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
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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Alexandre et al. (WO 2020/128811 A, of record, hereafter “Alexandre”).
Regarding claim 1, Alexandre discloses a method of manufacturing a steel sheet (pg. 2, 9-10), comprising annealing a steel raw material having Si content of 0.8-1.6 wt% (pg. 3, meets claimed 1.0% or more), Cr content of 0.6-0.8 wt% (pg. 4- meets claimed 1.0% or less), 2-2.6% Mn (meets 3.0% or less), 0.3-0.4% C (pg. 3, meets 0.3 %) (also see claim 1), satisfying formula 1C as follows (see Table 2 processing conditions and annealing temperature 650 °C) :
exp(-10770/(T +273)) * t = exp (-10770/923) * 28800 (soaking time of 8hr =28800 seconds) = 0.247, which falls within the recited range of 0.19 to 0.93.
The respective amounts of C, Cr, Mn and Si overlap with the claimed 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 Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), MPEP 2144.05. Examiner also notes that satisfying any one formula (1A or 1B or 1C) is sufficient to meet the claim.
As to claim 2, Alexandre discloses the method further comprising hot rolling the steel and coiling a steel sheet within Tcoil temperature of 450-650 °C (pg. 7, lines 10-13), which meets the claimed temperature range of 500-700 °C.
As to claim 3, Alexandre discloses, after annealing, pickling the steel sheet and then cold rolling (pg. 7, lines 25-28).
As to claim 4, Alexandre discloses the steel material having Si content of 0.8-1.6 wt% (pg. 3, overlaps claimed 1.0-3.0%), Cr content of 0.6-0.8 wt% (pg. 4- meets claimed 0.2-1.0%), 2-2.6% Mn (meets 1.5-3.0%), 0.3-0.4% C (pg. 3, meets 0.3 %) and Fe (also see claim 1). The respective amounts of C, Cr, Mn and Si overlap with the claimed 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. See MPEP 2144.05. The annealing conditions meets formula 1C as explained in claim 1 above.
Regarding claim 5, Alexandre discloses a method of manufacturing a steel sheet (pg. 2, 9-10), comprising annealing a steel raw material having Si content of 1.21 wt% (meets 1.0% or more) and Cr content of 0.8 wt% (meets 1.0% or less) (see steel A in Table 1 on pg. 9; pgs. 3-4), satisfying formula 1C as follows (see Table 2 processing conditions and annealing temperature 650 °C):
exp(-10770/(T +273)) * t = exp (-10770/923) * 28800 (soaking time of 8hr =28800 seconds) = 0.247, which falls within the recited range of 0.19 to 0.93. Examiner notes that satisfying any one formula (1A or 1B or 1C) is sufficient to meet the claim.
Concerning the property of reduced iron area with respect to an oxide scale area in the steel sheet, Applicant’s specification [0047-0048] states that by performing annealing under the conditions defined by formula 1C, the internal oxide layer is grown well and remain to the vicinity of the width direction edge of the steel sheet and generation of reduced iron on the surface is suppressed, thereby resulting in steel sheet that can be alloyed substantially uniformly & reliably without unevenness and having good pickling properties. Accordingly, the claimed property is the result of recited annealing conditions. Since Alexandre teaches performing the annealing under same conditions of formula 1C, the resulting annealed steel sheet is intrinsically expected to possess the claimed property of reduced iron area ratio with respect to oxide scale area being less than 45%. Where the claimed and prior art products (annealed steel sheet in this case) are substantially identical in composition, or are produced by 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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, Applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP 2112.01.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Beauvais et al. (JP 2020523473 A, of record, hereafter “Beauvais”).
Regarding claim 5, Beauvais discloses a method of manufacturing a steel sheet (pg. 2, 9-10), comprising annealing a steel raw material having Si content of 1.46 wt% (meets 1.0% or more) and Cr content of 0.001 wt% (meets claimed 1.0% or less) (see pg. 39- Table 1- examples 3-7); the annealing temperature ranges between 550-700 °C with a soaking time of about 1-20 hr (claim 12), see examples in Table 2- exemplary temperature of 650 °C for 7 hr (pg. 40). The conditions satisfying formula 1B as follows:
exp(-10770/(T +273)) * t = exp (-10770/923) * 25200 (soaking time 7hr = 25200 sec) = 0.216, which falls within the recited range of 0.19 to 0.93.
Concerning the property of reduced iron area with respect to an oxide scale area, Applicant’s specification [0047-0048] states that by performing annealing under the conditions defined by formula 1C, the internal oxide layer is grown well and remain to the vicinity of the width direction edge of the steel sheet and generation of reduced iron on the surface is suppressed, thereby resulting in steel sheet that can be alloyed substantially uniformly & reliably without unevenness and having good pickling properties. Accordingly, the claimed property is the result of recited annealing conditions. Since Beauvais teaches performing the annealing under same conditions of formula 1B, the resulting annealed steel sheet is intrinsically expected to possess the claimed property of reduced iron area ratio with respect to oxide scale area being less than 45%. Where the claimed and prior art products (annealed steel sheet in this case) are substantially identical in composition, or are produced by 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). MPEP 2112.01.
Response to Amendment and Arguments
Applicant’s arguments with respect to amended claim(s) 1-5 have been considered but are moot in light of new grounds of 103 rejection(s) rejection set forth above, which addresses the matter specifically challenged in the 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 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.
Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVANG R PATEL whose telephone number is (571) 270-3636. The examiner can normally be reached on Monday-Friday 8am-5pm, EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached on 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DEVANG R PATEL/
Primary Examiner, AU 1735
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