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/Restrictions and Status of Claims
Applicant’s election without traverse of Invention I, claims 1-5 in the reply filed on 5/13/26 is acknowledged.
Claims 6-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 5/13/26.
As such, claims 1-5 are examined in this office action below.
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The abstract of the disclosure is objected to because it is only 43 words long, fewer than the required 50 words. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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.
Claim 5 is 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.
Claim 5 recites the limitation “a bending property (R/t) of less than 4, where R is a minimum bending radius at which cracks do not occur in a bent portion after a 90° bending test, and is a thickness of the steel sheet”. As there is no units in the claim for either the bending radius nor the thickness of the steel sheet, it is not clear how the property is satisfied.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(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.
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.
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.
Claim Rejections - 35 USC § 102/103
Claims 1 and 3-5 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over JP 6047037 B2 and its English translation of Sato.
As to claim 1, Sato discloses a high-strength cold-rolled steel sheet (Sato, paragraph [0001]) with the composition in comparison to the claims as shown in Table A below.
Table A
Element
Claim 1 limitation (weight %)
Sato claim 1 (mass%)
Sato Steel D and Example 15 (mass %)
Carbon
0.1 to 0.3%
0.1-0.20%
0.138%
Manganese
1.0 to 2.3%
1.0-3%
1.92%
Silicon
0.05 to 1.0%
0.2 2%
0.44%
Phosphorous
0.1% or less
0.05% or less (excluding 0%)
0.009%
Sulfur
0.03% or less
0.01% or less (excluding 0%)
0.002%
Aluminum
0.01 to 0.5%
0.01-0.1%
0.067%
Iron
Balance
remainder
remainder
As Sato discloses a cold-rolled steel sheet which in example 15 has a composition which is within the claimed range for the composition, Sato anticipates the composition. "[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985), see MPEP § 2131.03(I).
Using the composition of Steel D in Example 15 as shown in Table A above, Sato discloses where the Ceq1 is 0.2746 and Ceq2 is 0.47267 meaning the R value defined by relational expression 1 is 0.149428 which falls within the claimed range of 0.12 to 0.27.
Sato discloses that in Example 15 that the has a yield ratio of 80.5% (Sato, Table 3) which equates to 0.805 meeting the claim limitation of greater than 0.73.
However, while Sato teaches performing overaging of the steel sheet to prevent the solid-solution carbon from forming carbides (Sato, paragraph [0040]), Sato does not disclose where an average number of carbides per 1 μm2 area is 40 or less, and an average length of a major axis of carbides is 300 nm or less.
Nevertheless, as Sato discloses an identical composition, see Table A above, and discloses a substantially identical method of an annealing step of heating a steel material satisfying the above-mentioned component composition in the austenite single-phase region for 15 to 600 seconds to anneal it; a primary cooling step of slowly cooling the annealed material to a primary cooling stop temperature of 650 to 800°C at an average cooling rate of 10°C/second or less (excluding 0°C /second); a secondary cooling step of cooling the material from the primary cooling stop temperature to a secondary cooling stop temperature in the temperature range of above the Ms point temperature calculated by the following formula (1) and below 500°C at an average cooling rate of 20 to 100°C/second;; and an overaging treatment step of heating the material to a temperature range of 150 to 300°C and holding it for 30 to 1500 seconds (Sato, paragraph [0016]) which substantially matches the method disclosed in instant claim 6 and paragraphs [0023]-[0026] of heat treating the cold-rolled steel sheet at a temperature of Ac3 or higher for 30 seconds or more; primarily cooling the cold-rolled steel sheet to a temperature within a range of 500 to 750° C. at an average cooling rate of 1 to 10° C./s after the heat treatment; secondarily cooling the primarily-cooled steel sheet to a temperature of Ms-190° C. or lower at an average cooling rate of 20 to 80° C./sec; and
reheating and overaging by heating the secondarily-cooled steel sheet to a temperature within a range of greater than secondary cooling end temperature+30° C. and less than 270° C., and holding the same for 1 to 20 minutes this substantially same method applied to the same material would necessarily produce the same properties of an average number of carbides per 1 μm2 area is 40 or less, and an average length of a major axis of carbides is 300 nm or less. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or 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) (emphasis added), see MPEP § 2112.01(I).
As to claim 3, Sato discloses where the steel comprises 0.001 0.2 mass% Ti (Sato, claim 1) and specifically where example Steel D comprises 0.053 mass% of Ti (Sato, Table 1), meeting the limitation of the steel sheet further comprises one or more of titanium (Ti) : 0.1% or less (excluding 0%), and niobium (Nb): 0.1% or less (excluding 0%).
As to claim 4,Sato discloses where the metal structure is tempered martensite of 82.8 area% or more, retained austenite of 5 area% or less (including 0 area%), ferrite of 20 area% or less (including 0 area%), and bainite of 10 area% or less (including 0 area%) (Sato, claim 1) and Sato discloses in example 15 (which uses example Steel D) that the tempered martensite is 99.1 area% (Sato, Table 3 ) meeting the claim limitation of the steel sheet comprising 99 area% or more of martensite or tempered martensite as a microstructure.
As to claim 5, it is not clear what is meant by bending property (R/t), see 112(b) rejection above. For the purposes of applying prior art, this will be interpreted as requiring the properties to be in mm. Sato discloses where Example 15 has a tensile strength of 1410 MPa (Sato, Table 3), meeting the limitation of tensile strength (TS) of 1300 MPa or more. While Sato is silent concerning a bending property of R/t, as noted in the rejection of claim 1 above, Sato discloses an anticipatory composition and also discloses a substantially identical method of making the cold-rolled steel sheet and therefore the substantially same method applied to the same material would produce the same property of a bending property (R/t) of less than 4. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or 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) (emphasis added), see MPEP § 2112.01(I).
Claim Rejections - 35 USC § 103
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over JP 6047037 B2 and its English translation of Sato.
As to claim 2, Sato discloses where the steel further contains 1% or less (not including 0%) and/or Mo: 1% or less (not including 0%) (Sato, paragraph [0008]) and a boron amount of B: 0.0002-0.01% (Sato, claim 1 and paragraph [0007]) and Sato discloses where the boron amount in Steel D is 0.0018%, where the amounts of Cr and Mo overlapping the claimed ranges of the steel sheet further comprises two or more of chromium (Cr) : 0.01 to 0. 2%, molybdenum (Mo) :0. 01 to 0. 2%, and boron (B) falls in the claimed range of 0.005% or less (excluding 0%). 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 amounts of chromium, molybdenum and boron over the prior art disclosure since the prior art teaches these increase the strength of the steel sheet and suppress the formation of carbides (Sato, paragraph [0058]) 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) . See MPEP § 2144.05 I.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Joshua S Carpenter whose telephone number is (571)272-2724. The examiner can normally be reached Monday - Friday 8:00 am - 5:30 pm.
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/JOSHUA S CARPENTER/Examiner, Art Unit 1733
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
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