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 .
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 1-2 and 4-8 are rejected under 35 U.S.C. 103 as being unpatentable over Hammer et al. (US 2017/0029917) (Hammer) in view of Schulz et al. (US 2018/0347018) (Schulz), with claim 2 taken in view of evidence by Strain hardening coefficient, measurement and its use in steel industry (Apparao).
In reference to claim 1, Hammer teaches a cold-rolled steel strip ([0001]) (corresponding to a cold-rolled flat steel product). The flat steel product has a tensile strength Rm of more than 750 MPa, regularly between 770-1,270 MPa ([0049]; [0050]) (corresponding to a cold-rolled flat steel product having a tensile strength of 750-940 MPa). A yield ratio Re/Rm is at least 0.7, wherein Re is yield strength and Rm is tensile strength. Thus, the yield strength (i.e., elastic limit) is at least 539 MPa (i.e., 0.7*770 = 539) (corresponding to an elastic limit (RP0.2) of 440-650 MPa). Table 2 further teaches the yield strength, Re, is from 465 to 805 MPa (Table 2).
The steel comprises iron, unavoidable production impurities and (in wt%) C:0.05-0.20%, Si: 0.25-1.00%, Mn: 1.0-3.0%, Al: 0.02-1.5%, Cr: 0.1-1.5%, N: less than 0.02%, P: less than 0.03%, S: less than 0.05% and optionally one or more elements from the group Ti, Mo, Nb, V and B subject to Ti: being up to 0.15%, Mo: less than 2%, Nb: less than 0.1%, V: less than 0.12%, and B: 0.0005-0.003% ([0019]) (corresponding to the steel substrate of a steel which, in % by mass, consists of: C: 0.040-0.100%, Mn: 2.28-2.50%, Si: 0.10-0.40%, Cr: 0.56-0.90%, Ti: 0.020-0.080%, B: 0.0005-0.0020%, N: 0.003-0.010%, Al: up to 0.10%, Ca: up to 0.005%, P: up to 0.025%, S: up to 0.010%, optionally one or more of the following elements: Mo: up to 0.20%, Nb: up to 0.050%, Cu: up to 0.10%, V: up to 0.020%, Ni: up to 0.10% and as the remainder iron and unavoidable impurities). Hammer further teaches N, P and S are undesirable alloy constituents and attribute to the unavoidable impurities, wherein N is present in a maximum amount of 0.02 wt.%, the P content is less than 0.03 wt.% and the S content at less than 0.05 wt.% ([0031]-[0032]). Thus, it is clear the unavoidable impurities are 0.1 wt.% or less (corresponding to a total fraction of impurities is limited to at most 0.5% by mass, and the fractions of P and S belong to the unavoidable impurities).
Hammer further teaches the flat steel product comprises at least two phases of which martensite and ferrite are the dominant two ([0039]). The structure includes at least 10 vol.% ferrite, at least 10 vol.% martensite and less than 10 vol.% residual austenite ([0039]). Table 3 shows the structure includes from 25-70 vol% ferrite, 30-73 vol% martensite and 0-5 vol% residual austenite or residual austenite and bainite (corresponding to a dual phase structure that consists of 10-40% by volume of martensite, 30-90% by volume of ferrite including bainitic ferrite, no more than 5% by volume of residual austenite, and the remainder of other structural constituents unavoidable due to the production process).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Hammer teaches an amount of each of Ti, N and B within the claimed ranges. When within the overlapping portion of Ti, N and B, the amounts of Ti, N and B will meet the presently claimed inequality. Additionally, Steel D and F teach %Ti ≤ 11ⅹ(%N+%B) (Table 1) (corresponding to the Ti fraction, in %Ti: %Ti≤11ⅹ(%N+%B) where %N = the given N fraction and %B = the given B fraction).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Hammer does not explicitly teach the steel sheet includes Ca from 0.001-0.005% by mass, as presently claimed.
Schulz teaches a high-strength multi-phase steel with excellent processing properties ([0001]). The addition of calcium in the form of calcium-silicon mixed compounds causes a deoxidation and desulfurization of the molten phase during production of steel. Thus reaction products are transferred into the slag and the steel is cleaned. The increased purity leads to better properties in the final product ([0159]). Therefore, a Ca content of ≥0.0005 to ≤0.0060% and advantageously to max. 0.0030% by weight is set ([0160]; claim 34).
