DETAILED ACTION
Status of Claims
Claims 1-9, 12-18, and 20 are pending. Of the pending claims, claims 1-9, 12, 13, and 16 are presented for examination on the merits, and claims 14, 15, 17, 18, and 20 are withdrawn from examination.
Claims 1 and 2 are currently amended. Claim 17 is withdrawn-currently amended.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/06/2025 was filed after the mailing date of the non-final Office action on 08/12/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Status of Previous Objection to the Specification
The previous objection to the specification is withdrawn in view of the amendment to the specification filed on 11/06/2025.
Status of Previous Claim Rejections Under 35 USC § 112
The previous rejections of claims 1-9, 12, 13, and 16 are withdrawn in view of the amendments to claims 1 and 2.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-9, 12, 13, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0119774 (A1) to Thiessen et al. (“Thiessen”).
Regarding claims 1-9, 13, and 16, Thiessen teaches a flat steel product having a tensile strength (Rm) of at least 950 MPa (980 MPa-grade steel) (abstract; para. [0015]), which encompasses the claimed range. The steel may be a hot-rolled product (hot-rolled or pickled steel). Para. [0101].
The microstructure of the steel is not less than 90% by area of martensite and not more than 2% by volume of residual austenite (martensitic-retained austenitic steel) (para. [0039]-[0041]), which falls within the claimed range.
The steel achieves hole expanding ratios of at least 30% (ultra-high-hole expandability) (para. [0043]; Table 3), which encompasses the claimed range.
The steel composition includes the following elements in percent by weight (para. [0016]-[0028], [0046]-[0065]): (table on following page)
Element
Claim 1
US 2019/0119774 A1
C
0.03 - 0.06
0.05 - 0.20
Si
0.8 - 2.0
0.2 - 1.5
Mn
1.0 - 2.0
1.0 - 3.0
P
≤ 0.02
up to 0.02
S
≤ 0.003
up to 0.005
Al
0.02 - 0.08
0.01 - 1.5
N
≤ 0.004
up to 0.008
Mo
0.1 - 0.5
0.05 - 0.2
Ti
0.01 - 0.05
0.005 - 0.2
O
≤ 0.0030
-------------
Cr
≤ 0.5
0.05 - 1.0
B
≤ 0.002
0.0001 - 0.005
Ca
≤ 0.005
-------------
Nb
≤ 0.06
0.0001 - 0.005
V
≤ 0.05
-------------
Cu
≤ 0.5
-------------
Ni
≤ 0.5
-------------
Fe & unavoidable
balance
balance
impurities
The carbon can be as low as 0.05% by weight (ultra-low carbon). Para. [0046].
The yield point is at least 800 MPa (para. [0015]; Table 3), which is identical to the claimed range.
The elongation at break (A50) is at least 8% (para. [0015]; Table 3), which encompasses the claimed range.
The overlap between the ranges taught in the prior art and recited in the claims creates a prima facie case of obviousness. MPEP § 2144.05(I). It would have been obvious for one of ordinary skill in the art to select from among the prior art ranges because there is utility over an entire range disclosed in the prior art.
Thiessen is silent as to whether the steel would pass the claimed cold bending test. However, it is well established that when a material is produced by a process that is identical or substantially identical to that of the claims and/or possesses a structure or composition that is identical or substantially identical to that of the claims, any claimed properties or functions are presumed to be inherent. Such a finding establishes a prima facie case of anticipation or obviousness. See MPEP § 2112.01.
In the present instance, the chemical composition, microstructure, and mechanical properties (tensile strength, yield strength, elongation, and hole expansion ratio) of Thiessen satisfy the claimed ranges. Therefore, any claimed behavior, such as passing a cold bending test, would also be expected of Yasuhara’s steels given their like composition, structure, and other mechanical properties.
Regarding claim 12 and further regarding claim 13, Thiessen is silent regarding the impact toughness of the steel. However, as noted above, the chemical composition, microstructure, and mechanical properties (tensile strength, yield strength, elongation, and hole expansion ratio) of Thiessen’s steels satisfy the claimed ranges. Therefore, any claimed properties, such as impact toughness, would also be expected to be present in the steels of Thiessen given its like composition, structure, and other mechanical properties. See MPEP § 2112.01.
