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 19-29 and 39 are examined of which claims 20-29 have been amended and claim 39 was newly added in Applicant’s reply.
Claims 30-38 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10 July 2025.
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.
List 1
Element
Instant Claims
(mass%)
Prior Art
(mass%)
C
0.05 – 0.15
0.07 – 0.12 claim 21
0.06-0.15% of C
Mn
1.8 – 2.7
1.9 – 2.5 claim 23
1.7-2.7% of Mn
Si
0.1 – 1
0.2 – 0.9 claim 20
1.2% or less (excluding 0%) of Si
Al
0.01 – 0.8
0.01 – 0.7 claim 22
Cr
0.1 – 0.9
0.2 – 0.8 claim 24
1.0% or less (excluding 0%) of Cr
P
0 – 0.09
0.1% or less (excluding 0%) of P
Ti
0.0001 – 0.1
0.001-0.04% of Ti
B
0.005 – 0.003
0.01% or less (excluding 0%) of B
Nb
0.01 – 0.1
0.001-0.04% of Nb
S
0 – 0.09
0.01% or less (excluding 0%) of S
N
0 – 0.09
0.01% or less (excluding 0%) of N
Fe + impurities
Balance
Balance
Claims 19-29 and 39 are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0190640 A1 of SEO (US’640) of record.
Regarding claims 19-29 and 39, US 2020/0190640A1 of SEO (US’640) teaches ““a cold-rolled steel sheet, a galvanized steel sheet and a galvannealed steel sheet” with a composition wherein the claimed ranges of the constituent elements of the instant alloy of the instant claims overlap or lie inside the ranges of various elements of the alloy of the prior art as shown in the List 1 above. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed composition over the prior art disclosure since the prior art teaches the similar property/utility throughout the disclosed ranges. 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. (US’640 abstract, [0001], [0013]-[0028], [0037]-[0077], Table 3, claims 1-8, 10-14).
It is noted that the prior art does not explicitly teach that its steel has “cumulated amounts of Silicon and Aluminum is more than 0.6%” of claim 25. However, as the prior art discloses a composition wherein the claimed ranges of the various elements of the instant alloy overlap or lie inside the ranges of various elements of the alloy of the prior art (see compositional analysis above), the ranges of the formulaic expression of the instant claims would also overlap or lie inside the values of the prior art resulting from the instant formulaic expressions. In addition, it is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art, In re Cooper and Foley 1943 C.D. 357, 553 O.G. 177; 57 USPQ 117, Saklatwalla v. Marburg, 620 O.G. 685, 1949 C.D. 77, and In re Pilling, 403 O.G. 513, 44 F(2) 878, 1931 C.D. 75.
US’640 further teaches {abstract} [0001] “a cold-rolled steel sheet, a galvanized steel sheet and a galvannealed steel sheet, comprising, by wt %, 0.06-0.15% of C, 1.2% or less (excluding 0%) of Si, 1.7-2.7% of Mn, 0.15% or less (excluding 0%) of Mo, 1.0% or less (excluding 0%) of Cr, 0.1% or less (excluding 0%) of P, 0.01% or less (excluding 0%) of S, 0.001-0.04% of Ti, 0.001-0.04% of Nb, 0.01% or less (excluding 0%) of N, 0.01% or less (excluding 0%) of B, and a remainder of Fe and unavoidable impurities, wherein the Si, C, Mn, Mo and Cr contents satisfy Relationship 1, and wherein a microstructure comprising, in area %, 10-70% of ferrite, 10-50% of the sum of bainite and retained austenite, and a remainder of fresh martensite” “high-strength cold-rolled steel sheet and galvanized steel sheet, having a tensile strength of 980 MPa or more and which is mainly used for automotive structural members, and a method of manufacturing the same” [0087] “The cold-rolled steel sheet is subjected to continuous annealing at a temperature ranging from Ac1+20° C. to Ac3-20° C. More preferably, continuous annealing may be performed at a temperature ranging from 760 to 820° C. In addition, the continuous annealing may be performed in a continuous galvannealing furnace. The continuous annealing is performed to form ferrite and austenite and distribute carbon as well as inducing recrystallization.” indicating presence of intercritical annealing therefore the formation of intercritical ferrite thereby reading on the microstructure phases and its ranges of the instant claims. (US’640 abstract, [0001], [0013]-[0028], [0037]-[0095], Table 3, claims 1-8, 10-14).
Regarding the recited tensile strength, elongation and yield strength, the prior art US’640, by the way of examples in Table 3 teaches yield strength of 572-621 MPa, tensile strength of 998-1109 MPa and elongation of 13-16% thereby reading on the instant claims.
Response to Arguments
Applicant's arguments filed 02/12/2025 have been fully considered but they are not persuasive.
Instant claims require “the microstructure of the steel sheet including, in area fraction, 40% to 60% martensite, 15 to 40% of inter-critical ferrite, a cumulated amount of 10 to 35% of transformed ferrite and bainite and 0% to 5% of residual austenite”. The prior art teaches that its steel has a microstructure comprising, in area %, 10-70% of ferrite, 10-50% of the sum of bainite and retained austenite, and a remainder of fresh martensite” and [0087] “The cold-rolled steel sheet is subjected to continuous annealing at a temperature ranging from Ac1+20° C. to Ac3-20° C. More preferably, continuous annealing may be performed at a temperature ranging from 760 to 820° C. In addition, the continuous annealing may be performed in a continuous galvannealing furnace. The continuous annealing is performed to form ferrite and austenite and distribute carbon as well as inducing recrystallization.” indicating presence of intercritical annealing therefore the formation of intercritical ferrite thereby reading on the microstructure phases and its ranges of the instant claims.
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
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