In light of the motivation of Schulz, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to include a Ca content be 0.0005 to 0.0060% by weight in the steel composition of Hammer, in order to provide increased purity and better properties in the steel strip, and thereby arriving at the presently claimed invention
In reference to claim 2, Hammer in view of Schulz teaches the limitations of claim 1, as discussed above. Hammer teaches a low carbon cold-rolled steel strip ([0019]). As evidence by Apparao, low carbon steel has a strain hardening coefficient of 0.15-0.25 (p. 2) (corresponding to its strain hardening exponent n, measured in the expansion interval between 0.2-2.2%, is at least 0.22%).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Alternatively, given that the cold-rolled steel strip of Hammer in view of Schulz is substantially identical to the present claimed cold-rolled flat steel product in composition, structure and produced by a substantially identical process as disclosed in the instant application’s Specification ([0040]-[0046]), it is clear that the cold-rolled steel strip of Hammer in view of Schulz would intrinsically have a strain hardening exponent n of at least 0.22.
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).
In reference to claim 4, Hammer in view of Schulz teaches the limitations of claim 1, as discussed above. Hammer further teaches the flat steel product has a tensile strength Rm between 770-1,270 MPa ([0049]) (corresponding to its tensile strength is 780-900 MPa). Table 2 teaches the yield strength, Re, is from 465 to 805 MPa and the elongation A80 is from 8.9 to19.8% (Table 2; [0061]) (corresponding to its elastic limit Rp0.2 is 400-650 MPa, and its elongation at break A80 is more than 13%).
As set forth in MPEP 2144.05, in the case where the claimed range “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 reference to claim 5, Hammer in view of Schulz teaches the limitations of claim 1, as discussed above. Hammer further teaches a hole expansion LA according to ISO 16630 for the steel strip is 11-39% ([0022]; [0061]; Table 2) (corresponding to it has a hole expansion ratio HER of greater than 20% determined in accordance with DIN ISO 16630).
As set forth in MPEP 2144.05, in the case where the claimed range “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 reference to claim 6, Hammer in view of Schulz teaches the limitations of claim 5, as discussed above. Hammer teaches a hole expansion LA of at least 18% (Abstract; claim 10) (corresponding to the HER with a conical punch of 180º is at least 15%, and with a conical punch of 50º is at least 25%).
Although there is no disclosure that the test method is conformity with a conical punch of 180º or 50º, given that the Hammer in view of Schulz discloses the hole expansion as the presently claimed and absent evidence criticality how the hole expansion is measured, it is an examiner's position that hole expansion disclosed by Hammer in view of Schulz meets the claim limitation.
As set forth in MPEP 2144.05, in the case where the claimed range “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 reference to claim 7, Hammer in view of Schulz teaches the limitations of claim 1, as discussed above. Given that the cold-rolled steel strip of Hammer in view of Schulz is substantially identical to the present claimed cold-rolled flat steel product in composition, structure and produced by a substantially identical process as disclosed in the instant application’s Specification ([0040]-[0046]), it is clear that the cold-rolled steel strip of Hammer in view of Schulz would intrinsically have a drawing depth of greater than 33 mm, as determined in an LDH test.
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).
In reference to claim 8, Hammer in view of Schulz teaches the limitations of claim 1, as discussed above. Hammer further teaches a metallic protective coating is provided on the flat steel product ([0048]) (corresponding to it is coated with a corrosion-inhibiting layer). The metallic coating can be applied in any suitable manner, wherein here in particular application by hot-dip galvanizing is suitable ([0048]) (corresponding applied by hot dip coating or electrolytic coating).
Claim 8 defines the product by how the product was made. Thus, claim 8 is product-by-process claims. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having including a corrosion-inhibiting layer. Hammer suggests such a product.
Claims 1-2 and 4-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kawada et al. (JP 2010-285657) (Kawada).
The examiner has provided a machine translation of JP 2010-285657 with the Office Action mailed 12/04/2025. The citation of prior art in the rejection refers to the provided machine translation.
