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 .
DETAILED ACTION
Claim 2 has been cancelled; claims 1 and 3-8 have been amended; Claims 1 and 3-8 remain for examination, wherein claim 1 is an independent claim.
Previous Rejections/Objections
Previous rejection of Claims 1-4 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 79/29/2026.
Previous rejection of Claims 1-2 and 4-8 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 79/29/2026.
Previous rejection of Claims 1-8 under 35 U.S.C. 103 as being unpatentable over FURUYA HITOSHI et al (JP 2004156095 A, with on-line translation, thereafter JP’095) is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 79/29/2026.
However, in view of the Applicant’s amendment, newly recorded prior art(s), and reconsideration, a new ground rejection has been listed as following:
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 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.
Claims 1 and 3-8 are rejected under 35 U.S.C. 103 as being unpatentable over FURUYA HITOSHI et al (JP 2004156095 A, with on-line translation, thereafter JP’095) in view of Fujiyama (JP 2022142983 A, with on-line translation, thereafter JP’983).
Regarding claims 1 and 5, JP’095 teaches a steel sheet excellent in toughness of a parent metal and a weld-heat affected zone and its manufacturing method (Abstract, examples, and claims of JP’095), which read on the claimed steel material (claim 1) and manufacturing process (claim 5). The comparison between the claimed alloy composition ranges and major process steps in claims 1 and 5 and those disclosed by JP’095 is listed in the following table. All of the essential alloy composition ranges, microstructures, and major process steps disclosed by JP’095 overlaps or reads on the claimed alloy composition ranges (cl.1 and 5, microstructures (cl.1), and process steps (cl.5), which creates 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 ranges including C, Si, Mn, Al. Ni, Mo, Ti, Nb, N, P, S, and Fe, amount of bainite phase, and process steps as claimed from the disclosure of JP’095 since JP’095 teaches the same steel sheet excellent in toughness of a parent metal and a weld-heat affected zone as claimed throughout whole disclosing range. JP’095 specify applying 10KJ/mm for welding (That is 100kJ/cm-noted by the Examiner, Par.[0065] of JP’095), which is within the claimed heat input range as claimed in the instant claim 1. JP’095 teaches the average size of the region in bainite is 20 μm or less (par.[0014] and [0025] of JP’095). It is noted that JP’095 does not specify the claimed average grain size of the prior austenite as claimed in the instant claim 1. JP’983 teaches welded steel parts with excellent in low-temperature toughness of a weld zone (Abstract, examples, and claims of JP’983). All of the alloy composition ranges disclosed by JP’983 (claims and par.[0030]-[0048] of JP’983) overlaps the claimed alloy composition ranges. MPEP 2144 05 I. JP’983 specify applying welding heat input 0f 15-110kJ/cm (Par.[0054] of JP’983) and obtaining 200 mm or less of prior austenite grain size in the HAZ (table 5, par.[0021], and [0066] of JP’983), which overlaps the claimed grain size range of the prior austenite as claimed in the instant claim. MPERP 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 grain size of the prior austenite as claimed from the disclose of JP’983 for the welded alloy of JP’095 in order to obtain welded part with excellent in low-temperature toughness of a weld zone (Abstract, examples, and claims of JP’983).
Element
From instant Claims 1 and 5 (wt%)
From JP’095 (wt %)
Overlapping range (wt %)
C
0.04-0.07
0.005-0.2
0.04-0.07
Mn
1.5-1.7
0.1-2
1.5-1.7
Si
0.1-0.3
0.01-1
0.1-0.3
Al
0.01-0.04
0.001-0.1
0.01-0.04
Ni
0.7-1.0
0.01-2
0.7-1.0
Mo
0.05-0.3
0.01-1
0.05-0.3
Ti
0.010-0.018
0.001-0.2
0.010-0.018
Nb
0.01-0.03
0.001-0.1
0.01-0.03
N
0.003-0.006
0.0001-0.01
0.003-0.006
P
0.007 or less
0.02 or less
0.007 or less
S
0.002 or less
0.02 or less
0.002 or less
Fe
Balance with impurities
Balance with impurities
Balance with impurities
Heat input
100-200KJ/cm
10KJ/mm (par.[0065])
Reads on
Microstructure
Bainite (area%)
90 or more
60 or more (par.[0026] and claims)
90 or more
From Claim 5
From Example #5 in JP’095
Rough rolling (T: oC)
900 or higher
1000 (Table 2-1)
Reads on
Finish rolling
(T: oC)
800 or higher
952 (table 2-2)
Reads on
Cooling rate (oC/s)
10 or more
22 (Table 2-2)
Reads on
From claim 6
Rough rolling reduction
40% or more
40 (table 2-1)
Reads on
From claim 7
Finish rolling reduction
50 or more
67 (table 2-2)
Reads on
From claim 8
Welding with heat input
100-200KJ/cm
Welding with heat input 10KJ/mm (par.[0065])
Reads on
Regarding claim 3, JP’095 provides working example #5 having TS 845 MPa and vE-20 at weld heat-affected zone 236J (table 3 of JP’095), which reads on the claimed properties.
Regarding claim 4, JP’095 specify forming mixed structure of bainite and ferrite (par.[0009] and [0011] of JP’095) and JP’095 specify that a sum of a volume fraction of bainite and martensite is ≥60%, and further an average dimension of a region from which the difference of a crystal orientation with an adjoining structure is ≥15 degrees in bainite is ≤20μm (Abstract and claims of JP’095), which overlaps the claimed microstructures as claimed in the instant claim. MPEP 2144 05 I.
Regarding claims 6-7, JP’095 provides working example #5 with process of rough rolling, hot-rolling, cooling process with rough rolling reduction 40% (table 2-1 of JP’095) and hot rolling reduction 67% (Table 2-2 of JP’095), which reads on the claimed limitations as claimed in the instant claims.
Regarding claim 8, JP’095 specify that a steel plate subjected to submerged arc welding with a heat input of 10 kJ / mm (That is 100kJ/cm-noted by the Examiner, par.[0065] of JP’095), which reads on the claimed welding process and heat input condition as claimed in the instant claim.
Response to Arguments
Applicant’s arguments to the art rejection to Claims 1 and 3-8 have been considered but they are moot in view of the new ground rejection as stated above. Regarding the arguments related to the amendments in the instant claims, the Examiner’s position has been stated as above.
Regarding the arguments for the different cooling conditions between the instant claim 5 and disclosure in the cited prior art(s), the cooling conditions disclosed by JP’095 overlaps the claimed cooling conditions as pointed out in the rejection above. Proper evidence (for example, proper 132 declaration) should be provided to show the criticality of the claimed cooling conditions in term of the claimed microstructures and/or properties to support the Applicant’s arguments.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
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
Prosecution Insights