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 1-5 are pending. Claims 1-2 are amended and presented for this examination. Claims 3-5 are withdrawn.
Status of Previous Rejections
112 2nd paragraph rejection are withdrawn in view of amendment of claim 1.
However, a new ground of 112 2nd rejection is rendered in view of amendment of claim 1.
102/103 rejections over Kawasaki are maintained from previous office action 01/30/2026.
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 § 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 1-2 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 pre-AIA the applicant regards as the invention.
Instant claim 1 amended “wherein the hot rolled steel sheet further comprising N and B respectively, and a sum of the nitrogen and boron is 0.002 to 0.008%” is unclear as to whether it means either B or N can be absent, or both N and B must be present. Hence, 112 2nd paragraph rejection is rendered due to lack of meets and bounds of N and B respectively.
Second, according to MPEP § 2173.05(c), a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. In the present instance, claim 1 first recites the broad recitation “further comprising N and B respectively”, and the claim also recites “a sum of the nitrogen and boron is 0.002 to 0.008%” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
As a result of rejected claim 1, claim 2 is rejected under the same statue.
Claim Interpretation
Instant claim 1 amended “wherein the hot rolled steel sheet further comprising N and B respectively, and a sum of the nitrogen and boron is 0.002 to 0.008%” is interpreted as either B or N must be present and it is only the sum that must be between 0.002-0.008%.
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, instant claimed “after being process into a steel pipe” is intended use and preamble according to MPEP 2111.02 II.
Because the preamble merely states the purpose or intended use of the invention, rather than a claim limitation, no patentable weight would be given. See MPEP 2111.02 II
Kawasaki discloses a hot rolled steel sheet comprising Steel Grade J (Table 1) having C, Si, Mn, Al, N and B all within claimed ranges as illustrated in Table 1 below. Kawasaki’s Table 3 further discloses Steel No 31 using same Steel Grade J having same microstructure made of ferrite and pearlite and same ferrite grain size and TS as claimed.
Table 1
Element
Applicant
(weight %)
Kawasaki et al.
(weight %)
Steel No 31 using Steel Grade J
Within
(weight %)
C
<=0.15
0.073
0.073
Si
<=2.5
1.32
1.32
Mn
<=2
1.51
1.51
Al
<=0.05
0.03
0.03
N
>=0
0.0036
0.0036
B
>=0
0
0
N+B
0.002-0.008
0.0036
0.0036
450C+95Si+70Mn
>250
263.95
263.95
Microstructure
Ferrite+pearlite
Ferrite+pearlite
Ferrite+pearlite
Ferrite grain size
8-25 µm
13.8
13.8
TS (Claim 2)
>=385 MPa
614
614
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 31 of Kawasaki having same elemental composition, same microstructure, same ferrite grain size, satisfied relationship between C, Si and Mn; 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 first 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 31 using Steel Grade J, 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 31 using Steel Grade J 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.
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 incommensurate in scope of claim 1 which does not (emphasis added) require B must be present and must be greater than 0 in view of 112 2nd paragraph rejection above. Hence, Kawasaki’s Steel No 31 using Steel Grade J having N+B=0.0036% meets the claim amendment.
Applicant also argues Kawasaki contains no teaching or suggestion of adding N and B compositely within the range for the purpose of controlling compressive strength loss, Argument is completely incommensurate in scope of claim 1 which is directed to a product, not a process of adding N and B for controlling compressive strength loss.
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 31 having ferrite grain size being 13.8 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 composition 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. 31 (Steel Grade J) 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. 31 composition all within claimed ranges suggests it is not a hindsight. It is a fact. That is, allegation cannot take place over fact.
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 JENNY R WU whose telephone number is (571)270-5515. The examiner can normally be reached on 8:30 AM-5:00 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 on (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 an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JENNY R WU/Primary Examiner, Art Unit 1733
Prosecution Insights