Prosecution Insights
Last updated: April 19, 2026
Application No. 18/288,399

HOT-ROLLED STEEL SHEET

Non-Final OA §102§DP
Filed
Oct 26, 2023
Examiner
YANG, JIE
Art Unit
1734
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Nippon Steel Corporation
OA Round
1 (Non-Final)
62%
Grant Probability
Moderate
1-2
OA Rounds
3y 7m
To Grant
81%
With Interview

Examiner Intelligence

Grants 62% of resolved cases
62%
Career Allow Rate
758 granted / 1223 resolved
-3.0% vs TC avg
Strong +19% interview lift
Without
With
+19.4%
Interview Lift
resolved cases with interview
Typical timeline
3y 7m
Avg Prosecution
73 currently pending
Career history
1296
Total Applications
across all art units

Statute-Specific Performance

§101
0.1%
-39.9% vs TC avg
§103
51.3%
+11.3% vs TC avg
§102
13.0%
-27.0% vs TC avg
§112
16.1%
-23.9% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1223 resolved cases

Office Action

§102 §DP
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 . Detail Action Claims 1-9 remain for examination, wherein claims 1 and 9 are independent claims. Claim Objections Claim 1 is objected to because of the following informalities: the limitation of “one, two or more of” should be amended as ““one. Appropriate correction is required. Claim Rejections - 35 USC § 102 (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. Claims 1-3, 6, and 9 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Toyoda et al (US-PG-pub 2018/0327878 A1, thereafter PG’878). Regarding claims 1-3, 6, and 9, PG’878 teaches a hot-rolled steel sheet with TS 980 MPa or more (Title, abstract and claims of PG’878), which reads on the hot-rolled steel sheet as claimed in the instant claims. The comparison between the alloy composition, microstructure, and properties disclosed by the Example #A in table 1 (microstructures and properties shown in #1 in table 3) of PG’878 and claimed ranges is listed in the following table. All of the essential alloy composition ranges, microstructure, and properties disclosed by the Example #A in table 1 (microstructures and properties shown in #1 in table 3) of PG’878 are within the claimed ranges. PG’878 indicates to adjust the hardness ratio between the martensite and ferrite to obtain desired plastic deformability (par.[0056] of PG’878). Since Example #A in table 1 of PG’878 includes all of the essential alloy composition as claimed, which reads on the “consisting of” language in the instant claim 1. Still regarding claims 1 and 9, the claimed Rcf value (ratio between average fracture surface units before and after plastic deformation) is recognized as a material feature fully depended on the alloy composition and microstructures, this position is further evidenced by the disclosure in par.[0104] of US-PG-pub 2024 /0209470 A1 (corresponding to the instant specification). PG’878 teaches the same alloy composition with the same microstructures, and same TS as claimed in the instant claims, the Rcf value (ratio between average fracture surface units before and after plastic deformation) would inherently exist in the steel sheet of PG’878. MPEP 2112 III&IV. Since PG’878 teaches all of the limitations as claimed in the instant claims, claims 1-3, 6, and 9 are anticipated by PG’878. Element From instant Claims 1-3, 6, and 9 (mass%) #A in table 1 of PG’878 (mass %) within range (mass %) C 0.040-0.400 (cl.1,9) 0.04 0.04 Si 0.05-3.00 (cl.1,9) 1.2 1.2 Mn 1.00-4.00 (cl.1,9) 1.0 1.0 Al (sol.) 0.001-0.500 (cl.1,9) 0.12 0.12 P 0.100 or less (cl.1,9) 0.015 0.015 S 0.030 or less (cl.1,9) 0.0030 0.0030 N 0.100 or less (cl.1,9) 0.004 0.004 O 0.0100 or less (cl.1,9) Not intended added 0-impurity level Ti 0-1.000 (cl.1,9) 0.010-1.00 (cl.2 optional) 0.11 0.11 V 0-1.000 (cl.1,9) 0.010-1.00 (cl.2 optional) Not intended added 0-impurity level Nb 0-1.000 (cl.1,9) 0.010-1.00 (cl.2 optional) Not intended added 