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 .
Priority
Copies of the certified copies of the priority documents have been received in this National Stage application from the International Bureau.
Information Disclosure Statement
Four (4) information disclosure statements (IDS) were submitted on 07/13/2023, 08/29/2024, 06/12/2025, and 10/30/2025. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS are being considered by the examiner.
Specification
The disclosure is objected to because of the following informalities:
two distinct abstracts were filed on 07/13/2023 and it is unclear which abstract is the “correct” version, and
the abstract starting with “To provide a method” is 222 words, which exceeds the word limit of 150 words.
Regarding informality b), Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
Regarding all informalities, appropriate correction is required.
Claim Interpretation
Transitional phrases such as "having" must be interpreted in light of the specification to determine whether open or closed claim language is intended. See MPEP 2111.03(IV). Claim 8 recites “wherein the cold-rolled steel sheet has a chemical composition containing 0.50 mass% to 3.00 mass% of Si”. The term “has” in claim 8 is interpreted as open claim language given the use of the open-ended transitional phrase “containing” immediately following and that claims 9-10 recite additional elements for the claimed chemical composition. The transitional term "containing" is synonymous with “comprising”, is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See MPEP 2111.03(I).
Regarding the chemical composition of claims 9-10, the limitation “the chemical composition” is interpreted as referring to the chemical composition of the cold-rolled steel sheet, as recited in “wherein the cold-rolled steel sheet has a chemical composition” of claim 8 and not of the annealed steel sheet, or annealed and pickled steel sheet.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 10 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 9 recites "wherein the chemical composition contains" and further recites "with the balance being Fe and inevitable impurities". The term “contains” is synonymous with “comprising”, is inclusive or open-ended, and does not exclude additional, unrecited elements or method steps. See MPEP 2111.03(I). However, the balance of Fe and inevitable impurities closes the composition. Claim 10 adds Cu, Nb, Ti, V, Mo, Cr, or Ni as further elements of the close-ended composition of claim 9. Claim 10 therefore fails to include all the limitations of the claim upon which it depends since it is attempting to re-open the close-ended composition recited in claim 9.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0298503 A1 of Terasaki (as cited in IDS mailed 07/13/2023).
Regarding the preamble and “continuous” limitation of claim 1, Terasaki teaches a sheet feeder which includes rollers and can continuously feed a steel strip that has been cold rolled and subsequently continuously annealed and can immerse the steel strip in the water tank, the mixed acid tank, the water tank, the acid tank, and the water tank in this order ([0086]; strip reads on claimed sheet; “strip” and “sheet” are used interchangeably in [0073]). One of ordinary skill in the art understands the steel strip of Terasaki is “fed” through the different method steps using the sheet feeder ([0086]).
Since the steel strip is cold-rolled, continuously annealed, and pickled, one of ordinary skill in the art understands the resulting steel is an annealed and pickled steel sheet and Terasaki therefore reads on the claimed method for producing an annealed and pickled steel sheet in a continuous manner by continuously performing of claim 1.
Regarding the annealing of claim 1, Terasaki teaches subjecting a steel strip that has been cold rolled and subsequently continuously annealed (claim 1, [0013], [0039], [0069]; a steel strip that has been cold rolled results in a cold-rolled steel strip and this step of Terasaki reads on the claimed subjecting a cold-rolled steel sheet to annealing). Terasaki teaches using a continuous annealing furnace ([0062]). One of ordinary skill in the art understands the continuous annealing of Terasaki is performed by feeding the cold-rolled steel into the continuous annealing furnace and that the resulting steel is an “annealed steel”.
Terasaki therefore reads on the limitation subjecting a cold-rolled steel sheet to annealing in an annealing furnace by feeding the cold-rolled steel sheet through the annealing furnace to obtain an annealed steel sheet of claim 1.
