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 & Status of Claims
Applicant’s election without traverse of Group I, claims 12-15, drawn to a steel sheet in the reply filed on 12/ is acknowledged.
Claims 16-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventio, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/.
Claim Objections
Claim 12 is objected to because of the following informalities: The terms “including 0%” (two instances in the claim) should not be in parentheses. 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.
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 12-15 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.
Regarding claims 12-15, instant claim 12 requires the limitation of “the steel sheet has a proportion SC≥0.5/SC≥0.3×100 of 20% or more wherein SC≥0.5 is the area of a region having a C concentration of 0.50% or more and SC≥0.3 is the area of a region having a C concentration of 0.30% or more”. However, instant claim does not recite the units for regional C concentration thereby making it unclear what the instant claim is requiring. Claims 13-15 are dependents of claim 12, do not resolve the issue and thereby also indefinite.
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.
List 1
Element
Instant Claims
(mass%)
Prior Art
(mass%)
C
0.06 – 0.25
0.10 – 0.30
Si
0.4 – 2.5
1.0 – 2.8
Mn
1.5 – 3.5
2.0 – 3.5
Al
less than 1.0
1 or less
P
0.02 or less
0.010 or less
S
0.01 or less
0.001 or less
N
less than 0.015
0.00001 – 0.006
Ti, B, Cu, Ni, Cr, Mo, V, Nb, Zr, W, Ca, Ce, La, Mg, Sb, Sn
one or two or more selected from the following groups A to C:
group A: one or two selected from:
Ti: 0.1% or less, and B: 0.01% or less,
group B: one, or two or more selected from: Cu: 1% or less, Ni: 1% or less, Cr: 1.0% or less, Mo: 0.5% or less, V: 0.5% or less, Nb: 0.1% or less, Zr: 0.2% or less, and
W: 0.2% or less,
group C: one, or two or more selected from: Ca: 0.0040% or less, Ce: 0.0040% or less, La: 0.0040% or less, Mg: 0.0030% or less, Sb: 0.1% or less, and Sn: 0.1% or less
one or more of Ti, Nb, V, and Zr: 0.005% or more and 0.10% or less in total
Fe + impurities
Balance
Balance
Claims 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/189842 A1 via its US English equivalent US 2021/0010115 A1 of Yoshitomi (US’115) of record.
Regarding claims 12-15, WO 2019/189842 A1 via its US English equivalent US 2021/0010115 A1 of Yoshitomi (US’115) {abstract, [0002]-[0016], [0022]-[0060], [0062]-[0104]} teaches “[0024] [1] A high-strength galvanized steel sheet including: [0025] a steel sheet having a chemical composition containing, in mass %, [0026] C: 0.10% or more and 0.30% or less, [0027] Si: 1.0% or more and 2.8% or less, [0028] Mn: 2.0% or more and 3.5% or less, [0029] P: 0.010% or less, [0030] S: 0.001% or less, [0031] Al: 1% or less, [0032] N: 0.0001% or more and 0.006% or less, and the balance: Fe and incidental impurities, and [0033] a steel structure containing, in terms of area ratio, 4% or more and 20% or less of retained austenite, 30% or less (including 0%) of ferrite, 40% or more of martensite, and 10% or more and 50% or less of bainite; [0034] a galvanized layer provided on the steel sheet” “[0039] [2] The high-strength galvanized steel sheet according to [1], [0040] in which the chemical composition further contains at least one of, in mass %, [0041] one or more of Ti, Nb, V, and Zr: 0.005% or more and 0.10% or less in total, [0042] one or more of Mo, Cr, Cu, and Ni: 0.005% or more and 0.5% or less in total, and [0043] B: 0.0003% or more and 0.005% or less. [0044] [3] The high-strength galvanized steel sheet according to [1] or [2], [0045] in which the chemical composition further contains, in mass %, [0046] at least one of Sb: 0.001% or more and 0.1% or less and Sn: 0.001% or more and 0.1% or less. [0047] [4] The high-strength galvanized steel sheet according to any one of [1] to [3], in which the chemical composition further contains, in mass %, Ca: 0.0010% or less.”
Therefore, the prior art teaches a high-strength galvanized steel sheet with a composition wherein the claimed ranges of the constituent elements of the instant alloy of the instant claim 12 overlap or lie inside the ranges of various elements of the alloy of the prior art as shown in the List 1 above. 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 composition over the prior art disclosure since the prior art teaches the similar property/utility 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
The prior art teaches [0090] “The steel structure contains, in terms of area ratio, 40% or more of martensite, 30% or less (including 0%) of ferrite, 4% or more and 20% or less of retained austenite, and 10% or more and 50% or less of bainite.” “[0095] Area ratio of martensite being 40% or more [0096] Here, martensite includes tempered martensite (including self-tempered martensite). As-quenched martensite and tempered martensite are hard phases, and are important in accordance with aspects of the present invention to obtain high tensile strength. Tempered martensite tends to soften as compared to as-quenched martensite. In order to ensure necessary strength, the area ratio of martensite is set to 40% or more, and preferably 45% or more. The upper limit of the area ratio of martensite is not particularly prescribed, but the area ratio of martensite is preferably 86% or less in view of balance with other structures. Further, from the viewpoint of ensuring ductility, the area ratio of martensite is more preferably 80% or less.” [0091] “Area ratio of retained austenite is 4% or more and 20% or less” thereby reading on the various microstructure phases of the instant claim 12.
Regarding claims 14-15, the prior art teaches that the steel sheet has [0034] “a galvanized layer provided on the steel sheet” [0102] “The composition of the galvanized layer is not particularly limited, and may be a common composition” thereby meeting the recited limitations of the instant claims.
It is noted that the prior art is silent regarding its steel sheet having a) bainitic ferrite having 20 or less internal carbides per 10 μm2 (claim 12), b) proportion SC≥0.5/SC≥0.3×100 of 20% or more (claim 12) and c) a number density of retained austenite present adjacent to the bainitic ferrite having 20 or less internal carbides per 10 μm2 of 50 or more per 10000 μm2 (claim 13) as recited in the instant claims 12 and 13. 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). See MPEP § 2112.01 I. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Therefore, it is expected that the alloy of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (see compositional analysis above), b) the claimed and prior art products are identical or substantially identical in structure (see microstructure analysis above) and c) the claimed and prior art products are produced by identical or substantially identical processes {instant alloy: instant specification [0079]-[0102]; Prior art: [0108]-[0145]}. Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOPHY S. KOSHY whose telephone number is (571)272-0030. The examiner can normally be reached M-F 8:30 AM- 5:00 PM.
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/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733