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 15-23 in the reply filed on 08/17/2026 is acknowledged.
Claims 24-30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 08/17/2026.
Regarding the argument that Ogawa does not show or teach the claimed microstructure and that unity is now present (remarks, page 1), this argument is not persuasive. Ogawa teaches the claimed microstructure, as described in the 35 U.S.C. 103 rejection in this Office action. The restriction requirement is maintained.
Information Disclosure Statement
Two (2) information disclosure statements (IDS) were submitted on 04/01/2024 and 08/21/2026. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS are being considered by the examiner.
Examiner’s Note
The Examiner notes that some words are capitalized in a seemingly random pattern throughout claims 15-23. For example, all elements in claim 15 are capitalized, and the terms “Recrystallized ferrite”, “Non-recrystallized ferrite” “Cementite”, and “Carbides of Niobium” in claim 15, “Silicon” in claim 16, “Carbon” in claim 17, and “Aluminum” in claim 18 (emphasis added to highlight capitalization) are also capitalized. The term “non-recrystallized ferrite” appears without capitalization in the third-to-last line of claim 15. Applicant is invited to consider revising the capitalization for clarity and consistency of terminology used throughout the claims.
Claim Objections
Claim 22 is objected to because of the following informalities: claim 22 recites the limitation “wherein the steel sheet has an ultimate tensile strength of 600 MPa or more, and a total elongation of 14% or more and a yield strength to tensile strength ratio equal to or greater than 1.10” (emphasis added). Claim 22 is not written in standard English grammar. The limitation “and a total elongation of 14% or more and a yield strength to tensile strength ratio” includes the term “and” twice instead of only once at the end of the listed properties. In standard English grammar, the term “and” is written only before the final item in the series, and not between each item in a list of three things.
Appropriate correction is required.
Claim Interpretation
The term “comprising” in claim 15 is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See MPEP 2111.03(I). In this case, the claimed composition and microstructure may include additional, unrecited elements due to limitations “having a composition comprising” of lines 1-2 and “a microstructure of the steel sheet comprising” in line 25.
The term “having” in claim 15 is interpreted as open claim language given the use of “comprising” in “having a composition comprising”. See MPEP 2111.03(IV).
Regarding claim 15, chromium, nickel, titanium, calcium, copper, molybdenum, vanadium, boron, cerium, magnesium and zirconium are interpreted as optional elements not required by the claim since claim 15 recites the limitation “and optionally one or more of the following elements” (emphasis added). See MPEP 2173.05(h). Similarly, phosphorus, sulfur, and nitrogen are also interpreted as optional elements since their claimed composition ranges include 0%.
Regarding claims 16-18, the claimed composition percentages are interpreted as percentage by weight as recited in claim 15 and as narrowing the composition of claim 15. If this interpretation is incorrect, Applicant should specify the correct interpretation in response to this Office action, and indicate where such interpretation finds support in the specification as originally filed.
Regarding claims 19-21, the claimed microstructure percentages are interpreted as area fraction as recited in claim 15 and as narrowing the microstructure of claim 15. If this interpretation is incorrect, Applicant should specify the correct interpretation in response to this Office action, and indicate where such interpretation finds support in the specification as originally filed.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
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.
Claim 22 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 22 recites the limitation “yield strength to tensile strength ratio equal to or greater than 1.10”. The instant specification recites “a TS/YS ratio greater than or equal to 1.10” (emphasis added, TS/YS is a tensile strength to yield strength ratio) in page 2, line 3 and recites TS/YS values in Table 4. The claimed “yield strength to tensile strength ratio” is equivalent to a YS/TS ratio, which is the inverse of the ratio described in the specification. Furthermore, claims 22 and 23 recite a tensile strength of 600 MPa or more and yield strength of 550 MPa or more. A yield strength to tensile strength ratio using the claimed values of 550 MPa and 600 MPa respectively results in a value of 0.916 and does not meet the claimed “yield strength to tensile strength ratio equal to or greater than 1.10”. The claimed “yield strength to tensile strength ratio equal to or greater than 1.10” does not have support in the instant specification.
Claims 15-23 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 15 recites the limitation “a remainder of the composition being composed of iron and unavoidable impurities caused by processing”. This limitation renders the claim indefinite. It is unclear what “processing” entails and therefore it is unclear what is encompassed by “unavoidable impurities caused by processing”.
Claims 16-23 depend on claim 15, do not resolve the aforementioned issues, and are thereby also indefinite.
Claim 22 recites the limitation “yield strength to tensile strength ratio equal to or greater than 1.10”. This limitation renders the claim indefinite. It is unclear whether the claimed ratio is the TS/YS ratio of the instant specification or a YS/TS ratio, as presently claimed. If the claimed ratio is intended to be a YS/TS ratio, a yield strength to tensile strength ratio using the claimed values of 550 MPa and 600 MPa respectively results in a value of 0.916 and does not meet the claimed “yield strength to tensile strength ratio equal to or greater than 1.10”. Therefore, it is further unclear how the claimed ratio, tensile strength, and yield strength can be achieved. See 112a rejection above.