Claims 1-9, 12, 13, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over US 2015/0329950 (A1) to Azuma et al. (“Azuma”).
Regarding claims 1-9, 13, and 16, Azuma teaches a high-strength, hot-rolled steel sheet having a tensile strength of 980 MPa or more (980 MPa-grade steel). Abstract; para. [0001]. The hot-rolled steel can be subjected to pickling (hot-rolled or pickled steel). Para. [0149].
A main phase can be tempered martensite and retained austenite, if present, is limited to 10% or less by volume (martensitic-retained austenitic steel) (para. [0091], [0096]), which overlaps the claimed range.
The steel composition includes the following elements in percent by mass (para. [0025]-[0044], [0062]-[0080], [0116]-[0131]):
Element
Claim 1
US 2015/0329950 A1
C
0.03 - 0.06
0.01 - 0.2
Si
0.8 - 2.0
0 - 2.5
Mn
1.0 - 2.0
0 - 4.0
P
≤ 0.02
less than or equal to 0.10
S
≤ 0.003
less than or equal to 0.03
Al
0.02 - 0.08
0 - 2.0
N
≤ 0.004
0 - 0.01
Mo
0.1 - 0.5
0.01 - 1.0
Ti
0.01 - 0.05
Ti and/or Nb: 0.01 - 0.30
O
≤ 0.0030
less than or equal to 0.01
Cr
≤ 0.5
0.01 - 2.0
B
≤ 0.002
0 - 0.01
Ca
≤ 0.005
0.0005 - 0.01
Nb
≤ 0.06
Ti and/or Nb: 0.01 - 0.30
V
≤ 0.05
0.01 - 0.3
Cu
≤ 0.5
0.01 - 2.0
Ni
≤ 0.5
0.01 - 2.0
Fe & unavoidable
balance
balance
impurities
In Table 3-1 and Table 3-2, various inventive examples have yield point (YP) and elongation (transverse A50) values that fall within the claimed range of ≥ 800 MPa and ≥ 10%.
The overlap between the ranges taught in the prior art and recited in the claims creates a prima facie case of obviousness. MPEP § 2144.05(I). It would have been obvious for one of ordinary skill in the art to select from among the prior art ranges because there is utility over an entire range disclosed in the prior art.
Azuma teaches that hole expandability should not be degraded (para. [0117], [0118], [0121], [0122], [0130]), but does not disclose a particular value. Azuma is also silent as to whether the steel would pass the claimed cold bending test.
However, it is well established that when a material is produced by a process that is identical or substantially identical to that of the claims and/or possesses a structure or composition that is identical or substantially identical to that of the claims, any claimed properties or functions are presumed to be inherent. Such a finding establishes a prima facie case of anticipation or obviousness. See MPEP § 2112.01.
In the present instance, the chemical composition, microstructure, and mechanical properties (tensile strength, yield strength, and elongation) of Azuma satisfy the claimed ranges. Therefore, any claimed behavior, such as passing a cold bending test and hole expansion ratio, would also be expected of Azuma’s steels given their like composition, structure, and other mechanical properties.
Regarding claim 12 and further regarding claim 13, Azuma teaches that the steel is excellent in low temperature toughness at -40oC (para. [0014], [0154]; Table 3-1 and 3-2), but is silent regarding specific measured values of impact toughness. However, as noted above, the chemical composition, microstructure, and mechanical properties (tensile strength, yield strength, and elongation) of Azuma’s steels satisfy the claimed ranges. Therefore, any claimed properties, such as impact toughness, would also be expected to be present in the steels of Azuma given their like composition, structure, and other mechanical properties. See MPEP § 2112.01.
Double Patenting
The previous provisional nonstatutory double patenting rejection of instant claims 1-9, 12, 13, and 16 over claim 10 (claim set filed on 02/03/2026) of copending Application No. 18/043,217 (reference application) is maintained. Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claim recites a chemical composition, microstructure, and properties that fall within or overlap the chemical composition, microstructure, and properties of the instant claims. A terminal disclaimer has not been filed.
Response to Arguments
Applicant's arguments filed 11/06/2025 have been fully considered, but they are not persuasive.
