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 .
Claim Objections
Claim 1 is objected to because of the following informalities:
In reference to claim 1, in line 21, after “unit area of” and before “mm2”, it is suggested to insert “1”. Appropriate correction is required.
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.
Claim 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (KR 2018-0068100) (Kim).
The examiner has provided a machine translation of KR 2018-0068100 Abstract and Description with the Office Action mailed 02/13/2025 and a machine translation of KR 2018-0068100 Claims herewith. The citation of prior art in the rejection refers to the provided machine translations.
In reference to claims 1 and 2, Kim teaches a high-strength steel ([0004]) (corresponding to a high strength steel sheet). The steel having a composition comprising, in weight %, C: 0.05 to 0.10%, Si: 0.01 to 1.0%, Mn: 1.0 to 2.0%, Al: 0.01 to 0.1%, Cr: 0.005 to 0.2%, Mo: 0.005 to 0.3%, P: 0.001 to 0.05%, S: 0.01% or less, N: 0.001 to 0.01%, Nb: 0.005 to 0.06%, Ti: 0.005 to 0.13%, V: 0.005 to 0.2%, B: 0.0003 to 0.002%, the remainder being Fe and unavoidable impurities ([0005]) (corresponding to by wt%, C: 0.02 to 0.08%, Si: 0.01 to 0.5%, Mn: 0.8 to 1.8%, Al: 0.01 to 0.1%, P: 0.001 to 0.02%, S: 0.001 to 0.01%, N: 0.001 to 0.01%, Ti: 0.0005 to 0.13%, Nb: 0.005 to 0.06%, Mo: 0.001 to 0.2%, the balance, and unavoidable impurities; further comprising: at least one of Cr, V, Ni, and B in a total content of 0.5% or less). The microstructure contains 1 to 5% area of perlite in a ferrite matrix (i.e., 99-95 area% ferrite) ([0005]) (corresponding to a misconstrue comprising: pearlite of 1 to 5 area% and a remaining of ferrite).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Kim further teaches steel has a yield ratio (yield strength/tensile strength) of 0.85 to 0.95 ([0053]). While Kim teaches the yield ratio is 0.85, it is apparent, however, that the instantly claimed yield ratio of ~0.84 (i.e., about 0.84) and that taught by Kim are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the yield ratio disclosed by Kim and the yield ratio disclosed in the present claims and further given the fact that no criticality is disclosed in the present invention with respect to the yield ratio, it therefore would have been obvious to one of ordinary skill in the art that the yield ratio of 0.84 disclosed in the present claims is but an obvious variant of the yield ratio taught by Kim, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Kim further teaches working example 1 and working example 3 have the formulas shown in the table below, each of the C, Si, Mn, Al, P, S, N, Ti, Nb, Mo, Cr, V and B values fall within the presently claimed ranges (Table 1). A │K│value and RA value for working example 1 and working example 3 can be calculated using the presently claimed Relational Expression 1 and Relational Expression 2, each of working example 1 and working example 3 have a │K│value of 0.8 and a RA value of 7.1 and 8.6, respectively (corresponding to wherein a │K│value is 0.8 or less defined in the following Relational Expression 1, an RA value is 5 to 9.2 defined in the following Expression 2; [Relational Expression 1] │K│ = -0.555-1.27[C]+0.043[Si]-0.113[Mn]+0.08[Ti]+0.086[Nb]2; [Relational Expression 2] RA = ([Ti]/48-[Mo]/96+[V]/51)/([Nb]/93)).
C
Si
Mn
Cr
Al
P
S
N
Mo
Ti
Nb
V
B
0.065
0.02
1.6
0.01
0.03
0.01
0.003
0.004
0.05
0.08
0.03
0.005
0.0005
0.07
0.2
1.8
0.01
0.05
0.01
0.003
0.004
0.007
0.08
0.04
0.1
0.0004
Alternatively, Kim teaches the steel composition including each of C, Si, Mn, Ti, Nb, Mo and V in overlapping amounts with the presently claimed. Within the overlapping ranges, │K│value and RA value can be calculated such that the resulting values would overlap the claimed ranges of 0.8 or less and 5-9.2, respectively.
As set forth in MPEP 2144.05, in the case where the claimed range “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).
- Kim further teaches a method for manufacturing the high-strength steel including reheating a slab with the aforementioned composition at a reheating temperature of 1200-1350ºC ([0056]-[0058]). Hot rolling the reheated slab in a temperature range of 850 to 1150ºC, cooling the hot rolled plate to 550 to 700ºC at a cooling rate of 10 to 70ºC/sec ([0059]-[0063]). The cooled plate is then coiled and cooled a second time at a temperature less than 300ºC and a cooling rate of 0.01 to 100 ºC/sec (i.e., 36ºC/h to 360,000ºC/h ([0061]-[0062]; [0064]-[0068]). This method is substantially identical to the method disclosed in the instant application’s disclosure at [0032]-[0043], [00139]-[00154] and Table 2.
