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
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-17, drawn to a steel product, classified in C22C 38/04.
II. Claims 18-23, drawn to a method of manufacturing steel, classified in C21D 9/46.
Inventions II and I are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case, the steel product of invention I can be made by a materially different process such as a process wherein a multiple cold rolling step is used to achieve the final gauge.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
the inventions have acquired a separate status in the art in view of their different classification;
the inventions have acquired a separate status in the art due to their recognized divergent subject matter; and/or
the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Barry M. Visconte on 5/27/2026 a provisional election was made without traverse to prosecute the invention of group I, claims 1-17. Affirmation of this election must be made by applicant in replying to this Office action. Claims 18-23 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 5 recites “wherein a yield strength is greater than or equal to about 1050MPa and less than or equal to about 1050MPa”. The limitation provides infinite possibilities for claimed yield strength, therefore, does not further limit the parent claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claims 7 and 11 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.
Claim 7 recites the limitation "the steel microstructure" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites the limitation "the steel microstructure" in line 1. There is insufficient antecedent basis for this limitation in the claim.
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.
Claim(s) 1-6 and 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2023281939, whose English equivalent is Minami et al. US 2024/0287637(Minami).
Minami teaches an ultra-high strength galvanized steel sheet(abstract, [0128]), wherein the steel sheet has a chemical composition that applies to the claimed steel sheet as follows:
Composition Components
Instant Application (wt%)
Minami (mass%)
C
0.15-0.26
0.011-0.35 [0082]
Mn
2.10-3.60
2.20-3.60 [0084]
Si
0.05-0.85
0.01-1.50 [0083]
Al
0.001-0.85
≤ 0.1 [0087]
Cr
0.01-0.90
0.23 (Table 1)
Mo
0.01-0.50
0.06 (Table 1)
Ti
0.01-0.10
0.008-0.10 [0090]
Nb
0.01-0.04
0.004-0.03 [0089]
V
0.01-0.30
≤ 0.2[0097]
B
0.0001-0.005
0.0002-0.004 [0091]
N
< 0.01
≤ 0.005 [0088]
S
< 0.01
≤ 0.005 [0086]
P
< 0.05
≤ 0.07 [0085]
Balance Fe & Impurities
Balance Fe & Impurities
Balance Fe & Impurities
Regarding claims 1-3 and 17, the steel sheet as taught by Minami has a chemical composition that overlaps the claimed chemical composition. Therefore, a prima facie case of obviousness exists. See MPEP 2144.05 (II). The selection of claimed steel composition from the steel composition of Minami would have been obvious to one of ordinary skill in the art since Minami teach the same utilities in its disclosed steel composition.
Regarding claims 4-6, Table 3-2 of Minami further teaches that some of the steel sheet, for example Sample No.27 having a tensile strength 1494MPa and a yield strength of 1076 and an elongation of 10, which read on the claimed tensile strength, yield strength and elongation.
Regarding claim 15, the claimed (a) solid-solution strengthening, (b) precipitation of vanadium carbide and/or titanium-niobium carbide and (c) gain refinement and (d) strain strengthening or work hardening are directed to process limitations in a product claim, which does not provide any material features that patentably distinguish the claimed steel sheet from the steel sheet of Minami. It is well settled that a product-by-process claim defines a product, and that when the prior art discloses a product substantially the same as that being claimed, the burden falls upon the applicant to show that any process steps associated therewith results in a product materially different from that disclosed in the prior art. See In re Thorpe, (227 USPQ 964), In re Brown, (173 USPQ 685), In re Fessman, (180 USPQ 524) and MPEP 2113. In this case, since Minami teaches a steel sheet that is substantially the same as claimed steel sheet, the burden falls on the applicant to show that any of the claimed process steps (a)-(d) results in a steel sheet materially different from the steel sheet of Minami.
Regarding claim 16, Minami further teaches that the steel sheet is further subjected to galvanizing[0128] as claimed.
Claim(s) 1-10 and 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yokoyama et al. US 2021/0017620(Yokoyama).
