel surface during hot rolling ([0088]). Absent evidence to the contrary, the standard deviation of ferrite is not dependent upon the C content.
Further, both Kawata and Paik disclose ferrite with an overlapping average grain size in the surface layer region (0.1 to 3 .0 um, Kawata [0089]-[0093]; 30 um or less, Paik [0064], [0068], [0088]-[089]), such that, contrary to applicant’s argument, the same ferrite microstructure with an overlapping average grain size is present in Kawata and Paik.
The applicant argues the specific manufacturing method of controlling water pressure for descaling in finish rolling to achieve a standard deviation of grain size in a surface layer of 8 or lower is not disclosed in Paik or Kawata (Remarks p. 5 paras. 4-5).
The pending claims are directed to a hot-dip zinc-plated steel sheet product. Determination of patentability is based on the product itself. If the product is obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. MPEP 2113(I). Paik discloses the uniform microstructure of the surface layer is achieved by forming an oil film on the steel surface during hot rolling (Paik [0088]), such that one of ordinary skill in the art would understand how to achieve a uniform microstructure of the surface layer in Kawata (Kawata [0089]-[0093]) with a standard deviation of 8 or less (Paik [0064], [0068], [0088]-[0089]).
The applicant argues impermissible hindsight regarding applying the grain size limitation of Paik to Kawata (Remarks p. 5 para. 5).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. MPEP 2145(X)(A).
The applicant argues when chemical composition differs then the phase transformation behavior differs, which affect grain size and grain size distribution, including standard deviation (Remarks p. 6 para. 1) as evidenced by Kawata, where Si affects iron-based carbides ([0102]), cooling after hot rolling to coiling or coiling affects refinement ([0160]), rolling reduction ratio during cold rolling affects recrystallization ([0166]), ratio of water vapor partial pressure to hydrogen partial pressure during annealing affects refinement of surface layer ([0178]), fine oxides of Si and/or Mn inhibit Fe recrystallization growth during annealing ([0179]), and water vapor partial pressure in a reduction zone influences grain sizes in the surface layer (Remarks p. 6 para. 2), such that the same grain size distribution (standard deviation) is unlikely to be obtained (Remarks p. 6 para. 3).
With respect to the argued grain size, both Kawata and Paik disclose ferrite with an overlapping average grain size in the surface layer region (0.1 to 3 .0 um, Kawata [0089]-[0093]; 30 um or less, Paik [0064], [0068], [0088]-[089]), such that, contrary to applicant’s argument, the same ferrite microstructure with an overlapping average grain size is present in both references.
The uniform microstructure of Kawata in view of Paik is achieved by forming an oil film on the surface during rolling (Paik [0088]). Evidence achieving a uniform microstructure also requires the argued chemical composition differences or the other argued process differences has not been presented.
Further, applicant’s arguments directed to Si affects, cooling after hot rolling to coiling or coiling, rolling reduction, and water vapor, etc. are not process parameters of Kawata that are changed or impacted by the combination of Kawata with Paik to render obvious a uniform microstructure (Paik [0064], [0068], [0088]-[0089]).
The applicant argues Kondo relates to a hot-rolled steel sheet such that the disclosure of Kondo would not be applied to the cold-rolled steel sheet of Kawata (Remarks p. 7 para. 2) because cold rolling deforms grains and introduces processing strain then recrystallization occurs during subsequent annealing, where the degree of recrystallization depends on the rolling reduction ratio (Kawata [0166]) (Remarks p. 7 para. 3).
Kondo discloses an average ferrite grain size of 10 um or less with a standard deviation of 3.0 or less ([0013]-[0018]) to obtain stable and good hole expandability (Kondo [0018]) with improved stretch flangeability (Kondo [0025]) by forming a uniform structure (Kondo [0030]). Kondo controls the standard deviation of ferrite by casting a slab using a process that reduces segregation (Kondo [0030]). Absent evidence to the contrary, one of ordinary skill in the art would understand how to apply the casting process of Kondo to the method of Kawata to achieve the uniform microstructure. In further support of the obviousness of the combination, the average ferrite grain size of Kawata of 0.1 to 3.0 um (Kawata [0089]-[0089]) is within the scope of that of Kondo of 10 um or less (Kondo [0013]-[0018]). Evidence regarding how the alleged differences of cold rolling of Kawata and Kondo render unobvious the combination regarding the uniform microstructure has not been presented.
