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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/05/2026 has been entered.
Response to Amendment
The Amendment filed 06/05/2026 has been entered. The Examiner notes that claims 22-23 and 25 are incorrectly labeled “(Previously Presented)” since the claims were withdrawn in the Final Rejection mailed 03/06/2026 and are therefore not “(Previously Presented)”. See Claim Objections.
As a courtesy, the Examiner has examined the improperly marked claim set, rather than returning it to Applicant for correction.
Claims 2-5, 8, 10-11, 13-15, 19-20, and 22-26 remain pending in the application. Claims 1, 6-7, 9, 12, 16-18, and 21 have been canceled. New claim 26 has been added. New claim 26 is drawn to the method of Group II as previously set forth in the restriction requirement mailed on 05/22/2026. New claim 26 is therefore drawn to a non-elected invention and is withdrawn herein. Claims 10-11, 13-15, 19-20, 22-23, and 25-26 have been withdrawn due to a restriction requirement. Claims 2-5, 8, and 24 are presented for examination on the merits. Applicant's amendments to the claims have overcome the 112(a) and 112(b) rejections previously set forth in the Final Rejection mailed 03/06/2026.
Information Disclosure Statement
One (1) information disclosure statement (IDS) was submitted on 06/04/2026. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS is being considered by the examiner.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
Amended claim 2 now contains the limitation “wherein the carbide and carbonitride particles include MoC and VC and the carbonitride particles include Nb(C, N)”. This amendment overcomes prior 112(b) rejection previously set forth in the Final Rejection mailed 03/06/2026. However, the instant specification recites “The carbide particles include MoC, VC, Nb (C, N), and the carbide particles are all distributed in the matrix structure in a coherent form” (page 6, lines 21-22, emphasis added), which does not include the clarification that the particles include carbides and carbonitrides and that Nb(C,N) is a carbonitride, as amended in claim 2. Applicant is encouraged to amend the specification to match the “carbide” and “carbonitride” language of amended claim 2 to provide proper antecedent basis for the claimed subject matter. This amendment would not constitute new matter since one of ordinary skill in the art understands MoC and VC are carbides and Nb (C, N) is a carbonitride and the amendment is merely clarifying the variety of terms used for the same claimed particles.
Claim Objections
Claims 22-23 and 25 are objected to because of the following informalities: claims 22-23 and 25 are labelled “(Previously Presented)” and should be labelled “(Withdrawn)” instead since the claims are drawn to a non-elected invention and were withdrawn in the Final Rejection mailed 03/06/2026. Applicant is reminded of 37 C.F.R. 1.121 and MPEP § 714 II C which states that: (A) Status Identifiers: The current status of all of the claims in the application, including any previously canceled or withdrawn claims, must be given. Status is indicated in a parenthetical expression following the claim number by one of the following status identifiers: (original), (currently amended), (previously presented), (canceled), (withdrawn), (new), or (not entered). Appropriate correction is required.
Claim Interpretation
Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113. In this instance, the claimed “electro-galvanized coating” of claim 2 is interpreted as a product-by-process limitation and any galvanized coating will be interpreted as reading on the claimed “electro-galvanized coating” regardless of whether the galvanized coating was manufactured by electro-galvanizing, hot-dip galvanizing, mechanical plating, or a different coating method.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 2-5, 8, and 24 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 2 recites the limitation "in the matrix structure" in line 11. There is insufficient antecedent basis for this limitation in the claim since the amended claim introduces a “structure” and not a “matrix structure”.
Claims 3-5, 8, and 24 do not resolve the aforementioned issues, and are thereby also indefinite.
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.
Claims 2-5, 8, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2016188395A of Okamoto in view of “Kinetics of carbide formation for quenching and tempering steels during high-frequency induction heat treatment” of Lee (as cited in prior Office action) and “Role of retained austenite in hydrogen trapping and hydrogen-assisted fatigue fracture of high-strength steels” of Malitckii (as cited in prior Office action).
Regarding claims 2-5, 8, and 24, Okamoto teaches a high-strength steel sheet with excellent workability (Abstract) and maximizing hardness in dual-phase or DP steels (Abstract, [0012], [0021], reads on claimed ultra-high-strength dual-phase steel plate). Okamoto teaches the steel has a hot-dip galvanized layer on the surface of the steel sheet ([0015], [0058], [0061], reads on claimed electro-galvanized coating, see Claim Interpretation section). Okamoto teaches in the metallic structure, the steel sheet contains, by area percentage, 2% or more and less than 20% of the unrecrystallized ferrite phase, and one or two of the martensite structure and tempered martensite structure in total 5% or more and less than 60% (claim 1, reads on claimed structure of ferrite + tempered martensite).
