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 10/20/2025, is acknowledged. Claim 1 is amended. Claims 1-4 are currently pending.
The rejection of claims 1-4 under 35 U.S.C. 112(b) is withdrawn in view of Applicant’s amendments and remarks, filed 10/20/2025. In particular, while the recited “decrease ratio” is not represented as a conventional unitless ratio value, the instant specification provides an explicit formula for calculating the decrease ratio and therefore, the limitations are interpreted as Applicant acting as their own lexicographer to define the meaning of “decrease ratio.” See MPEP 2111.01.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Furuya et al. (US 2013/0098514)(previously cited).
With respect to Claim 1, Furuya teaches a steel plate with a composition, in mass%, as follows (para. 24, 46-67; Table 1):
Claim 1
Furuya
Furuya, Ex. 1
C
0.01-0.15
0.03-0.10
0.06
Si
0.01-0.50
0.02-0.40
0.06
Mn
0.05-0.60
0.3-1.2
0.32
Ni
6.0-7.5
5.0-7.5
6.3
Cr
0.01-1.00
0.4-1.5
0.44
Mo
0.05-0.50
0.02-0.4
0.29
P
≤ 0.03
≤ 0.010
0.0021
S
≤0.005
≤ 0.0035
0.0002
N
0.0010-0.0080
≤ 0.0070
0.0054
Fe
Balance with inevitable impurities
Balance with unavoidable impurities
Balance
Other
-
Al: 0.01-0.08
O: 0.0001-0.0050
Al: 0.048
O: 0.0029
Compositional ranges including zero (e.g. the claimed ranges of P and S) are interpreted as optional elements. Thus, Furuya teaches a steel plate with compositional ranges overlapping each of the instantly claimed ranges and specific examples, such as Ex. 1 detailed in the table above, with a composition falling within each of the instantly claimed ranges and therefore, sufficiently specific to anticipate the instant claim.
With respect to the limitation “wherein the steel plate has a decrease ratio of an amount of retained γ of less than 5 % in volume fraction and the amount of retained γ is 0.5 % or more in volume fraction.” This limitation is interpreted to require that the claimed steel plate of claim 1 comprise a final content of 0.5 vol% retained γ or more. The limitation drawn to a “decrease ratio” of retained γ is interpreted in light of the instant specification as drawn to describing a relationship between structure of an intermediate product (the steel plate before deep cooling treatment) and the claimed/final product (after deep cooling treatment). As this limitation is drawn the process in which the claimed steel plate product is made, described in part by how the structure is changed/formed to the final claimed structure, it is deemed to constitute a product-by-process limitation. According to MPEP § 2113, "Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” Here, the claim requires a structure comprising a plate having a depth/thickness and an amount of retained austenite (γ) of 0.5% or more by volume% at a position ¼ from a surface in a thickness direction of the plate. The cooling treatment, and parameters thereof, as well as the content of retained austenite at an initial/intermediate step prior to the claimed product are not required structures of the claimed product and do not further limit the claim.
Furuya teaches a steel plate wherein at a depth of ¼ from the surface of the steel plate in a thickness direction, the steel plate comprises 2% or more retained austenite by area fraction %, equivalent to volume % fraction, after a deep cooling treatment. The reference teaches specific examples, such as Ex. 1 detailed above, comprising a retained austenite content after a deep cooling treatment of 8.4%. (Table 2). Accordingly, Furuya is deemed to teach a steel plate having a composition and structure, including retained austenite content at a depth of ¼ from the surface of the steel plate in a thickness direction, sufficiently specific to anticipate the instant claim.
Moreover, assuming arguendo that the change in retained austenite was provided patentable weight, as the reference teaches a steel plate having the same composition, same final structure, and processed using a deep cooling treatment, it would necessarily be expected to exhibit the same properties, including the claimed range/ratio of decrease in retained austenite from before the deep cooling treatment to after the deep cooling treatment. "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, 195 USPQ 430, 433 (CCPA 1977). Thus, the burden is shifted to the applicant to prove that the product of the prior art does not necessarily or inherently possess the characteristics attributed to the claimed product. See In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (“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."); MPEP 2112.01. Therefore, the prima facie case can only be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product.
With respect to Claim 2, Furuya teaches a content of aluminum overlapping the claimed range and examples, such as Ex. 1 detailed above, falling within the claimed range. (see rejection of claim 1 above).
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) 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Furuya et al. (US 2013/0098514)(previously cited), as applied to claims 1 (with respect to claim 3) and claim 2 (with respect to claim 4) above.
With respect to claims 3 and 4, Furuya teaches the optional addition of one or more of Ca: 0-0.0040 mass%, Mg: 0-0.0040 mass%, and REM: 0-0.0040 mass%, overlapping the instantly claimed ranges. It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Claim(s) 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Furuya et al. (US 2013/0098514)(previously cited) in view of Kawata (US 2014/0162088)(previously cited).