The applicant argues the hot rolling conditions of Kawata differ from those of Kondo, such as finishing temperature, Kawata 850°C or higher, Kondo Ar3 point to +40°C, and cumulative reduction ratio, Kawata no limit, Kondo 40% or higher (Remarks p. 7 para. 4), where these differences influence recrystallization behavior and transformation behavior, which affect mechanical properties of the final product (Remarks p. 7 para. 5).
Kondo produces a uniform microstructure by casting a slab with a method that reduces segregation (Kondo [0030]). Absent evidence to the contrary, this feature of Kondo does not require the argued hot rolling conditions. Applicant’s arguments directed to hot rolling are not process parameters of Kawata that are changed or impacted by the combination of Kawata with Kondo to render obvious a uniform microstructure (Kondo [0013]-[0018]).
Further, with respect to the grain size, both Kawata and Kondo disclose ferrite with an overlapping average grain size in the surface layer region (0.1 to 3 .0 um, Kawata [0089]-[0093]; 10 um or less, Kondo [0013]-[0018]), such that the same ferrite microstructure with an overlapping average grain size is present in both references.
The applicant argues Kawata disclosed a structure in which 20% or more of the interface between the coating layer and the base material is covered with zeta phase and it is unclear how applying the manufacturing method of Warnecke is applied without changing the interface structure of Kawata (Remarks p. 8 para. 4), where Furdanowicz states that a high Al concentration in a Zn bath inhibits zeta phase and Kawata [0191] states suppressing zeta phase formation deteriorates plating adhesion, such that it is not obvious in combining Warnecke with Kawata that the interfacial structure of Kawata will be maintained (Remarks p. 8 para. 5).
In the pending rejection, Kawata in view of Warnecke discloses in a boundary layer, a maximum Al concentration of 0.30 mass% or more (Warnecke [0037], [0042], Figs. 1, 2) guarantees high corrosion protection (Warnecke [0011]).
The boundary layer of Warnecke forms as a result of hot dip galvanizing (Warnecke [0033]). Similarly, Kawata also discloses hot dip galvanizing (Kawata [0027]-[0028]). As presented in the following table, the hot dip galvanizing processes of Warnecke and Kawata are substantially similar (Warnecke [0010], [0013], Tables 1, 4; Kawata [0044], [0191]-[0195]).
Warnecke Hot Dip Galvanizing
Kawata Hot Dip Galvanizing
Melt Bath [0010]
to 0.4% Al
Remainer Zn
Plating Bath [0191]
0.050 to 0.180% Al
Mainly Zn
Bath Temperature [0010]
420 to 500°C
Plating Bath [0193]-[0194]
450 to 470°C
Temperature Difference Between Strip Upon Immersion and Melt Bath [0010], [0013]
-20°C to 100°C
Steel Sheet Temperature when the Steel Sheet Enters the Plating Bath [0195]
+/- 4°C
Coating Mass Tables 1, 4
14.6 to 83.8 g/m2
Plating Amount [0044]
10 to 100 g/m2
Further, Warnecke discloses the enrichment of the Al content in the border layer is secured by setting of the strip immersion and/or bath temperature (Warnecke [0013]), where the required temperature difference disclosed by Warnecke to achieve the Al concentration (Warnecke [0013]) is within the scope of the process of Kawata ([0195]). Therefore, contrary to applicant’s argument, the hot dip galvanizing processes of Warnecke and Kawata are substantially similar, such that the maximum Al concentration of the boundary layer as disclosed by Warnecke is obvious in the hot-dip zinc-plated steel sheet of Kawata.
The applicant argues in Warnecke the Al content of E1 and E2 is about 1.2% and 1.6%, respectively (Warnecke [0040], Figs. 1, 2) and Al content rises to 4.5% at the boundary to the steel substrate (Warnecke [0042]) (Remarks p. 9 para. 1), whereas in Kawata the Al content in the hot dip galvanized layer is 1.0% or less to prevent deterioration of plating adhesion (Kawata [0073]) (Remarks p. 9 para. 2).
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art. MPEP 2123(I).
As argued by applicant (Remarks p. 9 para. 2), Kawata discloses Al content in the hot-dip galvanized layer of more than 0% to 1.0% or less (Kawata [0072]-[0073]).Similarly, Warnecke discloses a border layer next to the steel substrate in which the content of Al is substantially higher in relation to the corresponding content of the intermediate layer ([0037]) with an “amount of Al enrichment at the immediate surface is maximum approximately 1 wt. %”. Therefore, absent evidence to the contrary, it is within the scope of Warnecke for the Al content in the boundary layer to be 1.0% or less, which satisfies both the claimed amount of Al in the boundary layer and the Al content of the hot-dip galvanized layer as disclosed by Kawata.
