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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d).
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/29/2024 and 09/05/2025 are being 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 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Genki Abukawa et.al. [US20210404040A1] (Abukawa hereafter).
Regarding claim 1 and 2, Abukawa discloses a hot-rolled steel sheet (see Abukawa’s Abstract) comprising a chemical composition by mass % (see Abukawa’s [0039]) in following table,
Element
Instant Claim 1 (mass %)
Instant Claim 2 (mass %)
Abukawa’US040's composition (mass %) [0039]
Within/Overlapping with as recited Range
C
0.100 to 0.500
0.030 to 0.0400
Within
Si
0.100 to 3.000
0.050 to 2.50
Within
Mn
0.50 to 3.00
1.00 to 4.00
Overlapping
P
0.100 or less
0.020% or less
Overlapping
S
0.0100 or less
0.020% or less
Overlapping
Al
1.000 or less
0.001 to 2.0
Overlapping
N
0.0100 or less
0.010% or less
Within
Ti
0 to 0.20
0.02 to 0.20
0 to 0.20
Within claim 1/ Overlapping with claim 2
Nb
0 to 0.100
0.01 to 0.100
0 to 0.20
Overlapping
Ca
0 to 0.006
0.0001 to 0.006
0 to 0.01
Overlapping
Mo
0 to 0.50
0.01 to 0.50
0 to 1.0
Overlapping
Cr
0 to 1.00
0.01 to 1.00
0 to 1.0
Within claim 1/ Overlapping with claim 2
V
0 to 0.50
0.01 to 0.50
0 to 1.0
Overlapping
Cu
0 to 0.50
0.01 to 0.50
0 to 1.0
Overlapping
Ni
0 to 0.50
0.01 to 0.50
0 to 1.0
Overlapping
Sn
0 – 0.05
0.001 – 0.05
-
Fe and impurities
Balance
Balance
Balance
Overlapping
With respect to claim 2, Abukawa is only silent about Sn, but the claimed steel comprises one or more of the instantly listed claimed elements of claim 2.
Abukawa’s composition for the elements for both claim 1 and 2 are overlapping with the range as recited in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have selected and produced a composition from the teachings of Abukawa’US040 that falls within the instantly-claimed ranges, because “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)” [See MPEP § 2144.05.I].
Abukawa disclosed microstructure and the properties of a hot-rolled steel sheet has been listed along with the claimed microstructure and properties in the following table,
Microstructure
Instant claim 1 (area %)
Abukawa’s microstructure in area % ( see Abukawa’s [0111])
Within/Overlapping with as recited Range
martensite
90 to 100
0 to 100% of fresh martensite (may be a martensite single structure)
Overlapping
remainder
0 to 10
and 5% or less of pearlite
Overlapping
Properties
Instant claim 1 (MPa)
Abukawa’s tensile strength in MPa
Tensile strength
1180 or more
1180 or more (Abukawa’s [0031]),
1370 MPa (see Abukawa’s [0115])
Within
Therefore, Abukawa’s area % of martensite and remainder is overlapping with the as recited in the instant claim, and Abukawa’s tensile strength is within as recited range in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have selected and produced steel with tensile strength from the teachings of Abukawa’US040 that falls within the instantly-claimed ranges, because “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)” [See MPEP § 2144.05.I].
Although, Abukawa is silent whether the microstructure is in a region from a depth of 1/8 of a sheet thickness from a surface to a depth of 3/8 of the sheet thickness from the surface, Abukawa teaches microstructure can be a martensite single structure, and process for obtaining martensite single pattern (see Abukawa’s [0111], [0184] and [0185]), as Abukawa’s microstructure contains a single phase martensite, therefore, it would have been obvious to one of ordinary skill in the art, that the microstructure would be same throughout the steel sheet, including a region from a depth of 1/8 of a sheet thickness from a surface to a depth of 3/8 of the sheet thickness from the surface.
Abukawa further teaches measuring a texture of a region from the surface to the depth of 1/8 of the sheet thickness from the surface, and a texture of a region from the depth of 1/8 of the sheet thickness from the surface to a depth of 1/2 of the sheet thickness from the surface (the texture of the sheet surface region affects the formation of cracks during bending deformation, and the texture of the internal region which is from 1/8 to 3/8 of the sheet thickness affects the propagation of cracks initiated in the surface region (see Abukawa’s [0035]) and texture and pole density is measured by an EBSP in a range from 1/8 to 3/8 of the sheet thickness (see Abukawa’s [0102]).
