Prosecution Insights
Last updated: April 18, 2026
Application No. 18/034,616

THIN STEEL SHEET

Final Rejection §103
Filed
Apr 28, 2023
Examiner
SU, XIAOWEI
Art Unit
1733
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Nippon Steel Corporation
OA Round
2 (Final)
71%
Grant Probability
Favorable
3-4
OA Rounds
3y 5m
To Grant
83%
With Interview

Examiner Intelligence

Grants 71% — above average
71%
Career Allow Rate
527 granted / 741 resolved
+6.1% vs TC avg
Moderate +12% lift
Without
With
+12.1%
Interview Lift
resolved cases with interview
Typical timeline
3y 5m
Avg Prosecution
73 currently pending
Career history
814
Total Applications
across all art units

Statute-Specific Performance

§101
0.3%
-39.7% vs TC avg
§103
47.0%
+7.0% vs TC avg
§102
12.9%
-27.1% vs TC avg
§112
23.7%
-16.3% vs TC avg
Black line = Tech Center average estimate • Based on career data from 741 resolved cases

Office Action

§103
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. Status of Claims Claims 1-6 are amended. Claims 7-8 are new. Claims 1-8 are pending. Status of Rejections The rejections of c laims 1-6 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, have been withdrawn in view of the amendment. The rejection of c laims 1-6 under 35 U.S.C. 103 as being unpatentable over Pipard (US 2020/0354823), and further in view of Masuoka (US 2017/0306507) are maintained. Claim Rejections - 35 USC § 103 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 . Claim s 1- 8 are rejected under 35 U.S.C. 103 as being unpatentable over Pipard (US 2020/0354823), and further in view of Masuoka (US 2017/0306507). Regarding claims 1 , 3 and 7 , Pipard discloses (Abstract; [0054] to [0068]) a cold-rolled steel sheet with a composition that overlaps with the instant claimed composition and therefore it would have been obvious to one of ordinary skill in the art to have selected amounts of each element from the ranges disclosed in Pipard to produce a steel composition that meets the recited composition in claim 1. See MPEP 2144.05 I. Element Claim 1 (mass %) Pipard (mass %) Overlap (mass %) C 0.05-0.3 0.1-0.5 0.1-0.3 Si 0.1-4.0 0.5-2.5 0.5-2.5 Mn 0.8 – 6.0 1-3.4 1-3.4 Al 0.01-2.0 0.03-1.5 0.03-1.5 P 0-0.1 0.002-0.02 0.002-0.02 S 0-0.1 0-0.003 0-0.003 N 0-0.03 ≤0.01 0 – 0.01 Ni 0-0.05 0.01-3 0.01-0.05 Cu 0-0.5 0.01-2 0.01– 0.5 Cr 0-1 0.05-1 0.05-1 Mo 0-0.5 0.001-0.5 0.001-0.5 Ti 0-0.2 0.001-0.1 0.001-0.1 Nb 0-0.1 0.001-0.1 0.001-0.1 B 0-0.02 0-0.003 0-0.003 Sn 0-0.2 0 0 Sb 0-0.03 0 0 V 0-0.5 0-0.1 0-0.1 W 0-0.5 0 0 Ca 0-0.01 0.0001-0.005 0.0001-0.005 REM 0-0.01 0-0.1 0-0.01 Fe + Impurities Balance Balance Balance Steel Samples I1 to I5 in Table 1 of Pipard meet the recited composition in claim 1 and the [Sn]+0.3[Cu]+0.1[Cr] amount of Steel Samples I1 to I5 is in the range of 0.0054 to 0.0334, which meet the recited formula (1) in claim 1. Pipard does not teach the recited oxide film thickness. Masuoka teaches a cold-rolled steel sheet having major composition overlapping the composition of Pipard . Masuoka discloses that in order to enhance the chemical convertibility of steel sheet, the thickness of the oxide film is 150 nm or less ([0073]). Thus, it would be obvious to one of ordinary skill in the art to control the thickness of oxide film to 150 nm or less as taught by Masuoka in the process of Pipard in order to enhance the chemical convertibility of steel sheet as disclosed by Masuoka . The thickness of the oxide film disclosed by Masuoka overlaps the recited thickness in claim 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). Thus, the recited oxide thickness in claim 1 is a prima facie case of obviousness over Pipard in view of Masuoka . See MPEP 2144.05 I. Pipard in view of Masuoka does not teach the recited formula (2) and formula (3) in claim 1. However, these limitations are determined by the steel composition and the method of making the steel sheet. Pipard discloses that the steel is reheated to 1243-1250 ºC, hot-rolled