In reference to claim 1, Kawada teaches a high strength dual-phase cold-rolled steel sheet (Abstract) (corresponding to a cold-rolled flat steel product). The cold-rolled steel sheet may be subjected to hot-dip galvanization ([0013]) (corresponding to a steel substrate, wherein the steel substrate is optionally coated with a corrosion inhibitor layer). Kawada further teaches the tensile strength of the steel sheet is 613-1103 MPa and an elastic limit Rp0.2 is 392-764 MPa (Tables 3,7-8 and 10) (corresponding to a tensile strength (Rm) of 750-940 MPa and an elastic limit (Rp0.2) of 440-650 MPa).
The steel sheet contains, by mass%, C: 0.05 to 0.20%, Mn: 0.50 to 3.00%, Ti: 0.03 to 0.15%, Si: 2.50% or less, Al: 1.50% or less, P: 0.15% or less, S: 0.010% or less, N: 0.0060% or less, Nb: 0.03% or less (including 0), Mo: 0.25% or less (including 0), V: 0.25% or less (including 0) the balance consisting of Fe and unavoidable impurities ([0011]) (corresponding to the steel substrate consists of a steel which, in % by mass, consists of C: 0.040-0.100%, Mn: 2.28-2.50%, Si: 0.10-0.40%, Ti: 0.020-0.080%, N: 0.003-0.010%, Al: up to 0.10%, P: up to 0.025%, S: up to 0.010%, optionally one or more of the following elements: Nb: up to 0.050% and as a remainder iron and unavoidable impurities, wherein a total fraction of impurities is limited to at most 0.5% by mass, the fractions P and S belong to the unavoidable impurities). The cold-rolled steel sheet further contains, by mass%, one or more of B: 0.0050% or less, Cr: 2.00% or less, Ni: 1.00% or less, Cu: 1.00% or less, and W: 0.20% or less (i.e., 0% W) and one or both of Ca: 0.010% or less and REM: 0.100% or less(i.e., 0% REM) ([0012]) (corresponding to Cr: 0.56-0.90%, B: 0.005-0.0020%, Ca: 0.001-0.005%; optionally one or more of the following elements: Cu: up to 0.10%, Ni: up to 0.10% ).
The microstructure of the steel sheet is a dual-phase steel composite structure consisting of ferrite and a hard second phase mainly composed of martensite (Abstract; [0003]) (corresponding to a dual phase structure). The ferrite area ratio is set to 50% or more and the hard structure consisting of martensite is set to 5% or more and 50% or less ([0071]) (corresponding to consists of 10-40% by volume of martensite, 30-90% by volume of ferrite including bainitic ferrite). The balance is made up of one or more of pearlite, retained austenite, and cementite other than ferrite and hard structure, wherein the total area ratio thereof is limited to 5% or less ([0071]) (corresponding to no more than 5% by volume of residual austenite, and a remainder of other structural constituents unavoidable due to a production process).
While Kawada does not explicitly disclose the amount of ferrite, martensite, residual austenite and other structural constituents in % by volume, however, given that Kawada broadly disclose having 50% or more by area ferrite, 5-50% by area martensite, 5% by area or less pearlite retained austenite and cementite, it is clear that it would necessarily include the presently claimed (i.e., 10-40% by volume martensite and 30-90% by volume ferrite).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Kawada teaches an amount of each of Ti, N and B within the claimed ranges. When within the overlapping portion of Ti, N and B, the amounts of Ti, N and B will meet the presently claimed inequality.
As set forth in MPEP 2144.05, in the case where the claimed range “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 reference to claim 2, Kawada teaches the limitations of claim 1, as discussed above. Given that the cold-rolled steel sheet of Kawada is substantially identical to the presently claimed cold-rolled flat steel product in composition, structure and made by a substantially identical process, therefore, the cold-rolled steel sheet of Kawada would inherently have a strain hardening exponent measured in an expansion interval between 0.2% -2.2% of at least 0.22.
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).
“Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. Id. (MPEP 2112.01)
In reference to claim 4, Kawada teaches the limitations of claim 1, as discussed above. Kawada teaches the tensile strength of the steel sheet is 613-1103 MPa and an elongation at beak is more than 13% (Tables 3,7-8 and 10) (corresponding to the tensile strength Rm is 780-900MPa and an elongation at break A80 is more than 13%).