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 15-23 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2008/190032 A of Ogawa (as cited in prior Office action, with reference to its English machine translation).
Regarding claims 15-23, Ogawa teaches a cold-rolled steel sheet (Abstract, reads on claimed cold rolled steel sheet). Ogawa teaches annealing the steel sheet ([0019], the annealing of Ogawa reads on the claimed heat treated since one of ordinary skill in the art understands annealing is a type of heat treatment).
List 1
Instant claims (wt%)
Ogawa – Steel G, Sample 10 (mass%)
Ogawa (mass%)
C
0.05-0.12
0.05-0.11 (claim 17)
0.11
0.05-0.25
Mn
1.0-2
1.83
0.50-3.50
Si
0.01-0.5
0.01-0.4 (claim 16)
0.39
0.01-1.50
Al
0.01-0.1
0.01-0.09 (claim 18)
0.031
0.200
Nb
0.01-0.1
0.029
0.005-0.100
P
0-0.09
0.012
≤ 0.150
S
0-0.09
0.0019
0.0150
N
0-0.09
0.0032
0.0100
Optionally one or more of:
Cr
0.1-0.5
-
0.10-1.50 (“one or more of Mo, B, Cr, Ni”)
Ni
0-3
-
0.10-1.50 (“one or more of Mo, B, Cr, Ni”)
Ti
0-0.1
0.032
0.005-0.100
Ca
0-0.005
-
-
Cu
0-2
-
-
Mo
0-0.5
0.15
0.1-1.5 (“one or more of Mo, B, Cr, Ni”)
V
0-0.1
-
-
B
0-0.003
0.0005
0.0005-0.0100 (“one or more of Mo, B, Cr, Ni”)
Ce
0-0.1
-
-
Mg
0-0.010
-
-
Zr
0-0.010
-
-
Fe and unavoidable impurities
Remainder
Remainder
Remainder
Recystallized ferrite
50-90 area%
54-85% (claim 20)
61 area% (calculated from “remainder”)
10-70 area% (recrystallized and/or transformed ferrite)
Non-recrystallized ferrite
10-50 area%
20-48% (claim 21)
25 area%
10-70 area%
Cementite
0-15 area%
-
-
Carbides of niobium
0.5-2 area%
Broader disclosure
“Fine carbides of Nb and Ti” ([0014])
Cumulated amount of recrystallized ferrite and non-recrystallized ferrite
At least 85%
At least 90% (claim 19)
86 area% (calculated)
20-100 area% (calculated)
Hard second phase: 14 area%
Hard second phase: 1-30 area%
“Hard second phase consists of martensite, bainite, and pearlite, and may contain less than 3% retained austenite” ([0053])
Tensile strength
600 MPa or more (claim 22)
855 MPa
700-885 MPa (inventive examples 1, 3, 4, 6, 7, 9, 10, 12, and 13)
Total elongation
14% or more (claim 22)
22%
21-26% (inventive examples 1, 3, 4, 6, 7, 9, 10, 12, and 13)
Yield strength to tensile strength ratio
≥ 1.10 (claim 22)
0.87 (“yield ratio” equivalent to YS/TS)
1.16 (calculated, TS/YS)
Yield ratio: 0.85-0.91 (inventive examples 1, 3, 4, 6, 7, 9, 10, 12, and 13; equivalent to 1.10-1.18 TS/YS ratio)
Yield strength
550 MPa or more (claim 23)
740 MPa
605-790 MPa (inventive examples 1, 3, 4, 6, 7, 9, 10, 12, and 13)
Ogawa teaches an inventive example (Steel G, Sample 10) steel with a chemical composition (Steel G, Table 1), microstructure (Sample 10, Table 3), tensile strength (Sample 10, Table 3), yield strength (Sample 10, Table 3), and total elongation (Sample 10, Table 3), lying within the claimed ranges, as shown in List 1. Regarding the yield strength to tensile strength ratio, Ogawa teaches a yield ratio of 0.87. One of ordinary skill in the art understands a yield ratio is equivalent to YS/TS. However, in view of the 112(a) and 112(b) rejection in this Office action, the Examiner notes that the claimed ratio is interpreted as a TS/YS ratio as that appears to be the meaning intended by Applicant. While Ogawa does not explicitly disclose a TS/YS ratio, the calculation of TS/YS results in a value of 1.16, which meets the claimed ≥ 1.10 as shown in List 1. Similarly, while Ogawa does not explicitly disclose a cumulated amount of recrystallized ferrite and non-recrystallized ferrite, the calculation using the amounts of recrystallized and non-recrystallized ferrite of the inventive example of Ogawa results in a cumulated amount of 86%, which lies within the claimed range of claim 15. Regarding the microstructure, Ogawa teaches a metal structure consists of ferrite and a hard second phase, and the ferrite consists of recrystallized ferrite and unrecrystallized ferrite ([0015], unrecrystallized ferrite reads on claimed non-recrystallized ferrite).