Given that the high-strength steel of Kim is substantially identical to the presently claimed high strength steel sheet in composition, structure and produced by a substantially identical method to the method disclosed in the instant application’s disclosure at [0032]-[0043], [00139]-[00154] and Table 2, the high-strength steel of Kim would inherently have a CN value of 1.5 or more, wherein CN = NGB ⅹ 103 ⅹ NG-1, wherein NGB is a number of precipitates having a diameter of 50 nm or less formed within a grain boundary and NG is a number of crystal gains of ferrite in a unit area of 1 mm2 and the high-strength steel of Kim would inherently have a yield ratio change ratio after heat treatment at 100 to 600ºC of 10% or less, compared to a yield ratio before heat treatment.
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).
In reference to claim 3, Kim teaches the limitations of claim 1, as discussed above. Kim further teaches the heigh-strength steel has a tensile strength of 590 MPa or more ([0053]). Kim further teaches working examples have an elongation of 16-23% (Table 3) (corresponding to a tensile strength is 590 MPa or more, an elongation is 19% or more).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Jung (WO 2019/125091).
It is noted that when utilizing WO 2019/125091, the disclosures of the reference are based on US 2020/0347469 which is an English language equivalent of the reference. Therefore, the paragraphs cited with respect to WO 2019/125091 are found in US 2020/0347469.
In reference to claims 1 and 2, Jung teaches a high-strength steel material having an excellent low yield ratio characteristic including by wt %: 0.06 to 0.12% of C, 0.2 to 0.5% of Si, 1.5 to 2.0% of Mn, 0.003 to 0.05% of Al, 0.01% or less of N, 0.02% of less of P, 0.003% or less of S, 0.05 to 0.5% of Cr, 0.05 to 0.5% of Mo, 0.01 to 0.05% of Nb, and 0.0005 to 0.005% of Ca, with a balance of Fe and other unavoidable impurities ([0009]) (corresponding to a high strength steel sheet, comprising: by wt%, C: 0.02 to 0.08%, Si: 0.01 to 0.5%, Mn: 0.8 to 1.8%, Al: 0.01 to 0.1%, P: 0.001 to 0.02%, S: 0.001 to 0.01%, N: 0.001 to 0.01%, Nb: 0.005 to 0.06%, Mo: 0.001 to 0.2%, and a balance of Fe and unavoidable impurities). The steel material may further include, by wt%, one or two or more of: 0.05 to 0.3% of Ni, 0.05 to 0.3% of Cu, 0.005 to 0.02% of Ti, and 0.0005 to 0.0015% of B ([0012]) (corresponding to Ti: 0.0005 to 0.13%; further comprising: at least one of Cr, V, Ni, and B in a total content of 0.5% or less). The steel material has a yield ratio of 90% or less (i.e., 0.90 or less) ([0014]; Table 3) (corresponding to a yield ratio of 0.8~0.84).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
The microstructure includes polygonal ferrite and a residual structure, wherein the residual structure includes acicular ferrite, pearlite and martensite ([0061]). A total fraction of pearlite and martensite in the residual structure is 10% or less relative to a section area of the entire steel material ([0061]) (corresponding to a microstructure comprising: pearlite and a remaining of ferrite).
While Jung does not explicitly teach the pearlite present in an area% or 1 to 5, however, Jung teaches a mixture of pearlite and martensite present in an amount of 10% or less. When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Jung further teaches working example 4 includes each of C, Si, Mn, Al, P, S, N, Ti, Nb, Mo, Cr and B values fall within the presently claimed ranges (Table 1). A │K│value and RA value for working example 4 can be calculated using the presently claimed Relational Expression 1 and Relational Expression 2, the│K│value is 0.8 and the RA value is 5.6 (corresponding to wherein a │K│value is 0.8 or less defined in the following Relational Expression 1, an RA value is 5 to 9.2 defined in the following Expression 2; [Relational Expression 1] │K│ = -0.555-1.27[C]+0.043[Si]-0.113[Mn]+0.08[Ti]+0.086[Nb]2; [Relational Expression 2] RA = ([Ti]/48-[Mo]/96+[V]/51)/([Nb]/93)).
Alternatively, Jung teaches the steel composition including each of C, Si, Mn, Ti, Nb, Mo and V in overlapping amounts with the presently claimed. Within the overlapping ranges, the│K│value and RA value can be calculated such that the resulting values would overlap the claimed ranges of 0.8 or less and 5-9.2, respectively.