Although, Abukawa is silent about the claimed pole densities in claimed orientation, Abukawa also teaches the following method steps to produce a hot rolled steel sheet (below table includes citations to the present specification and Abukawa):
Process steps
Present Invention [paragraph]
Abukawa’s process [section]
Comparison
(a) Heating
a slab to a temperature 1100°C to 1350°C [0054]
a slab to a temperature of 1200°C. to 1300°C. [0123]
Overlapping temperature and analogous process
(b) finish rolling
finish rolling
finish rolling
analogous process
(I) Finish rolling start temperature 800°C or higher [0054] to 1100°C [0060].
temperature is 1000° C. to 1150° C Hot rolling [0125]
Overlapping temperature and analogous process
(II) In each of the last four stands along the plurality of stands, rolling is performed so that σ represented by Expression (I) becomes 40 to 80
silent
Different
(III) interpass times between the last four stands are set to 0.2 to 10.0 seconds.
silent
Different
(IV) cumulative rolling reduction is set to 60% or larger [0054]
the total rolling reduction in finish rolling is 35% or more [0125] 50% or more [0186]
Overlapping reduction and analogous process
(V) a finishing temperature is set to 800°C to 950°C [0054]
finish temperature 930°C to 995°C [0125], [0162]
Overlapping temperature and analogous process
Cooling temperature
cooling to a temperature range of 300°C or lower [0054]
for martensite Pattern, cooled to a temperature of 100°C [0185]
Within claimed temperature and analogous process
Cooling rate
an average cooling rate is 100°C/s or faster [0054]
an average cooling rate of 20°C/sec or higher [0185]
Overlapping cooling rate and analogous process
Coiling after the cooling
coiling after cooling [0054]
coiled into a coil [0185]
Analogous process
As shown above, prior art Abukawa teaches all the steps with overlapping parameters except two sub steps of finish rolling step (II) and (III).
However, according to the paragraph [0060]-[0062] of instant specification of the disclosure, the finish rolling start temperature, and the σ value from the Expression (I) controls the texture, and the pole densities of the orientation, as describes “finish rolling start temperature is preferably set to 1100°C or lower in step (I) in order to preferably control the texture in the surface layer region and in the internal region”, which is within the Abukawa’s finish rolling start temperature range and “when there is even one stand in which σ is less than 40, in step (II) the texture of the region from the surface to the depth of 1/8 of the sheet thickness from the surface, the pole densities of the {001} < 110>, {111} <110>, and {112} <110> orientation groups cannot be preferably controlled”.
But in the comparative example, test sample 44, has instantly claimed composition (B of Table 1 of the instant specification) and obtained by method steps different than the instant invention, as shown in Table 2B of the instant specification, finish rolling start temperature is 1120°C, σ is 63-70, yet steel sheet has the claimed properties as shown in the Table 4B of the instant specification,
99% martensite and 1% of a remainder in microstructure,
in a texture of a region from the surface to the depth of 1/8 of the sheet thickness from the surface, pole densities of {001 }<110>, { 111 }<110>, and { 112}<110> orientation groups are 7.3,
and in a texture of a region from the depth of 1/8 of the sheet thickness from the surface to a depth of 1/2 of the sheet thickness from the surface, a pole density of a {110}<112> orientation is 3.8, and tensile strength 1286 MPa all these are within the range as instantly claimed.
Similarly, for other comparative examples 48, 50, 52, 54, and 55, produced by various method steps different than instant invention, but based on claim 1, all these examples fall within the claimed microstructure, pole densities, and tensile strength, which therefore, indicates the method steps including the sub steps of finish rolling are not critical for obtaining the claimed properties and texture, and these steel sheets inherently possess the microstructure, pole densities in an orientation and tensile strength.
Given the composition, microstructure, tensile strength and main method steps of making the steel sheet of Abukawa, are substantially identical to the composition, microstructure, tensile strength and similar main method steps as used in the present invention, as set forth above, it is clear that the hot rolled steel sheet of Abukawa would inherently have in a texture of a region from the surface to the depth of 1/8 of the sheet thickness from the surface, pole densities of {001 }<110>, { 111 }<110>, and { 112}<110> orientation groups are 2.0 or more, and in a texture of a region from the depth of 1/8 of the sheet thickness from the surface to a depth of 1/2 of the sheet thickness from the surface, a pole density of a {110}<112> orientation is 5.0 or less as presently claimed, because, “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)”.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Genki Abukawa et.al. [WO2021167079A1] ( Abukawa’WO-079” hereafter) teaches an overlapping claimed composition [0015], the microstructure contains a total of 70% or more by volume of martensite, tempered martensite, and bainite, and 5 to 20% retained austenite [0015], so overlapping microstructure and the steel sheet with a tensile strength of 980 MPa or more [0016] overlapping with the claimed range, and the microstructure is measured in the range from 1/8 to 3/8 of the thickness from the surface, centered at a depth of 1/4 of the thickness from the surface (1/4 thickness) [0020].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NAZMUN NAHAR SHAMS whose telephone number is (571)272-5421. The examiner can normally be reached M-F 11:00 AM - 7:00PM (EST).
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/NAZMUN NAHAR SHAMS/Examiner, Art Unit 1738
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