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 Status
An amendment, filed 8/3/2026, is acknowledged. Claims 1-4, 7, 9-12, 14-18, and 20-22 are amended. Claims 1-4 and 7-22 are currently pending, claims 13-18 are withdrawn.
The claim objection of claim 4, objection to the abstract, rejection of claims 1-4, 7-12, and 19-22 under 35 U.S.C. 112(b) and rejection of claim 2 under 35 U.S.C. 112(d) are withdrawn in view of Applicant’s amendments to the claims.
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.
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.
Claim(s) 1-3, 7-12, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kariya (US 2013/0280551)(previously cited) in view of Vlot (US 8721809).
With respect to Claim 1, Kariya teaches a galvanized high strength multiphase steel, wherein the steel has a composition, in mass%, as follows (para. 14-19):
Claim 1
Kariya
C
0.06-0.12
0.03-0.15
Si
0.05-0.30
≤ 2.0
Mn
1.0-1.2
1.0-2.5
P
≤ 0.015
≤ 0.050
S
≤ 0.015
≤ 0.010
N
≤ 0.04
≤ 0.0050
Cr
0.25-0.50
0.05-0.80
Ti, Nb
One or both of Nb: 0-0.045 and Ti: 0-0.045
Ti: 0.010-0.100
Nb: 0.010-0.100
Fe
Balance with unavoidable impurities
Balance with inevitable impurities
Other
-
Sb: 0.0010-0.0100
Compositional ranges including zero (for example, the claimed ranges of P, S, and N) are interpreted as optional elements. Thus, Kariya teaches a hot-dipped steel with compositional ranges overlapping each of the instantly required ranges. It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Regarding the composition-based formula(s) in the instant claim, the instantly claimed formula(s) fully depends on the composition of the alloy. 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 the instant case, Kariya teaches compositional ranges of C, Mn, S, Ti, and Nb overlapping/encompassing the claimed relationships. Therefore, it would have been obvious to one of ordinary skill in the art to have selected any portion of the disclosed ranges which fall within the boundaries of the instantly claimed composition-based formulas because the reference discloses utility throughout the disclosed ranges. See also MPEP § 2144.05.
Kariya teaches a high strength multiphase steel having a tensile strength of 590 MPa or more. (para. 27). One of ordinary skill in the art would recognize that yield strength correlated with tensile strength, however, the reference is silent as to a yield strength measurement and is silent as to the specific composition of the galvanizing treatment.
Vlot teaches a high strength multiphase steel having a composition substantially overlapping those of Kariya and the instant claims, wherein the steel is thermomechanically treated to obtain a yield strength of 1200 MPa or more, tensile strength of 1500 MPa or more, and wherein the mechanical properties including tensile strength and yield strength may be adjusted to desired levels. (col. 2, ln. 16-48; col. 9, ln. 1-11; col. 6, ln. 62 to col. 7, ln. 12). Vlot further teaches wherein the steel is hot dip galvanized with a galvanizing coating (i.e. zinc-based coating) comprising aluminum and/or magnesium, and thus, constitutes a hot dipped aluminum-zinc and/or hot dipped zinc-aluminum-magnesium multiphase steel having improved corrosion resistance and strength. (col. 7, ln. 12-68).
It would have been obvious to one of ordinary skill in the art to modify the steel of Kariya, to process the steel to exhibit a tensile strength and yield strength of up to 1200 MPa or more, respectively, as taught by Vlot, in order to obtain a steel with improved strength for a desired application. Furthermore, it would have been obvious to one of ordinary skill in the art to modify the galvanized multi-phase steel of Kariya to use a hot-dipped aluminum-zinc or hot dipped zinc-aluminum-magnesium galvanizing composition, as taught by Vlot, in order to obtain a multiphase steel with improved corrosion resistance while allowing for such improved strength.
With respect to Claim 2, Kirya teaches ranges overlapping the instantly claimed ranges. (see rejection of claim 1 above). Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claim 3, as detailed with respect to claim 1 above, Kariya teaches compositional ranges of C, Mn, S, Ti, and Nb overlapping/encompassing the claimed relationships. Therefore, it would have been obvious to one of ordinary skill in the art to have selected any portion of the disclosed ranges which fall within the boundaries of the instantly claimed composition-based formulas because the reference discloses utility throughout the disclosed ranges. See also MPEP § 2144.05.
With respect to Claims 7 and 10, Kariya in view of Vlot teaches a hot dipped multiphase steel with compositional ranges overlapping the claimed ranges and overlapping the claimed compositional relationships. (see rejection of claim 1 above). Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Claims 8-9, 11-12, and 19-20, the claims are drawn to the method in which the steel product is made and therefore, the limitations of each claim are considered product-by-process claims. (note, claims 8 and 19 are nearly identical differing slightly in one temperature range and the numbering of the steps). According to MPEP § 2113, "Even 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 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.” Here, the product-by-process limitations do not require specific identifiable structure outside that already required by the respective claims from which claims 8-9, 11-12, and 19-20 depend. As Kariya in view of Vlot teach a hot-dipped multiphase steel meeting the relevant parent claims, the combination is deemed to meet the instant claims.