As set forth in MPEP 2144.05, in the case where the claimed range “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 reference to claim 5, Kawada teaches the limitations of claim 1, as discussed above. Kawada teaches a hole expansion test was performed and the hole expansion ratio, λ, is greater than 20% (Tables 3,7-8 and 10) (corresponding to ta hole expansion ratio, HER, of the cold-rolled flat steel product is greater than 20%, as determined in accordance with DIN ISO 16630).
Although there is no disclosure that the test method is conformity with DIN ISO 1663, given that the Kawada discloses the hole expansion ratio as the presently claimed and absent evidence criticality how the hole expansion is measured, it is an examiner's position that hole expansion disclosed by Hammer in view of Schulz meets the claim limitation.
As set forth in MPEP 2144.05, in the case where the claimed range “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 reference to claim 6, Kawada teaches the limitations of claim 5, as discussed above. Kawada teaches the hole expansion ratio is greater than 20% (Tables 3,7-8 and 10) (corresponding to the HER is at least 15%).
Although there is no disclosure that the test method is conformity with a conical punch of 180º or 50º, given that the Kawada discloses the hole expansion as the presently claimed and absent evidence criticality how the hole expansion is measured, it is an examiner's position that hole expansion disclosed by Hammer in view of Schulz meets the claim limitation.
Alternatively, given that the cold-rolled steel sheet of Kawada is substantially identical to the presently claimed cold-rolled flat steel product in composition, structure and made by a substantially identical process, therefore, the cold-rolled steel sheet of Kawada would inherently have a HER with a conical punch of 180º is at least 15% and with a conical punch of 50º is at least 25%.
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).
In reference to claim 7, Kawada teaches the limitations of claim 1, as discussed above. Given that the cold-rolled steel sheet of Kawada is substantially identical to the presently claimed cold-rolled flat steel product in composition, structure and made by a substantially identical process, therefore, the cold-rolled steel sheet of Kawada would inherently have a drawing depth of greater than 33 mm, as determined in a limiting dome height test.
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).
In reference to claim 8, Kawada teaches the limitations of claim 1, as discussed above. Kawada teaches the cold-rolled steel sheet is subjected to hot-dip galvanizing ([0013]; [0016]; claim 5; claim 10) (corresponding to the steel substrate is coated with the corrosion-inhibiting layer applied by hot dip coating).
Claim 8 defines the product by how the product was made. Thus, claim 8 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having a corrosion inhibitor layer. The reference suggests such a product.
Claims 1-2 and 4-8 are rejected under 35 U.S.C. 103 as being unpatentable over Winzer et al. (WO 2021/213647) (Winzer).
It is noted that when utilizing WO 2021/213647, the disclosures of the reference are based on US 2023/0151468 which is an English language equivalent of the reference. Therefore, the paragraphs cited with respect to WO 2021/213647 are found in US 2023/0151468.
In reference to claims 1, 4 and 8, Winzer teaches a hot-rolled flat steel product ([0002]) (corresponding to a flat steel product). A corrosion protection layer is applied to the flat steel product by hot-dip coating ([0002]) (corresponding to the steel substrate is optionally coated with a corrosion inhibitor layer; the corrosion-inhibiting layer applied by hot dip coating).
The flat steel product has a yield point Rp0.2 of at least 290 MPa, a tensile strength of at least 490 MPa ([0020]) (corresponding to a tensile strength (Rm) of 750-940 MPa and an elastic limit (Rp0.2) of 440-650 MPa). Strip W9 has a Rp0.2 of 498 MPa, a tensile strength of 783 MPa and an A80 of 13.5%, strip W20 has a Rp0.2 of 503 MPa, a tensile strength of 839 MPa and an A80 of 22.1%, strip W24 has a Rp0.2 of 510 MPa, a tensile strength of 921 MPa and an A80 of 16.7%, strip W28 has a Rp0.2 of 489 MPa, a tensile strength of 892 MPa and an A80 of 19.6%, W29 has a Rp0.2 of 445 MPa, a tensile strength of 822 MPa and an A80 of 22.9%, W30 has a Rp0.2 of 475 MPa, a tensile strength of 875 MPa and an A80 of 14.4% and W31 has a Rp0.2 of 519 MPa, a tensile strength of 875 MPa and an A80 of 20.8% (Table 4) (corresponding to the tensile strength Rm is 780-900 MPa and an elongation at break A80 is more than 13%).