with hot rolling finish temperature of 915-930 ºC, cooled at a cooling rate of 30-200 ºC/s, coiled at a temperature of 446-451 ºC, pickled and then cold-rolled ([0074] to [0085]; Table 2, Steel Sample I1 to I5), which is similar to the processing conditions disclosed in instant Specification. Masuoka discloses that in order to make a steel having enhanced chemical convertibility, the layer of SiO 2 and an Si-Mn based composition oxide is removed by a first pickling and a second pickling ([0069] to [0073]). Masuoka discloses an example that the first pickling is performed in a mixture of nitric acid (150 g/l) and hydrochloric acid (15 g/l) at 40 ºC for 10 seconds and the second pickling is performed in sulfuric acid (75 g/l) at 70 º C for 30 seconds (Table 2, Sample No. 49) . In view of the fact that Pipard in view of Masuoka teaches a steel sheet having composition that meets the composition recited in claim 1 ; and a method of making the steel sheet that are similar to the processing conditions disclosed in instant Specification and a two-step pickling process to remove the oxide layer from surface , one of ordinary skill in the art would expect that the steel sheet disclosed by Pipard in view of Masuoka to meet the recited formula (2) and formula (3) in claim 1. “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. Regarding claim 2, Pipard discloses that the steel is made by hot-rolling followed by cold rolling ([0078] to [0085]), which meets the limitation the steel-sheet is hot rolled as recited in claim 2. Further, “hot-rolled” is recognized as a process limitation in the product-by-process claim. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See MPEP 2113 [R-9]. Thus, claim 2 is obvious over Pipard in view of Masuoka . Regarding claim 4, Pipard discloses that coating is optional ([0086]), which meets the limitation recited in claim 4. Regarding claims 5-6, Pipard discloses that the tensile strength is 980-1071 MPa (Table 4, Steel Samples I1 to I5), which meets the limitations recited in claims 5-6. Regarding claim 8, Pipard discloses that the steel sheet is for automotive parts. Pipard is silent on the sheet thickness. Masuoka teaches a cold-rolled steel sheet having major composition overlapping the composition of Pipard and tensile strength overlapping the tensile strength of Pipard . Masuoka discloses that impart ing high strength to a cold-rolled steel sheet for an automobile member and to reduce a thickness of the cold-rolled steel sheet would achiev e weight reduction in a vehicle body of an automobile and improv e fuel economy of automobiles ([0002]) . Thus, it would be obvious to one of ordinary skill in the art to reduce the sheet thickness while improving its strength as taught by Masuoka in the process of Pipard in order to improve fuel economy of automobiles as disclosed by Masuoka . Masuka discloses that the sheet has a thickness of 1.8 mm ([0072]), which meets the limitation recited in claim 8. Affidavit The Affidavit under 37 CFR 1.132 filed 01/30/2026 is insufficient to overcome the rejection of claims 1-6 over Pipard in view of Masuoka as set forth in the last Office action because: The data provided was conducted under the following conditions: first pickling is performed in a mixture of nitric acid (150 g/l) and hydrochloric acid (15 g/l) at 40 ºC for 10 seconds and the second pickling is performed in HCl (5 0 g/l) at 4 0 ºC for 30 seconds . However, Masuoka discloses an example that the first pickling is performed in a mixture of nitric acid (150 g/l) and hydrochloric acid (15 g/l) at 40 ºC for 10 seconds and the second pickling is performed in sulfuric acid (75 g/l) at 70 ºC for 30 seconds (Table 2, Sample No. 49). The applicants have not provided data to show that when second pickling is performed in sulfuric acid (75 g/l) at 70 ºC for 30 seconds , the recited A/C and B/C do not meet formula (1) and formular (2). Further, instant Specification discloses that pickling