Ogawa therefore reads on the limitation a cold rolled and heat treated steel sheet having a composition comprising the following elements, expressed in percentage by weight: 0.05 % ≤ Carbon ≤ 0.12 % 1.0% ≤ Manganese ≤ 2% 0.01 % ≤ Silicon ≤ 0.5 % 0.01% ≤ Aluminum ≤ 0.1% 0.01% ≤ Niobium ≤ 0.1% 0 % ≤ Phosphorus ≤ 0.09 % 0 % ≤ Sulfur ≤ 0.09 % 0 % ≤ Nitrogen ≤ 0.09% and optionally one or more of the following elements 0.1% ≤ Chromium ≤ 0.5 % 0 % ≤ Nickel ≤ 3% 0 % ≤ Titanium ≤ 0.1% 0 % ≤ Calcium ≤ 0.005% 0 % ≤ Copper ≤ 2% 0 % ≤ Molybdenum ≤ 0. 5% 0 % ≤ Vanadium ≤ 0.1% 0 % ≤ Boron ≤ 0.003% 0 % ≤ Cerium ≤ 0.1% 0 % ≤ Magnesium ≦ 0.010% 0 % ≤ Zirconium ≦ 0.010% a remainder of the composition being composed of iron and unavoidable impurities caused by processing, a microstructure of the steel sheet comprising in area fraction, 50 to 90% Recrystallized ferrite, 10 to 50% non-recrystallized ferrite, 0% to 15% Cementite, wherein the cumulated amount of Recrystallized ferrite and Non-recrystallized ferrite is at least 85% of claim 15, wherein the composition includes 0.01% to 0.4% of Silicon of claim 16, wherein the composition includes 0.05% to 0.11% of Carbon of claim 17, wherein the composition includes 0.01% to 0.09% of Aluminum of claim 18, wherein, the amount of Recrystallized ferrite is from 54% to 85% of claim 20, wherein the Non-recrystallized ferrite is from 20% to 48% of claim 21, wherein the steel sheet has an ultimate tensile strength of 600 MPa or more, and a total elongation of 14% or more and a yield strength to tensile strength ratio equal to or greater than 1.10 of claim 22, and wherein said steel sheet has a yield strength of 550 MPa or more of claim 23.
Additionally, or alternatively, Ogawa teaches a broader disclosure of a steel with a chemical composition ([0015]-[0016], [0040]-[0051]), microstructure ([0015], [0052]-[0053]), tensile strength (700-885 MPa from inventive examples 1, 3, 4, 6, 7, 9, 10, 12, and 13), yield strength (605-790 MPa from inventive examples 1, 3, 4, 6, 7, 9, 10, 12, and 13), and total elongation (21-26% from inventive examples 1, 3, 4, 6, 7, 9, 10, 12, and 13) overlapping with the claimed ranges, as shown in List 1. 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.
Regarding the carbides of niobium of claim 15, Ogawa teaches adding Nb and Ti causes fine carbides such as NbC and TiC to precipitate, which has the effect of increasing the yield strength ([0048], fine carbides of Nb and NbC read on claimed carbides of niobium).
Ogawa therefore reads on the limitation Carbides of Niobium of claim 15.
However, Ogawa does not explicitly disclose 0.5% to 2% Carbides of Niobium of claim 15.
Since the steel of Ogawa has a composition, microstructure, and yield strength lying within or overlapping with the claimed invention, one of ordinary skill in the art would reasonably expect the amount of Nb carbides of Ogawa to overlap with the claimed invention.
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 steel 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) and b) the claimed and prior art products are identical or substantially identical in structure (both have overlapping recrystallized ferrite, non-recrystallized ferrite, yield strength, tensile strength, total elongation, and have carbides of niobium as shown in List 1). 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).
Ogawa therefore reads on the limitation 0.5% to 2% Carbides of Niobium of claim 15.
Regarding the cumulated amount of claim 19, Ogawa teaches an inventive example (Steel G, Sample 10) with a cumulated amount of 86% as described above, which is close to the claimed at least 90%. The broader disclosure of Ogawa teaches limiting the hard second phase to a lower limit of 1% to increase strength and an upper limit of 30% to avoid significantly reducing ductility ([0053]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to reduce the hard second phase of inventive example Steel G, Sample 10 to, for example, 1% to increase strength without reducing ductility, as taught by Ogawa. This modification of the microstructure of the inventive example of Ogawa based on the broader disclosure of Ogawa results in a cumulated amount of recrystallized and non-recrystallized ferrite of 99%, which meets the claimed range.
Ogawa therefore reads on the limitation wherein, the cumulated amounts of Recrystallized ferrite and Non-recrystallized ferrite is at least 90% of claim 19.
Ogawa therefore reads on all the limitations of claims 15-23.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAYELA ALDAZ whose telephone number is (571)270-0309. The examiner can normally be reached Monday -Thursday: 10 am - 7 pm and alternate Friday: 10 am - 6 pm.
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/M.A./Examiner, Art Unit 1733
/REBECCA JANSSEN/Primary Examiner, Art Unit 1733
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