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 .
Status of Claims
Claims 1-4 are pending where claim 1 has been amended.
Status of Previous Rejections
The previous 35 USC § 102/103 rejections of the claims have been withdrawn in view of amendments to the claims.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.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO-2019009410-A1 to Yoshida (US 2021/0140005 A1 to Yoshida has been relied upon as an English language equivalent).
Regarding claim 1, Yoshida discloses a hot-rolled steel sheet comprising the following composition, which overlaps the instantly claimed composition as follows:
Element
Claimed wt%
Yoshida wt%
Overlaps?
C
0.050-0.200
0.02-0.20
Yes
Si
0.005-2.000
0.005-2.00
Yes
Mn
0.50-4.00
1.30-2.40
Yes
P
0-0.100
0-0.100
Yes
S
0-0.0100
0-0.0100
Yes
Al
0.001-1.00
0.001-1.00
Yes
Ti
0.170-0.400
0.030-0.200
Yes
N
0.0010-0.0200
0.0010-0.0100
Yes
Nb
0-0.200
0-0.100
Yes
V
0-1.000
0-0.50
Yes
Mo
0-1.000
0-0.50
Yes
Cu
0-1.00
0-1.00
Yes
Ni
0-1.00
0-1.00
Yes
Cr
0-2.00
0-2.00
Yes
W
0-1.00
≤impurity
Yes
B
0-0.0040
0-0.0100
Yes
Ca
0-0.0100
0-0.0100
Yes
Mg
0-0.0100
0-0.0100
Yes
REM
0-0.0100
0-0.0100
Yes
Bi
0-0.0200
≤impurity
Yes
Fe
Balance
Balance
Yes
Wherein the steel of Yoshida contains at a 1/4th sheet thickness 3% or less of residual austenite, 10-55% of ferrite and no pearlite (within the claimed ranges of “wherein, when a region of 1/8 to 3/8 of a sheet thickness in a sheet thickness direction from a surface is defined as a 1/4 depth position, a microstructure at the 1/4 depth position includes, by area fraction retained austenite: less than 3.0%, ferrite: less than 30.0%, and pearlite: less than 5.0%, at the 1/4 depth position”), an average grain size of 12.0 µm or less (within the claimed range of 15.0 µm or less) and a tensile strength of 950 MPa or more (overlapping the claimed range of at least 980 MPa).
(Yoshida, abstract, para [0017-0054, 0067-0120])
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 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of Yoshida including the instantly claimed because a prima facie case of obviousness exists in the case of overlapping ranges.
Regarding the limitation “an average number density of Ti-based carbides having a longest diameter of 15 nm or more is 1.0 x 104 /mm2 or more,” when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. 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 (see MPEP 2112.01 [R-3].) In the instant case, the steel of Yoshida would be expected to have the same or similar Ti-based carbides as the instantly claimed steel because the steel of Yoshida has the same or substantially the same composition, microstructure, and disclosed properties.
Regarding claim 2, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. 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 (see MPEP 2112.01 [R-3].) In the instant case, the steel of Yoshida would be expected to have the same or similar ratio of an average grain size ds of the surface layer portion to the average grain size dq at the 1/4 depth position as the instantly claimed steel because the steel of Yoshida has the same or substantially the same composition, microstructure, and disclosed properties.
Regarding claims 3 and 4, the alloy of Yoshida overlaps the instantly claimed composition (Yoshida, abstract, para [0017-0054, 0067-0120]).
Claim(s) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO-2020080552-A1 to Yokoi (cited in previous office action, US 2021/0395852 A1 to Yokoi, cited in previous office action, has been relied upon as an English language equivalent).
Regarding claim 1, Yokoi discloses a hot-rolled steel sheet comprising the following composition, which overlaps the instantly claimed composition as follows:
Element
Claimed wt%
Yokoi wt%
Overlaps?
C
0.050-0.200
0.100-0.250
Yes
Si
0.005-2.000
0.05-3.00
Yes
Mn
0.50-4.00
1.00-4.00
Yes
P
0-0.100
0-0.100
Yes
S
0-0.0100
0-0.0300
Yes
Al
0.001-1.00
0.001-2.000
Yes
Ti
0.170-0.400
0-0.300
Yes
N
0.0010-0.0200
0-0.1000
Yes
Nb
0-0.200
0-0.300
Yes
V
0-1.000
0-0.500
Yes
Mo
0-1.000
0-1
Yes
Cu
0-1.00
0-2.00
Yes
Ni
0-1.00
0.02-2.00
Yes
Cr
0-2.00
0-2.00
Yes
W
0-1.00
0-1.000
Yes
B
0-0.0040
0-0.0100
Yes
Ca
0-0.0100
0-0.0200
Yes
Mg
0-0.0100
0-0.0200
Yes
REM
0-0.0100
0-0.1000
Yes
Bi
0-0.0200
0-0.020
Yes
Fe
Balance
Balance
Yes
Wherein the steel of Yokoi contains at a 1/4th sheet thickness 0-5.0% of ferrite and 0-5.0% of pearlite (within the claimed ranges of “wherein, when a region of 1/8 to 3/8 of a sheet thickness in a sheet thickness direction from a surface is defined as a 1/4 depth position, a microstructure at the 1/4 depth position includes, by area fraction… ferrite: less than 30.0%, and pearlite: less than 5.0%, at the 1/4 depth position”), an average grain size of 7.0 µm or less (within the claimed range of 15.0 µm or less) and a tensile strength of 980 MPa or more (within the claimed range of at least 980 MPa).
(Yokoi, abstract, para [0047-0113])
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 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of Yokoi including the instantly claimed because a prima facie case of obviousness exists in the case of overlapping ranges.
Yokoi differs from instant claim 1 in that Yokoi discloses a residual austenite content of 3.0% or more (Yokoi, abstract, para [0103]) whereas instant claim 1 recites a retained austenite of less than 3.0%. However, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties (See MPEP 2144.05 I). See In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of "less than 6 pounds per cubic feet" and the prior art range of "between 6 lbs/ft3 and 25 lbs/ft3" were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.) In the instant case, the lower limit of Yokoi of 3.0% residual austenite is so mathematically close to the instantly claimed upper limit of less than 3.0% that the difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality.
Regarding the limitation “an average number density of Ti-based carbides having a longest diameter of 15 nm or more is 1.0 x 104 /mm2 or more,” when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. 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 (see MPEP 2112.01 [R-3].) In the instant case, the steel of Yokoi would be expected to have the same or similar Ti-based carbides as the instantly claimed steel because the steel of Yokoi has the same or substantially the same composition, microstructure, and disclosed properties.
Regarding claim 2, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. 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 (see MPEP 2112.01 [R-3].) In the instant case, the steel of Yokoi would be expected to have the same or similar ratio of an average grain size ds of the surface layer portion to the average grain size dq at the 1/4 depth position as the instantly claimed steel because the steel of Yokoi has the same or substantially the same composition, microstructure, and disclosed properties.
Regarding claims 3 and 4, the alloy of Yokoi overlaps the instantly claimed composition (Yokoi, abstract, para [0047-0113]).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-4 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. WO-2020080554-A1 to Shuto (US 20210381086 A1 to Shuto has been relied upon as an English language equivalent) discloses hot rolled steel sheets relevant to the instant claims.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN D WALCK whose telephone number is (571)270-5905. The examiner can normally be reached Monday-Friday 10 AM - 6:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at 571-272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN D WALCK/ Primary Examiner, Art Unit 1738
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