Regarding the pickling with a mixed acid solution of claim 1, Terasaki teaches pickling by continuously feeding the steel strip into a mixed acid solution containing a first acid that is oxidizing and a second acid that is non-oxidizing to immerse the steel strip (claim 1, [0061]-[0068], reads on claimed subjecting the annealed steel sheet discharged from the annealing furnace to pickling with a mixed acid solution containing a first acid that is oxidizing and a second acid that is non-oxidizing). Terasaki teaches a mixed acid tank holds a mixed acid solution containing in one embodiment a mixture of nitric acid and hydrochloric acid ([0085], reads on claimed mixed acid tank). One of ordinary skill in the art understands the steel strip of Terasaki is “fed” through the different steps using the sheet feeder of Terasaki ([0086]).
Terasaki therefore reads on the limitation of subjecting the annealed steel sheet discharged from the annealing furnace to pickling with a mixed acid solution containing a first acid that is oxidizing and a second acid that is non-oxidizing, by feeding the annealed steel sheet into a mixed acid tank holding the mixed acid solution of claim 1.
Regarding the repickling of claim 1, Terasaki teaches subsequently subjecting the steel strip to repickling by continuously feeding the steel strip into an acid solution containing a third acid that is non-oxidizing to immerse the steel strip (claim 1, [0014], [0069]-[0074], reads on claimed subjecting the annealed steel sheet discharged from the mixed acid tank to repickling with an acid solution containing a third acid that is non-oxidizing, by feeding the annealed steel sheet into an acid tank holding the acid solution, to thereby obtain an annealed and pickled steel sheet of claim 1). One of ordinary skill in the art understands the steel strip of Terasaki is “fed” from the mixed acid tank to the repickling step using the sheet feeder of Terasaki ([0086]) and that the resulting steel will be an “annealed and pickled steel sheet”.
Terasaki therefore reads on the limitation reads on claimed subjecting the annealed steel sheet discharged from the mixed acid tank to repickling with an acid solution containing a third acid that is non-oxidizing, by feeding the annealed steel sheet into an acid tank holding the acid solution, to thereby obtain an annealed and pickled steel sheet of claim 1.
Regarding the Fe concentration measurement of claim 1, Terasaki teaches the Fe concentration in the mixed acid is measured over time and may be measured continuously or may be measured intermittently at fixed intervals ([0080]). Terasaki further teaches a concentration meter measuring iron ion concentration in the mixed acid solution in the mixed acid tank ([0040], [0093]).
Terasaki therefore reads on the limitation wherein Fe concentration in the mixed acid solution in the mixed acid tank is measured of claim 1.
However, Terasaki does not explicitly disclose a lower limit of ferrite fraction in a surface layer of the annealed steel sheet to be subjected to the pickling is set according to the Fe concentration measured of claim 1.
Terasaki teaches Fe gradually elutes from the cold rolled steel strip over the course of the pickling, resulting in a gradual rise in the Fe concentration in the mixed acid and that the rise is detected at appropriate timing by the Fe concentration meter ([0093]). Terasaki teaches the Fe concentration is used to appropriately control the pickling rate for reduction of residual SiO2 in the surface layer of the steel and to avoid discoloration of the steel surface ([0075]-[0077]). Terasaki teaches its method removes Si-containing oxides at the steel sheet surface through the pickling in mixed acid solution and removes iron-based oxides that are produced in the pickling through the repickling ([0044], [0063]). Terasaki further teaches the thickness of the Si-containing oxide layer is normally approximately 1 μm from the steel strip surface, but varies depending on the chemical composition of the steel strip and the annealing conditions such as temperature, time, and atmosphere ([0063]). Terasaki teaches annealing is performed to impart desired structure, strength, and workability on a cold rolled steel strip using a continuous annealing furnace ([0062]).
While Terasaki does not explicitly disclose setting a ferrite fraction limit, Terasaki teaches using the Fe concentration to adjust the pickling to ensure proper removal of surface layer and avoid discoloration of the steel surface, and also teaches that annealing conditions impact the thickness of the Si-containing oxides formed in the surface layer. "[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom. See MPEP § 2144.01.