The steel substrate of the flat still product is composed of 0.04-0.23% by mass C, 0.04-0.54% by mass Si, 0.01-1.5% by mass Al, 1.4-2.9% by mass Mn, 0.02 to 1.4% by mass Cr and Mo, 0.005-0.15% by mass of Ti and V, less than 0.005% by mass Nb, 0.0005-0.005% by mass B, less than 0.02% by mass P, less than 0.005% by mass S, less than 0.01% by mass N, less than 0.005% by mass Ca, not more than 0.2% by mass Cu, not more than 0.2% Ni, not more than 0.5% by mass Sn (i.e., 0% Sn), not more than 0.05% by mass As (i.e., 0% As), not more than 0.2% by mass Co (i.e., 0% Co), not more than 0.0002% by mass of each of Zr, La and Ce (i.e., 0% Zr, La and Ce) and the remainder consisting of iron and unavoidable impurities, wherein the unavoidable impurities include P, S, N and Nb ([0026]-[0033]; [0067]-[0082]) (corresponding to the steel substrate consists of a steel which, in % by mass, consists of: C: 0.040-0.100%, Mn: 2.28-2.50%, Si: 0.10-0.40%, Cr: 0.56-0.90%, Ti: 0.020-0.080%, B: 0.005-0.0020%, N: 0.003-0.010%, Al: up to 0.10%, Ca: 0.001-0.005%, P: up to 0.025%, S: up to 0.010%, optionally one or more of the following elements: Mo: up to 0.20%, Nb: up to 0.050%, Cu: up to 0.10%, V: up to 0.020%, Ni: up to 0.10% and as a remainder iron and unavoidable impurities, wherein a total fraction of impurities is limited to at most 0.5% by mass, the fractions P and S belong to the unavoidable impurities). The flat steel product has a structure that consists of, in % by area, in total 50-90% ferrite and bainitic ferrite, 5-50% martensite, 2-15% residual austenite and up to 10% other structural constituents that are unavoidable due to production ([0034]) (corresponding to a dual phase structure that consists of 10-40% by volume of martensite, 30-90% by volume of ferrite including bainitic ferrite, no more than 5% residual austenite, and a remainder of other structural constituents unavoidable due to a production process).
While Winzer does not explicitly disclose the amount of ferrite, martensite, residual austenite and other structural constituents in % by volume, however, given that Winzer broadly disclose having 50-90% by area ferrite and bainitic ferrite, 5-50% by area martensite, 2-15% by area residual austenite and up to 10% by area other structural constituents that are unavoidable due to production, it is clear that it would necessarily include the presently claimed (i.e., 10-40% by volume martensite and 30-90% by volume ferrite).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Given that Winzer teaches a steel having each of Ti, N and B within the claimed ranges. When within the overlapping portion of Ti, N and B, the amount of Ti, N and B will meet the presently claimed inequality.
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Although Winzer does not explicitly teach the flat steel product is cold-rolled as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making (i.e., cold rolling or hot dip coating). Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Winzer meets the requirements of the claimed product, Winzer clearly meets the requirements of the present claim.
In reference to claims 2 and 5-7, Winzer teaches the limitations of claim 1, as discussed above. Given that the flat steel product of Winzer is substantially identical to the present claimed flat steel product in composition and structure, therefore, the flat steel product of Winzer will inherently have a strain hardening exponent of at least 0.22, a hole expansion ratio, HER, greater than 20% and a drawing depth greater than 33 mm as determined in a limiting dome height test.
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).
“Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. Id. (MPEP 2112.01).
Response to Arguments
In response to amended claims 1, 4 and 8 the previous Claim Objections of record are withdrawn.
Applicant primarily argues:
“Schulz describes a high-strength, air-hardenable multiphase steel with a minimum tensile strength of 750 MPa in the non-air-hardened state and excellent processing properties. However, the steel according to Schulz does not meet the mechanical properties, such as tensile strength, yield strength, and elongation at break, of the present application after air hardening (see Examples 1 and 2 of Schulz).