is performed to remove surface concentrated layer containing Sn, Cu and Cr. Claim 1 recited the lowest value of [Sn]+0.3[Cu]+0.1[Cr] is 0.0001. Steel no. 107 has [Sn]+0.3[Cu]+0.1[Cr] of 0.014, which is 140-fold of the lowest value recited in claim 1. Steel no. 206 has [Sn]+0.3[Cu]+0.1[Cr] of 0.0 0 4, which is 40-fold of the lowest value recited in claim 1. The applicants have not provided data to show that the pickling condition disclosed in instant Specification is required when [Sn]+0.3[Cu]+0.1[Cr] is 0.0001. Since the applicants have not provided data under a stronger pickling condition disclosed in Masuoka and the applicants have not provided data on steel having [Sn]+0.3[Cu]+0.1[Cr] = 0.0001 , the argument that the steel disclosed by Pipard in view of Masuoka does not meet Formula (2) and Formula (3) is not persuasive. Response to Arguments Applicant's arguments filed 01/30/2026 have been fully considered but they are not persuasive. First, the applicants argued that Pipard and Masuoka do not teach or suggest a steel sheet having an oxide film having a thickness of 50 nm or less on its surface, and satisfying formula (2): A/C<0.30 and formula (3): B/C<3.0, where A is an area of a peak derived from SiO ₂ , B is an area of a peak derived from MnSiO ₃ , and C is an area of a peak derived from Mn2SiO4. In response, as set forth in the art rejection above, Masuoka discloses that in order to enhance the chemical convertibility of steel sheet, the thickness of the oxide film is 150 nm or less ([0073]). Thus, it would be obvious to one of ordinary skill in the art to control the thickness of oxide film to 150 nm or less as taught by Masuoka in the process of Pipard in order to enhance the chemical convertibility of steel sheet as disclosed by Masuoka . The thickness of the oxide film disclosed by Masuoka overlaps the recited thickness in claim 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). Thus, the recited oxide thickness in claim 1 is a prima facie case of obviousness over Pipard in view of Masuoka . See MPEP 2144.05 I. Masuoka discloses that in order to make a steel having enhanced chemical convertibility, the layer of SiO 2 and an Si-Mn based composition oxide is removed by a first pickling and a second pickling ([0069] to [0073]). Masuoka discloses an example that the first pickling is performed in a mixture of nitric acid (150 g/l) and hydrochloric acid (15 g/l) at 40 ºC for 10 seconds and the second pickling is performed in sulfuric acid (75 g/l) at 70 ºC for 30 seconds (Table 2, Sample No. 49). Since Masuoka teaches a two - step pickling process (first with non-oxidative acid and second with an oxidative acid H 2 SO 4 ) to remove layer of SiO 2 and an Si-Mn based composition oxide , one of ordinary skill in the art would expect that the steel sheet disclosed by Pipard in view of Masuoka to meet the recited Formula (2) and Formula (3). Second, the applicants argued that in order to cause the oxide film to contain more Mn-rich oxides, so as to satisfy formulas (2) and (3), thereby improving the chemical convertibility of the steel sheet, it is necessary to perform a relatively strong pickling treatment in the pickling step after the coiling step, to thereby remove scale and reliably eliminate the surface-concentrated layer containing Sn, Cu, Cr, and other elements (see paragraph [0070] of the present Specification). Specifically, by performing a first pickling by hydrochloric acid at an acid concentration of 7 to 10%, a pickling temperature of 80 to 95°C, and a pickling time of 30 to 100 seconds, then performing a second pickling by sulfuric acid at an acid concentration of 10 to 18%, a pickling temperature of 80 to 95°C, and a pickling time of 30 to 100 seconds, it is possible to remove the surface-concentrated layer containing Sn, Cu, Cr, and other elements (see paragraph [0070] of the present specification). In response, claim 1 recites that one or two of Cu, Cr and Sn amount can be zero as