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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-11, in the reply filed on 30 October 2025 is acknowledged. The requirement is still deemed proper and is therefore made FINAL.
Claims 12-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 30 October 2025.
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 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Watabe et al. (JP2007-284748 – machine translation).
Considering claim 1, Watabe teaches a low yield point steel for a damper energy absorbing device in case of an earth quake (abstract) (i.e. a steel sheet for a seismic damper). The steel is a sheet (Paragraphs 26 and 32) and comprises a base steel with a composition by mass of C: 0.001-0.050%, Si: 0.80% or less, Mn: 0.1-2.0%, P: 0.020% or less, S: 0.015% or less, Al: 0.060% or less, N: 0.006% or less, Nb:0.01-0.60%, and Ti: 0.050% or less, balance Fe and inevitable impurities (Paragraph 8; Claim 2). Watabe does not specifically teach the claimed scale layer with FeO and Fe2SiO4. However, Watabe teaches where the steel is cast, reheated to 1000-1300 °C, finish rolled at 900 °C or higher, then allowed to cool to form a single ferrite phase (Paragraphs 9 and 30-31). This is substantially identical to that which applicant discloses as forming the claimed scale layer in Paragraphs 83, 87, and 92 of the originally filed specification. As such, one would reasonably expect the steel sheet of Watabe to possess the claimed scale layer and FeO and Fe2SiO4 content, absent an objective showing. See MPEP 2112.
While not expressly teaching a singular example of the claimed steel sheet this would have been obvious to one of ordinary skill in the art before the effective filing date in view of the teachings of Watabe as this is considered a conventionally known steel for a damper and one would have had a reasonable expectation of success. Further, the composition taught by Watabe overlaps that which is claimed and the courts have held that where claimed ranges overlap or lie inside of those disclosed in the prior art a prima facie case of obviousness exists. See MPEP 2144.05.
Considering claim 2, Watabe teaches where the steel is a single structure of ferrite (Paragraph 6).
Considering claim 3, Watabe is silent regarding the claimed ferrite size. However, as outlined above, Watabe teaches a single phase ferrite microstructure for the steel sheet formed by a substantially identical process as that which applicant discloses as forming the claimed steel sheet and therefore the claimed ferrite size is expected to be present, absent an objective showing. See MPEP 2112.
Considering claim 4, Watabe teaches where the contents of C, Nb, Ti, and N overlap that which is claimed and therefore overlaps the claimed relational expressions 1 and 2. See MPEP 2144.05.
Considering claims 5-8 and 11, Watabe is silent regarding the claimed FeO content, Fe2SiO4 content, ratio thereof, thickness, and Charpy impact transition temperature. However, as outlined above, Watabe teaches a single phase ferrite microstructure for the steel sheet formed by a substantially identical process as that which applicant discloses as forming the claimed steel sheet and therefore these features are expected to be present, absent an objective showing. See MPEP 2112.
Considering claim 9, Watabe teaches examples of steel sheets having yield strengths of 207-237 MPa (Table 2) overlapping that which is claimed. See MPEP 2144.05.
Considering claim 10, Watabe teaches examples of steel sheets having tensile strengths of 306-375 MPa (Table 2) overlapping that which is claimed. See MPEP 2144.05.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kuroda et al. (US 2009/0229710), Murakami et al. (US 2010/0040872), Matsuda et al. (US 2017/0292171), Oyagi et al. (US 2018/0245637), and Sakakibara et al. (US 2022/0251693) teach steel sheets demonstrating the level of ordinary skill in the art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SETH DUMBRIS whose telephone number is (571)272-5105. The examiner can normally be reached M-F 6:00 AM - 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784