DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/19/2026 has been entered.
Status of Claims
Claims 1-9, 12-18, 20, and 21 are pending. Of the pending claims, claims 1-9, 12, 13, 16, and 21 are presented for examination on the merits, and claims 14, 15, 17, 18, and 20 are withdrawn from examination.
Claim 1 is currently amended. Claim 21 is new.
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, 16, and 21 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, 16, and 21, Azuma teaches a high-strength, hot-rolled steel sheet having a tensile strength of 980 MPa or more (980 MPa-grade steel, tensile strength ≥ 980 MPa). 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
Carbon (C) can be as low as 0.01% by mass (ultra-low-carbon). Para. [0117].
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.
Claims 1-9, 12, 13, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2015-196891 (A) to Kanzawa et al. (“Kanzawa”) (abstract and computer-generated translation are attached).
Regarding claims 1-9, 13, and 21, Kanzawa discloses a high-strength hot-rolled steel sheet that may be pickled, has a tensile strength of 980 MPa or more, and is excellent in stretch flangeability, low-temperature toughness, and hole expansion ratio (λ) (980 MPa-grade, hot-rolled or pickled ultra-high-hole expandability steel, tensile strength ≥ 980 MPa). Abstract; p. 2 – items (1) and (2); p. 10 – sixth through ninth full paragraphs.
The chemical composition of the steel contains the following elements in percent by mass (p. 6 – tenth full paragraph to p. 8):
Element
Claim 1
JP 2015-196891 A
C
0.03 - 0.06
0.01 - 0.20
Si
0.8 - 2.0
2.50 or less (excl. 0)
Mn
1.0 - 2.0
4.00 or less (excl. 0)
P
≤ 0.02
0.10 or less (excl. 0)
S
≤ 0.003
0.03 or less (excl. 0)
Al
0.02 - 0.08
0.001 - 2.00
N
≤ 0.004
0.01 or less (excl. 0)
Mo
0.1 - 0.5
0.01 - 1.00
Ti
0.01 - 0.05
0.01 - 0.30
O
≤ 0.0030
0.01 or less (excl. 0)
Cr
≤ 0.5
0.01 - 2.00
B
≤ 0.002
-------------
Ca
≤ 0.005
0.0005 - 0.01
Nb
≤ 0.06
0.01 - 0.30
V
≤ 0.05
0.01 - 0.30
Cu
≤ 0.5
0.01 - 2.00
Ni
≤ 0.5
0.01 - 2.00
Fe & unavoidable
balance
balance
impurities
Carbon (C) can be as low as 0.01% by mass or 0.04% by mass (ultra-low-carbon). Page 6 – eleventh full paragraph.
The microstructure of the steel sheet may be 90% by volume or more tempered martensite and 10% by volume or less retained austenite (martensitic-retained austenitic steel containing retrained austenite in an amount larger than 0% and ≤ 5% by volume percentage) (p. 4 – first nine paragraphs; p. 5 – first paragraph), which encompasses the claimed range.
The hole expansion ratio is 50% or more, preferably 80% or more (p. 10 – eighth full paragraph), which is identical to the claimed range.
Inventive examples in Table 4 and Table 5 (original document) show example yield point (YP) and elongation (El) values that meet or exceed yield strengths ≥ 800 MPa and transverse A50 ≥ 10%, respectively.
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.
Kanzawa is silent regarding whether the steel can pass the cold bending test claimed. It is well established, however, 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 Kanzawa satisfy the claimed ranges. Therefore, any claimed behavior, such as passing a cold bending test, would also be expected of Kanzawa’s steels given their like composition, structure, and other mechanical properties.
Regarding claim 12 and further regarding claim 13, Kanzawa teaches that the steel is excellent in low temperature toughness via Charpy test performed at -40oC (p. 10 – ninth paragraph), but is silent regarding specific measured values of impact toughness in terms of Joules. However, as noted above, the chemical composition, microstructure, and mechanical properties (tensile strength, yield strength, elongation, and hole expansion ratio) of Kanzawa’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 Kanzawa given their like composition, structure, and other mechanical properties. See MPEP § 2112.01.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Kanzawa, as applied to claim 2 above, and further in view of Azuma.
Regarding claim 16, Kanzawa discloses overlapping amounts of Cr, Cu, Ni, Nb, V, and Ca, as noted in the table above, but does not teach the presence of boron (B).
Azuma is directed to a high-strength, hot-rolled steel sheet having a tensile strength of 980 MPa or more having a main phase of tempered martensite. Abstract; para. [0001], [0091], [0096]. Azuma teaches that B contributes to the change of the steel sheet structure into one or both of tempered martensite and lower bainite. Para. [0126]. B segregates in grain boundaries to increase grain boundary strength and low temperature toughness. Para. [0126].