Yokoyama teaches an ultra-high strength galvanized steel sheet(abstract, [0028]), wherein the steel sheet has a chemical composition that applies to the claimed steel sheet as follows:
Composition Components
Instant Application (wt%)
Yokoyama (mass%)
C
0.15-0.26
0.10-0.25 [0053-0055]
Mn
2.10-3.60
1.00-3.50 [0059-0061]
Si
0.05-0.85
0.25-2.00 [0056-0058]
Al
0.001-0.85
0.001-1.5 [0068-0070]
Cr
0.01-0.90
0.01-1.20 [0057-0089]
Mo
0.01-0.50
0.005-0.50 [0098-0100]
Ti
0.01-0.10
0.01-0.15 [0080-0082]
Nb
0.01-0.04
0.005-0.060 [0085-0086]
V
0.01-0.30
0.01-0.5 [0083-0084]
B
0.0001-0.005
0.0005-0.005 [0104-0106]
N
< 0.01
0.0001-0.01 [0071-0073]
S
< 0.01
0.0001-0.01 [0065-0067]
P
< 0.05
0.001-0.02 [0062-0064]
Balance Fe & Impurities
Balance Fe & Impurities
Balance Fe & Impurities
Regarding claims 1-3 and 17, the steel sheet as taught by Yokoyama has a chemical composition that overlaps the claimed chemical composition. Therefore, a prima facie case of obviousness exists. See MPEP 2144.05 (II). The selection of claimed steel composition from the steel composition of Yokoyama would have been obvious to one of ordinary skill in the art since Yokoyama teaches the same utilities in its disclosed steel composition.
Regarding claims 4-6, Table 22 of Yokoyama further teaches that Examples 17-21 and 35 having tensile strengths in the range of 1490-1607MPa, which read on the claimed tensile strength as recited in claim 4. Their inherent yield strengths would have also read on the claimed yield strength as recited in claim 5, since the claimed yield strength can be any value. The elongation of the steel sheet in Table 22 of Yokoyama ranges from 9.8 to 37%, which read on the elongation as recited in claim 6.
Regarding claims 7-10, Yokoyama further teaches that the steel sheet comprises 0-30% ferrite[0124-0126], 0-30% fresh martensite[0130-0131], 50% or less of tempered martensite[0136-0137], and 3-20% retained austenite[0127-0129]. Based on the amount of fresh martensite and tempered martensite, the total amount of martensite in the steel sheet of Yokoyama is calculated to be 0-80%(i.e. fresh martensite + tempered martensite). Therefore, the amounts of ferrite, martensite and retained austenite in the steel sheet of Yokoyama encompass the claimed amounts of ferrite, martensite and retained austenite. A prima facie case of obviousness exists. See MPEP 2144.05(II). The selection of the claimed amounts of ferrite, martensite and retained austenite from the amounts of ferrite, martensite and retained austenite as taught by Yokoyama would have been obvious to one of ordinary skill in the art since Yokoyama teach the same utilities in its disclosed ferrite, martensite and retained austenite amounts.
Regarding claim 15, the claimed (a) solid-solution strengthening, (b) precipitation of vanadium carbide and/or titanium-niobium carbide and (c) gain refinement and (d) strain strengthening or work hardening are directed to process limitations in a product claim, which does not provide any material features that patentably distinguish the claimed steel sheet from the steel sheet of Yokoyama. It is well settled that a product-by-process claim defines a product, and that when the prior art discloses a product substantially the same as that being claimed, the burden falls upon the applicant to show that any process steps associated therewith results in a product materially different from that disclosed in the prior art. See In re Thorpe, (227 USPQ 964), In re Brown, (173 USPQ 685), In re Fessman, (180 USPQ 524) and MPEP 2113. In this case, since Yokoyama teaches a steel sheet that is substantially the same as claimed steel sheet, the burden falls on the applicant to show that any of the claimed process steps (a)-(d) results in a steel sheet materially different from the steel sheet of Yokoyama.
Regarding claim 16, Yokoyama further teaches that the steel sheet is further subjected to galvanizing[0028] as claimed.
Claim(s) 1-3 and 5-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2022/086050, whose English equivalent is Ryu et al. US 2023/0357881(Ryu), and further in view of Yokoyama et al. US 2021/0017620(Yokoyama) .
Ryu teaches an ultra-high strength galvanized steel sheet(abstract, [0100]), wherein the steel sheet has a chemical composition that applies to the claimed steel sheet as follows:
Composition Components
Instant Application (wt%)
Ryu (wt%)
C
0.15-0.26
0.1-0.2 [0028-0031]
Mn
2.10-3.60
2.00-3.00 [0036-0039]
Si
0.05-0.85
0.1-1.0 [0032-0035]
Al
0.001-0.85
0.01-1.0 [0040-0044]
Cr
0.01-0.90
≤ 1.0 [0045-0048]
Mo
0.01-0.50
≤ 0.50 [0049-51]
Ti
0.01-0.10
≤ 0.1[0052-0055]
Nb
0.01-0.04
≤ 0.1[0056-0059]
V
0.01-0.30
-
B
0.0001-0.005
-
N
< 0.01
≤ 0.02 [0070-0072]
S
< 0.01
≤ 0.02 [0067-0069]
P
< 0.05
≤ 0.05 [0064-0066]
Balance Fe & Impurities
Balance Fe & Impurities
Balance Fe & Impurities
However Ryu does not explicitly teach the claimed amounts of vanadium (V) and boron(B) present in the steel sheet.