In this case, since Terasaki teaches adjusting the pickling based on Fe concentration, one of ordinary skill in the art understands that “adjusting the pickling” includes adjustments like changing the thickness of the Si-containing oxide surface layer by changing annealing conditions or the chemical composition of the steel. Additionally, one of ordinary skill in the art understands that modifying the annealing temperature, time, or atmosphere, as needed to achieve the desired structure and strength of the steel, as well as ensuring appropriate pickling to avoid discoloration of the steel surface, inherently changes the ferrite fraction of the steel as needed to effectively perform the pickling of Terasaki.
Since Terasaki teaches method steps overlapping with the claimed invention and obtains the same steel as a result, Terasaki therefore reads on all the limitations of claim 1.
Regarding the limit of ferrite fraction and annealing conditions of claims 2-4, Terasaki teaches the method of claim 1 as described above.
Terasaki teaches the Fe concentration increases gradually over the course of pickling ([0093]) and that higher Fe concentration increases discoloration and negatively impacts surface quality of the steel due to less effective pickling ([0009]-[0010]). As discussed above, one of ordinary skill in the art understands that modifying the annealing temperature, time, or atmosphere, as needed to achieve the desired structure and strength of the steel, as well as ensuring appropriate pickling to avoid discoloration of the steel surface, inherently changes the ferrite fraction of the steel as needed to effectively perform the pickling of Terasaki. Consequently, one of ordinary skill in the art understands that increasing Fe concentration in the mixed acid will require adjustments in the method, such as in annealing conditions, to increase pickling rate of the steel. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to increase the amount of ferrite in the steel, by appropriately changing the annealing conditions, to increase the pickling rate as the Fe concentration increases in the mixed acid since one of ordinary skill in the art understands ferrite is a “soft” phase which pickles more effectively than other steel phases like martensite.
Terasaki therefore reads on the limitation wherein the lower limit of the ferrite fraction in the surface layer of the annealed steel sheet to be subjected to the pickling is set higher as the Fe concentration rises of claim 2 and wherein the lower limit of the ferrite fraction is set by adjusting an annealing condition in the annealing of claim 3.
Terasaki teaches annealing is performed to impart desired structure, strength, and workability on a cold rolled steel strip using a continuous annealing furnace, a non-oxidizing or reducing gas is normally used as an atmosphere gas, and the dew point is strictly controlled ([0062], reads on claimed annealing condition is a dew point in a soaking zone of the annealing furnace since one of ordinary skill in the art understands the dew point of annealing will be controlled in a furnace with a soaking zone).
Terasaki therefore reads on the limitation wherein the annealing condition is a dew point in a soaking zone of the annealing furnace of claim 4.
Regarding the first, second, and third acids of claims 5-7, Terasaki teaches an oxidizing first acid and a non-oxidizing second and third acid (claim 1), with embodiments where the first acid is nitric acid (claim 2) and the second and third acid are at least one selected from the group consisting of hydrochloric acid, sulfuric acid, phosphoric acid, pyrophosphoric acid, formic acid, acetic acid, citric acid, hydrofluoric acid, and oxalic acid ([0019], claim 3) or hydrochloric acid ([0021], claim 4), as shown in List 1 below.
Terasaki therefore reads on the limitation wherein the first acid is nitric acid of claim 5, wherein the second acid is at least one selected from the group consisting of hydrochloric acid, sulfuric acid, phosphoric acid, pyrophosphoric acid, formic acid, acetic acid, citric acid, hydrofluoric acid, and oxalic acid of claim 6, wherein the third acid is at least one selected from the group consisting of hydrochloric acid, sulfuric acid, phosphoric acid, pyrophosphoric acid, formic acid, acetic acid, citric acid, hydrofluoric acid, and oxalic acid of claim 7.