For the above cited reasons, the pending rejections of Kawata in view of Paik and Warnecke and Kawata in view of Kondo and Warnecke are maintained.
Claim Rejections - 35 USC § 103
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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Kawata (US 2017/0305114) in view of Paik (WO 2019/054769 machine translation) and Warnecke (US 2010/0024925).
Regarding claims 1-5, Kawata discloses a hot-dip zinc-plated steel sheet ([0006], [0028]) comprising:
a (base) steel sheet ([0030]);
a boundary (interface) layer that is provided on a surface of the steel sheet ([0030], [0041], [0076], Fig. 1); and
a hot-dip zinc-plated layer that is provided on a surface of the boundary layer ([0030], [0076], Fig. 1),
with an overlapping steel sheet composition ([0031]-[0040], [0045]-[0059], [0098]-[0138]),
wherein in a surface layer region (refined layer) of the steel sheet, an average grain size is 4.0 um or less (0.1 to 3.0 um) ([0041], [0089]-[0093]).
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).
Element
Claims 1-5
Kawata Disclosure
Kawata Citation
C
0.18 to 0.50
0.24 to 0.50
0.040 to 0.400
[0099]-[0100]
Si
0.10 to 1.50
0.05 to 2.50
[0101]-[0102]
Mn
0.5 to 2.5
0.50 to 3.50
[0103]-[0104]
Sol. Al.
0.001 to 0.100
0.001 to 1.500
[0109]-[0110]
Ti
0.010 to 0.100
0.001 to 0.150
[0119]-[0120]
S
0.0100 or less
0.0001 to 0.0100
[0107]-[0108]
P
0.100 or less
0.0001 to 0.1000
[0105]-[0106]
N
0.010 or less
0.0001 to 0.0100
[0111]-[0112]
Nb
0 to 0.05
0.02 to 0.05
0.001 to 0.100
[0121]
V
0 to 0.50
0.005 to 0.50
0.001 to 0.300
[0122]
Cr
0 to 0.50
0.10 to 0.50
0.01 to 2.00
[0123]-[0125]
Mo
0 to 0.50
0.005 to 0.50
0.01 to 2.00
[0129]-[0130]
B
0 to 0.010
0.0001 to 0.010
0.0001 to 0.0100
[0131]-[0132]
Ni
0 to 2.00
0.01 to 2.00
0.01 to 2.00
[0126]-[0127]
Total of REM, Ca, Co, Mg
0 to 0.0300
0.0003 to 0.0300
0.0001 to 0.0100
[0135]-[0138]
Fe
Remainder
Remainder
[0138]
Kawata discloses a refined layer (surface layer region) with an average grain size of ferrite of 0.1 to 3.0 um ([0089]-[0093]).
Kawata is silent to the surface layer region (refined layer) of the steel sheet having a standard deviation of grain sizes of 2.0 um or less.
Paik discloses a hot-dip zinc-plate steel sheet ([0080], [0096]) comprising a surface layer region of the steel sheet with an average grain size is 4.0 um or less (30 um or less) ([0064]) and a standard deviation of (ferrite) grain sizes of 2.0 um or less (uniform microstructure of the surface layer with standard deviation of 8 or less) ([0064], [0068], [0088]-[0089]).
It would have been obvious to one of ordinary skill in the art in the surface layer region (refined layer) of Kawata to control the standard deviation of the ferrite grain size to be 8 or less to uniformize the microstructure (Paik [0023]), preventing poor formability and sharpness due to inhomogeneity (Paik [0064], [0068]). 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).
Alternatively, or additionally, Kawata in view of Paik discloses in the surface layer region an average grain size of ferrite of 0.1 to 3.0 um (Kawata [0089]-[0093]) with a uniform size (Paik [0064], [0088]-[0089]) and standard deviation such as 8 or less (Paik [0068]). One of ordinary skill in the art would understand how to form a uniform microstructure with decreased standard deviation as disclosed by Paik while maintaining the average grain size of Kawata. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” MPEP 2144.05(II)(A).
Kawata is silent to in the boundary layer a maximum Al concentration is 0.30 mass % or more.
Warnecke discloses a hot-dip zinc-plated steel sheet ([0009]), wherein, in a boundary (border) layer, a maximum Al concentration is 0.30 mass% or more ([0037], [0042], Fig. 1 about 1.2 wt% Al, Fig. 2 about 1.6 wt%).