The teachings of Yokoyama are discussed in section 12 above.
Regarding claims 1-3 and 17, it would have been obvious to one of ordinary skill in the art to have incorporated the 0.01-0.50mass% of vanadium as taught by Yokoyama into the steel sheet of Ryu in order to achieve increase in strength without deterioration in formability as taught by Yokoyama[0084]. Additionally, it would have been obvious to one ordinary skill in the art to have incorporated the 0.0005-0.005 mass% of boron as taught by Yokoyama into the steel sheet of Ryu in order to strength the steel sheet without impairing the hot workability as taught by Yokoyama[0105].
Furthermore, the steel sheet as taught by Ryu in view of Yokoyama has a chemical composition that overlaps the claimed chemical composition. Therefore, a prima facie case of obviousness exists. See MPEP 2144.05 (II). The selection of claimed steel composition from the steel composition of Ryu in view of Yokoyama would have been obvious to one of ordinary skill in the art since Ryu in view of Yokoyama teach the same utilities in its disclosed steel composition.
Regarding claim 5, Table 3 of Ryu further teaches that the yield strength of its steel sheet samples is in the range of 709-862MPa, which read on the claimed yield strength.
Regarding claim 6, Table 3 of Ryu further teaches that elongation in the range of ranges from 13.2-15%, which read on the elongation of above or equal to about 7%.
Regarding claims 7-14, Ryu further teaches that the steel sheet comprises 3-20 area% ferrite[0086], wherein Table 3 Inventive Examples 1-5 having 10-19 area% of ferrite. Ryu further teaches that tempered martensite in an amount of 30-70 area% is present in the steel sheet[0091-0096]. Retained austenite in an amount of 3-9 area% is also present in the steel sheet of Ryu[0090], together with 1-30 area% of bainite[0092], wherein the residual structure is fresh martensite present in an amount of 3 area% or more[0097-0098]. Based on the lower limits of ferrite(3 area%), tempered martensite(30 area%), retained austenite(3 area%) and bainite(1 area%), the upper limit of fresh martensite is calculated to be 100-3-30-3-1=63 area%. Therefore, the amount range for fresh martensite in the steel sheet of Ryu in view of Yokoyama is 3-63 area%. The total amount of martensite in the steel sheet of Yokoyama (i.e. tempered martensite + fresh martensite) is calculated to be 33-93 area%. Therefore, the amounts of ferrite, martensite and retained austenite in the steel sheet of Ryu in view of Yokoyama significantly overlap the claimed amounts of ferrite, martensite(i.e. including tempered and fresh martensite) and retained austenite. A prima facie case of obviousness exists. See MPEP 2144.05(II). The selection of the claimed amounts of ferrite, martensite(i.e. including tempered and fresh martensite) and retained austenite from the amounts of ferrite, martensite(i.e. including tempered and fresh martensite) and retained austenite as taught by Ryu in view of Yokoyama would have been obvious to one of ordinary skill in the art since Ryu in view of Yokoyama teach the same utilities in their disclosed ferrite, martensite(i.e. including tempered and fresh martensite) and retained austenite amounts.
Regarding claim 15, the claimed (a) solid-solution strengthening, (b) precipitation of vanadium carbide and/or titanium-niobium carbide and (c) gain refinement and (d) strain strengthening or work hardening are directed to process limitations in a product claim, which does not provide any material features that patentably distinguish the claimed steel sheet from the steel sheet of Ryu in view of Yokoyama. It is well settled that a product-by-process claim defines a product, and that when the prior art discloses a product substantially the same as that being claimed, the burden falls upon the applicant to show that any process steps associated therewith results in a product materially different from that disclosed in the prior art. See In re Thorpe, (227 USPQ 964), In re Brown, (173 USPQ 685), In re Fessman, (180 USPQ 524) and MPEP 2113. In this case, since Ryu in view of Yokoyama teach a steel sheet that is substantially the same as claimed steel sheet, the burden falls on the applicant to show that any of the claimed process steps (a)-(d) results in a steel sheet materially different from the steel sheet of Ryu in view of Yokoyama.
Regarding claim 16, Ryu further teaches that the steel sheet is further subjected to galvanizing[0100] as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOIS L ZHENG whose telephone number is (571)272-1248. The examiner can normally be reached Mon-Fri 8:15-4:45.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached at 571-272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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LOIS ZHENG
Primary Examiner
Art Unit 1733
/LOIS L ZHENG/Primary Examiner, Art Unit 1733
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