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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 3, 2026 has been entered.
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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Sato et al. (PGPub US 2014/0370330).
Regarding applicants’ claim 1, Sato et al. disclose a hot-dip plated high strength steel sheet comprising in weight percent: 0.005 to 0.005% carbon, 0.30% or less silicon, 0.070 to 3.00% manganese, 0.05% or less phosphorus, 0.01% or less sulfur, 0.0005 to 0.010% nitrogen, 0.01 to 0.30% aluminum, 0.01 to 0.05% titanium, 0.01 to 0.04% niobium, 0.005 to 1% copper, 0.0005 to 0.0030% boron, and 0.005 to 1% molybdenum, where the balance is disclosed as iron and inevitable impurities. Paragraphs 0078-0149.
While Sato et al. do not appear to disclose the exact range of proportions claimed, including a molybdenum value resulting in a YM value of 0.03% or more and 0.1% or less, the proportions disclosed overlap those claimed. One of ordinary skill in the art before the filing date of applicants’ invention would have found it obvious to select from the disclosed proportions including values which fall within the claimed ranges and which result in YM values within the claimed range.
While one of ordinary skill in the art would have understood the matrix to be ferritic, Sato et al. do not appear to explicitly disclose the microstructure of the steel sheet or the average grain size of the ferrite. However, one of ordinary skill in the art would expect substantially identical materials treated in a substantially identical manner to result in products having substantially identical structures and properties.
As discussed above, one of ordinary skill in the art would have found it obvious to select from the disclosed compositional proportions including those that satisfy the claimed compositional requirements.
With regards to the method of production, applicants disclose heating the slab to 1100-1300ºC and hot rolling to a finishing temperature satisfying a Relational Expression 3, followed by coiling at 600 to 650ºC, and cold rolling at a reduction ratio of 70 to 83%. The steel sheet is then annealed at a temperature of 750 to 830 ºC, and subsequently plated. See present specification paragraphs 00121-00154.
Sato et al. disclose a manufacturing process comprising heating the slab to 1050 to 1245ºC and hot rolling to a finishing temperature of 910 ºC or less and coiling the sheet at 750ºC or less, followed by cold rolling at a reduction ratio of 65-80%, and annealing at a temperature of 850ºC or less and subsequent hot-dip plating. See paragraphs 0151-0160.
It is within the ordinary level of skill in the art to select from the disclose compositional proportions and processing parameters including those which would result in a plated steel sheet possessing characteristics substantially identical to those disclosed by applicants. Given substantially identical materials treated in a substantially identical manner, the plated steel sheets of Sato et al. would be expected to have a structure and properties substantially identical to those disclosed by applicants, including a ferrite matrix structure having a grain size resulting E values within the claimed range (claimed Relational Expression 2).
Regarding applicants’ claims 2, 3 and 5, the three-dimensional orientation density function, ferrite fraction, grain size, tensile strength and elongation of the steel sheets of Sato et al. are characteristics which would be expected to be substantially identical to those of applicants’, where substantially identical materials are expected to have substantially identical structures and properties as discussed above with respect to claims 1. Further Sato et al. disclose a tensile strength of 340 to 540MPa (paragraph 0046), which overlaps applicants’ claimed range of 390MPa or more.
Regarding applicants claim 4, Sato et al. disclose plating the steel sheet with platings selected from those including Zn, Zn-alloy, Al, and Al alloy (paragraph 0160). One of ordinary skill in the art before the effective filing date of applicants’ invention would have found it obvious to select from the platings disclosed by Sato et al. including platings having a composition falling within applicants’ claimed plating layers.
Claim Rejections - 35 USC § 103 (applicant admitted art)
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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Sato et al. (PGPub US 2014/0370330) in view of Applicant admitted prior art (applicants’ response filed March 3, 3036)
Regarding applicants’ claim 1, Sato et al. disclose a hot-dip plated high strength steel sheet comprising in weight percent: 0.005 to 0.005% carbon, 0.30% or less silicon, 0.070 to 3.00% manganese, 0.05% or less phosphorus, 0.01% or less sulfur, 0.0005 to 0.010% nitrogen, 0.01 to 0.30% aluminum, 0.01 to 0.05% titanium, 0.01 to 0.04% niobium, 0.005 to 1% copper, 0.0005 to 0.0030% boron, and 0.005 to 1% molybdenum, where the balance is disclosed as iron and inevitable impurities. Paragraphs 0078-0149.
While Sato et al. do not appear to disclose the exact range of proportions claimed, including a molybdenum value resulting in a YM value of 0.03% or more and 0.1% or less, the proportions disclosed overlap those claimed. One of ordinary skill in the art before the filing date of applicants’ invention would have found it obvious to select from the disclosed proportions including values which fall within the claimed ranges and which result in YM values within the claimed range.
While one of ordinary skill in the art would have understood the matrix to be ferritic, Sato et al. do not appear to explicitly disclose the microstructure of the steel sheet or the average grain size of the ferrite. However, one of ordinary skill in the art would expect substantially identical materials treated in a substantially identical manner to result in products having substantially identical structures and properties.
As discussed above, one of ordinary skill in the art would have found it obvious to select from the disclosed compositional proportions including those that satisfy the claimed compositional requirements.