List 1
Instant claims (mass%)
Terasaki (mass%)
First acid
Oxidizing (claim 1)
Nitric acid (claim 5)
Oxidizing ([0013])
Nitric acid ([0017])
Second acid
Non-oxidizing (claim 1)
At least one from hydrochloric acid, sulfuric acid, phosphoric acid, pyrophosphoric acid, formic acid, acetic acid, citric acid, hydrofluoric acid, and oxalic acid (claim 6)
Non-oxidizing ([0013])
At least one of the second acid and the third acid is at least one selected from the group consisting of hydrochloric acid, sulfuric acid, phosphoric acid, pyrophosphoric acid, formic acid, acetic acid, citric acid, hydrofluoric acid, and oxalic acid ([0019])
Hydrochloric acid ([0021])
Third acid
Non-oxidizing (claim 1)
At least one from hydrochloric acid, sulfuric acid, phosphoric acid, pyrophosphoric acid, formic acid, acetic acid, citric acid, hydrofluoric acid, and oxalic acid (claim 7)
Non-oxidizing ([0014])
At least one of the second acid and the third acid is at least one selected from the group consisting of hydrochloric acid, sulfuric acid, phosphoric acid, pyrophosphoric acid, formic acid, acetic acid, citric acid, hydrofluoric acid, and oxalic acid ([0019])
Hydrochloric acid ([0021])
Si
0.50-3.00
0.5-3.0
C
0.03-0.45
0.01-0.30
Mn
0.5-5.0
1.0-7.5
P
≤ 0.05
≤ 0.05
S
≤ 0.005
≤ 0.01
Al
0.001-0.06
≤ 0.06
N
≤ 0.005
0.001-0.008
B
0.001-0.005
0.001-0.006
At least one from:
Cu
≤ 1.00
0.001-2.0
Nb
≤ 0.050
0.005-0.3 (one or more of Ti, Nb, V, content for each)
Ti
≤ 0.080
0.005-0.3 (one or more of Ti, Nb, V, content for each)
V
≤ 0.5
0.005-0.3 (one or more of Ti, Nb, V, content for each)
Mo
≤ 1.00
0.005-0.3
Cr
≤ 1.000
0.005-0.3
Ni
≤ 1.00
0.001-2.0
Ca and REM: 0.001-0.1
Fe and inevitable impurities
Balance
Balance (“and incidental impurities”)
Regarding the chemical composition of claims 8-10, elements including zero in their compositional range or including the limitation “or less”, including the claimed P, S, N, Cu, Nb, Ti, V, Mo, Cr, and Ni, are interpreted as optional elements since the limitation “or less” includes a 0% content.
Terasaki teaches a cold rolled steel strip with a chemical composition ([0099]-[0117]) overlapping with the claimed cold-rolled steel sheet, as shown in List 1 above. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Terasaki therefore reads on the limitation wherein the cold-rolled steel sheet has a chemical composition containing 0.50 mass% to 3.00 mass% of Si of claim 8, wherein the chemical composition contains, in mass%, C: 0.03 % to 0.45 %, Si: 0.50 % to 3.00 %, Mn: 0.5 % to 5.0 %, P: 0.05 % or less, S: 0.005 % or less, Al: 0.001 % to 0.060 %, N: 0.005 % or less, and B: 0.001 % to 0.005 %, with the balance being Fe and inevitable impurities of claim 9, and wherein the chemical composition further contains, in mass%, at least one selected from the group consisting of Cu: 1.00 % or less, Nb: 0.050 % or less, Ti: 0.080 % or less, V: 0.5 % or less, Mo: 1.00 % or less, Cr: 1.000 % or less, and Ni: 1.00 % or less of claim 10.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAYELA ALDAZ whose telephone number is (571)270-0309. The examiner can normally be reached Monday -Friday: 8:30 am - 5 pm.
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/M.A./Examiner, Art Unit 1733
/REBECCA JANSSEN/Primary Examiner, Art Unit 1733
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