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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/14/2026 has been entered.
Status of Claims
Claims 1-5 are pending. Claims 1-2 presented for this examination. Claims 3-5 are withdrawn. Claim 1 is amended.
Status of Previous Rejections
112 2nd paragraph rejection are withdrawn in view of amendment of claim 1.
102/103 rejections over Kawasaki are maintained from previous office action 05/14/2026.
Priority
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 07/16/2025, 03/28/2025, 08/13/2024 and 05/17/2023 and is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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) 1-2 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kawasaki (US20140360634A1 from IDS 08/13/2024).
As for claims 1-2, it is noted instant claim 1 is amended to require presence of both N and B. A different Steel No of Kawasaki teaches the amendment as follows:
Kawasaki discloses a hot rolled steel sheet comprising Steel Grade I (Table 1) having C, Si, Mn, Al, and presence of both N and B, as well as sum of N+B all within claimed ranges as illustrated in Table 1 below. Kawasaki’s Table 3 further discloses Steel No 30 using same Steel Grade I having same microstructure made of ferrite and pearlite and same ferrite grain size and TS as claimed as illustrated in same Table 1 below. (see Tables 1, 3 and 4 of Kawasaki)
Table 1
Element
Applicant
(weight %)
Kawasaki et al.
(weight %)
Steel No 30 using Steel Grade I
Within
(weight %)
C
<=0.15
0.089
0.089
Si
<=2.5
1.46
1.46
Mn
<=2
1.39
1.39
Al
<=0.05
0.029
0.029
N
>=0
0.0029
0.0029
B
>=0
0.002
0.002
N+B
0.002-0.008
0.0049
0.0049
450C+95Si+70Mn
>250
276.05
276.05
Microstructure
Ferrite+pearlite
Ferrite+pearlite
Ferrite+pearlite
Ferrite grain size
8-25 µm
13.4
13.4
TS (Claim 2)
>=385 MPa
613
613
Kawasaki does not expressly disclose instant claim 1 required Relational Expression 1 being less than 20% and impact toughness as required by instant claim 2. They are inherent characteristic of claimed product according to MPEP 2112.01.
When the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the prior art products necessarily possess the characteristics of the claimed product. See MPEP 2112.01.
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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) In the instant case, examiner has presented closest prior art Steel No 30 using steel Grade I of Kawasaki having same elemental composition, same microstructure, same ferrite grain size, satisfied relationship between C, Si and Mn; same N+B and same TS as required by instant claimed invention. Instant claimed characteristic would be expected absent clear and convincing evidence of the contrary.
Response to Argument
Applicant’s argument filed on 08/14/2026 is considered but is unpersuasive in view of new citation from same prior art.
Applicant first argues Kawasaki Table 1 reports N 0.0036% for steel Grade J and reports No B, argument is not persuasive because current art rejection is based on steel Grade I of Kawasaki, not (emphasis added) steel Grade J. Steel Grade I explicitly discloses presence of both N and B and sum of N and B is 0.0049 as illustrated in Table 1 above, which is within claimed 0.002-0.008%. Hence, all argument related with Steel Grade J of Kawasaki is incommensurate in scope of current art rejection based on new citation, Steel Grade I.
Applicant then argues criticality of N+B addition is confirmed by Comparative Examples 4 and 5, argument is not persuasive because “Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range, see MPEP § 716.02(d) - § 716.02(e)”. In the instant case, closest prior art is Kawasaki’s Steel No 30 using Steel Grade I, not instant application comparative Examples 4 and 5. That is, examiner has presented evidence. Burden is then shifted to the applicant. Because applicant fails to meet such burden by demonstrating closest prior art, Kawasaki’s Steel No 30 using Steel Grade I having same elemental composition, same microstructure, same ferrite grain size, satisfied relationship between C, Si and Mn; and same TS not have claimed impact toughness and meeting Relational Expression 1, 102/103 rejection is maintained. It should further be noted comparative Examples 4 and 5 is merely used to demonstrate criticality of claimed upper limit 0.008%. Since Kawasaki’s Steel No 30 using Steel Grade I has sum of N+B within claimed 0.002-0.008% and same ferrite size as claimed, it is expected to meet Relational Expression 1 and impact toughness absent evidence of contrary.
Applicant argues Kawasaki does not teach or suggests the composite addition of N and B as a required feature because B is not an essential element but merely an optional one. Argument is unpersuasive because Kawasaki’s Steel No 30 using Steel Grade I having both B and N and N+B=0.0049% meets the claim amendment.
Applicant further argues that present invention requires a specific temperature change of steel sheet for 3 seconds immediately before coiling must be limited to less than 20 degree C because exceeding this temperature change causes the ferrite grain size to exceed 25 microns, argument is incommensurate in scope of current rejection which does not (emphasis added) rely on process condition such as temperature change less than 20 degree C to arrive at claimed ferrite grain size. The fact Kawasaki’s Steel No 30 having ferrite grain size being 13.4 micron is sufficient to reject claim 1 required ferrite grain size range.
Applicant also argues because Kawasaki neither teaches nor suggests the technical concept of compositely adding N and B in the claimed range to control compressive strength loss (as measured by Relational Expression 1), there is no basis in the prior art for a skilled artisan to arrive at the present claims through any modification or routine optimization of Kawasaki, argument is not persuasive because any modification or routine optimization of Kawasaki is completely not necessary because current 102/103 rejection is not based on any modification or routine optimization of prior art at all.
Applicant argues that even assuming a skilled artisan somehow identified a motivation to modify Kawasaki's composition by compositely adding both N and B in the manner claimed, there would have been no reasonable expectation of success in arriving at the claimed invention, argument is incommensurate in scope of current rejection which does not (emphasis added) require modifying Kawasaki's steel Grade I at all.
Applicant argues Kawasaki provides no guidance toward these specific compositional and process relationships, and a skilled artisan attempting to modify Kawasaki to achieve the claimed properties would face a complex, multi-variable optimization problem with no roadmap to success, argument is incommensurate in scope of current rejection which does not (emphasis added) require modifying Kawasaki to achieve the claimed properties.
Applicant finally argues Examiner identified Kawasaki's Steel No. 31 (Steel Grade J) and pointed to its compositional overlap with the claimed ranges for C, Si, Mn, Al, and N+B. However, the Examiner was able to identify this specific embodiment of Kawasaki only by reference to the present application's claim limitations, the very definition of hindsight.
Such argument completely lacks evidence support. First, Kawasaki's Steel No. 30 (Steel Grade O) compositions are within claimed ranges for C, Si, Mn, Al, and N+B, not overlap. Hence, applicant’s overlap statement is in clear error. Second, the fact Kawasaki's Steel No. 30 composition all within claimed ranges suggests it is not a hindsight. It is a fact. That is, allegation cannot take place over fact.
Applicant also argues comparative Examples 12 and 13 demonstrates a process change result in grain size above claimed range and impact toughness below 50 J, it should be noted closest prior art is Kawasaki’s Steel No 30 using Steel Grade I, not instant application comparative Examples 12 and 13. Applicant fails to present any evidence that Kawasaki’s Steel No 30 using Steel Grade I having same elemental composition, same ferrite grain size, same relationship between C, Si and Mn, same N+B, not having value less than 20% and impact toughness.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNY R WU whose telephone number is (571)270-5515. The examiner can normally be reached on 8:30 AM-5:00 PM.
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/JENNY R WU/Primary Examiner, Art Unit 1733
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