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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/09/2026 has been entered.
Status of Claims
Claims 1 and 5-11 and 13-19 are pending and are presented for this examination. Claims 2-4 and 12 are cancelled. Claims 1, 11 and 19 are amended.
Status of Previous Rejection
103 rejections over Kajima of claim 1 are maintained.
103 rejections over Kajima of claim 11 and 19 are withdrawn.
103 rejections over Kabayashi of claim 1 are withdrawn.
New ground of rejections are rendered in view of amendment of claims 11 and 19.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1 are rejected under 35 U.S.C. 103(a) as being unpatentable over Kajima (JP2000144259A).
As for claim 1, Kajima discloses manufacturing a high strength hot rolled steel sheet. In Table 2 Examples 9 has TS 830 N/mm2, hole expansion 109%, hot rolling finish temperature 859 degree C, which is above Ar3, followed by cooling the steel sheet at a primary cooling rate of 50 degree C/s and winding at 350 degree C. Hence, cooling to a temperature less than 400 degree C before winding the cooled steel sheet into a coil as required by instant claim 1 is expected.
Abstract line 6 also suggests the final microstructure is acicular ferrite structure.
Regarding amendment of “wherein the method further comprises cooling the steel sheet to an acicular ferrite structure”, Kajima explicitly discloses an acicular ferrite structure is obtained after a secondary cooling which is after winding. (English translation Page 4)
Regarding amendment of Mn 0.03-1.93%, Table 1 Example 9 has C 0.05%, Mn 2% and Cr 0.3%. Mn 2% is considered close to amended Mn 0.03- 1.93%. In addition, broad range of Mn <=2.5% (abstract) overlaps amended 0.03- 1.93% absent criticality of amended Mn range. It should also be noted Table 2 Example 6 has Mn=1.92% which is within amend Mn range.
A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
It is well established that a prior art reference that discloses a range that overlaps a claimed range, or encompasses a somewhat narrower claimed range, is sufficient to establish a prima facie case of obviousness. See /n re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Indeed, when the claimed ranges are completely encompassed by the prior art, the obviousness conclusion is even more compelling than in cases of mere overlap. The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages. A prima facie case of obviousness also exists in those cases where the claimed range and the prior art range, though not overlapping, are sufficiently close that one skilled in the art would have expected them to have the same or similar properties. Id.; see also In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997); Titanium Metals Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985); and In re Brandt, 886 F.3d 1171, 1177 (Fed. Cir. 2018) (In response to an argument by an Appellant that there must be an overlap between the claimed range and prior art range to find obviousness, the Court stated “[t]he nonbinding holding in [a previous case], however, does not stand for the proposition advanced by Appellants that a claimed range and prior art range must overlap for an examiner to find a prima facie case.”).
Claims 5-7 are rejected under 35 U.S.C. 103(a) as being unpatentable over Kajima (JP2000144259A) in view of Hughes (NPL document “A quick Guide to Welding and Weld Inspection Chapter 4 “Materials and their Weldability”).
As for claims 5-7, Hughes discloses (Pages 46-47) that most application requires that quenched parts be tempered to impart some toughness and further ductility. Tempering can continue up to the lower critical temperature of 723 degree C (Ac1), at which point most of the extra hardness produced by thermal hardening will have been removed but the fine grain structure produced by the hardening process will remain. Quenched and tempered steels are normally tempered from between 550 and 650 degree C given them good toughness and strength.
Hence, Hughes suggests instant claim 5 required secondary treatment to promote precipitation hardening. Tempering between 550 and 650 degree C reads on claim 6 required reheating the steel coil to a temperature below Ac1 (i.e. 723 degree C) and instant claim 7 required temperature above 500 degree C and below Ac1.
Hence, it would have been obvious to one skill in the art, at the time the invention is made to apply tempering between 550 and 650 degree C as suggested by Hughes, in the process of Kajima as secondary heat treatment to impart some toughness and further ductility.
Claim 8 is rejected under 35 U.S.C. 103(a) as being unpatentable over Kajima (JP2000144259A) in view of Hughes as applied to claim 6, and further in Larrin (NPL document “What happens during tempering of steel?”).
As for claim 8, Larrin further discloses (Page 19) that the higher the tempering temperature, the faster the diffusion of elements and therefore more rapid tempering. Looking at the Figure (Page 19), reaching a point labeled as “16” takes over 100 hours at 450 degree C and less than 15 minutes at 550 degree C. Hence, Larrin suggests tempering temperature depends on a time duration of tempering process as illustrated in Figure of Page 19.
Claims 9-10 are rejected under 35 U.S.C. 103(a) as being unpatentable over Kajima (JP2000144259A) in view of Hughes as applied to claim 6, and further in view of WorldofSteel (NPL document “Continuous Annealing and Batch Annealing”).
