Detailed Office Action
Notice of Pre-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
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Restriction/Election
Applicant’s election without traverse of Group I in the reply filed on 08/13/2026 is acknowledged. Claims 7 – 13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/13/26.
Specification Objections
The disclosure is objected to because of the following informalities: “ultrahigh” in the Title should have a space between the words.
Appropriate correction is required.
Claim Objections
Claims 1 – 6 are objected to because of the following informalities: “ultrahigh” in the preamble should have a space between the words.
Appropriate correction is required.
Claim Rejections – U.S.C. § 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 – 4 and 6 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.
The term “ultrahigh-strength” in claims 1 – 4 and 6 is a relative term which renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For purposes of examination, any tensile/yield strength will be interpreted as meeting the limitation. The examiner notes that the inclusion of a tensile strength range in claim 5 cures the indefiniteness as it provides a clear standard.
Claim Rejections – U.S.C. §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 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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1 – 2 and 4 – 6 are rejected under 35 U.S.C. 103 as being unpatentable over Yamazaki (US2021/0140007)
Regarding claims 1 – 2, Yamazaki teaches a hot-rolled steel sheet [Title]. The steel sheet has a composition of:
Element
Claimed invention (wt%)
Yamazaki (mass%)
Reference
Relationship
Carbon (C)
0.06 – 0.18%
0.09 – 0.15%
[0050]
Falls within
Silicon (Si)
0.01 – 1.8%
0.5 – 1.5%
[0052]
Falls within
Manganese (Mn)
1.6 – 3.5%
1.4 – 2.4%
[0054]
Overlaps
Aluminum (Al)
0.001 – 0.1%
0.02 – 1.5%
[0060]
Overlaps
Chromium (Cr)
2.5% or less
0% or 0.01 – 2.0%
[0070]
Falls within
Molybdenum (Mo)
2.0% or less
0% or 0.01 – 0.5%
[0071]
Falls within
Titanium (Ti)
0.01 – 0.15%
0.02 – 0.16%
[0064]
Overlaps
Boron (B)
0.0005 – 0.003%
0.0003 – 0.01%
[0066]
Overlaps
Phosphorous (P)
0.0001 – 0.05%
0.1% or less
[0056]
Overlaps
Sulfur (S)
0.0001 – 0.05%
0.01% or less
[0058]
Overlaps
Nitrogen (N)
0.0001 – 0.02%
0.01% or less
[0062]
Overlaps
Niobium (Nb)
0.01 – 0.2% (claim 2)
0% or 0.001 – 0.06%
[0078]
Overlaps
Iron (Fe)
Balance
Balance
[0047]
Meets
Yamazaki teaches that the microstructure of the steel sheet can be lower bainite or tempered martensite in a range of 90% or more, which overlaps with the claimed range (shared endpoints) [0092]. Yamazaki teaches that the remainder of 10% or less can be acicular ferrite [0096], which overlaps with the claimed range.
With regards to the overlapping ranges taught, “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)”, absent evidence of criticality or unexpected results (MPEP 2144.05 I).
Regarding claim 4, Yamazaki teaches the invention as applied in claim 1. Yamazaki does not expressly disclose an average interval of the acicular ferrite and/or bainitic ferrite is 3 µm or more.
However, Yamazaki teaches an overlapping composition and microstructure to claim 1 as well as properties that meet/overlap with the limitations of claims 5 – 6. As such, there is a reasonable expectation to an ordinarily skilled artisan that the steel would meet the limitation as claimed.
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, in this case composition and properties, a prima facie case of obviousness is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (MPEP 2112.01 I)
Regarding claims 5 – 6, Yamazaki teaches the invention as applied in claim 1. Yamazaki teaches that the steel sheet has:
A yield strength of at least 1000 MPa based on the values disclosed in Tables 3-1 and 3-2, which falls within the claimed range.
A tensile strength of 1180 MPa or more [0113], which falls within the claimed range.
An elongation from 6.0% to greater than 10% based on the values disclosed in Table 3-1 and 3-2, which overlaps with the claimed range.
Hole expansion ratio of 50% or more [0114], which falls within the claimed range of claim 6.
Yamazaki does not expressly measure the standard deviation of the elongation of the steel sheet however, Yamazaki teaches an overlapping composition and microstructure to claim 1 as well as properties that meet/overlap with the limitations of claims 5 – 6. As such, there is a reasonable expectation to an ordinarily skilled artisan that the steel would meet the limitation of an elongation standard deviation of 2% or less.
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, in this case composition and properties, a prima facie case of obviousness is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (MPEP 2112.01 I)
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Yamazaki (US2021/0140007), as applied to claim 1, in further view of Yoshida (US2021/0140005)
Regarding claim 3, Yamazaki teaches the invention as applied in claim 1. Yamazaki describes that the grain size of the dominant phase of lower bainite/martensite is 10 µm or less [0032] but does not explicitly disclose the size of the minor phase (i.e., acicular ferrite).
Yoshida teaches a hot-rolled steel sheet with an overlapping composition with Yamazaki (i.e., same field of endeavor). Yoshida teaches that the steel sheet is composed of bainite and martensite in the majority and a ferrite minority [0116]. Yoshida discloses that the grain size of ferrite and the crystal grain size of martensite and bainite should be controlled to 7.0 µm or less in order to ensure low-temperature toughness [0120], which overlaps with the claimed range.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the steel sheet of Yamazaki and controlled the minor phase of ferrite to have a grain size of 7 µm or less, as described by Yoshida. Yamazaki and Yoshida are in the same field of endeavor of hot-rolled steel for mechanical structures [0045, Yamazaki; 0001, Yoshida]. Moreover, the steels have overlapping compositions and are produced via a hot-rolling process and therefore, an ordinarily skilled artisan would have had a reasonable expectation of success. Lastly, an ordinarily skilled artisan would have been motivated to apply the teachings of Yoshida to Yamazaki because Yoshida teaches that controlling the grain size to the described range ensures that low-temperature toughness is obtained, a benefit that would be expressly appreciated in Yamazaki [0002, Yamazaki] by an ordinarily skilled artisan.
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US2022/0002836 – Hot-rolled strip with overlapping composition and some properties
US2021/0340653 – Steel plate with overlapping composition, 20% or more acicular ferrite as well as tempered martensite and bainite. Attains tensile, elongation, and hole expansion that meets the claimed ranges.
WO2022/042730 – Martensitic steel strip that meets the claimed composition and properties
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUSTIN POLLOCK whose telephone number is (571)272-5602. The examiner can normally be reached M - F (8 - 5).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached on (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738
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