An objective of Kanzawa is to manufacture a steel sheet that is excellent in low temperature toughness (e.g., abstract; p. 10 – ninth full paragraph). Therefore, it would have been obvious to one of ordinary skill in the art to have added boron to Kanzawa’s steels in the amount taught by Azuma because boron has the effect of enhancing strength and toughness.
Double Patenting Rejection
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. The double patenting rejection also extends to instant new claim 21.
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 05/19/2026 have been fully considered.
Applicant’s arguments, see pages 7 and 8 (argument I(A)), with respect to Thiessen (US 2019/0119774 (A1)) have been fully considered and are persuasive. Accordingly, the rejection of has been withdrawn.
Applicant's arguments with respect to Azuma have been fully considered, but they are not persuasive.
Applicant argues that the present invention is distinguished from Azuma because the present invention requires the intentional presence of retained austenite, whereas Azuma teaches that retained austenite should be limited to as little an amount as possible.
In response, although Azuma discloses the need to limit retained austenite in the steel, Azuma still permits the retained austenite to be present in amounts as high as 10% (para. [0096], [0098]). This means that Azuma finds retained austenite to be permissible (intentionally obtained) in the steel in small amounts. By permitting retained austenite to remain in the steel, it is purposefully left in the steel.
It is noted that the lower limit recited in claim 1 for retained austenite component is larger than zero. This lower limit encompasses values as little as 0.000001% by volume, which could be interpreted as an impurity amount. Azuma discloses that retained austenite may be considered as an inevitable impurity (para. [0096]), which is consistent with the numerical non-zero amount recited in at least claim 1.
Applicant argues Azuma only discloses one example that contains retained austenite.
In response, disclosed examples and preferred embodiments are not evidence of and cannot support a teaching-away-type argument. See MPEP § 2123. The fact that Azuma discloses one example in which retained austenite is an “other structure” does not negate the broader teaching of retained austenite being permissibly present in amounts of up to 10%.
Applicant argues Azuma does not correlate a high amount of silicon with retained austenite and that Azuma fails to disclose specific processes that produce retained austenite.
In response, the argument is not persuasive because it is not commensurate in scope with the claimed invention. There is no claim requirement that silicon be correlated with retained austenite. It is noted, however, that Azuma does relate silicon content with hole expandability (para. [0118]), which is consistent with the present specification’s disclosure correlating silicon with plasticity (p. 5, lines 4-23).
Additionally, the claims are directed to a product, not a process; thus, there is no claim limitation requiring the prior art to teach how to obtain retained austenite. In any case, Azuma discloses that cooling rate is a factor in retained austenite formation (para. [0143]), instructing persons of ordinary skill in the art how to limit retained austenite in the steel.
Applicant argues Azuma’s steel does not satisfy the claimed cold bending performance because Azuma does not disclose a steel containing retained austenite in the claimed range recited.
In response, Azuma discloses that retained austenite may be present as an impurity and limited to 10% or less by volume (para. [0091], [0096]). This range encompasses the claimed range. And if present as an impurity, it falls within the claimed range of greater than zero and up to 5% by volume. Since Azuma meets the claimed retained austenite quantity, Azuma discloses steels that would be expected to pass the claimed bending test.
Applicant argues that the Azuma’s steels would not be expected to possess the claimed properties, such as a tensile strength that is not higher than 980 MPa, because Azuma teaches a substantially different method of manufacture, such as a two-stage cooling step.
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. Furthermore, the high-strength, hot-rolled steel sheets of Azuma have tensile strengths of 980 MPa or more (abstract; para. [0001]). This indicates that the claimed property can be obtained even with a different method of manufacture.
Applicant argues Azuma does not teach examples that fall entirely within the claimed ranges having a tempered martensite structure and a tensile strength of 980 MPa or more.
In response, disclosed examples and preferred embodiments are not evidence of and cannot support a teaching-away-type argument. See MPEP § 2123. The fact that Azuma discloses example steels in which the Mn content exceeds the claimed upper limit does not negate Azuma’s teaching that Mn can be 0-4%, desirably 1% or more, and even more desirably 1.4%-3.0% (para. [0119]), which overlaps substantial portions of the claimed range of 1.0%-2.0%.
austenite) (para. [0095], [0096]). Therefore, Azuma’s steels are not distinguished from the present steel as claimed.
Conclusion
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/VANESSA T. LUK/Primary Examiner, Art Unit 1733
June 09, 2026
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