Claim(s) 4 and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Kariya (US 2013/0280551)(previously cited) in view of Vlot (US 8721809), as applied to claim 1 (with respect to claim 4), claim 7 (with respect to Claim 21), and claim 10 (with respect to claim 22) above, further in view of Li et al. (US 2018/0245176)(of record).
With respect to Claims 4 and 21-22, Kariya teaches a multiphase steel with a microstructure comprising ferrite, martensite, and optionally may contain a cementite, bainite, or pearlite phase and thus, meets the claimed microstructural limitation. (para. 14, 63). Kariya in view of Vlot further teach wherein the tensile strength and yield strength are each 1200 MPa or more, exceeding the claimed ranges. (see rejection of claim 1 above). The reference are silent as to the elongation of the steel and silent as to a “silver white spangle” as required by claim 4.
Li teaches a steel comprising an tensile strength of 650 MPa or more, yield strength of 600 MPa or more, and elongation of 12% or more overlapping the claimed ranges, including examples exceeding 14%. (para. 43; Table 4). Li also teaches wherein the surface of the aluminum-zinc hot-dipped steel has a uniform (i.e. homogeneous) silver white spangle with a grain diameter (i.e. spangle size) of 10 mm or less, preferably 5 mm or less, overlapping the claimed range.
Thus, Kariya, Vlot and Li are all drawn to galvanized multiphase steels exhibiting high strength. It would have been obvious to one of ordinary skill in the art to modify the steel of Kariya in view of Vlot, to configure the steel to exhibit an elongation of 14% or more, as taught by Li, in order to obtain a high strength steel with sufficient ductility for forming and/or desired applications. Additionally, it would have been obvious to one of ordinary skill in the art to modify the steel of Kariya in view of Vlot to comprise a homogeneous silver white spangle with a grain diameter (i.e. spangle size) of 10 mm or less, preferably 5 mm or less, as taught by Li, in order to obtain a steel with good corrosion resistance and/or desired surface finish/appearance. Overlapping ranges, in particular, where the ranges of a claim overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Claim(s) 1-4, 7-12, and 19-22 are rejected under 35 U.S.C. 103 as being unpatentable over Morishita (US 2020/0230918).
With respect to Claim 1, Morishita teaches a hot-dipped aluminum-zinc galvanized multiphase steel, wherein the steel has a composition, in mass%, as follows (para. 28-61):
Claim 1
Morishita
C
0.06-0.12
0.04-0.28
Si
0.05-0.30
0.05-2.0
Mn
1.0-1.2
0.5-3.5
P
≤ 0.015
0.0001-0.10
S
≤ 0.015
0.0001-0.01
N
≤ 0.04
0.0001-0.01
Cr
0.25-0.50
0-2.0
Ti, Nb
One or both of Nb: 0-0.045 and Ti: 0-0.045
Ti: 0-0.15
Nb: 0-0.1
Fe
Balance with unavoidable impurities
Balance with impurities
Other
-
Al: 0.001-1.5
O: 0.0001-0.01
Compositional ranges including zero (for example, the claimed ranges of P, S, and N) are interpreted as optional elements. Thus, Morishita teaches a hot-dipped steel with compositional ranges overlapping each of the instantly required ranges. It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Regarding the composition-based formula(s) in the instant claim, the instantly claimed formula(s) fully depends on the composition of the alloy. 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 the instant case, Morishita teaches compositional ranges of C, Mn, S, Ti, and Nb overlapping/encompassing the claimed relationships. Therefore, it would have been obvious to one of ordinary skill in the art to have selected any portion of the disclosed ranges which fall within the boundaries of the instantly claimed composition-based formulas because the reference discloses utility throughout the disclosed ranges. See also MPEP § 2144.05.
Morishita teaches examples of the steel having tensile strength of 550 MPa or more, including examples exceeding 1000 MPa, yield strength examples exceeding 800 MPa, and elongation values exceeding 25%. (Table 10; para. 264). Thus, Morishita is deemed to teach a steel having a yield strength meeting or overlapping the instantly claimed ranges. It would have been obvious to one of ordinary skill in the art to select a steel having a yield strength from the portion of the overlapping ranges, in order to obtain a high strength steel. Overlapping ranges, in particular, where the ranges of a claim overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Finally, with respect to the preamble, Morishita teaches a hot-dipped galvanizing coating comprising aluminum and wherein the steel has a microstructure comprising ferrite, one or more of bainite, bainitic ferrite, fresh martensite, tempered martensite, and optionally retained austenite, pearlite, and/or cementite (para. 48-61), and thus, constitutes a hot-dipped aluminum-zinc multiphase steel.
With respect to Claim 2, Morishita teaches ranges overlapping the instantly claimed ranges. (see rejection of claim 1 above). Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claim 3, as detailed with respect to claim 1 above, Morishita teaches compositional ranges of C, Mn, S, Ti, and Nb overlapping/encompassing the claimed relationships. Therefore, it would have been obvious to one of ordinary skill in the art to have selected any portion of the disclosed ranges which fall within the boundaries of the instantly claimed composition-based formulas because the reference discloses utility throughout the disclosed ranges. See also MPEP § 2144.05.
