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/Restriction & Status of Claims
Applicant’s election without traverse of Group I, claims 1-6, drawn to a high-strength hot-rolled steel sheet, in the reply filed on 18 SEP 2026 is acknowledged.
Claims 7-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 18 SEP 2026.
Drawings
The drawings are objected to because the legend label contains illegible characters (letters are missing various parts of them).. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 1 is objected to because of the following informalities: The term “including 0%” should not be in parenthesis. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-6 are rejected 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.
Regarding claims 1-6, the term “high strength” and “excellent formability” in claims 1-6 are relative terms which render the claims indefinite. The aforementioned terms are not defined by the claims, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. As neither the specification nor the claims provide an explicit definition for the term, it is unclear what specific strength and formability (types, ranges) would be required to meet the recited terms of high and excellent thereby rendering the scope of the claims indefinite.
Regarding claims 1-6, claim 1 recites “other unavoidable impurities”. As the claim does not define what or recite a list of what is considered “unavoidable impurities” or “other unavoidable impurities”, it is unclear what element or group of elements would encompass the term “other unavoidable impurities” of instant claims. Claims 2-6 depend on claim 1, do not resolve the issue and thereby also indefinite.
Regarding claims 1-6, claim 1 recites “a microstructure comprises 70 to 90% of acicular ferrite or bainitic ferrite by area fraction, as a matrix structure”. It is unclear whether the claim is requiring a) 70-90% of either of acicular ferrite and bainitic ferrite or b) 70-90% of total of acicular ferrite and bainitic ferrite. In addition, it is unclear what is meant by “as a matrix structure”. Claims 2-6 depend on claim 1, do not resolve the issue and thereby also indefinite.
Regarding claims 2 and 3, instant claims do not recite units of elements or the microstructure phases thereby making it unclear what amounts of elements and/or microstructure phase would be encompassed by the claims.
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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over US 2008/0223491 A1 of Kimijima (US’491) of record.
List 1
Element
Instant Claims
(weight%)
Prior Art
(mass%)
C
0.05 – 0.17
0.01 – 0.05
Si
0.01 – 1.5
0.5 – 2.5
Mn
1.5 -3.0
2.5 – 3.5
Cr
2.0 or less
0, 0.1 – 0.8
Mo
2.0 or less
0, 0.01 – 0.5
Ti
0.01 – 0.15
0.30 or less
P
0.001 – 0.05
P: 0.007 – 0.011 (Table 1)
S
0.0001 – 0.05
0.005 or less
N
0.0001 – 0.02
0.008 or less
Nb, B
Claim 2: one or more of Nb: 0.01 – 0.1 and B: 0.0005 – 0.005
B: 0.005 or less
Fe + impurities
Balance
Balance
Regarding claims 1-4, US 2008/0223491 A1 of Kimijima (US’491) teaches “[0001] The present invention relates to high strength hot rolled steel sheets applied typically to automobile structural member” “[0007] Under these circumstances, an object of the present invention is to provide a hot rolled steel sheet that excels in all properties required in press working, including shape freezing ability, hole-expandability, and bendability, even though it has a high strength in terms of tensile strength of 980 MPa or more.” with a composition wherein the claimed ranges of the constituent elements of the instant alloy of the instant claims 1 and 2 overlap or lie inside the ranges of various elements of the alloy of the prior art as shown in the List 1 above. {abstract, [0001], [0007]-[0059], Table 1, claims 1-3}. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed composition over the prior art disclosure since the prior art teaches the similar property/utility throughout the disclosed ranges. 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Regarding the microstructure limitations of the instant claims of instant claims 1 and 3-4, the prior art teaches [0008] “The hot rolled steel sheet has a microstructure containing an area percentage of bainitic ferrite of 90 percent by area or more; an area percentage of martensite of 5 percent by area or less; and an area percentage of bainite of 5 percent by area or less, based on the area of an observed field” thereby meeting the instant recited limitations.
The prior art is silent regarding the recited [Relational Expression 1] and its range of instant claim 1. However, as the prior art discloses a composition wherein the claimed ranges of the various elements of the instant alloy overlap or lie inside the ranges of various elements of the alloy of the prior art as shown above, the ranges of the formulaic expression of the instant claims would also overlap or lie inside the values of the prior art resulting from the instant formulaic expressions. In addition, it is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art, In re Cooper and Foley 1943 C.D. 357, 553 O.G. 177; 57 USPQ 117, Saklatwalla v. Marburg, 620 O.G. 685, 1949 C.D. 77, and In re Pilling, 403 O.G. 513, 44 F(2) 878, 1931 C.D. 75.
Regarding claims 5 and 6, US’491 teaches that its steel sheet has [0007] “tensile strength of 980 MPa or more”, 722-923 MPa Yield strength, elongation of 10.4-12.8% (Sample No. 1-2, 13-14, 16-27, 29 and 33 in Table 3), and [0080]-[0081] Hole Expansion Ratio of 70% or more thereby meeting the instant recited limitations. 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOPHY S. KOSHY whose telephone number is (571)272-0030. The examiner can normally be reached M-F 8:30 AM- 5:00 PM.
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/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
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