One of ordinary skill in the art starting from Hammer would not refer to Schulz as Hammer aims to produce a flat steel product with a microstructure that contains at least 10 wt.% tempered martensite (see e.g., paragraph [0039] of Hammer). In order to achieve the tempered martensite, the cold-rolled flat steel product according to Hammer has to undergo additional heat treatment with an annealing temperature of 150-400°C for an annealing time of 4.5-24 hours (see e.g., paragraphs [0020]-[0021] of Hammer). Schulz on the other hand specifically teaches that no additional annealing step is performed (see e.g., paragraphs [0200]-[0202] of Schulz).
Therefore, one of ordinary skill in the art would not be motivated to take Schulz into account, starting from Hammer, in order to optimize the flat steel product according to Hammer, simply because of the fundamentally different aim of the microstructure of the flat steel product.
To further distinguish the present application from Schulz, independent claim 1 has been amended to specify that the minimum content of chromium (Cr) in the alloy composition is 0.56 wt.%. This value finds basis in the examples of the present application. All examples of the present application according to the invention contain chromium in an amount of at least 0.56 wt.%.
The steel according to Schulz is limited in its composition to chromium contents of between 0.280 and 0.480 wt.% (see claim 1 and paragraphs [0134]-[0139] of Schulz).”
Remarks, p. 8
The examiner respectfully traverses as follows:
Schulz is only used as teaching reference in order to teach including Ca in an amount of 0.0005 to 0.0060% by weight in a steel composition. It is noted that the “test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference...Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art”, In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that “combining the teachings of references does not involve an ability to combine their specific structures”, In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
Hammer and Schulz are both drawn to steel products. Further, Schulz provides proper motivation to include Ca in steel, namely to increase purity in the steel leading to better properties in the final product. Therefore, absent evidence to the contrary it is the examiner’s position one of ordinary skill in the art would be motivated to include Ca in the steel of Hammer.
With respect to the chromium content, it is noted that Hammer teaches the steel strip includes Cr: 0.1-1.5 wt%. Schulz is not used to teach the amount of Cr in the steel strip. Rather, Schulz is used to teach the inclusion of Ca in the composition of Hammer.
Applicant further argues:
“Independent claim 1 has been amended to specify that the minimum content of manganese (Mn) in the alloy composition is 2.28 wt.%. This value finds basis in the examples of the present application. All examples of the present application according to the invention contain Mn in an amount of at least 2.28 wt.%.
In the examples given by Kawada, Alloy Composition A appears to lead to the claimed microstructure and the claimed tensile strength and yield strength (see Table 3, Steel 1 of Kawada), but Alloy Composition A does not have the Mn content required by amended independent claim 1 (see Table 1, Alloy Composition A of Kawada).
According to Table 4, the other examples given by Kawada also do not have an alloy composition that falls within the scope of amended independent claim 1 of the present application.
One of ordinary skill in the art is not motivated, based on Kawada, to increase the Mn content higher than what is given in the examples. Kawada does not give one of ordinary skill in the art any hint nor a suggestion that the increase of the Mn content above 2.24 wt.%, as given in Example L of Kawada, would have a positive influence on the properties of the final product.”
Remarks, p. 9-10
The examiner respectfully traverses as follows:
While the specific examples in Kawada may include a steel sheet having the claimed microstructure but with an amount of Mn outside the claimed amount of Mn, it is noted Applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
The fact remains, Kawada teaches the steel comprises 0.50 to 3.00 wt% Mn and the microstructure consists of ferrite and one or both of martensite and bainite, wherein the ferrite area ratio is set to 50% or more and the one or both of martensite and bainite is set to 5% or more and 50% or less ([0011]; [0044]; [0070]-[0071]). Therefore, Kawada teaches an amount of Mn that overlaps the presently claimed and a microstructure that overlaps the presently claimed (i.e., a microstructure consisting of 50% or more ferrite and 5 to 50% martensite). As set forth in MPEP 2144.05, in the case where the claimed range “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).
