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 with traverse of Group I, claims 1-10 and 16-19, in the reply filed on 09 April 2026, is acknowledged. The traversal is on the ground(s) that the prior art applied in the Office Action mailed 11 February 2026. This is not found persuasive because, in view of the amendments, the prior art of Matsuoka teaches the instantly claimed limitations as outlined below.
The requirement is still deemed proper and is therefore made FINAL.
Claims 11-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 09 April 2026.
Claim Interpretation
Claims 1-3, 5-8, and 16 each recite “it”. The term “it” should be avoided to ensure clarity of the claimed limitations. In the sense used in the instant claims, the term “it” is considered to refer to the hot-rolled steel.
Claim Objections
Claim 16 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 3 (because claim 2 fails to further limit claim 1). When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
Claims 2 and 16-17 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 2 recites “other unavoidable impurities” in lines 4-5. However, the claim does not indicate which of the listed elements is/are considered to be impurities and therefore, it is not clear what unavoidable impurities would be alternative to.
Claims 16 and 17 are rejected as they depend on a rejected claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2 and 17 are rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 2 recites a substantially identical composition as recited in instant claim 1 and fails to recite further limitations.
Claim 17 recites only limitations that are presented in claim 1 and therefore fails to further limit the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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.
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.
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 1-3, 5-10, and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuoka et al. (US 2003/0129444).
Claim 1: Matsuoka teaches a high-strength dural-phase steel sheet (paragraph 0001) that can be surface treated such as with a porcelain enamel (paragraph 0120) and having an excellent baking hardenability (paragraph 0008) (i.e. a steel for enameling having enamel firing strengthening properties). The steel sheet is subjected to hot rolling and coiling to obtain a hot rolled steel strip (paragraph 0125). The steel sheet has a composition of 0.01-0.08 mass% C, not more than 2.0% Si, not more than 3.0% Mn (and particularly preferable to be not less than 1.0% as disclosed by Matsuoka in paragraph 0066), 0.005-0.20% Al, and 0.01-0.5% V, etc. (paragraph 0035), as well as having more than 0% and not more than 0.3% Ti (paragraph 0037), not more than 2.0% in total of one or two of Cr and Mo (paragraph 0083) (i.e. having both Cr and Mo would have been obvious), and not more than 2.0% in total of one or two of Cu and Ni (paragraph 0084). Each of these ranges overlap the instantly claimed ranges, and when the mass percentages are evaluated in the equation also result in values that overlap the instantly claimed relationship (e.g. when having carbon at the higher end of the range and Ti and V at the lower end of the ranges). The courts have held that a prima facie case of obviousness exists where claimed ranges overlap, lie inside of, or are close to ranges in the prior art. See MPEP § 2144.05. It is noted that as of the writing of this Office Action, no demonstration of a criticality to the claimed ranges has been presented.
While not teaching a singular example of the instantly claimed hot-rolled steel, it would have been obvious to one of ordinary skill in the art before the effective filing date as each of the ranges of the composition disclosed by Matsuoka overlaps the instantly claimed ranges, which the courts have held to be prima facie obvious, and one would have had a reasonable expectation of success.
Claim 2: As outlined above regarding claim 1, each of the ranges of the composition disclosed by Matsuoka overlaps the instantly claimed ranges.
Claim 3: Matsuoka teaches that the B content is preferable to be not more than 0.003% (paragraph 0090) which overlaps the instantly claimed range. See MPEP § 2144.05.
Claim 5: Matsuoka teaches that the steel sheet has a ferrite phase as a primary phase and a secondary phase may include a pearlite phase etc. at an area ratio of not more than 50% in total with other secondary phases (paragraphs 0094-0095) (i.e. a microstructure of ferrite + pearlite).
Claim 6: Matsuoka teaches that at temperatures higher than the Ac3 transformation point, the crystal grains are coarsened and deep drawability is deteriorated (paragraph 0114). It would be within the level of ordinary skill in the art to determine a grain size that provides satisfactory drawability based on this teaching, and one would have had a reasonable expectation of success.
Claim 7: Matsuoka teaches the steel is hot rolled to obtain a hot rolled steel sheet having a thickness of 4.0 mm (paragraph 0020) followed by cold rolling to obtain a thickness of 1.2 mm (paragraph 0022), but other rolling conditions can be used to obtain a desired thickness (paragraph 0102). The thickness does not appear to be significant in the disclosure of Matsuoka and it would be within the level of ordinary skill in the art to obtain a desired thickness other than 4.0 mm or 1.2 mm as a matter of design choice because this is simply an obvious matter of size or proportion. See MPEP § 2144.04(IV)(A).
Claim 8: Matsuoka teaches that the steel may be used to provide steel sheets of different tensile strength grades of 590 MPa grade and 780 MPa grade (paragraph 0031), and at least some of the TW 590 MPa grade steel have a yield strength (YS) of about 340 MPa (Steel Sheet No. 5 in Table 5a and Steel Sheet Nos. 15 and 17 in Table 5b), 350 MPa (Steel Sheet No. 10 in Table 5a and Steel Sheet No. 24 in Table 5b), 355 MPa (Steel Sheet No. 22 in Table 5b). These values of YS overlap or are very close to the instantly claimed range. See MPEP § 2144.05. Matsuoka is silent regarding the yield strength after high temperature enamel firing, but each of these samples were annealed at a temperature of either 830°C or 850°C and these annealing temperatures are close to the recited range for enamel firing. See MPEP § 2144.05. Additionally, since Matsuoka teaches a substantially identical steel composition and discloses preferred ranges for obtaining the different TS grade steel (i.e. which in turn affects the YS) (paragraphs 0062-0081), it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the amounts of the elements as a matter of design choice to obtain a desired TS (i.e. and YS) within the disclosed ranges for a TS between the two grades of steel, and one would have had a reasonable expectation of success.
Claim 9: Matsuoka teaches the surface treated steel sheet can be with porcelain enamels (i.e. on one or both surface would be immediately obvious to one of ordinary skill in the art as a common application of a surface treatment) (paragraph 0120).
Claim 10: Matsuoka teaches that the steel sheet has a ferrite phase as a primary phase and a secondary phase may include a bainite phase etc. at an area ratio of not more than 50% in total with other secondary phases (paragraphs 0094-0095) (i.e. a microstructure of ferrite + bainite). It is noted that the other limitations recited in claim 10 may be as an alternative to the claimed microstructure.
Claim 16: Matsuoka teaches that the B content is preferable to be not more than 0.003% (paragraph 0090) which overlaps the instantly claimed range. See MPEP § 2144.05.
Claim 17: The limitations of claim 17 are recited in claim 1, which is outlined above.
Claim 18: Matsuoka teaches that the steel sheet has a ferrite phase as a primary phase and a secondary phase may include a pearlite phase etc. at an area ratio of not more than 50% in total with other secondary phases (paragraphs 0094-0095), and this range overlaps the instantly claimed range. See MPEP § 2144.05.
Claim 19: Matsuoka teaches that the steel sheet has a ferrite phase as a primary phase and a secondary phase may include a bainite phase etc. at an area ratio of not more than 50% in total with other secondary phases (paragraphs 0094-0095), and this range overlaps the instantly claimed range. See MPEP § 2144.05.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIM S HORGER whose telephone number is (571)270-5904. The examiner can normally be reached M-F 9:30 AM - 4:00 PM EST.
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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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/KIM S. HORGER/Examiner, Art Unit 1784
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