DETAILED ACTION
Response to Amendment
The Amendment filed 01/20/2026 has been entered. Claims 1-34 remain pending in the application. Claims 26-31 have been withdrawn. Claims 1-15 have been canceled. New claims 32-34 has/have been added. Claims 16-25 and 32-34 are presented for examination on the merits. Applicant's amendments to the claims have overcome the objections previously set forth in the Non-Final Rejection mailed 10/21/2025. Applicant's amendments to the claims have overcome the 112(b) rejections previously set forth in the Non-Final Rejection mailed 10/21/2025. Applicant's amendments to the claims have overcome the 112(d) rejections previously set forth in the Non-Final Rejection mailed 10/21/2025.
Claim Interpretation
Regarding the term “partitioned martensite” of claim 16, the term is interpreted as interchangeable with “tempered martensite”. The terms “partitioned martensite” and “tempered martensite” are sometimes used interchangeably in the metallurgical arts, as evidenced by US 2018/0371566 A1 of Gospodinova, and sharing assignee Arcelor Mittal, which recites “tempered martensite, which is partitioned martensite” ([0145]). The instant specification recites “martensite, that is formed during the cooling after annealing, is transformed into Partitioned martensite during the heating to the overaging temperature” (page 7, lines 10-14). Since the instant specification does not redefine the term “partitioned martensite”, the broadest reasonable interpretation for the term “partitioned martensite” includes “tempered martensite”, as is known in the metallurgical arts.
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 16-25 are rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0096723 A1 of Kasuya (as cited in prior Office action and in IDS mailed 04/20/2023 and 09/08/2025).
Regarding claims 16-25, Kasuya teaches a high strength cold rolled steel sheet and high strength galvanized steel sheet having excellent ductility and bendability, and methods for producing same (Title, reads on the claimed cold rolled and coated steel sheet since a galvanized steel sheet is coated).
List 1
Element
Instant claims (wt%)
Kasuya (mass%)
C
0.30-0.45
0.32-0.45 (claim 18)
0.10-0.30
Mn
1-2.5
1.2-2.5 (claim 17)
0.5-3.0
Si
0.9-2.2
1-2.1 (claim 19)
1.2-3
Al
0-0.09
0.005-0.2
Nb
0.001-0.09
0.001-0.08 (claim 20)
More than 0 to 0.15
P
0-0.02
More than 0 to 0.1
S
0-0.03
More than 0 to 0.05
N
0-0.09
More than 0 to 0.01
Optionally or more of:
At least one element from groups:
Cr, Mo
Ti, Nb, V
Cu, Ni
B
Ca, Mg, REM
Mo
0-0.5
More than 0 to 1
Cr
0-0.6
More than 0 to 1
Ti
0-0.06
More than 0 to 0.15
V
0-0.1
More than 0 to 0.15
Ca
0-0.005
More than 0 to 0.01
B
0-0.01
More than 0 to 0.005
Mg
0-0.05
More than 0 to 0.01
Zr
0-0.05
-
Ce
0-0.1
More than 0 to 0.01 (“REM” includes Ce)
O
-
More than 0 to 0.01
Fe and unavoidable impurities
Balance
Balance (“inevitable impurities”)
Partitioned martensite
35-65 area% (claim 16)
35-63 area% (claim 21)
Balance (claim 16)
~20-95 area% (from hard phase)
Bainite
15-40 area%
15-35 area% (claim 23)
~20-95 area% (from hard phase)
Residual austenite
14-30 area%
14-28 area% (claim 22)
≥ 5 vol%
More than 0 to 30 area% (from fresh martensite + retained austenite)
Ferrite
4-15 area%
5-50 area%
Fresh martensite
0-10 area%
More than 0 to 30 area% (from fresh martensite + retained austenite)
Tensile strength
≥ 1170 MPa (claim 24)
≥ 980 MPa
810-1342 (Table 4)
Total elongation
≥ 18% (claim 24)
13-24% (Table 4)
Yield strength
≥ 730 MPa (claim 25)
(implicit)
Kasuya teaches a steel with a chemical composition (claims 1, 4 and 12, [0010], [0018], [0049]-[0084]), microstructure (claims 1-3 and 12, [0028]-[0035]), tensile strength (claim 1, [0008]-[0009], [0026], Test No. 1-6, 17, 19-22, 27-28 and 32 in Table 4 are all above 1170 MPa), and elongation (Test No. 3, 10-14, 25-26, 29 and 31 are above 18%) 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.
