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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/19/2026 has been entered.
Status of Claims
Claim 1 is currently amended, Claims 2-5 are as originally filed, Claim 6 is withdrawn and currently amended, Claims 7-9 are withdrawn, and Claim 10 is as previously presented.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION - The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-5 and 10 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 1 recites “(excluding 0%)” in line 4 and “(less than 100%)” in line 8. The inclusion of phrases encompassed within the parentheses renders the claim indefinite because it is unclear whether these limitations should be a part of the claimed invention. If they should be included, the parentheses should be deleted.
Claims dependent on any of the rejected claims are likewise rejected under this statute.
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 1-4 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Jung (US 11,639,535 B2) in view of Randle in Materials Characterization.
US 11,639,535 is in the same patent family as WO 2018/117497 A1, which was published on 06/28/2018.
Jung teaches a steel plate as represented below in the table with respect to Claim 1:
Element (by wt %)
Claim 1
Jung
C
0.02
0.05
0.02
0.07
Si
0.05
0.3
0.05
0.3
Mn
0.4
1.2
0.8
1.8
P
0
0.01
0
0.02
S
0
0.001
0
0.003
Al
0.02
0.05
0.005
0.05
Nb
0.02
0.06
0.01
0.1
Ni
0.05
0.3
0.05
0.3
Ti
0.005
0.03
0.005
0.02
N
0.002
0.008
0.001
0.01
Ca
0.0015
0.004
0.0005
0.005
Fe
BALANCE
BALANCE
Polygonal ferrite
≥ 35%
20-50
Relation (1)
3
5
2.67
36
The composition and polygonal ferrite are from column 2, lines 39-49. The composition in Jung meets the limits to read on Relation (1) since the range of Si is the same as claimed and the range of Mn overlaps the claimed range. The upper limit of Relation (1), [Mn]/[Si], is 1.8/0.05 = 36, and the lower limit of Relation (1) is 0.8/0.3 = 2.67. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists because the prior art discloses the utility of the composition over the entire disclosed range. See MPEP § 2144.05. Applicants can rebut a prima facie case of obviousness based on overlapping ranges by showing the criticality of the claimed range or by showing that the art, in any material respect, teaches away from the claimed invention. See MPEP § 2144.05 III. However, Jung does not recite that the crystal grain average size of high angle grains having 15° or more as measured by EBSD is 15 μm or less as claimed.
Randle teaches strategies for reliable data acquisition and processing for electron backscatter diffraction (EBSD). The fraction of diffracted backscattered electrons is maximized by tiling the specimen so that it makes a small angle, typically 20°, with the incoming electron beam (page 915). Basic steps of experiment design and procedure include optimum specimen preparation and selection of sampling areas (page 916), which reads on an intended use of the material. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the measurement of the steel in Jung would at least overlap the claimed range for the average size of high angle grains, since Jung teaches substantially the same steel material. 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. See MPEP § 2112.01. Language in the claim that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation, for example statements of intended use or field of use. See MPEP § 2106.
Regarding Claim 2, the steel plate may contain 0.05-0.5% Cr, 0.05-0.3% Mo, 0.3% or less Cu, and 0.01-0.07% V (columns 5 and 6). The total of these elements overlaps the range of 1.0% or less.
Regarding Claim 3, Jung teaches the transformation phase may include acicular ferrite and bainite, i.e. granular bainite and bainitic ferrite (column 7, lines 12-14).
Regarding Claim 4, Jung teaches the claimed range for the yield strength in TABLE 3.
Regarding Claim 10, Jung does not teach the crystal grain average size of high angle grains having 15° or more as measured by EBSD is 7.6 to 15 μm as claimed. Jung teaches a substantially identical process of forming the claimed steel material with cooling rates (2-15 °C/s and 20-50 °C/s in column 9, lines 51-62) overlapping the disclosed range to attain that property (10 °C/s or more [23]).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Jung in view of Randle as applied to claim 1 above, and further in view of Kutz in Mechanical Engineers’ Handbook.
Jung in view of Randle discloses the invention substantially as claimed. However, Jung in view of Randle does not teach the impact energy value after welding as claimed.
Kutz teaches the carbon is an interstitial element that can increase the yield strength of iron (page 30). Notch toughness decreases with carbon content (pages 31 and Figure 13). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the steel composition of Jung in view of Randle would have the claimed property of the impact energy value, since Jung in view of Randle teaches substantially the same steel material. 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. See MPEP § 2112.01. Regarding the limitation of welding the hot-rolled steel sheet, this limitation reads on intended use. Language in the claim that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation, for example statements of intended use or field of use. See MPEP § 2106.
Response to Arguments
Applicant's arguments filed 03/19/2026 have been fully considered but they are not persuasive. Applicant argues that Jung employs a two-step cooling scheme. The claims under consideration are product Claims 1-5 and 10 and method Claims 6-9 are withdrawn. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues Jung does not disclose or suggest a technical concept of suppressing oxide formation by controlling the relative contents of alloying elements. The property of suppressed formation of Mn-Si-O oxides is not claimed but has support in the specification in at least [93]. However, the range recited in instant Claim 1 (3 ≤ Mn/Si ≤ 4.76) is not indicated in the original disclosure as being the range that results in suppressed formation of Mn-Si-O oxides. Table 1 teaches a range that is as low as 2.29 to as high as 6.11. The comparative examples in the instant disclosure satisfy the composition disclosed in Jung but do not represent the entire disclosure in the Jung patent. Patents are relevant as prior art for all they contain: a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Additionally, nonpreferred and alternative embodiments constitute prior art; disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP § 2123.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tima M. McGuthry-Banks whose telephone number is (571)272-2744. The examiner can normally be reached Monday through Friday, 7:30 am to 4:00 pm.
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Tima M. McGuthry-Banks
Primary Examiner
Art Unit 1733
/TIMA M. MCGUTHRY-BANKS/Primary Examiner, Art Unit 1733
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