In the alternative to the above rejections under 35 U.S.C. 102 and 103 over Furuya, if the reference is not deemed to teach a change in retained austenite of 5 volume fraction % or less from before a deep cooling treatment to after a deep cooling treatment, Kawata teaches a steel sheet (i.e. plate) wherein “ratio of the residual austenite phase which transforms to martensite at -198.degree. C. is preferably a volume fraction of 2% or less. Due to this, a more stable residual austenite phase is obtained, so the ductility and stretch flangeability are remarkably improved and excellent shapeability is obtained” and “high strength steel sheet according to the present invention, the residual austenite does not decrease and is extremely stable even if treated for deep cooling five times.” (para. 46 and 49).
Thus, Kawata teaches wherein a steel sheet is subjected to a deep cooling treatment and the retained austenite content volume fraction changes less than 2% from before the deep cooling treatment to after the deep cooling treatment, resulting in improved ductility, shapeability, and stretch flangeability. One of ordinary skill in the art would recognize that ductility, shapeability, and stretch flangeability are drawn to the same problem addressed by Furuya, namely steel with improved fracture resistance. (see, e.g., para. 33).
It would have been obvious to one of ordinary skill in the art to modify the steel plate of Furuya to maintain a volume fraction of retained austenite from before a deep cooling treatment at -198C to after the deep cooling treatment, to a decrease of 2% or less, as taught by Kawata, in order to obtain a steel plate with improved ductility, shapeability, and stretch flangeability. Additionally, it would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping 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.
Response to Arguments
Applicant's arguments filed 10/20/2025 have been fully considered but they are not persuasive.
Applicant argues that the claimed “decrease ratio” (also referred to as a “decrease rate”) is “not a product-by-process limitation; it is a structural property limitation of the final product.” (Remarks, p. 6). Applicant argues that this feature “can be directly measured on the final steel plate.” These arguments have been fully considered but are not found persuasive.
The “decrease ratio,” as claimed describes a relationship between structure of an intermediate product (retained austenite (γ) in the steel plate before deep cooling treatment) and the claimed/final product (retained austenite (γ) in the steel plate after deep cooling treatment). Therefore, it is explicitly not a limitation of only the final product. Furthermore, the retained austenite (γ) before deep cooling treatment is measured before deep cooling and therefore, the “decrease ratio” cannot be directly measured on the final steel plate.
As this limitation is drawn to the process in which the claimed steel plate product is made, described in part by how the structure is changed/formed to the final claimed structure, it is deemed to constitute a product-by-process limitation. According to MPEP § 2113, "Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” Here, the claim requires a structure comprising a plate having a depth/thickness and an amount of retained austenite (γ) of 0.5% or more by volume% at a position ¼ from a surface in a thickness direction of the plate. The cooling treatment, and parameters thereof, as well as the content of retained austenite at an initial/intermediate step prior to the claimed product are not required structures of the claimed product and do not further limit the claim. Additionally, Applicant fails to provide evidence to demonstrate that the decrease ratio is critical to achieving a claimed structure.
Applicant also argues that the decrease ratio is not an inherent feature of the prior art. These arguments have been fully considered but are not found persuasive.
First, as described above, the decrease ratio is not a required structure of the claimed product. Therefore, whether it is inherent or not to the prior art steel plate is irrelevant to the merit of the rejection. Secondly, Applicant fails to provide sufficient evidence, commensurate with the scope of the claims, to rebut a prima facie case of obviousness established by the reference.
Finally, Applicant argues that there is no motivation to combine Furuya and Kawata as the references are drawn to different fields, solve different problems, and teach contradictory solutions. In particular, Applicant points out different manganese (Mn) content of the references. These arguments have been fully considered but are not found persuasive.
Furuya and Kawata are both drawn to steel plates subjected to deep cooling and resulting in overlapping retained austenite content, the steel plates having manganese ranges that avoid an overlap by only 0.1 wt%, and drawn to steels with improved fracture resistance (see Furuya drawn to fracture resistance and Kawata drawn to ductility and stretch flangeability, thus fracture resistance during flanging). Thus, the references are drawn to the same problem of improving the fracture resistance of steel subjected to deep cooling while obtaining a desired microstructure and therefore, are deemed analogous art. Further, the minor difference in manganese content is not sufficient to teach away from the combination. That is, one of ordinary skill in the art would not find a small difference in composition to teach away from the application of the teachings of Kawata with those of Furuya. Applicant arguments against the combination are, therefore, not found persuasive.
Conclusion
Applicant's amendment necessitated any 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 JOHN A HEVEY whose telephone number is (571)270-0361. The examiner can normally be reached Monday-Friday 9:00-5:30.
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/JOHN A HEVEY/Primary Examiner, Art Unit 1735