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 1-2) in the reply filed on 01/20/2026 is acknowledged. Claims 3-4 are withdrawn.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 (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 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 and that CO is effectively removed from the steel sheet coil during the decarburization annealing process (Table 5), which meets the decarburization annealing condition disclosed by 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.
Conclusion
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/XIAOWEI SU/Primary Examiner, Art Unit 1733