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 .
Status of Claims
Claims 3-4 are withdrawn. Claims 1-2 are examined herein.
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.
Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over JP’121 (JPS 57-207121, IDS dated 08/08/2024), and further in view of JP’889 (JPH06-145889).
Regarding claims 1 and 2, JP’121 teaches (Abstract; Table 1, Steel S55C) a steel sheet that has composition as shown in Table 1 below:
Element
Claim 1
(mass %)
JP’121
(mass %)
JP’889
(mass %)
C
0.1-0.65
0.52
0.1-0.75
Si
0.1-2.0
0.29
0-0.3
Mn
0.3-3.0
0.81
0.1-2.5
P
≤0.05
0.019
---
S
≤0.01
0.013
≤0.07
N
≤0.01
----
0.005-0.03
O
≤0.01
----
≤0.003
Fe
Balance
Balance
Balance
The composition disclosed by JP’121 meets the amount of C, Si, Mn, P and close to the amount of S recited in claim 1. 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). See MPEP 2144.05 I. Thus, the recited amount of C, Si, Mn, P, and S is a prima facie case of obviousness over JP’121.
JP’121 is silent on the amount of N and O. JP’889 teaches a steel having amount of C, Si and Mn overlap the recited amount of C, Si and Mn (Abstract). JP’889 discloses that controlling O amount to 0.003 wt.% or less and N amount to 0.005-0.03 wt. % is beneficial for making a steel having good fatigue strength, toughness and ductility ([0021] to [0022]). Thus, it would be obvious to one of ordinary skill in the art to control the O amount to 0.003 wt.% or less and N amount to 0.005-0.03 wt. % as taught by JP’889 in the steel of JP’121 in order to make a steel having good fatigue strength, toughness and ductility as disclosed by JP’889. The amount of O disclosed by JP’889 meets the recited amount of O in claim 1 and the amount of N disclosed by JP’889 overlaps the recited amount of N in claim 1. 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). See MPEP 2144.05 I. Since the amount of Ti, B, Cr, Mo, Ni, Nb, Cu, V, Ca, Mg, Al, Sn, W, Sb, Zr, Co and REM in claim 1 can be zero, the recited composition in claim 1 is obvious over JP’121 in view of JP’889. See MPEP 2144.05 I.
JP’121 discloses that the steel sheet comprises a base steel sheet, and a scale formed on a surface of the base steel sheet, and that the base steel sheet comprises a decarburized layer formed on a side of an interface with the scale with a thickness being 138-207 µm (Abstract; Table 6, Steel S55C), which meets the recited decarburization layer thickness in claim 1.
JP’121 in view of JP’889 does not explicitly disclose that the decarburized layer comprises an internal oxidized layer with a thickness being less than 30 µm as recited in claim 1 and JP’121 in view of JP’889 does not explicitly disclose the scale composition as recited in claims 1 and 2. However, these limitations are determined by the steel composition and the decarburization annealing conditions of forming the decarburized layer. JP’121 discloses that the decarburization annealing is performed at 710 ºC for 7 hours under nitrogen (Table 5), which meets the annealing temperature and time as disclosed in the instant Specification. JP’121 further discloses that when the steel coil is a loose coil with a layer gap of 5 mm, CO is effectively removed from the steel sheet coil during the decarburization annealing process by ventilating the atmospheric gas at a gas flow rate of 60 m3/Hr; and when the steel coil is a tight coil, the decarburization annealing is performed under reduced pressure of 10-3 Torr to 10 Torr in the annealing furnace (Page 3-4; Table 5; Table 7). Thus, JP’121 teaches decarburization annealing conditions that meet the decarburization annealing condition disclosed in the instant application (See [0066] of instant Specification). In view of the fact that JP’121 in view of JP’889 teaches a steel composition that meets the recited steel composition in claim 1 and a decarburization annealing condition that meets the decarburization annealing condition disclosed by instant application, one of the ordinary skill in the art would expect that the steel sheet disclosed by JP’121 in view of JP’889 to meet the recited internal oxidized layer thickness and the scale composition as recited in claims 1 and 2. “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, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 I.
Response to Arguments
Applicant's arguments filed 06/10/2026 have been fully considered but they are not persuasive.
The applicants argued that as described in paragraph [0066] of the Specification, the above claimed features are obtained by performing box annealing on the hot-rolled coil in a mill scale state, in an inert gas atmosphere, by blowing air at an air volume of 250 m³/hr or more in the annealing step. For instance, Steel Sheets No. b9, b10, b13, b14 show that, when the air volume is less than 250 m³/hr, the thickness of the decarburized layer is less than 90 µm, and the Fe content in scale is less than 80%, both of which are outside of the claimed ranges. JP '121 and JP '889 do not disclose or suggest that the air volume is set to 250 m³/hr or more in the annealing step. There is no reasonable basis for a person skilled in the art to set the air volume to 250 m³/hr or more based on the descriptions of JP '121 and JP '889. As such, presently claimed features (v), (vi), and/or (viii) are not inherent in the product of JP '121 in view of JP '889, and the present claims are therefore not rendered obvious by these references.
In response, JP’121 discloses that the decarburization annealing is performed at 710 ºC for 7 hours under nitrogen (Table 5), which meets the annealing temperature and time as disclosed in the instant Specification. JP’121 further discloses that when the steel coil is a loose coil with a layer gap of 5 mm, CO is effectively removed from the steel sheet coil during the decarburization annealing process by ventilating the atmospheric gas at a gas flow rate of 60 m3/Hr; and when the steel coil is a tight coil, the decarburization annealing is performed under reduced pressure of 10-3 Torr to 10 Torr in the annealing furnace (Page 3-4; Table 5; Table 7). Thus, JP’121 discloses how to effectively remove CO whether the steel coil is a loose coil or a tight coil. JP’121 discloses under the disclosed decarburization conditions, the steel has a decarburization layer with a thickness of 138-207 µm (Table 6, Steel S55C), which meets the recited thickness of decarburization layer in claim 1 and indicates that effective CO removal is performed in JP’121.
The applicants have not provided data to show that when the steel coil is a loose coil with layer gap of 5 mm, a gas flow rate of 60 m3/Hr is not sufficient to remove CO form the annealing atmosphere, therefore, the argument that presently claimed features (v), (vi), and/or (viii) are not inherent in the product of JP '121 in view of JP '889 is not persuasive.
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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/XIAOWEI SU/ Primary Examiner, Art Unit 1733
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