Applicant further argues:
“Winzer does not disclose any Ti content in the flat steel product, regardless of the V content. In addition, Winzer describes in paragraph [0073] that at least one of the elements Ti and V must be present as a mandatory component in the steel of the steel substrate. According to Winzer, steel without titanium is also in accordance with the invention. The examples of Winzer also only specify a sum of Ti + V, which is why it is not clear whether titanium was used here in the quantities required by the invention.”
Remarks, p. 11
The examiner respectfully traverses as follows:
Winzer discloses a sum of Ti and V in the steel product is greater than or equal to 0.005 % by mass and less than or equal to 0.15 % by mass ([0030]). As Applicant notes, Winzer discloses at least one of the elements Ti and V must be present in the steel product. Therefore, steel with only Ti in an amount greater than or equal to 0.005% by mass and less than or equal to 0.15 % by mass is in accordance with the invention and meets the presently claimed Ti requirement.
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Applicant further argues:
“A part from that, the flat steel product disclosed in Winzer is a hot-rolled strip and not a cold-rolled strip. A cold-rolled flat steel product can be clearly distinguished from a hot- rolled flat steel product in terms of its structure. Typically, the cold-rolled flat steel product shows a significantly finer grain structure compared to a hot-rolled flat steel product.”
Remarks, p. 11
The examiner respectfully traverses as follows:
As discussed in the rejection above, although Winzer does not explicitly teach the flat steel product is cold-rolled as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making (i.e., cold rolling or hot dip coating). Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Winzer meets the requirements of the claimed product, Winzer clearly meets the requirements of the present claim. Further, as set forth in the rejection above Winzer teaches both the mechanical properties and microstructure of the claimed steel product.
Applicant further argues:
“Finally, Applicant respectfully submits that it is incorrect that the examples of Winzer show that the tensile strength and yield strength simultaneously required in amended independent claim 1 of the present application have already been achieved.
The examples of Winzer cited in the Office Action, which are asserted to simultaneously exhibit tensile strength and a yield strength in the range claimed in amended independent claim 1 of the present application, do not correspond in their alloy composition (see e.g., Table 1, Alloys D, E, F, G, and H of Winzer) to the alloy composition according to amended independent claim 1 of the present application, for example with regard to their C, Si, and Mn content. Therefore, the reference made to these examples is in fact irrelevant (see Table 1, Alloys G and H of Winzer) which, incidentally, assuming that the Ti+V content in Table 1 corresponds to the titanium content, also do not have the titanium content required by amended independent claim 1 of the present application.
Thus, inadmissible hindsight was used, in knowledge of the invention, to deny an inventive step of the subject-matter of the present application on the basis of Winzer.
Winzer does not encourage one of ordinary skill in the art to further process the hot-rolled strip taught therein by cold rolling and to add the amount of at least 0.020 to 0.080 wt.% Ti to the flat steel product in accordance with the invention.
Rather, one of ordinary skill in the art who references Winzer assumes that the addition of Ti is not necessary if, according to Winzer, there is a sufficient amount of V in the steel product. Furthermore, Winzer directly teaches applying a zinc-based corrosion protection coating to the hot-rolled strip, which rules out subsequent cold rolling of the hot-rolled strip.”
Remarks, p. 12
The examiner respectfully traverses as follows:
In response to Applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
As discussed above, Winzer discloses a sum of Ti and V in the steel product is greater than or equal to 0.005 % by mass and less than or equal to 0.15 % by mass ([0030]). Winzer further discloses at least one of the elements Ti and V must be present in the steel product. Therefore, steel with only Ti in an amount greater than or equal to 0.005% by mass and less than or equal to 0.15 % by mass is in accordance with the invention and meets the presently claimed Ti requirement. As set forth in MPEP 2144.05, in the case where the claimed range “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).
While the working examples give specific tensile strengths and yield strength for specific compositions, Winzer broadly discloses the steel product has a yield point Rp0.2 greater than 290 MPa and a tensile strength Rm greater than 490 MPa ([0020]), which overlap the presently claimed. As set forth in MPEP 2144.05, in the case where the claimed range “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).
Therefore, Applicant's arguments filed 03/03/2026 have been fully considered but they are 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mary I Omori whose telephone number is (571)270-1203. The examiner can normally be reached M-F 8am-4pm.
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/MARY I OMORI/Primary Examiner, Art Unit 1784
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