long as [Sn]+0.3[Cu]+0.1[Cr] is in the range of 0.0001 to 0.2. When [Sn]+0.3[Cu]+0.1[Cr] =0.0001, one of ordinary skill in the art would expect that the amount of Sn, Cu and Cr is very low in the surface layer and strong pickling treatment may not be required to remove the surface-concentrated layer containing Sn, Cu and Cr. Masuoka discloses an example that the first pickling is performed in a mixture of nitric acid (150 g/l) and hydrochloric acid (15 g/l) at 40 ºC for 10 seconds and the second pickling is performed in sulfuric acid (75 g/l) at 70 ºC for 30 seconds . Masuoka discloses that the steel sheet produced has excellent chemical convertibility (Table 2, Sample No. 49) , indicating the steel sheet meets the recited formula (2) and (3) . Third, the applicants argued that Comparative Examples 122 and 123 only include one pickling treatment, i.e., the first pickling by hydrochloric acid -or- the second pickling by sulfuric acid. As a result, the thickness of the oxide films became greater or the value of the A/C and/or B/C became higher, and the chemical convertibility decreased (see paragraph [0112] and Table 1-2). Comparative Example 216 was also only treated with one of the first pickling by hydrochloric acid or the second pickling by sulfuric acid. As such, the value of A/C also became high and the chemical convertibility decreased (see paragraph [0116] and Table 2-2). Pipard and Masuoka fail to teach a steel sheet having an oxide film satisfying the above formulas (2) and (3), and the required production conditions for obtaining any such oxide film ( a first pickling by hydrochloric acid and a second pickling by sulfuric acid ) . As such, the cited references are unable to achieve the claimed steel sheet and are also incapable of achieving the superior effects achieved by the present invention in terms of improvement of the chemical convertibility. In response, Comparative Examples 122 and 123 contain 0.39 wt % Cr and comparative example 216 contains 0.85 wt % Cr which are high and require strong pickling condition to remove surface layer containing Sn, Cu and Cr. However, c laim 1 recites that the content of Sn, Cu and Cr can be zero. In a case when [Sn]+0.3[Cu]+0.1[Cr]=0.0001, the two-step pickling may not be necessary. Further, Masuoka discloses a two-step pickling example : the first pickling is performed in a mixture of nitric acid (150 g/l) and hydrochloric acid (15 g/l) at 40 ºC for 10 seconds and the second pickling is performed in sulfuric acid (75 g/l) at 70 ºC for 30 seconds. Masuoka discloses that the steel sheet produced has excellent chemical convertibility (Table 2, Sample No. 49) . Since Masuoka disclose a two-step pickling process to achieve excellent chemical convertibility , which is the same purpose as the applicants disclose in instant application , one of ordinary skill in the art would expect that the steel sheet disclosed by Pipard in view of Masuoka to meet the recited formula (2) and formula (3). Fourth, the applicants argued that During the Interview of December 2, 2025, the Examiner took the position that the data in the Specification was allegedly not commensurate in scope with either the presently pending claims or the prior art steel sheet, because independent claim 1 encompasses contents of Cr, Cu, and Sn of "0%," whereas the Examples in the Specification contain Cr, Cu, and Sn in concentrations greater than "0%." Additionally, the Examiner noted that the Cr content for each of Comparative Examples 122 and 123 is 0.39 mass% and the Cu and Sn contents thereof are both greater than 0%. Applicant respectfully disagrees with the Examiner's assessment. In response, claim 1 recites that one or two of Cu, Cr and Sn amount can be zero as long as [Sn]+0.3[Cu]+0.1[Cr] is in the range of 0.0001 to 0.2. When [Sn]+0.3[Cu]+0.1[Cr]=0.0001, one of ordinary skill in the art would expect that the amount of Sn, Cu and Cr is very low in the surface layer and strong pickling treatment