Regarding the touching range at 0.30% C of claim 16, the touching ranges at 0.3% C result in overlapping compositions between the steel of Kasuya and the instant invention. 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. One of ordinary skill in the art would reasonably expect the steel sheet of Kasuya to possess the properties of the claimed steel sheet given the overlapping chemical composition, microstructure, and properties.
Regarding the 0.32% C of claim 18, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). See MPEP 2144.05 I. In this case, the difference between the instant 0.32% C and the upper limit of 0.30% of Kasuya is infinitesimally small. One of ordinary skill in the art would reasonably expect the steel sheet of Kasuya to possess the properties of the claimed steel sheet given the overlapping chemical composition, microstructure, and properties.
Regarding the microstructure of claims 16 and 21-23, Kasuya teaches an area ratio of ferrite is 5% or more to less than 50% and the balance is a hard phase, where the hard phase is at least one selected from the group consisting of bainitic ferrite, bainite, tempered martensite, and MA structure, where the MA structure is composed of fresh martensite and retained austenite in an area ratio of more than 0% to 30% relative to the entire structure ([0028]-[0032]). Kasuya further teaches the retained austenite is 5 vol% or more (claim 2). Since the MA structure is part of the “hard phase” and ranges from more than 0% to 30%, the total area ratio of bainitic ferrite, bainite, and/or tempered martensite is 20-95 area%, as listed in List 1 above, which overlaps with the instant ranges for bainite and partitioned martensite.
While Kasuya teaches “tempered martensite” instead of “partitioned martensite” as claimed and does not explicitly disclose a yield strength, one of ordinary skill in the art would reasonably expect the “tempered martensite” of Kasuya to be equivalent to the “partitioned martensite” of the instant invention and for the steel sheet of Kasuya to possess a yield strength overlapping with the instant invention given the overlapping chemical composition, microstructure, tensile strength, elongation, and processing between the steel of Kasuya and the instant invention.
Regarding the partitioned martensite, the instant specification recites martensite, that is formed during the cooling after annealing, is transformed into partitioned martensite during the heating of the cold rolled steel sheet to an overaging temperature of 350-450°C ([0033], [0049]).
Kasuya teaches the method for producing a high strength cold rolled steel sheet further includes a step of reheating to a temperature range of 250°C to 500°C, holding for 30 s or more, and then cooling to room temperature ([0088], [0108]-[0112]), which overlaps with the step of heating a cold rolled sheet after annealing and the overaging temperatures of the instant invention.
Regarding the yield strength, the instant specification teaches a ferrite content from 4% to 15% to ensure an elongation of 18% and the claimed yield strength ([0036]).
Kasuya teaches an area ratio of ferrite is 5% or more to less than 50% ([0029]), which overlaps with the 4-15% ferrite content of the instant invention.
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), b) the claimed and prior art products are identical or substantially identical in structure (see microstructure analysis above), and c) the claimed and prior art products are produced by identical or substantially identical processes (see processing analysis above). 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, one of ordinary skill in the art would reasonably expect the steel sheet of Kasuya to necessarily possess the claimed partitioned martensite and yield strength since it has overlapping chemical composition, microstructure, tensile strength, elongation, and processing with the instant invention.
Kasuya therefore reads on all the limitations of claims 16-25.
Claims 32-34 are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0298462 A1 of Sano (as cited in IDS mailed 09/08/2025).
Regarding claims 32-34, Sano teaches a galvannealed steel and a method for producing a galvannealed steel sheet including a cold-rolling step (Title, [0121], reads on the claimed cold rolled and coated steel sheet since a galvannealed steel sheet is coated).
