DETAILED ACTION
Claims 1-19 are pending, and claims 1-14 are currently under review.
Claims 15-19 are withdrawn.
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 1-14, in the reply filed on 7/28/2026 is acknowledged.
Claims 15-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/28/2026.
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 1-14 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 1 recites that “the unavoidable impurities P, S, and N are limited to…”, wherein “the unavoidable impurities” refers to the previous recitation of a “balance of Fe and unavoidable impurities”. This is indefinite because it is unclear whether the claim requires: 1) the unavoidable impurities are only limited to P, S, and N in amounts as recited, or 2) the unavoidable impurities comprise P, S, and N, wherein P, S, and N are limited to the amounts as claimed. The examiner considers the claim to be met by the latter interpretation.
Claim 14 is 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 14 recites that the steel is subjected to a constant load test “as described in the detailed description”. However, the instant specification discloses broadly that the constant load test is merely performed under a constant load that is 40 to 80 percent of tensile strength, and the specification also sets forth specific parameters on [p.14 ln.15-33 instant specification]. Therefore, it is unclear as to what particular parameters, if any, are required by the claimed constant load test. The examiner interprets the claim to be met by any constant load test under 40 to 80 percent tensile strength.
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) 1-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Larsson et al. (WO2020201437).
Regarding claim 1, Larsson et al. discloses a hot rolled steel strip having a composition as seen in table 1 below [abstract, p.3]. Larsson et al. further teaches a microstructure of at 90 percent martensite and a tensile strength of 1511 to 1609 MPa [p.13, 16]. The examiner notes that the overlap between the steel parameters of Larsson et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I).
Table 1.
Element (wt.%)
Claim 1 (wt.%)
Larsson et al. (wt.%)
C
0.2 – 0.26
0.14 – 0.35
Si
0.05 – 0.5
0 – 0.5
Mn
0.2 – 0.8
0.05 – 0.4
Cr
0.2 – 0.6
0.2 – 0.9
Ni
0.2 – 0.5
0.2 – 0.9
Al
0.015 – 0.065
0 – 0.1
Ti
0.005 – 0.02
0 – 0.035
B
0.001 – 0.005
0.0005 – 0.005
Mo (optional)
0 – 0.1
0 – 0.2
Nb (optional)
0 – 0.01
0 – 0.005
V (optional)
0 – 0.04
0 – 0.05
Fe and impurities
Balance
Balance
P
0 – 0.02
0 – 0.025
S
0 – 0.005
0 – 0.008
N
0 – 0.0055
0 – 0.01
Regarding claims 2 and 12, Larsson et al. discloses the steel of claim 1 (see previous). Larsson et al. further teaches at least 95 percent martensite which can be tempered [p.13].
Regarding claim 3, Larsson et al. discloses the steel of claim 1 (see previous). Larsson et al. further teaches a steel thickness of 10 mm or less, which overlaps with the claimed range [p.13]. See MPEP 2144.05(I).
Regarding claims 4-10, Larsson et al. discloses the steel of claim 1 (see previous). The examiner notes that the aforementioned composition of Larsson et al. further overlaps with the claimed ranges. See MPEP 2144.05(I).
Regarding claim 11, Larsson et al. discloses the steel of claim 1 (see previous). Larsson et al. further teaches limiting Cu to an amount of 0.1 to 0.4 weight percent, which overlaps with the claimed range [p.3]. See MPEP 2144.05(I).
Regarding claim 13, Larsson et al. discloses the steel of claim 1 (see previous). Larsson et al. already teaches an overlapping tensile strength range as explained above. Larsson et al. further teaches a yield strength range of 1310 to 1413 MPa and an elongation range of up to 7.7 percent, which also overlaps with the claimed ranges [p.15-16]. See MPEP 2144.05(I).
Regarding claim 14, Larsson et al. discloses the steel of claim 1 (see previous). Larsson et al. does not expressly teach a time to fracture based on a constant load test as claimed. However, the examiner submits that overlapping values of the claimed features would have naturally flowed from the steel of Larsson et al. Specifically, one of ordinary skill would readily understand that steel properties such as fracture toughness as claimed are directly influenced by steel composition and microstructure. Larsson et al. already discloses an overlapping steel composition and an identical steel microstructure as explained above. Therefore, substantially similar, overlapping values of time to fracture properties would have naturally flowed from the disclosure of Larsson et al. See MPEP 2144.05(I) & MPEP 2112. The examiner’s position is further bolstered by the fact that Larsson et al. already discloses overlapping, substantially mechanical properties of yield strength, tensile strength, and elongation as explained above, which are also directly affected by steel composition and microstructure and therefore suggest that overlapping fracture toughness values would be present. In other words, the steel of the prior art having a substantially similar steel composition, microstructure, and mechanical properties would be expected to also have substantially similar toughness properties relative to those as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS A WANG whose telephone number is (408)918-7576. The examiner can normally be reached usually M-Th: 7-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 5712721177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734
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