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 Group I in the reply filed on December 10, 2025 is acknowledged.
Claims 10-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 December 10, 2025.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Examiner Note
Examiner notes that “high-strength” is defined in the specification in [0015] as “The term “high-strength” means that tensile strength (TS) obtained by a tensile test to be described later is 1180 MPa or more.”
Examiner additionally notes “metastable carbides” are well known term in the art, and as such, is considered definite and subject to broadest reasonable interpretation.
Examiner further notes that claims 3 and 15 are further limiting as they contain upper limits of elements; however, they do optionally allow for none of the listed elements to be included (as the lower limit of all elements is inclusive of 0.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided. Specifically, “There is provided” is language that can be implied.
Claim Objections
Claims 4 and 16 are objected to because of the following informalities: applicant uses "soft layer" interchangeably with "surface layer" and consolidation to a single term is requested. Appropriate correction is required.
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.
Claims 1-9 and 15-24 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Regarding claim 1, it is indefinite if the claim language for the component composition is intended to be open (line 2, “containing” MPEP 2111.03 I) or closed (“remaining part consisting of” line 10). For purposes of examination the first transitional phrase “containing” shall be considered to be intended. Further, additional elements are included in the composition (example claim 3), which requires the transition language of claim 1 to be “open”.
Regarding claims 2-4, 7-9, 15, 16 and 19-24, these claims are rejected for their incorporation of the above due to their respective dependencies on claim 1.
Regarding claim 5, it is indefinite if “a ¼ position” in line 2 is the same “1/4 position” in claim 4, from which it depends, and what “300 or more points within a range of 50 micron x 50 micron” is referring to “within a range” is not a definite way of describing a number within an area. For purposes of examination “within a range” shall be considered to read “in an area”. Claim 5 is further rejected for its incorporation of the above due to its dependence on claim 1.
Regarding claim 6, it is indefinite if “a ¼ position” in line 2 is the same “1/4 position” in claim 4, from which it depends. Claim 6 is further rejected for its incorporation of the above due to its dependence on claim 1.
Regarding claim 17, it is indefinite if “a ¼ position” in line 2 is the same “1/4 position” in claim 16, from which it depends, and what “300 or more points within a range of 50 micron x 50 micron” is referring to “within a range” is not a definite way of describing a number within an area. For purposes of examination “within a range” shall be considered to read “in an area”. Claim 17 is further rejected for its incorporation of the above due to its dependence on claim 1.
Regarding claim 18, it is indefinite if “a ¼ position” in line 2 is the same “1/4 position” in claim 16, from which it depends. Claim 18 is further rejected for its incorporation of the above due to its dependence on claim 1.
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) 1-8 and 15-22 are rejected under 35 U.S.C. 103 as being unpatentable over Toda et al. (EP3323906A1), hereinafter Toda (of record in the application).
Regarding claims 1-3 and 15, Toda teaches a steel sheet of tensile strength 780 MPa or higher (which overlaps that applicant cites of 1180 MPa or more([0015]) with a composition by mass% shown in Table 1 below, a structure in volume ratio (absent a teaching to the contrary, one of ordinary skill in the art reasonably understands volume ratio is equivalent to area ratio for steel microstructures) of tempered martensite 70% or more, ferrite and/or bainite: < 20%, residual austenite < 10% and fresh martensite <10% ([0019]).
Table 1 (mass%)
Instant claim 1
Instant claims 3 & 15
Toda [0019]
C
0.090-0.390
0.05-0.40
Si
0.01-2.00
0.05-3.00
Mn
2.00-4.00
1.50 to < 3.50
P
≤0.100
≤ 0.04
S
≤ 0.0200
≤ 0.01
Al
≤ 1.00
0-2.00
N
≤ 0.0100
≤ 0.01
O
≤ 0.0100
≤ 0.006
Fe & inevitable impurities
remaining part
remainder
At least one of
Ti
≤ 0.200
0-0.30
Nb
≤ 0.200
0-0.30
V
≤ 0.200
0-0.50
Ta
≤ 0.10
W
≤ 0.10
B
≤ 0.0100
0-0.01
Cr
≤ 1.00
0-1.00
Mo
≤ 1.00
0-1.00
Ni
≤ 1.00
0-1.00
Co
≤ 0.010
Cu
≤ 1.00
0-1.00
Sn
≤ 0.200
Sb
≤ 0.200
Ca
≤ 0.0100
0-0.04
Mg
≤ 0.0100
0-0.04
REM
≤ 0.0100
0-0.04
Zr
≤ 0.100
Te
≤ 0.100
Hf
≤ 0.10
Bi
≤ 0.200
Regarding Ta, W, Co, Sn, Sb, Zr, Te, Hf and Bi, Toda is silent to the presence of these elements, such that they are not considered to be present in an appreciable amount, also note examples. If these elements are not listed it is understood to one of ordinary skill in the art that it is reasonable that they are not present. Therefore, the elements are considered to be present in an amount within, or at least overlapping, applicant’s claimed proportions (which include 0%).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Toda does not specifically teach a proportion of the number of martensite blocks in which metastable carbides are present to the number of martensite blocks is 2% or more, nor a number density of the metastable carbides in the martensite blocks in which the metastable carbides are present is 1 x 106 metastable carbides/mm2 or more (hereinafter “claimed ratio and number density”).
One of ordinary skill in the art, before the effective filing date of the invention, would have expected substantially identical materials (composition and structure as described above) treated in a substantially identical manner as applicants to have substantially identical properties (including the claimed ratio and number density). Applicant teaches the process of claim 10 produces the steel of claim 1 as detailed in the below Table 2. Toda teaches processing ranges (below Table 2) that overlap those taught by applicant; where the applicants’ ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 I).