Okamoto therefore reads on the limitation an ultra-high-strength dual-phase steel plate which has an electro-galvanized coating, wherein the dual-phase steel plate has a structure of ferrite + tempered martensite of claim 2.
List 1
Instant claims (mass %)
Okamoto (mass%)
Okamoto example J1 (mass%)
C
0.07-0.1
0.03-0.35
0.20
Si
0.05-0.3
0.01-2.00
0.50
Mn
2.0-2.6
0.3-4.0
3.0
Cr
0.2-0.6
0.05-3.0
-
Mo
0.1-0.25
0.05-1.0
0.1
Al
0.02-0.05
0.01-2.00
0.015
Nb
0.02-0.04
0.005-0.30
0.05
V
0.06-0.2
0.01-0.50
-
B
0.0015-0.003
0.0001-0.100
-
One or more of:
Cr, Mo, Ni, Cu
Nb, Ti, V
B
Ca, Mg, Zr, REM
Ti: 0.05
REM: 0.005
Unavoidable impurities
P ≤ 0.012
S ≤ 0.003
N ≤ 0.005
P: 0.100 or less, preferable 0.03 or less (taught as an alloying element in [0036])
Remainder of Fe and “unavoidable impurities”
P: 0.060
S: 0.002
N: 0.002
Fe
Balance
Remainder (“and unavoidable impurities”)
Remainder
Tempered martensite
>50 vol%
5-60 area%
53%
Ferrite
“structure of ferrite+tempered martensite”
2-20 area%
13%
Yield strength
≥ 550 MPa
≥ 400 MPa (N/mm2 is equivalent to MPa)
Inventive examples of Table 3:
459-1194 MPa
1194 MPa
Tensile strength
≥ 980 MPa
Inventive examples of Table 3: 593-1541 MPa
1541 MPa
Elongation after fracture
≥ 12%
Inventive examples of Table 3: 11.1-28.5
11.1%
Yield ratio
0.55-0.70 (claim 24)
0.7 or more
0.77
Okamoto teaches a steel with a chemical composition ([0031]-[0048], claims 1 and 3-6), microstructure ([0049]-[0052], claim 1, the Examiner notes the area% of Okamoto is interpreted as reading on the claimed phase proportion by volume since one of ordinary skill in the art understands area fraction is typically used as an estimated substitute for volume fraction), yield strength (Abstract, inventive examples of Table 3), tensile strength (inventive examples of Table 3), elongation (inventive examples of Table 3), and yield ratio ([0028]) overlapping with the claimed steel, as shown in List 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. 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.
Okamoto teaches an inventive example J1 (Table 3) which meets the claimed microstructure, tempered martensite content, yield strength, and tensile strength and is close to the claimed chemical composition. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the C, Si, Al, Mn, P, Ti, Nb, V, Cr, and B contents of the steel of J1 with the broader disclosure of Okamoto, shown in List 1, to an appropriate C, Si, Mn, Cr, and B content to ensure strength, an appropriate Al content to improve elongation, an appropriate P content to prevent deterioration of weldability, machinability and toughness, and an appropriate Ti, Nb, and V content to contribute to the formation of unrecrystallized ferrite ([0032]-[0036] and [0040]-[0047]). 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.
Okamoto teaches Ti, Nb, and V all form carbides ([0040], reads on claimed distributed carbide particles are precipitated in the structure).
Okamoto therefore reads on the claimed chemical elements in the ranges of claim 2, wherein distributed carbide particles are precipitated in the structure of claim 2, wherein the properties of the dual-phase steel plate meet the following: yield strength ≥550 MPa, tensile strength ≥980 MPa, elongation after fracture ≥ 12% of claim 2, wherein the steel plate further comprises 0.0015-0.003% of element B of claim 3, wherein the unavoidable impurities include elements P, S and N, and contents thereof are controlled to be at least one of the following: P ≤0.012%, S ≤0.003%, N ≤0.005% of claim 4, wherein a phase proportion by volume of the tempered martensite is >50% of claim 5, and wherein the yield ratio of the ultra-high-strength dual-phase steel is in the range of 0.55-0.70 of claim 24.
However, Okamoto does not explicitly disclose wherein distributed carbonitride particles are precipitated in the structure, wherein the carbide particles include MoC and VC and the carbonitride particles include Nb(C, N) of claim 2, wherein the carbide and carbonitride particles have a size of ≤60 nm, and wherein the carbide and carbonitride particles are all distributed in the structure in a coherent form of claim 2, hydrogen content ≤ 3 ppm; and no delayed cracking when soaked in 1 mol/L hydrochloric acid for 300 hours under a stress of 1.2 times of the tensile strength of claim 2, and wherein the tempered martensite further comprises coherently distributed ϵ carbide of claim 8.