It would have been obvious to one of ordinary skill in the art for the Al concentration in the boundary layer of the hot-dip zinc-plated steel sheet to have a maximum of about 1.2 or 1.6 wt% to guarantee high corrosion protection (Warnecke [0011]). 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).
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Kawata (US 2017/0305114) in view of Kondo (JP 2005-097681 machine translation) and Warnecke (US 2010/0024925).
Regarding claims 1-5, Kawata discloses a hot-dip zinc-plated steel sheet ([0006], [0028]) comprising:
a (base) steel sheet ([0030]);
a boundary (interface) layer that is provided on a surface of the steel sheet ([0030], [0041], [0076], Fig. 1); and
a hot-dip zinc-plated layer that is provided on a surface of the boundary layer ([0030], [0076], Fig. 1),
with an overlapping steel sheet composition ([0031]-[0040], [0045]-[0059], [0098]-[0138]),
wherein in a surface layer region (refined layer) of the steel sheet, an average grain size is 4.0 um or less (0.1 to 3.0 um) ([0041], [0089]-[0093]).
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).
Element
Claims 1-5
Kawata Disclosure
Kawata Citation
C
0.18 to 0.50
0.24 to 0.50
0.040 to 0.400
[0099]-[0100]
Si
0.10 to 1.50
0.05 to 2.50
[0101]-[0102]
Mn
0.5 to 2.5
0.50 to 3.50
[0103]-[0104]
Sol. Al.
0.001 to 0.100
0.001 to 1.500
[0109]-[0110]
Ti
0.010 to 0.100
0.001 to 0.150
[0119]-[0120]
S
0.0100 or less
0.0001 to 0.0100
[0107]-[0108]
P
0.100 or less
0.0001 to 0.1000
[0105]-[0106]
N
0.010 or less
0.0001 to 0.0100
[0111]-[0112]
Nb
0 to 0.05
0.02 to 0.05
0.001 to 0.100
[0121]
V
0 to 0.50
0.005 to 0.50
0.001 to 0.300
[0122]
Cr
0 to 0.50
0.10 to 0.50
0.01 to 2.00
[0123]-[0125]
Mo
0 to 0.50
0.005 to 0.50
0.01 to 2.00
[0129]-[0130]
B
0 to 0.010
0.0001 to 0.010
0.0001 to 0.0100
[0131]-[0132]
Ni
0 to 2.00
0.01 to 2.00
0.01 to 2.00
[0126]-[0127]
Total of REM, Ca, Co, Mg
0 to 0.0300
0.0003 to 0.0300
0.0001 to 0.0100
[0135]-[0138]
Fe
Remainder
Remainder
[0138]
Kawata discloses a refined layer (surface layer region) with an average grain size of ferrite of 0.1 to 3.0 um ([0089]-[0093]).
Kawata is silent to the surface layer region (refined layer) of the steel sheet having a standard deviation of grain sizes of 2.0 um or less.
Kondo discloses a steel sheet ([0001]) comprising an average (ferrite) grain size of 10 um or less with a standard deviation of 3.0 um or less ([0013]-[0018]).
It would have been obvious to one of ordinary skill in the art in the surface layer region (refined layer) of Kawata to control the standard deviation of the ferrite grain size to be 3.0 um or less to obtain stable and good hole expandability (Kondo [0018]) with improved stretch flangeability (Kondo [0025]) by forming a uniform structure (Kondo [0030]). 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).
Kawata is silent to in the boundary layer a maximum Al concentration is 0.30 mass % or more.
Warnecke discloses a hot-dip zinc-plated steel sheet ([0009]), wherein, in a boundary (border) layer, a maximum Al concentration is 0.30 mass% or more ([0037], [0042], Fig. 1 about 1.2 wt% Al, Fig. 2 about 1.6 wt%).
It would have been obvious to one of ordinary skill in the art for the Al concentration in the boundary layer of the hot-dip zinc-plated steel sheet to have a maximum of about 1.2 or 1.6 wt% to guarantee high corrosion protection (Warnecke [0011]). 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).
Related Art
Ishizuka (US 2009/0162691)
Ishizuka discloses a hot-dip zinc-plated steel sheet ([0005], [0016]-[0017]), wherein, in a boundary (border) layer, a maximum Al concentration is 0.30 mass% or more ([0023], [0045]-[0048], Fig. 1 about 1.8 wt% Al) to improve appearance ([0047]) with a suitable degree of alloying and plating adhesion ([0054]).
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANI HILL whose telephone number is (571)272-2523. The examiner can normally be reached Monday-Friday 7am-12pm.
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/STEPHANI HILL/Examiner, Art Unit 1735
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735