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, claims 1-7, in the reply filed on 29 January 2026 is acknowledged.
Claims 8-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 29 January 2026.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 28 February 2024, 13 February 2025, and 24 June 2025 were considered by the examiner.
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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2006-124773 (JP ‘773).
In regards to independent claim 1 and dependent claim 2-6, JP ‘773 is directed to a hot-rolled steel strip. (Line 10) The steel sheet is capable of being formed into a tube for a hyperloop vacuum train. Therefore, it meets the intended use limitation.
The composition of the steel strip includes, in mass percent, 0.02 to 0.25% carbon, 0.04 to 2.5% silicon, 0.3 to 2.3% manganese, 0.005 to 0.5% aluminum, and the balance of iron and impurities. (Lines 55-58) This compositional range overlaps the claimed compositional range.
JP ‘773 is silent on the average grain size of ferrite, microstructure as set forth in the instant claims, grain size, and other properties as set forth in the instant claims. However, where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the Office can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. Whether the rejection is based on “inherency” under 35 USC 102, on “prima facie obviousness” under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the Office’s inability to manufacture products or to obtain and compare prior art products. In re Best, Bolton and Shaw, 195 USPQ 430 (CCPA 1977).
JP ‘773 teaches heating a steel ingot or steel slab to 1050 C or higher. (Lines 91-93) The heating is preferably 1200 or higher and less than 75 minutes. (Lines 95-96) The finishing hot rolling temperature was 800 C or higher. (Lines 74-76) The process further includes cooling and winding up to 700 C or less. (Lines 83-84)
This appears to be an identical or substantially identical process as set forth in the instant application for producing the claimed properties. The instant application sets forth forming a hot-rolled steel sheet by heating a slab to a heating temperature of 1100 to 1300 C; hot rolling the heated slab at a finishing hot rolling temperature of 900 to 1000 C to provide a hot-rolled steel sheet; the coiling the hot-rolled steel sheet at a coiling temperature of 600 C to 700 C, wherein the coiling temperature may satisfy relational expression 4. (¶31-¶34 of Specification)
Consequently, absent a showing to the contrary, it appears that the product in the prior art necessarily or inherently possesses the characteristics of the claimed product, including the claimed rational expressions as set forth in the instant claims, microstructure properties, and other properties.
As to claim 7, the hot-rolled steel strip has a thickness of 3.6 mm. (Lines 253-256) The selection of a different size would be a mere change in change in size/proportion. The only difference between the prior art and the claims is a recitation of relative dimensions of the claimed product and the product would not perform differently from each other. (MPEP 2144.04,IV,A) Therefore, the claimed product is not patentably distinct from that of the prior art.
Citation of Pertinent Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure
JP 2005-298967 (JP ‘867) is directed to a hot-rolled steel sheet excellent in work hardening. (Lines 13-14) The steel has a composition of 0.01 to 0.1% carbon, 0.005 to 1.0% silicon, 0.2 to 2.5% manganese, 0.001 to 0.1% aluminum, 0.007 to 0.02% nitrogen, and the balance being iron and inevitable impurities. (Lines 63-66) The structure is composed of a main phase composed of ferrite and a second phase composed of one or more of pearlite, bainite, and martensite. (Lines 66-67) The second phase has a volume fraction of 3 to 30%. (Line 67) This reference does not set forth the microstructure properties as set forth in the instant claims.
U.S. Patent Application Publication Number 2014/0360634 (Kawasaki) is directed to a hot rolled steel sheet for a cold rolled steel sheet and a hot rolled steel sheet for a galvanized steel sheet excellent in terms of formability and stability of material quality. (¶3) This reference does not set forth the microstructure properties as set forth in the instant claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Daniel Schleis whose telephone number is (571)270-5636. The examiner can normally be reached 10 AM to 4 PM Monday through Friday.
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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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Daniel J. Schleis
Primary Examiner
Art Unit 1784
/Daniel J. Schleis/Primary Examiner, Art Unit 1784
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