Given substantially identical materials and processing parameters, (as discussed above), one of ordinary skill in the art before the effective filing date of the invention would have expected the steel sheet of Toda to have substantially identical properties to that of applicant; including the claimed ratio and number density, meeting applicant’s claimed requirements.
Table 2
Instant Claim 10
Toda ([0114]-[0133])
Hot rolling a steel slab
Hot rolling the steel ([0114])
Pickling
Pickled ([0118])
Cold-rolling
Cold-rolled ([0118])
Annealing at 800⁰C or higher
Annealing at ~880⁰C for ~100 seconds ([0124])
Cooling with a staying time t1 of Ms-700⁰C of ≤1000s (*examiner notes this is inclusive of no staying time)
No staying time noted, and presumed absent (i.e. overlaps with applicant)
Cooling with a first average cooling rate to Ms-80⁰C to MS⁰C is 1.0-40.0⁰C/s
Cooled to finish cooling at ~2⁰C/s ([0128]; this includes values for a second average cooling that are slightly below a first average cooling rate) to >~80⁰C to ~550⁰C ([0126])
Second average cooling rate to 150⁰C to Ms-80⁰C is 0.3⁰C/s to < first average cooling rate
Finish cooling at ≤150⁰C
>~80⁰C to ~550⁰C ([0126])
Post heating under a condition where X is a maximum end point temperature and a retention time & at X-10⁰C or higher is Y (Formula 1 of claim 10)
Tempered at a constant temperature value (meets X to X-10⁰C) of >~150⁰C to < ~550⁰C for >1 second to at least ~280 seconds ([0130]-[0133]; includes values that meet the claimed range, such as 350⁰C and ~280 seconds of 11,777)
The examiner has provided a basis in technical reasoning that the processing, microstructure and compositions of Toda and applicant are substantially identical in support of the determination that the inherent characteristic of claimed ratio and number density necessarily flows from the teachings of Toda (MPEP 2112 IV).
As Toda teaches a substantially identical steel sheet, produced by a substantially identical process as that which applicant claims and discloses in their specification as producing the claimed ratio and number density, one of ordinary skill in the art, before the effective filing date of the invention, would expect the steel sheet of Toda to possess the claimed ratio and number density, absent an objective showing (MPEP 2112). The PTO can require an applicant to prove that the prior art products do not necessarily possess the characteristics of the claimed product, whether the rejection is based on inherency under 35 U.S.C. 102 or prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same (MPEP 2112 V).
Regarding claims 4-6 and 16-18, Toda teaches each limitation of claims 1-3, as discussed above. Specifically, regarding claims 5 and 17, the examiner notes that these are conditional limitations as they are recited “when” the nano-hardness is measured (i.e. if it is not measured, it is not required to be met).
Toda does not specifically teach the layer and hardness limitations of claims 4-6 and claims 16-18, hereinafter “the claimed limitations”.
One of ordinary skill in the art, before the effective filing date of the invention, would have expected substantially identical materials (composition and structure as described above) treated in a substantially identical manner as applicants to have substantially identical properties (including the claimed limitations). Applicant teaches the process of claim 10 produces the steel as claimed, as detailed in the above Table 2. Toda teaches processing ranges (above Table 2) that overlap those taught by applicant; where the applicants’ ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP 2144.05 I).
Given substantially identical materials and processing parameters, (as discussed above), one of ordinary skill in the art before the effective filing date of the invention would have expected the steel sheet of Toda to have substantially identical properties to that of applicant; including the claimed limitations, meeting applicant’s claimed requirements.
The examiner has provided a basis in technical reasoning that the processing, microstructure and compositions of Toda and applicant are substantially identical in support of the determination that the inherent characteristic of the claimed limitations necessarily flows from the teachings of Toda (MPEP 2112 IV).
As Toda teaches a substantially identical steel sheet, produced by a substantially identical process as that which applicant claims and discloses in their specification as producing the claimed limitations, one of ordinary skill in the art, before the effective filing date of the invention, would expect the steel sheet of Toda to possess the claimed limitations, absent an objective showing (MPEP 2112). The PTO can require an applicant to prove that the prior art products do not necessarily possess the characteristics of the claimed product, whether the rejection is based on inherency under 35 U.S.C. 102 or prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same (MPEP 2112 V).
Regarding claims 7-8 and 19-22, Toda teaches each limitation of claims 1-6, as discussed above. Toda further teaches a galvannealed layer formed on a surface of the steel sheet ([0019]). One of ordinary skill in the art reasonably understands a galvannealed layer is a metal plating layer (galvanized) that is then annealed (i.e. the galvanized layer is pre-annealing).
Claim(s) 9 and 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over Toda in view of Oka et al. (US 2018/0258514 A1), hereinafter Oka.
Regarding claims 9 and 23-24 Toda teaches each limitation of claims 1-7 and 19-20, as discussed above. Toda does not specifically teach further comprising a plated layer on a surface of the metal plated layer.
Oka is in the similar field of endeavor of high strength steel sheets (Abstract) that are galvannealed (i.e. a metal plating layer on a surface of the steel sheet pre-annealing) (Abstract) for use in automobiles ([0008]). Oka teaches an upper plating layer formed on the galvannealed layer ([0117]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Toda to incorporate the upper plating layer of Oka. The motivation for doing so would have been to improve weldability of the galvannealed steel sheet ([0017]) for automobiles ([0008]), and thereby improve the weldability in the vehicle steel sheet of Toda ([0020]), as it is a desired characteristic in the steel of Toda ([0039]-[0040]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE CHRISTY whose telephone number is (303)297-4363. The examiner can normally be reached Monday-Thursday, 7am-4pm MT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERINE A CHRISTY/Primary Examiner, Art Unit 1784