With respect to Claim 4, Morishita teaches a steel with compositional ranges, microstructural phases, yield strength, tensile strength, and elongation meeting or overlapping each of the claimed limitations/ranges. (see rejection of claim 1 above). It would have been obvious to one of ordinary skill in the art to select from the portions of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05. Finally, while Morishita is silent as to a silver white spangle surface appearance, as the reference teaches an aluminum-zinc hot-dipped multiphase steel having substantially similar composition, structure, and properties and made by a process comprising forming a surface coating with the same required compositional components and method (hot-dipping) it would necessarily be expected to result in the same surface properties. See MPEP 2112.01.
With respect to Claims 7 and 10, Morishita teaches a hot dipped multiphase steel with compositional ranges overlapping the claimed ranges and overlapping the claimed compositional relationships. (see rejection of claim 1 above). Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Claims 8-9, 11-12, and 19-20, the claims are drawn to the method in which the steel product is made and therefore, the limitations of each claim are considered product-by-process claims. (note, claims 8 and 19 are nearly identical differing slightly in one temperature range and the numbering of the steps). According to MPEP § 2113, "Even 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 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.” Here, the product-by-process limitations do not require specific identifiable structure outside that already required by the respective claims from which claims 8-9, 11-12, and 19-20 depend. As Morishita teaches a hot-dipped multiphase steel meeting the relevant parent claims, it is deemed to meet the instant claims.
With respect to Claims 21-22, Morishita teaches a steel with compositional ranges, microstructural phases, yield strength, tensile strength, and elongation meeting or overlapping each of the claimed limitations/ranges. (see rejection of claim 1 above). It would have been obvious to one of ordinary skill in the art to select from the portions of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Claim(s) 4 is rejected under 35 U.S.C. 103 as being unpatentable over Morishita (US 2020/0230918) as applied to claim 1 above, in view of Li et al. (US 2018/0245176)(of record).
In the alternative to the above rejection of claim 4, Morishita teaches a steel with compositional ranges, microstructural phases, yield strength, tensile strength, and elongation meeting or overlapping each of the claimed limitations/ranges. (see rejection of claim 1 above). It would have been obvious to one of ordinary skill in the art to select from the portions of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05. Morishita is silent, however, as to a silver white spangle surface appearance.
Li teaches a steel comprising an tensile strength of 650 MPa or more, yield strength of 600 MPa or more, and elongation of 12% or more overlapping the claimed ranges, including examples exceeding 14%. (para. 43; Table 4). Li also teaches wherein the surface of the aluminum-zinc hot-dipped steel has a uniform (i.e. homogeneous) silver white spangle with a grain diameter (i.e. spangle size) of 10 mm or less, preferably 5 mm or less, overlapping the claimed range.
It would have been obvious to one of ordinary skill in the art to modify the steel of Morishita to comprise a homogeneous silver white spangle with a grain diameter (i.e. spangle size) of 10 mm or less, preferably 5 mm or less, as taught by Li, in order to obtain a steel with good corrosion resistance and/or desired surface finish/appearance. Overlapping ranges, in particular, where the ranges of a claim overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Response to Arguments
Applicant’s arguments, filed 8/3/2026, with respect to the rejection(s) of claim(s) 1-4, 7-9, and 19-21 under 35 U.S.C. 103 over Li (US 2018/0245176) and claims 10-12 and 22 over Li in view of Kariya (US 2013/0280551) have been fully considered and are persuasive in view of Applicant’s amendments to the claims. Specifically, Claim 1 has been amended to require 1.0-1.2 wt% Mn, whereas prior art Li requires 1.3-1.8 wt% Mn, outside the claimed range. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Kariya in view of Vlot and over Morishita, as detailed above.
Applicant’s arguments with respect to Li are therefore, moot in view of the new grounds of rejection. However, it is noted that with respect to both prior Li and Kariya, Applicant argues that claim 1 excludes other elements. With respect to Kariya, Applicant specifically argues that the reference fails to meet the claims as it requires a content of Sb, which is not a claimed element and is therefore, excluded. These arguments misstate the claim limitations and are not found persuasive.
Claim 1 uses the open transitional phrase “comprises,” and therefore, may include additional components. (MPEP 2111.03, “The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps.”). Therefore, Applicant’s arguments drawn to additional elements are not persuasive. Applicant’s arguments drawn to Kariya with respect to the claimed compositional-based formula/relationships are not found persuasive, for the reasons detailed in the above rejection. Additionally, it is noted that Applicant fails to provide evidence, commensurate with the scope of the claims, to demonstrate criticality and/or unexpected for such compositional-based relationships and therefore, fails to rebut a prima facie case of obviousness established by the prior art.
Additionally, the nonstatutory double patenting rejections over U.S. Patent Nos. 10941459 and 10982296 are withdrawn in view of Applicant’s amendments to the claims.
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.
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/JOHN A HEVEY/ Primary Examiner, Art Unit 1735
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