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 Status
An amendment, filed 11/7/202, is acknowledged. Claims 6-8 are newly added. Claims 1-8 are currently pending.
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) 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Azuma (US 10544474) in view of Taira (US 2016/0002807)(previously cited).
With respect to Claim 1, Azuma teaches a method of making a high strength electrogalvannealed steel sheet having a tensile strength of more than 700 MPa, including examples exceeding 1000 MPa, the method comprising subjecting a steel sheet having a composition comprising contents of C, Si, Mn, P, and S overlapping the instantly claimed ranges (see table below) to a heat treatment at a temperature of, for example, 820° C, for 20-600 seconds in a non-oxidizing atmosphere comprising hydrogen, cooling the sheet 100-300° C, then holding at a temperature of 350-500° C for 10-1000 seconds, performing an electrogalvanizing step, and an alloying treatment. (col. 4, ln. 65 to col. 5, ln. 63; col. 6, ln. 55 to col. 10, ln. 30; Tables 5, 9-10).
Claim 1 (mass%)
Azuma (mass%)
C
0.030-0.250
0.075-0.300
Si
0.01-3.00
0.30-2.50
Mn
1.00-10.00
1.30-3.50
P
0.001-0.100
0.001-0.050
S
0.0001-0.0200
0.0001-0.0100
Fe
Balance with unavoidable impurities
Balance with unavoidable impurities
Other
-
Al: 0.001-1.500
N: 0.0001-0.0100
Thus, Azuma teaches a steel sheet with compositional ranges overlapping each of the instantly claimed ranges, a heat treatment at the same or overlapping temperature and time and performed in an atmosphere comprising hydrogen, steps of cooling the steel sheet and holding step held at an overlapping temperature range, an electrogalvanizing or alternatively hot-dip galvanizing step after the holding step, and finally an alloying treatment, resulting in a high strength steel sheet. Thus, Azuma is deemed tot each wherein hot-dip galvanizing and electrogalvanizing are suitable alternatives and wherein an optional alloying treatment may be carried out after either of said galvanizing treatments.
It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping compositional, temperature, and time ranges. Overlapping ranges, in particular, where the ranges of a claim overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05. Additionally, it is noted that the claimed “holding step of cooling” does not exclude, for example, re-heating after cooling to achieve and/or maintain a desired temperature. Thus, Azuma teaches a method meeting each of the instantly claimed limitations with the exception that the reference describes the heat treatment atmosphere in terms of the log of water partial pressure/hydrogen partial pressure, and does not provide the dew point or H2 concentration.
Taira teaches a method of making a high strength electrogalvannealed steel sheet, the steel sheet having compositional ranges of C, Si, Mn, P, S, and Fe overlapping or falling within each of the instantly claimed ranges and those of Azuma, wherein the method comprises steps of heat treating the steel sheet in a non-oxidizing atmosphere with a dew point of 0° or lower and H2 concentration of 0.1-10 vol% and at a temperature of 700-900° C, followed by steps of pickling, cooling and electrogalvanizing. (para. 33-41, 52-55). Taira teaches that by heat treating the steel sheet in a non-oxidizing atmosphere with the disclosed conditions, a steel sheet with improved conversion treatment properties and post-painting corrosion resistance may be obtained. (see, e.g., para. 1, 13-15).
It would have been obvious to one of ordinary skill in the art to modify the method of Azuma to perform the heat treatment at a temperature from the overlapping ranges of Azuma, Taira and the instantly claimed ranges in an atmosphere comprising a dew point of 0° or lower and H2 concentration of 0.1-10 vol%, as taught by Taira, in order to obtain, after subsequent treatment step(s) (e.g. electrogalvanizing), a steel sheet with improved conversion treatment properties and post-painting corrosion resistance may be obtained. Additionally, it would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. MPEP § 2144.05.