Regarding the carbide and carbonitride particle size of claim 2, Lee teaches the size of carbides precipitated during quenching and tempering of steel (Abstract). Lee is considered analogous art since it is similarly concerned with steels that have a tempering step in their processing and teaches steels with similar carbon, chromium, and molybdenum content to the steels of Okamoto and the instant invention.
Lee teaches strong carbide formers such as Cr and Mo form nanosized, dispersed, and spheroidized carbides of “finer size” of 60-150 nm and that the steel with lower carbon content produced smaller carbides (Section 4 Conclusions). Lee teaches 0.2C-Cr consists of 0.2 wt% and 0.8 wt% Cr and 0.2C-Cr-Mo contains 0.2 wt% carbon with 1.1 wt% Cr and 0.2 wt% Mo, which have carbon and chromium contents slightly higher than the claimed upper limit of 0.1 mass% C and 0.6 mass% Cr. While the compositions are not overlapping, Lee teaches Mo carbide sizes of 60-150 nm and a trend that lower carbon content decreases carbide sizes.
Therefore, one of ordinary skill in the art would reasonably expect the carbides of Okamoto to have an approximate size of at most 60-150 nm, as taught by Lee.
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.
Modified Okamoto therefore reads on the limitation wherein the carbide and carbonitride particles have a size of ≤ 60 nm of claim 2.
Regarding the hydrogen content of claim 2, it would have been necessary and obvious to look to the prior art for exemplary hydrogen contents in dual-phase steels with ferrite and martensite. Malitckii teaches hydrogen trapping in high-strength steels (Title). Malitckii is considered analogous art since it is similarly concerned with dual-phase steels and has tensile strengths overlapping with those of Okamoto and the instant invention. Malitckii teaches dual-phase steels with ferrite and martensite have a 3 ppm hydrogen content in their as-supplied condition (Section 2 Experimental, reads on claimed hydrogen content). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the steel of Okamoto, and adjusting and varying the hydrogen content, such as within the claimed ranges, as taught by Malitckii, in order to form a conventional dual-phase steel using known and tested hydrogen content predictably suitable for dual-phase steels with a microstructure of ferrite and martensite.
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.
Modified Okamoto therefore reads on the limitation hydrogen content ≤ 3 ppm of claim 2.
Regarding the carbonitrides of claim 2, the coherent form of the carbide and carbonitride particles of claim 2, the no delayed cracking of claim 2, and the coherently distributed ϵ carbide of claim 8, since the steel sheet of modified Okamoto has a chemical composition, microstructure, yield strength, tensile strength, elongation, and yield ratio overlapping with the claimed invention, as outlined above and in List 1, one of ordinary skill in the art would reasonably expect the steel sheet of modified Okamoto to necessarily possess the claimed carbonitrides, carbide and carbonitride particles with the claimed coherent form, no delayed cracking, and coherently distributed ϵ carbides despite Okamoto not explicitly measuring or disclosing said properties.
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 steel 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 in List 1), and b) the claimed and prior art products are identical or substantially identical in structure (see microstructure analysis above in List 1). 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).
In this case, absent any clear and convincing evidence and/or arguments to the contrary, one of ordinary skill in the art would expect the steel of modified Okamoto to possess the claimed properties since modified Okamoto has a chemical composition, microstructure, yield strength, tensile strength, elongation, and yield ratio overlapping with the claimed invention, as outlined above and in List 1. A prima facie case of obviousness has been properly established herein.
Modified Okamoto therefore reads on the limitation wherein distributed carbonitride particles are precipitated in the structure, wherein the carbide particles include MoC and VC and the carbonitride particles include Nb(C, N) of claim 2, and wherein the carbide and carbonitride particles are all distributed in the structure in a coherent form of claim 2, no delayed cracking when soaked in 1 mol/L hydrochloric acid for 300 hours under a stress of 1.2 times of the tensile strength of claim 2, and wherein the tempered martensite further comprises coherently distributed ϵ carbide of claim 8.
Modified Okamoto therefore reads on all the limitations of claims 2-5, 8, and 24.
Response to Arguments
Applicant’s arguments with respect to claims 2-5, 8, and 24 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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/M.A./Examiner, Art Unit 1733
/REBECCA JANSSEN/Primary Examiner, Art Unit 1733
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