As for claims 9-10, WorldOfSteel discloses two types of annealing maybe used which are bath annealing or continuous annealing. Continuous annealing is a constant process without variation. Hence, continuous annealing by the virtue of the shorter annealing times produces material with a finer grain size than batch annealing. A finer grain size results in higher strength.
Hence, it would have been obvious to one skill in the art, at the time the invention is made to apply continuous annealing to achieve reduced heating times as suggested by WordofSteel, in the tempering process of Kajima in view of Hughes for finer grain size.
Claims 11 and 19 are rejected under 35 U.S.C. 103(a) as being unpatentable over JP’640 (JPH03146640A) in view of Yoshida (JP2017057472A).
As for claim 11, JP’640 discloses method of making high strength steel sheet having strength of 60-90 kgf/mm2 (English translation Page 2 paragraph 3), which is equivalent to 588 - 882.60 MPa, hence overlapping instant claim 11 required “approximately 800 MPa”. Broad range of TS is 50 kg/mm2 or more which is equivalent to 490 MPa or more, hence overlapping instant claim 19 required “approximately 1000 MPa”.
The steel sheet has compositions of C 0.01-0.08%, Si<=0.1%, Mn 1-3%, Cr 0.1-1.0% (Claim 1) , which all overlapping instant claims 11 and 19 required ranges.
Hence, A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
The method comprising: reheating a slab at 1200 degree C which is expected to be above Ar3, following by hot rolling finishing to 900 degree C to obtain a final desired thickness of 1.6 mm, cooling the hot rolled steel sheet at 1-100 degree C/sec to a cooling stop temperature of 600 degree C or lower, winding the cooled steel sheet into a coil which is expected, thereby obtaining a mixture of ferrite and bainite or a single phase bainite as final structure (Claim 1).
JP’640 does not disclose instant claims 11 and 19 required Ti at 0.03% and B at 0.002%.
Yoshida discloses a hot rolled steel sheet having high strength comprising similar composition as JP’640. Yoshida explicitly discloses B 0.0001-0.005% for improving the hardenability and strength. Ti at 0.2% or less for improving strength. (English translation Page 3).
Hence, it would have been obvious to one skill in the art, at the time the invention is made to add Ti and B in the amounts disclosed by Yoshida, in the process of JP’640 for improving the hardenability and strength.
Claims 13-15 are rejected under 35 U.S.C. 103(a) as being unpatentable over JP’640 in view of Yoshida as applied to claim 11 above, and further in view of Hughes (NPL document “A quick Guide to Welding and Weld Inspection Chapter 4 “Materials and their Weldability”).
As for claims 13-15, Hughes discloses instant claims feature would have been obvious to one skill in the art for the reason set forth in rejection of claims 5-7 above.
Claim 16 is rejected under 35 U.S.C. 103(a) as being unpatentable over JP’640 in view of Yoshida as applied to claim 11 above, and further in Larrin (NPL document “What happens during tempering of steel?”).
As for claim 16, Larrin discloses instant claims feature would have been obvious to one skill in the art for the reason set forth in rejection of claim 8 above.
Claims 17-18 are rejected under 35 U.S.C. 103(a) as being unpatentable over JP’640 in view of Yoshida as applied to claim 11 above, and further in view of WorldofSteel (NPL document “Continuous Annealing and Batch Annealing”).
As for claims 17-18, WorldofSteel discloses instant claims feature would have been obvious to one skill in the art for the reason set forth in rejection of claims 9-10 above.
Response to Argument
Applicant argues on 03/09/2026 that Kajima Steel No 9 has Mn at 2% while claims 1 recites 0.03-1.93% of Mn, argument is not persuasive because 2% is close to 1.93% absent criticality of 1.93%.
Second, according to MPEP 2123 I A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including non-preferred embodiments. Merck & Co. v.Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005)
In the instant case, Kajima’s broad range Mn <=2.5% overlaps claimed Mn range at overlapping width of 0.03- 1.93%. Thus, a degree of predictability that one of ordinary skill would have found to be reasonable is sufficient to case of obviousness.
Third, also according to MPEP 2123 II, mere disclosed examples do not constitute a teaching away from a broader disclosure because such mere disclosure does not criticize, discredit or otherwise discourage the claimed composition range. In the instant case, nothing in Kajima expressly criticizes, discredits or discourages 0.03- 1.93% Mn.
Fourth, applicant’s original specification paragraph [0030] discloses at most 2% Mn which encompasses 2% Mn.
Applicant then argues Kajima does not discloses cooling to a bainitic structure, argument is moot since Kajima is withdrawn to reject claims 11 and 19.
Applicant last argues Kobayashi does not discloses cooling to an acicular ferrite, argument is moot since Kobayashi is withdrawn.
Conclusion
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/JENNY R WU/Primary Examiner, Art Unit 1733
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