List 1
Element
Instant claims (wt%)
Sano Test No. 49, Steel T (mass%)
Sano (mass%)
C
0.35-0.42 (claims 32 and 34)
0.32-0.45 (claim 33)
0.38
0.25-0.70
Mn
1-2.5
2.13
1.00-5.00
Si
0.9-2.2
1.89
0.25-2.50
Al
0-0.09
0.047
0.05-3.50
Nb
0.001-0.09
0.05
0-0.50 (one or more from group listed below)
P
0-0.02
0.010
≤ 0.15
S
0-0.03
0.0011
≤ 0.03
N
0-0.09
0.0023
≤ 0.02
Optionally or more of:
Optional – one or more from Ti, Nb, V, Cr, Mo, Cu, Ni, B, Ca, REM, Mg, W, Zr, Sb, Sn, As, Te, Y, Hf and Co
Mo
0-0.5
-
0-1.50
Cr
0-0.6
0.40
0-1.50
Ti
0-0.06
-
0-0.50
V
0-0.1
-
0-0.50
Ca
0-0.005
-
0-0.05
B
0-0.01
-
0-0.003
Mg
0-0.05
-
0-0.05
Zr
0-0.05
-
0-0.05
Ce
0-0.1
-
REM (includes Ce): 0-0.05
O
-
<0.0010
≤ 0.01
Fe and unavoidable impurities
Balance
Balance (“and impurities”)
Balance
Partitioned martensite
35-65 area%
High-temperature tempered martensite: 27 vol%
Low-temperature tempered martensite: 34 vol%
Total tempered martensite: 61 vol% (calculated)
High-temperature tempered martensite: ≥ 5 vol%
Preferably ≤ 70%
Low-temperature tempered martensite: ≥ 5 vol%
Preferably ≤ 70%
Bainite
15-40 area%
16.5 vol%
Balance
Residual austenite
14-30 area%
19.3 vol%
10-60 vol%
Preferably 10-30 vol%
Ferrite
4-15 area%
3 vol%
0-15 vol%
Fresh martensite
0-10 area%
0.2 vol%
≤ 10 vol%
Tensile strength
≥ 1170 MPa (claim 33)
1477 MPa
1470-2200 MPa
Total elongation
≥ 18% (claim 33)
18.4%
From examples:
17.7-21.0%
(Test No. 12 and 10 are end ranges of inventive examples from Tables 10-11)
Yield strength
≥ 730 MPa (claim 33)
1036 MPa
≥ 850 MPa
Sano teaches a steel with a chemical composition, partitioned martensite, bainite, residual austenite, fresh martensite, tensile strength, total elongation, and yield strength (Test No. 49, Steel T in Tables 1, 7, and 11) lying within the claimed ranges, as shown in List 1. Regarding the microstructure ratios, the vol% of Sano is interpreted as reading on the claimed area% since of ordinary skill in the art understands area fraction is typically used as an estimated substitute for volume fraction. Regarding the “partitioned martensite”, the high-temperature tempered martensite and low-temperature tempered martensite of Sano are interpreted as reading on the claimed “partitioned martensite” (see Claim Interpretation section in this Office action). Regarding the ferrite of Test No. 49 of Sano, Sano teaches a broader disclosure of 0 to 15 vol% ferrite to ensure a tensile strength of 1470 MPa or more ([0230]-[0231]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the 3 vol% of ferrite of Test No. 49, such as within claimed ranges, to obtain the desired tensile strength. 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.
Additionally or alternatively, Sano teaches a broader disclosure with steels with a chemical composition ([0152]-[0215], claims 1-3), microstructure ([0216]-[0238], claim 1), tensile strength ([0255], claim 1), total elongation (inventive examples in Tables 10-11), and yield strength ([0257]) 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.
Sano therefore reads on all the limitations of claims 32-34.
Response to Arguments
Applicant's arguments filed 01/20/2026 have been fully considered but they are not persuasive.
Applicant argues that there is NO overlapping range in Kasuya for the “35% to 65% partitioned martensite” and the “15% to 40% of bainite” recited in claim 16 (remarks, page 5). Applicant argues that the most Kasuya can be alleged to fairly teach is a cumulative amount of bainitic ferrite, bainite, martensite and a mixed structure of fresh martensite and retained austenite of 50% to 95%; which is insufficient to fulfil the Examiner's initial burden of establishing a prima facie case of unpatentability of the “35% to 65% partitioned martensite” and the “15% to 40% of bainite” recited in claim 16 based on the theory of overlapping ranges respectfully directs the Examiner's attention to the Board's decision issued on December 22, 2023, in connection with Application No. 16/467,371, which adjudicated a similar issue (remarks, page 5). Applicant argues that in that case, the Board determined that the disclosure of a range for a total area fraction of microstructural components (i.e., a cumulative amount of microstructural components) is insufficient to render obvious individual ranges of the microstructural components (remarks, page 6).