may not be required to remove the surface-concentrated layer containing Sn, Cu and Cr. Comparative examples 122 and 123 which contain 0.39 wt % Cr and comparative example 216 which contains 0.85 wt % Cr are not sufficient to prove that a two-step pickling is required to achieve the claimed formula (2) and formula (3). The two-step pickling condition disclosed by applicants may be essential for steel containing 0.39 wt % or greater Cr. The applicants have not provided evidence that the same two-step pickling is critical for treating steel containing [Sn]+0.3[Cu]+0.1[Cr]=0.0001 . Fifth, the applicants argued that a s is clear from the results in Table A of the enclosed Declaration, performing the 2-step pickling process taught in Masuoka instead of a strong pickling treatment based on the claimed combination of a first pickling by hydrochloric acid and a second pickling by sulfuric acid as disclosed in the present Specification results in steel sheets not satisfying formula (2) (A/C <0.3) or formula (3) (B/C <3.0). Accordingly, it has been demonstrated that neither the steel sheet of Masuoka nor the modified steel sheet of Pipard (modified in view of Masuoka ) can achieve or satisfy claimed formulas (2) and (3). The steel sheet of the present invention, satisfying the above formulas (2) and (3), cannot be obtained by the cited references. In response, t he data provided was conducted under the following conditions: first pickling is performed in a mixture of nitric acid (150 g/l) and hydrochloric acid (15 g/l) at 40 ºC for 10 seconds and the second pickling is performed in HCl (50 g/l) at 40 ºC for 30 seconds. However, Masuoka discloses an example that the first pickling is performed in a mixture of nitric acid (150 g/l) and hydrochloric acid (15 g/l) at 40 ºC for 10 seconds and the second pickling is performed in sulfuric acid (75 g/l) at 70 ºC for 30 seconds (Table 2, Sample No. 49). The applicants have not provided data to show that when second pickling is performed in sulfuric acid (75 g/l) at 70 ºC for 30 seconds, the recited A/C and B/C do not meet formula (1) and formular (2). Further, instant Specification discloses that pickling is performed to remove surface concentrated layer containing Sn, Cu and Cr. Claim 1 recited the lowest value of [Sn]+0.3[Cu]+0.1[Cr] is 0.0001. Steel no. 107 has [Sn]+0.3[Cu]+0.1[Cr] of 0.014, which is 140-fold of the lowest value recited in claim 1. Steel no. 206 has [Sn]+0.3[Cu]+0.1[Cr] of 0.004, which is 40-fold of the lowest value recited in claim 1. The applicants have not provided data to show that the pickling condition disclosed in instant Specification is required when [Sn]+0.3[Cu]+0.1[Cr] is 0.0001. Since the applicants have not provided data under a stronger pickling condition disclosed in Masuoka and the applicants have not provided data on steel having [Sn]+0.3[Cu]+0.1[Cr] = 0.0001, the argument that the steel disclosed by Pipard in view of Masuoka does not meet Formula (2) and Formula (3) is not persuasive. 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 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 FILLIN "Examiner name" \* MERGEFORMAT Xiaowei Su whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)272-3239 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT 8:00-5:00 . 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, FILLIN "SPE Name?" \* MERGEFORMAT Keith Hendricks can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT 5712721401 . 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. /XIAOWEI SU/ Primary Examiner, Art Unit 1733
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Prosecution Timeline

Apr 28, 2023
Application Filed
Sep 27, 2025
Non-Final Rejection — §103
Dec 02, 2025
Applicant Interview (Telephonic)
Dec 02, 2025
Examiner Interview Summary
Jan 30, 2026
Response after Non-Final Action
Jan 30, 2026
Response Filed
Mar 30, 2026
Final Rejection — §103 (current)

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