Applicant argues that the claimed steel is not obvious over Thiessen because Thiessen discloses a preferred Si content of at most 0.63% by weight and a favorable sum of Si+Al of not more than 0.4% by weight, whereas the claim requires a minimum Si content of 0.8%. Applicant further states that the highest Si contents in Thiessen in a working example and comparative example are 0.40% (Steel H) and 0.72% (Steel F), respectively, none of which falls within the claimed range, and that Steel H has a hole expansion ratio lower than 80%.
In response, this argument is not persuasive because examples and preferred embodiments are not evidence of teaching away when acceptable broader ranges are taught by the prior art. See MPEP § 2123(II). In other words, Thiessen’s invention is not limited in scope to preferred ranges and specific examples in its tables. Thiessen teaches that Si can be as high as 1.5% by weight (para. [0054]; claim 10) and that the sum total of Si+Al can be as high as 1.7% by weight (para. [0056]; claim 15). These values align with the presently claimed invention where Si ranges from 0.8% to 2.0% and Al ranges from 0.02% to 0.08%, their sum total ranging from 0.82% to 2.08% by weight.
With respect to hole expansion ratio, the mechanical properties in the tables are representative of what Thiessen’s steels can achieve, but Thiessen’s invention is not limited thereto. Thiessen discloses a minimum hole expansion ratio of 30% and shows various examples 80% or higher (Table 3). Thus, the invention as claimed remains obvious over Thiessen.
Applicant argues that the claimed steel is not obvious over Thiessen because Thiessen teaches that at least half of the martensite is annealed martensite and the present method of manufacture does not involve annealing and therefore does not produce a steel with annealed martensite.
In response, the argument is not commensurate in scope with the claimed invention because the claim neither does excludes annealed martensite as a structure in the steel nor does it specify the type of martensite in the steel. Therefore, the fact that the martensite in Thiessen’s steels is at least half annealed martensite does not distinguish it from the present steel as claimed.
Applicant argues Thiessen’s method of manufacture involves producing a flat steel product from an existing uncoated flat steel product, not a method for manufacturing an uncoated flat steel product per se, and therefore does not disclose the claimed steel.
In response, the argument is not commensurate in scope with the claimed invention because the claim is directed to a product, not a method of manufacture, and the claims do not preclude the claimed steel from being formed from an existing steel product. As long as the prior art teaches or suggests the composition, structure, and properties as claimed, the prior art need not disclose Applicant’s preferred method of manufacture to address the claim limitations.
Applicant argues that Azuma’s method of manufacture differs from the present method of manufacture in at least the following aspects: (1) heating temperature; (2) air cooling step; and (3) cooling step of implementing a cooling rate of ≥ 50oC/s to a martensite start temperature Ms or lower.
In response, the argument is not commensurate in scope with the claimed invention because the claim is directed to a product, not a method of manufacture. As long as the prior art teaches or suggests the composition, structure, and properties as claimed, the prior art need not disclose Applicant’s preferred method of manufacture to address the claim limitations.
With respect to aspect (1), Azuma discloses heating the casting slab to a temperature of 1200oC or more (para. [0139]). This range overlaps the maximum cast blank/ingot heating temperature of 1100-1200oC (claim 14) at its upper limit. Thus, it is inaccurate to state that the present method limits heating to less than 1200oC.
With respect to aspect (2), Azuma discloses that air cooling may be performed at temperatures from the final rolling temperature to 400oC, provided that ferrite is not formed during the cooling process (para. [0142]). Thus, Azuma does disclose an embodiment where air cooling may take place.
With respect to aspect (3), the Examiner acknowledges that Azuma breaks up the cooling into two parts, with a rate of cooling rate of ≥ 50oC/s down to 400oC and a cooling rate of less than 50oC/s at temperatures less than 400oC. However, the present invention is directed to a steel (product), not a process; therefore, the prior art need not disclose Applicant’s preferred method of manufacture. In the present instance, Azuma’s cooling step produces the claimed microstructure (martensite with limited retained austenite) (para. [0095], [0096]). Therefore, Azuma’s steels are not distinguished from the present steel as claimed.
Conclusion
THIS ACTION IS MADE FINAL. 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 VANESSA T. LUK whose telephone number is (571)270-3587. The examiner can normally be reached Monday-Friday 9:30 AM - 4:30 PM ET.
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/VANESSA T. LUK/Primary Examiner, Art Unit 1733
February 23, 2026