Finally, Azuma teaches the first heat treatment occurring under a non-oxidizing atmosphere comprising hydrogen, and wherein after cooling, such atmosphere is not required or disclosed. Accordingly, it would have been obvious to one of ordinary skill in the art to perform cooling and holding steps outside the controlled hydrogen-containing atmosphere, including in ambient environment comprising less than 1 vol% of H2, in order to reduce the costs associated with performing such steps in a controlled atmosphere and recognizing the fact that at lower temperatures, the risk/time for oxidation is reduced. In other words, one of ordinary skill in the art would recognize that ambient air would contain less than 1.0 volume% of H2, and therefore, performing the above detailed steps in ambient air would comprise at atmosphere meeting the instantly claimed range.
With respect to Claim 2, Azuma teaches wherein the steel sheet has a composition comprising N overlapping the instantly claimed range (see rejection of claim 1 above) and further teaches the optional inclusion of 0.005-0.150 mass% Ti. (col. 8, ln. 24-54). Overlapping ranges, in particular, where the ranges of a claim overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claims 3-4, Azuma teaches wherein the steel sheet has a composition comprising Al overlapping the instantly claimed range (see rejection of claim 1 above) and further teaches the optional inclusion of one or more of Nb: 0.005-0.150 mass%, Ni: 0.01-2.00 mass%, Cr: 0.01-2.00 mass%, V: 0.005-0.150 mass%, Mo: 0.01-1.00 mass%, and Cu: 0.01-2.00 mass% and also teaches optionally, 0.0001-0.5000 mass% total of at least one of Ca, Mg, and REM. (col. 8, ln. 55 to col. 10, ln. 30). Overlapping ranges, in particular, where the ranges of a claim overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Allowable Subject Matter
Claims 6-8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record fails to teach a method as in claim 1, further requiring the limitations of claims 6, 7, and 8, respectively. In particular, prior art Azuma is silent as to the limitations of claims 6 and 7 and teaches away from the limitation of claim 8.
Response to Arguments
Applicant's arguments filed 11/7/2025 have been fully considered but they are not persuasive.
Applicant argues that prior art Azuma’s fails to teach a holding step with an atmosphere comprising less than 1.0 vol% H2 and that “Azuma’s omission of a particular atmosphere after the heat treatment should not be construed as an implicit invitation to perform subsequent steps under conditions that Azuma itself does not disclose or contemplate.” These arguments have been fully considered but are not found persuasive.
The rejection does not require additional steps that the reference does not disclose or contemplate. Rather, Azuma teaches a heat treatment step with a controlled atmosphere and cooling and holding steps with no required atmospheric conditions. Thus, the reference may be interpreted as implicitly teaching that the cooling and holding steps are carried out without controlling the atmosphere and accordingly, taking place in ambient conditions. Alternatively, as detailed in the rejection it would have been obvious to one of ordinary skill in the art to carry out the cooling and holding steps in ambient conditions for the straightforward and articulated motivations detailed in the rejection.
It is further noted that the claims require an atmosphere comprising 1.0 vol% H2 or more in the heat treatment step then requires less than 1.0 vol% H2 in the holding step. A H2 level maintained at, for example, 1.0 vol% would meet the heat treatment step limitation and would provide an atmosphere during the holding step with a H2 content sufficiently close to the claimed range to establish a prima facie case of obviousness. See MPEP 2144.05. (“Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of ‘having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium’ as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. ‘The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.’”).
In other words, even assuming arguendo that the rejection over Azuma in view of Taira maintained the same H2 atmosphere during cooling and holding steps, such at atmosphere would provide a prima facie case of obviousness over the instant claims.
Applicant further argues that one of ordinary skill in the art would not carry out the holding step under ambient conditions due to the risk of oxidation. This argument is not found persuasive.
As detailed in the rejection, oxidation concerns are reduced in the cooling and holding steps. Further, Applicant’s arguments that the instant specification emphasizes that pickling to remove surface oxides “should be avoided” (Remarks, p. 10) is not in the reference and does not rebut the obviousness rejection. Pickling, as admitted in Applicant’s remarks, is “often employed” (Remarks, p. 10) and suggesting that a conventionally performed step is a reason against the obviousness modification is not found persuasive. Moreover, in contrast with Applicant’s arguments (see Remarks, pgs. 10-11) as the claims do not exclude a pickling step, such arguments are moot.
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.
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/JOHN A HEVEY/Primary Examiner, Art Unit 1735