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
Applicant’s election without traverse of Group I, claims 1-5, drawn to a high-strength steel sheet in the reply filed on 12/18/2025 is acknowledged.
Claims 6-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/18/2025.
Specification
The disclosure is objected to because of the following informalities:
The tables are missing line separators in both columns and rows for certain samples. Some examples are Table 1 Cr Mo, Table 2 multiple samples in single row and the last two columns, Table 3 multiple samples in single row and the first two columns.
Appropriate correction is required.
Claim Objections
Claims 1-3 are objected to because of the following informalities: The terms “excluding 100%” (claim 1) and “excluding 0%” (claim 3) should not be in parentheses. The elemental symbol for Ni is incorrect in claim 2. Appropriate correction is required.
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 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.
Regarding claims 1-5, the terms “high-strength” and “excellent thermal stability” in claims 1-5 are relative terms which render the claim indefinite. The terms are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. There are no explicit definition of the terms in the claims or the specification thereby making it unclear what type of strength, hardness and values are required by these terms.
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
0.02 – 0.08
0.04 – 0.18
Si
0.01 – 0.5
0.2 – 2.0
Mn
0.8 – 1.8
1.0 – 3.0
Al
0.01 – 0.1
0.005 – 0.1
P
0.001 – 0.02
0.03 or less
S
0.001 – 0.01
0.005 or less
N
0.001 – 0.01
0.010 or less
Ti
0.01 – 0.12
0.02 – 0.15
Nb
0.01 – 0.05
0.005 – 0.050
Mo
0.001 – 0.2
0.05 – 0.30
Cr, V, Ni, B
one or more of Cr, V, Ni and B for a total of 1.5 or less
V: 0.05 – 0.30
Fe + impurities
Balance
Balance
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0237874 A1 of Yamazaki (US’874) cited in the IDS dated 03/24/2023.
Regarding claims 1-3, US 2018/0237874 A1 of Yamazaki (US’874) {abstract, [0001], [0022]-[0077]} [0033] “[1] A high-strength hot-rolled steel sheet having a composition containing, by mass %, C: 0.04% or more and 0.18% or less, Si: 0.2% or more and 2.0% or less, Mn: 1.0% or more and 3.0% or less, P: 0.03% or less, S: 0.005% or less, Al: 0.005% or more and 0.100% or less, N: 0.010% or less, Ti: 0.02% or more and 0.15% or less, Cr: 0.10% or more and 1.00% or less, B: 0.0005% or more and 0.0050% or less, the balance being Fe and inevitable impurities, and having a microstructure including a bainite phase having an area ratio of 85% or more as a main phase, and a martensite phase or martensite-austenite constituent having an area ratio of 15% or less as a second phase, the balance being a ferrite phase” “[2] The high-strength hot-rolled steel sheet according to [1], wherein the composition further contains, by mass %, one or more selected from Nb: 0.005% or more and 0.050% or less, V: 0.05% or more and 0.30% or less, and Mo: 0.05% or more and 0.30% or less. [3] The high-strength hot-rolled steel sheet according to [1] or [2], wherein the composition further contains, by mass %, one or two selected from Cu: 0.01% or more and 0.30% or less, and Ni: 0.01% or more and 0.30% or less. [4] The high-strength hot-rolled steel sheet according to any one of [1] to [3], wherein the composition further contains, by mass %, one or more selected from Sb: 0.0002% or more and 0.020% or less, Ca: 0.0002% or more and 0.0050% or less, and REM: 0.0002% or more and 0.010% or less.”
Therefore, the prior art teaches a high-strength hot-rolled steel sheet with a composition wherein the claimed ranges of the constituent elements of the instant alloy of the instant claims 1 and 2 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.
The prior art teaches [0067] “The steel sheet has a microstructure including a bainite phase having an area ratio of 85% or more as a main phase, and a martensite or martensite-austenite constituent having an area ratio of 15% or less as a second phase” thereby meeting the recited microstructure limitations of instant claims 1 and 3.
It is noted that the prior art is silent regarding the recited limitations of Relations 1 and 2 and their ranges of instant claim 1. 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.
Regarding claims 4 and 5, the prior art teaches [0001] “The present disclosure relates to a high-strength hot-rolled steel sheet having a tensile strength TS of 980 MPa or more” thereby reading on the tensile strength of instant claim 4. The prior art also teaches values of “yield strength (yield point, YP)” in Table 3 and therefore teaches a yield ratio (calculated using the known YS/TS) that reads on the YR ratio range of instant claim 4. instant claimed range.
The prior art is silent regarding its alloy having the bake hardening properties as recited in the instant claims 4 and 5. 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 alloy 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 {instant alloy: instant specification [137]-[158]; Prior art: [0081]-[0094]}. 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).
Conclusion
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