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
Applicant’s election without traverse of claims 1-5 in the reply filed on 6/15/2026 is acknowledged.
Claims 6-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 6/15/2026.
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.
Claims 1-5 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.
The term “high strength and excellent impact resistance” in claim 1 is a relative term which renders the claim indefinite. The term “high strength and excellent impact resistance” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. This renders the strength and impact resistance of the steel material indefinite which renders the scope of the claim indefinite.
Instant claims 2-5 depend on instant claim 1 and are indefinite for at least the same reasons.
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) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR 1020150026581A to Kim et al (cited by applicant in IDS, an English language machine translation has been relied upon for examination purposes).
Regarding claim 1, Kim discloses a steel material overlapping the instantly claimed composition as well as a specific example lying close to the instantly claimed composition as follows:
Element
Claimed wt%
Kim wt%
Kim No 2 wt%
Overlaps/Lies within?
C
0.12-0.18
0.08-0.18
0.15
Yes/Yes
Si
0.2-0.5
0.1-0.45
0.32
Yes/Yes
Mn
1.0-1.7
1.0-1.6
1.48
Yes/Yes
P
0-0.012
>0-0.02
0.017
Yes/No
S
0-0.003
0-<0.008
0.002
Yes/Yes
Al
0.015-0.045
0.01-0.05
0.032
Yes/Yes
Nb
0.02-0.05
0-<0.03
0.020
Yes/Yes
V
0.01-0.08
0-<0.05
0.015
Yes/Yes
Ti
0.005-0.017
0.005-0.02
0.015
Yes/Yes
N
0.002-0.01
0-<0.004
0.003
Yes/Yes
Fe
Balance
Balance
Balance
Yes/Yes
Ceq
≤0.48
0.36-0.42
0.40
Yes/Yes
Wherein the steel material is made by a method of manufacturing comprising heating a slab to a temperature of 1050-1200 °C, extracting the slab at 1150 °C, and subjecting to rough-rolling and finish rolling at a temperature of Ar3 or higher.
(Kim, abstract, Table 1, example 2, translation pages 3-6)
Regarding the instantly claimed composition range, 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 Kim including the instantly claimed because Kim discloses the same utility throughout the disclosed ranges. Additionally, example 2 of Kim differs from the instantly claimed composition range only in terms of having a slightly higher P content of 0.017 wt% vs the instantly claimed upper limit of 0.012 wt%. Kim discloses that P is an impurity that inhibits impact toughness and should be suppressed to as little as 0% (Kim, translation page 5). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further suppress the P content of example 2 of Kim, including to the instantly claimed range of no more than 0.012 wt%, the motivation for doing so being to improve impact toughness (Kim, translation page 5).
Regarding the limitations “high strength and excellent impact toughness,” and “a microstructure comprises 60 to 85% of ferrite by area fraction and remaining pearlite, and the microstructure includes at least one precipitate of NbC or VC,” 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 material of Kim would be expected to have the same or similar properties as the instantly claimed steel material because the steel material of Kim has the same or substantially the same composition and method of manufacturing.
Regarding claim 2, Kim discloses a Ni content of 0-<0.05 wt% and a Cu content of 0-<0.05 wt% (Kim, translation page 5), within the instantly claimed ranges.
Regarding claims 3-5, 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 material of Kim would be expected to have the same or similar properties as the instantly claimed steel material because the steel material of Kim has the same or substantially the same composition and method of manufacturing.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0095649 A1 to Cha et al.
Regarding claim 1, Cha discloses a steel material overlapping the instantly claimed composition as well as a specific example lying close to the instantly claimed composition as follows:
Element
Claimed wt%
Cha wt%
Cha IE3
Overlaps/Lies within?
C
0.12-0.18
0.06-0.25
0.18
Yes/Yes
Si
0.2-0.5
0.05-0.5
0.32
Yes/Yes
Mn
1.0-1.7
1.0-2.0
1.21
Yes/Yes
P
0-0.012
0-0.010
0.0051
Yes/No
S
0-0.003
0-0.0015
0.0005
Yes/Yes
Al
0.015-0.045
0.005-0.40
0.032
Yes/Yes
Nb
0.02-0.05
0.001-0.03
0.021
Yes/Yes
V
0.01-0.08
0.001-0.03
0.019
Yes/Yes
Ti
0.005-0.017
0.001-0.03
0.015
Yes/Yes
N
0.002-0.01
0.0020-0.0060
silent
Yes/Yes
Fe
Balance
Balance
Balance
Yes/Yes
Ceq
≤0.48
0.24-0.73*
0.45&
Yes/Yes
*calculated from composition ranges of Cha
Wherein the steel material of Cha has a microstructure comprising 30% or less of pearlite and 70% or more of ferrite, with Cha IE3 having 18% pearlite and 82% pearlite, overlapping and lying within, respectively, the instantly claimed range of 60 to 85% of ferrite by area fraction and remaining pearlite, and the microstructure includes NbC and VC precipitates with a size of 5 to 30 nm, lying within the instantly claimed range of 50 nm or less.
(Cha, abstract, para [0047-0112], Table 1, IE3)
Regarding the instantly claimed composition range, 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 Cha including the instantly claimed because Cha discloses the same utility throughout the disclosed ranges. Additionally, IE3 of Cha differs from the instantly claimed composition range only in terms of being silent as to a nitrogen content of the alloy. Cha discloses that nitrogen may be added in amount of 20 to 60 ppm (within the instantly claimed range of 0.002-0.01 wt% N) in order to improve CGHAZ toughness (Cha, para [0101-0102]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add 20 to 60 ppm N to IE3 of Cha, the motivation for doing so being to improve CGHAZ toughness (Cha, para [0101-0102]).
Regarding the limitations “high strength and excellent impact toughness,” these limitations are indefinite as set forth above. Regardless, 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 material of Cha would be expected to have the same or similar properties as the instantly claimed steel material because the steel material of Cha has the same or substantially the same composition and microstructure.
Regarding claim 2, Cha discloses a Ni content of 0.05-0.5 wt% and a Cu content of 0.01-0.05 wt% (Cha, para [0085-0090]), within the instantly claimed ranges.
Regarding claims 3-5, 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 material of Cha would be expected to have the same or similar properties as the instantly claimed steel material because the steel material of Cha has the same or substantially the same composition and microstructure.
Conclusion
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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/BRIAN D WALCK/Primary Examiner, Art Unit 1738
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