With regards to the method of production, applicants disclose heating the slab to 1100-1300ºC and hot rolling to a finishing temperature satisfying a Relational Expression 3, followed by coiling at 600 to 650ºC, and cold rolling at a reduction ratio of 70 to 83%. The steel sheet is then annealed at a temperature of 750 to 830 ºC, and subsequently plated. See present specification paragraphs 00121-00154.
Sato et al. disclose a manufacturing process comprising heating the slab to 1050 to 1245ºC and hot rolling to a finishing temperature of 910 ºC or less and coiling the sheet at 750ºC or less, followed by cold rolling at a reduction ratio of 65-80%, and annealing at a temperature of 850ºC or less and subsequent hot-dip plating. See paragraphs 0151-0160.
While Sato et al. disclose an overlapping coiling temperature. One of ordinary skill in the art before the effective filing date of applicants claimed invention would have found it obvious to select a coiling temperature from within the disclosed range including values which fall within the range disclosed by applicants. Further applicants admit it is well known in the art that the coiling temperature primarily dictates the morphology, grain size, and uniformity of the ferrite and that in general that an optimal coiling temperature is 600 to 650°C which maximizes precipitation hardening occurs here as fine carbides (like TiC) from across the matrix. Given the known effect of the coiling temperature as disclosed by applicants, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to adjust the coiling temperature to obtain advantageous grain morphology where an optimal range is disclosed to fall in the rage of 600 to 650°C.
It is within the ordinary level of skill in the art to select from the disclose compositional proportions and processing parameters including those which would result in a plated steel sheet possessing characteristics substantially identical to those disclosed by applicants. Given substantially identical materials treated in a substantially identical manner, the plated steel sheets of Sato et al. would be expected to have a structure and properties substantially identical to those disclosed by applicants, including a ferrite matrix structure having a grain size resulting E values within the claimed range (claimed Relational Expression 2).
Regarding applicants’ claims 2, 3 and 5, the three-dimensional orientation density function, ferrite fraction, grain size, tensile strength and elongation of the steel sheets of Sato et al. are characteristics which would be expected to be substantially identical to those of applicants’, where substantially identical materials are expected to have substantially identical structures and properties as discussed above with respect to claims 1. Further Sato et al. disclose a tensile strength of 340 to 540MPa (paragraph 0046), which overlaps applicants’ claimed range of 390MPa or more.
Regarding applicants claim 4, Sato et al. disclose plating the steel sheet with platings selected from those including Zn, Zn-alloy, Al, and Al alloy (paragraph 0160). One of ordinary skill in the art before the effective filing date of applicants’ invention would have found it obvious to select from the platings disclosed by Sato et al. including platings having a composition falling within applicants’ claimed plating layers.
Response to Arguments
Applicants’ arguments filed March 3, 2026 have been considered but have not been found to be persuasive.
Applicants argue that Sato is completely silent as to the claimed ferrite structure, however Sato discloses compositional proportions and processing parameters overlapping those disclosed by applicants. One of ordinary skill in the art would have found it obvious to select proportions and processing parameters form within those disclosed including those which are substantially identical to applicants. i.e. a subset of the steel sheets disclosed by Sato are expected to be identical or substantially identical to applicants claimed steel sheet. Applicants can establish non-obviousness by demonstrating that no steel sheet of Sato would necessarily possess one or more claimed features, and/or by establishing that one or more claimed features results in a steel sheet which exhibits unexpected results.
Applicants argue that the coiling temperature is crucial to obtaining the claimed structure and that the coiling temperature disclosed by applicants is distinct form the coiling temperature disclosed by Sato where applicants disclose a coiling temperature of 600 to 650°C and where Sato disclose a coiling temperature of 750°C. Sato however discloses a coiling temperature of 750°C or less which overlaps applicants’ disclosed range. It would be obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to select form within the disclosed range including values between 600 to 650°C and therefore obvious to form steel sheets which would inherently possess the claimed features.
Applicants further argue that it is well known that the coiling temperature primarily dictates the morphology, grain size, and uniformity of the ferrite and that in general that an optimal coiling temperature is 600 to 650°C which maximizes precipitation hardening occurs here as fine carbides (like TiC) from across the matrix. Given the known effect of the coiling temperature as disclosed by applicants, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to select a coiling temperature in the range of 600 to 650°C to maximizes precipitation hardening occurs here as fine carbides (like TiC) from across the matrix.
Applicants argue that because each step is affected by the previous step and also affects subsequent steps even small changes, together with the starting materials, can significantly affect the final properties. Applicants’ argue that each and every process step must be identical or substantially identical without any missing or additional process steps, however applicants do not argue any specific process step beyond the coiling temperature. Once a reference teaching a product appearing to be substantially identical is made the basis of a rejection and the examiner presents evidence of reasoning tending to show inherency the burden of production shifts to the applicant. “"[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) (footnote and citation omitted). The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (citing Best, 562 F.2d at 1255).” (MPEP 2112 V).
For these reasons, and for those reasons as provided for in the rejections above, the claims are not found to distinguish over Sato et al. and the rejections over Sato et al. are maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM C KRUPICKA whose telephone number is (571)270-7086. The examiner can normally be reached Monday-Friday 8-5pm EST.
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/Adam Krupicka/Primary Examiner, Art Unit 1784
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