0-impurity level Cu 0-2.00 (cl.1,9) 0.01-2.00 (cl.2 optional) Not intended added 0-impurity level Cr 0-2.00 (cl.1,9) 0.01-2.00 (cl.2 optional) Not intended added 0-impurity level Mo 0-1.00 (cl.1,9) 0.01-1.00 (cl.2 optional) Not intended added 0-impurity level Ni 0-2.00 (cl.1,9) 0.02-2.00 (cl.2 optional) Not intended added 0-impurity level B 0-0.0100 (cl.1,9) 0.0001-0.0100 (cl.2 optional) Not intended added 0-impurity level Ca 0-0.0200 (cl.1,9) 0.0005-0.0200 (cl.2 optional) Not intended added 0-impurity level Mg 0-0.0200 (cl.1,9) 0.0005-0.1000 (cl.2 optional) Not intended added 0-impurity level REM 0-0.1000 (cl.1,9) 0.0005-0.1000 (cl.2 optional) Not intended added 0-impurity level Bi 0-0.020 (cl.1,9) 0.0005-0.0200 (cl.2 optional) Not intended added 0-impurity level One or more of Zr, Co, Zn, and W Total: 0-1.00 (cl.1,9) Not intended added 0-impurity level Sn 0-0.05 (cl.1,9) Not intended added 0-impurity level Fe Balance +impurities Balance +impurities Balance +impurities Microstructures From #1 in table 3 of PG’878 Within range Retained Austenite (area%) 3 or less 0 0 Properties From #1 in table 3 of PG’878 Within range TS (MPa) 980 or more 1028 1028 From claims 3 and 6 From #1 in table 3 of PG’878 Within range (area%) Ferrite: 15-60; Martensite: 40-85 Ferrite: 55; Martensite: 45 Ferrite: 55; Martensite: 45 Rcf value 2.00 or more (cl.1 and 9) MPEP 2112 III&IV Claims 1-2, 4-5, and 7-9 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Sakakibaraet al (US-PG-pub 2019/0161820 A1, thereafter PG’820). Regarding claims 1-2, 4-5, and 7-9, PG’820 teaches a hot-rolled steel sheet with 90% or more of TM and lower bainite (Title, abstract and claims of PG’820), which reads on the hot-rolled steel sheet as claimed in the instant claims. The comparison between the alloy composition, microstructure, and properties disclosed by the Example #B in table 1 (microstructures and properties shown in #B-2 and B3 in table 3-1) of PG’820 and claimed ranges is listed in the following table. All of the essential alloy composition ranges, microstructure, and properties disclosed by the Example #B in table 1 (microstructures and properties shown in #B-2 and B3 in table 3-1) of PG’820 are within the claimed ranges. PG’820 indicates to limit retained austenite for improve plastic deformability (par.[0110] of PG’820). Since Example #B in table 1 of PG’820 includes all of the essential alloy composition as claimed, which reads on the “consisting of” language in the instant claim 1. Still regarding claims 1 and 9, the claimed Rcf value (ratio between average fracture surface units before and after plastic deformation) is recognized as a material feature fully depended on the alloy composition and microstructures, this position is further evidenced by the disclosure in par.[0104] of US-PG-pub 2024 /0209470 A1 (corresponding to the instant specification). PG’820 teaches the same alloy composition with the same microstructures, and same TS as claimed in the instant claims, the Rcf value (ratio between average fracture surface units before and after plastic deformation) would inherently exist in the steel sheet of PG’820. MPEP 2112 III&IV. Since PG’820 teaches all of the limitations as claimed in the instant claims, claims 1-2, 4-5, and 7-9 are anticipated by PG’820. Element From instant Claims 1-2, and 9 (mass%) #B in table 1 of PG’820 (mass %) within range (mass %) C 0.040-0.400 (cl.1,9) 0.063 0.063 Si 0.05-3.00 (cl.1,9) 1.16 1.16 Mn 1.00-4.00 (cl.1,9) 2.91 2.91 Al (sol.) 0.001-0.500 (cl.1,9) 0.029 0.029 P 0.100 or less (cl.1,9) 0.009 0.009 S 0.030 or less (cl.1,9) 0.0009 0.0009 N 0.100 or less (cl.1,9) 0.0024 0.0024 O 0.0100 or less (cl.1,9) 0.0022 0.0022 Ti 0-1.000 (cl.1,9) 0.010-1.00 (cl.2 optional) 0.192 0.192 V 0-1.000 (cl.1,9) 0.010-1.00 (cl.2 optional) Not intended added 0-impurity level Nb 0-1.000 (cl.1,9) 0.010-1.00 (cl.2 optional) 0.021 0.021 Cu 0-2.00 (cl.1,9) 0.01-2.00 (cl.2 optional) Not intended added 0-impurity level Cr 0-2.00 (cl.1,9) 0.01-2.00 (cl.2 optional) Not intended added 0-impurity level Mo 0-1.00 (cl.1,9) 0.01-1.00 (cl.2 optional) Not intended added 0-impurity level Ni 0-2.00 (cl.1,9) 0.02-2.00 (cl.2 optional) Not intended added 0-impurity level B 0-0.0100 (cl.1,9) 0.0001-0.0100 (cl.2 optional) Not intended added 0-impurity level Ca 0-0.0200 (cl.1,9) 0.0005-0.0200 (cl.2 optional) Not intended added 0-impurity level Mg 0-0.0200 (cl.1,9) 0.0005-0.1000 (cl.2 optional) Not intended added 0-impurity level REM 0-0.1000 (cl.1,9) 0.0005-0.1000 (cl.2 optional) Not intended added 0-impurity level Bi 0-0.020 (cl.1,9) 0.0005-0.0200 (cl.2 optional) Not intended added 0-impurity level One or more of Zr, Co, Zn, and W Total: 0-1.00 (cl.1,9) Not intended added 0-impurity level Sn 0-0.05 (cl.1,9) Not intended added 0-impurity level Fe Balance +impurities Balance +impurities Balance +impurities Microstructures From #B2 and #B3 in table 3-1 of PG’820 Within range Retained Austenite (area%) 3 or less 0 0 Properties From #B-2 and B-3 in table 3-1 of PG’820 Within range TS (MPa) 980 or more 1019 (B-2) 1004 (B-3) 1019 (B-2) 1004 (B-3) From claims 4 and 7 From #B-2 in table 3-1 of PG’820 Within range (area%) Bainite: 50.0 or more LB: 75 LB: 75 From claims 5 and 8 From #B-3 in table 3-1 of PG’820 (area%) Martensite: 85.0 or more M: 88 M: 88 Rcf value 2.00 or more (cl.1 and 9) MPEP 2112 III&IV Double Patenting The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969). A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a non-statutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b). Claims 1-9 are rejected on the ground of non-statutory obviousness type double patenting as being unpatentable over Claims 1-4 of co-pending application No. 18/579802 (US-PG-pub 2024/0318274 A1). Regarding claims 1-9, although the conflicting claims are not identical, they are not patentable distinct from each other with claims 1-4 of co-pending application No. 18/579802 (US-PG-pub 2024/0318274 A1). All of the alloy composition ranges, microstructure including retained austenite, and properties claims 1-4 of co-pending application No. 18/579802 (US-PG-pub 2024/0318274 A1) reads on or overlap the claimed ranges, which is a prima facie case of obviousness. MPEP 2144.05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the alloy composition as claimed from the disclosures Claims 1-4 of co-pending application No. 18/579802 (US-PG-pub 2024/0318274 A1) because Claims 1-4 of co-pending application No. 18/579802 (US-PG-pub 2024/0318274 A1) teaches the same hot-rolled steel sheet throughout whole disclosing range. Thus, no patentable distinction was found in the instant claims compared with the manufacturing process a grain-oriented electrical steel sheet as disclosed by Claims 1-4 of co-pending application No. 18/579802 (US-PG-pub 2024/0318274 A1). This is a provisional obvious-type double patenting rejection since the conflict claims in the co-pending application have not in fact been patented. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIE YANG whose telephone number is (571) 270-1884. The examiner can normally be reached on IFP. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan J Johnson can be reached on 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /JIE YANG/Primary Examiner, Art Unit 1734
Read full office action

Prosecution Timeline

Oct 26, 2023
Application Filed
Mar 16, 2026
Non-Final Rejection — §102, §DP (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
62%
Grant Probability
81%
With Interview (+19.4%)
3y 7m
Median Time to Grant
Low
PTA Risk
Based on 1223 resolved cases by this examiner. Grant probability derived from career allow rate.

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