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Given that the high-strength steel material of Jung is substantially identical to the presently claimed high strength steel sheet in composition, structure and produced by a substantially identical method (i.e., slab reheating, hot rolling, cooling [0016]; [0066]-[0080]), the high-strength steel material of Jung would inherently have a CN value of 1.5 or more, wherein CN = NGB ⅹ 103 ⅹ NG-1, wherein NGB is a number of precipitates having a diameter of 50 nm or less formed within a grain boundary and NG is a number of crystal gains of ferrite in a unit area of 1 mm2 and the high-strength steel material of Jung would inherently have a yield ratio change ratio after heat treatment at 100 to 600ºC of 10% or less, compared to a yield ratio before heat treatment.
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).
In reference to claim 3, Jung teaches the limitations of claim 1, as discussed above. Jung further teaches the steel has a tensile strength of 590 MPa or more (Table 3) (corresponding to a tensile strength of 590 MPa or more). As set forth in MPEP 2144.05, in the case where the claimed range “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).
Given that the high-strength steel material of Jung is substantially identical to the presently claimed high strength steel sheet in composition, structure and produced by a substantially identical method, the high-strength steel material of Jung would inherently have an elongation of 19% or more.
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).
Response to Arguments
The Claim Objections of record are maintained and restated above, while the examiner agrees line 22 recites the NG number defines the unit area as 1 mm2, this does not resolve the issue of the NGB not having a unit area of 1 mm2. Therefore, it is suggest to insert a “1” before “mm2” in line 21 of claim 1.
Applicant primarily argues:
“In contrast, Kim has no concern about the thermal stability property after the heat treatment.
To be specific, the claimed invention has a feature that yield ratio change ratio of the steel sheet after heat treatment at 100 to 600ºC is 10% or less, compared to a yield ratio before heat treatment.”
Remarks, p. 7
The examiner respectfully traverses as follows:
The examiner agrees that Kim does not explicitly discuss a thermal stability property after heat treatment. However, as discussed in the rejection above, Kim disclose a high-strength steel having a│K│value of 0.8 or less. As Applicant previously noted, when the │K│value exceeds 0.8, the thermal stability becomes insufficient. Thus, the change in the yield ratio before and after a heat treatment at 100 to 600ºC increases 10% or more (Remarks filed 05/14/2025, p. 7). Thus, absent evidence to the contrary, it is clear that when the │K│value is 0.8 or less the steel will necessarily have the claimed thermal stability property after heat treatment.
Given that Kim teaches the steel has a│K│value of 0.8 or less, the steel of Kim will inherently include a yield ratio change ratio after a heat treatment at 100 to 600ºC being 10% or less compared to the yield ratio before the heat treatment.
Further, it is noted, “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979).” See MPEP 2145 II. Further, the fact that Applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant further argues:
“Applicant respectfully argues that Kim discloses only a yield ratio of the steel sheet before carrying out any heat treatment at 100 to 600ºC, distinguishably from the claimed invention. In other words, Kim only discloses the high yield ratio steel sheet of 0.85~0.95 before the heat treatment.
In contrast, the claimed invention is designed to have a yield ratio of 0.8~0.84 before the heat treatment.
Thus, Applicant respectfully submits that the claimed invention be distinguished from that of Kim, in view of the claimed yield ratio range of the steel sheet before the heat treatment at 100 to 600ºC.”
Remarks, p. 7
The examiner respectfully traverses as follows:
As discussed above, given that Kim teaches the steel has a│K│value of 0.8 or less, the steel of Kim will inherently include a yield ratio change ratio after a heat treatment at 100 to 600ºC being 10% or less compared to the yield ratio before the heat treatment.
While Kim teaches a yield ratio of 0.85 to 0.95 and the present claims require a yield strength of 0.8~0.84. It is apparent, however, that the instantly claimed amount of ~0.84 (i.e., about 0.84) and that taught by Kim (i.e., 0.85) are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the yield ratio disclosed by Kim and the yield ratio disclosed in the present claims and further given the fact that no criticality is disclosed in the present invention with respect to the yield ratio, it therefore would have been obvious to one of ordinary skill in the art that the yield ratio of 0.84 disclosed in the present claims is but an obvious variant of the yield ratio disclosed in Kim, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Therefore, Applicant's arguments filed 01/23/2026 have been fully considered but they are 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 Mary I Omori whose telephone number is (571)270-1203. The examiner can normally be reached M-F 8am-4pm.
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, Humera Sheikh can be reached at (571) 272-0604. 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.
/MARY I OMORI/Primary Examiner, Art Unit 1784