In response, it is noted that this PTAB decision does not involve the instant case nor any parent case to this application. Further, as MPEP § 2115 and applicant has noted, “[c]laim analysis is highly fact dependent” and the instant fact situation appears distinct from Application No. 16/467,371. In that case, claim 13 recited a microstructure “comprising in area fraction, 3 to 20% residual austenite” and a “minimum of 5% of tempered martensite”. The prior art US 2010/0104891 A1 of Nakagaito used in the Non-Final Rejection of that case disclosed “a total area fraction of retained austenite and martensite of 5% or less” ([0047]), which does not overlap with the claim being discussed. The minimum residual austenite of 3% and minimum tempered martensite of 5% of claim 13 results in a total of residual austenite and martensite of 8%, which exceeds the range taught by Nakagaito. The Board decision therefore relied on the claimed ranges not overlapping, not on the claimed ranges not being discussed individually as argued by Applicant. In the instant case, absent any clear and convincing evidence and/or arguments to the contrary, one of ordinary skill in the art would reasonably expect the steel sheet of Kasuya to necessarily possess the claimed partitioned martensite and yield strength since it has overlapping chemical composition, microstructure, tensile strength, elongation, and processing with the instant invention. A prima facie case of obviousness has been properly established herein. As the Patent Office does not possess the laboratory facilities to test any differences in the claimed invention versus that of the reference, the burden shifts to applicant to demonstrate otherwise.
Applicant argues that “tempered martensite" of Kasuya is NOT equivalent to the "portioned martensite" of claim 16 (remarks, page 7).
In response, the terms “partitioned martensite” and “tempered martensite” are sometimes used interchangeably in the metallurgical arts, as evidenced by US 2018/0371566 A1 of Gospodinova, and sharing assignee Arcelor Mittal, which recites “tempered martensite, which is partitioned martensite” ([0145]). Therefore, the broadest reasonable interpretation for the term “partitioned martensite” includes “tempered martensite”.
Applicant argues that Examiner's analysis is incomplete because it does not address "a cooling stop temperature range CS1 which is from Ms-40°C to Ms-130°C" and the duration of holding at CS1, which is the cooling step during which "martensite of the present invention is formed" in the present specification (remarks, page 8).
As described above, the terms “partitioned martensite” and “tempered martensite” are interpreted as synonymous and therefore Kasuya teaches the claimed partitioned martensite. Nonetheless, Kasuya teaches after cold rolling, then cooling to a temperature range of 500° C or less at an average cooling rate of 10° C/s or more at 500° C or less ([0022]). Kasuya further teaches the cooling stop temperature is preferably 300°C or less to ensure desired hard phase amounts and strength ([0106]), which overlaps with the preferred range of 185-240°C of the instant invention ([0048]). While Kasuya does not explicitly disclose a holding time, cooling at 10°C/s or more, as taught by Kasuya, would result in a holding time of at least 1 second per every 10°C of cooling, therefore overlapping with the holding time of the instant invention. In the instant case, absent any clear and convincing evidence and/or arguments to the contrary, one of ordinary skill in the art would reasonably expect the steel sheet of Kasuya to necessarily possess the claimed partitioned martensite and yield strength since it has overlapping chemical composition, microstructure, tensile strength, elongation, and processing with the instant invention. A prima facie case of obviousness has been properly established herein.
Regarding claim 18, Applicant argues that the rejection based on ranges approaching each other is inappropriate in the present case, because Kasuya does not teach that the end points are approximate, or can be flexibly applied and, to the contrary, sets its upper C range "to 0.30% or less, preferably 0.26% or less, more preferably 0.23% or less" ([0051]) (remarks, page 9).
In response, in this case, the difference between the instant 0.32% C and the upper limit of 0.30% of Kasuya is infinitesimally small. Absent any clear and convincing evidence and/or arguments to the contrary, one of ordinary skill in the art would reasonably expect the steel sheet of Kasuya to necessarily possess the claimed partitioned martensite and yield strength since it has overlapping chemical composition, microstructure, tensile strength, elongation, and processing with the instant invention. A prima facie case of obviousness has been properly established herein. As the Patent Office does not possess the laboratory facilities to test any differences in the claimed invention versus that of the reference, the burden shifts to applicant to demonstrate otherwise.
Regarding new claims, Applicant argues that Kasuya does not disclose and would not have led one of ordinary skill in the art to "the composition includes 0.35% to 0.42% of carbon" as recited in claims 32 and 34 (remarks, page 10).
In response, Applicant’s arguments with respect to claims 32-34 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. New claims 32-34 are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0298462 A1 of Sano (as cited in IDS mailed 09/08/2025), as described in this Office action, and not over Kasuya.
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 extension fee 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 date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAYELA ALDAZ whose telephone number is (571)270-0309. The examiner can normally be reached Monday -Thursday: 10 am - 7 pm and alternate Friday: 10 am - 6 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached at (571) 272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/M.A./Examiner, Art Unit 1733
/REBECCA JANSSEN/Primary Examiner, Art Unit 1733