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 .
DETAILED ACTION
Claims 6-7 are deleted, claims 1-2 have been amended.
Information Disclosure Statement
IDS(s) filed on 7/17/2026 and 9/23/2026 have been recorded.
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
Claim(s) 1 and 3-4, drawn to a hot-rolled steel sheet with 5-15 area% RA, 80 aera% or more TM, and balance with B and F having YS: 917 MPa or less;
Claim(s) 2, 5, and 8-9, drawn to a hot-rolled steel sheet with 80 aera% or more TM, and balance with FM, B and F having wave height in a longitudinal direction 10 mm or less, and YS: 900 MPa or more (cl.9);
Invention I-II are steel sheet with different alloy microstructures and property requirements.
Since Invention I has been examined in the previous office action dated 6/5/2026, Invention II, claims 2, 5, and 8-9 have been withdrawn. Claims 1 and 3-4 remain for examination, wherein claim 1 is an independent claim.
Previous Rejections/Objections
Previous objection of Claims 1-2 because of the informalities is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 9/8/2026.
Previous rejection of Claims 2, 5, and 8-9 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the applicant regards as the invention is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 9/8/2026.
Previous rejection of Claims 1 and 3-4 under 35 U.S.C. 103 as being unpatentable over KAMI TSUTOMU et al (JP 2011052320 A, listed in IDS filed on 8/25/2025, with on-line translation, thereafter JP’320) in view of Yabu et ai (US-PG-pub 2022/0389545 A1, thereafter PG’545) is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 9/8/2026.
However, in view of the Applicant’s “Arguments/Remarks with amendment” filed on 9/8/2026, and newly recorded prior art(s), a new ground rejection has been listed as following:
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.
Claim(s) 1 and 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hebesberger et ai (US-PG-pub 2018/0371597 A1, thereafter PG’597).
Regarding claims 1 and 3, PG’597 teaches a hot-rolled high strength galvannealed steel sheet (Abstract, examples, par.[0041], and claims of PG’597), which reads on the claimed hot-rolled steel sheet as claimed in the instant claims. The comparison between the claimed alloy composition ranges and those disclosed by PG’597 is listed in following table. All of the essential alloy composition ranges, microstructures, and YS disclosed by PG’597 overlap the claimed ranges, which creates a prima facie case of obviousness. MPEP 2144 05 I. It would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize alloy composition range, microstructures, and YS from the disclosing of PG’597 since PG’597 teaches the same hot rolled steel sheet as claimed throughout whole disclosing range.
Element
From instant Claim 1 (mass%)
Claims of PG’597 (mass %)
overlapping range
(mass %)
C
0.06-0.12
0.10-0.2
0.10-0.12
Si
0.004-0.4
0.2-0.5
0.2-0.4
Mn
0.8-2.0
2.0-3.0
2.0
Al
0.01-0.05
0.2 or less
0.01-0.05
Cr
0.05-1.0
0.1-0.7
0.1-0.7
Mo
0.001-0.3
<0.1
0.001-<0.1
P
0.001-0.05
0.02 or less
0.001-0.02
S
0.001-0.005
0.01 or less
0.001-0.01
N
0.001-0.01
<0.02
0.001-0.01
Nb
0.001-0.05
<0.05
0.001-<0.05
Ti
0.001-0.05
0.01-0.07
0.01-0.05
B
0.001-0.05
0.001-0.005
0.001-0.05
Fe
Balance + impurities
Balance + impurities
Balance + impurities
Relational Expression 1
20 or less
General formula
Microstructure (Area%)
RA: 5-15;
TM: 80 or more;
Balance: B and/or F
RA: 5-20;
TM: 50-90;
B and/or F included
RA: 5-15;
TM: 80-90;
B and/or F included
YS (MPa)
917 or less
800-970
800-917
From instant Claim 3 (mass%)
Ni
0.01 or less
Not intended added
0-trace amount
From claim 4
Average grain size prior austenite
10-30 mm
20 mm or less (par.[0011] of PG’545)
Overlapping range:
10-20 mm
Still regarding claim 1, the [Relational Expression 1] is considered as a general formula fully depended on the alloy element ranges of C, Si, Mn, Cr, Mo, and Nb. It is well settled that there is no invention in the discovery of a general formula if it covers a composition and dimension described in the prior art. In re Cooper and Foley 1943 C.D.357, 553 O.G.177; 57 USPQ 117, Taklatwalla v. Marburg. 620 O.G.685, 1949 C.D.77, and In re Pilling, 403 O.G.513, 44 F(2) 878, 1931 C.D.75. In the instant case, in the absence of evidence to the contrary, the selection of the proportions of C, Si, Mn, Cr, Mo, and Nb from PG’597 in order to meet the claimed equation would appear to require no more than routine investigation by those ordinary skilled in the art. In re Austin, et al., 149 USPQ 685, 688.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over PG’597 and further in view of Yabu et ai (US-PG-pub 2022/0389545 A1, thereafter PG’545).
Regarding claim 4, PG’597 teaches small austenite grain in the alloy (par.[0004] of PG’597. But PG’597 does not specify the claimed average grain size range of prior austenite as claimed in the instant claim. PG’545 teaches a hot-rolled steel sheet. (abstract and claims of PG’545). All of the alloy composition ranges disclosed by PG’545 (claims and par.[0046]-[0084] of PG’545) overlap the claimed alloy composition ranges. MPEP 2144 05I. PG’545 specify including total 0-100area% of TM and bainite, and 25 aera% or less austenite, which overlap the claimed microstructure as claimed in the instant claim. PG’545 specify an average grain size of prior austenite grains is 20 μm or less in a cross section parallel to a rolling direction, and the average grain size of prior austenite grains is 15 μm or less in a cross section orthogonal to the rolling direction (par.[0011] of PG’545), which overlaps the claimed average grain size range of prior austenite as claimed in the instant claim. It would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the average grain size from the disclosing of PG’545 since PG’597 and PG’545 teach the same hot-rolled steel sheet as claimed throughout whole disclosing range and PG’545 specify applying proper alloy elements with proper microstructure for a high strength hot-rolled steel sheet having excellent bending workability and small anisotropy in bending workability (par.[0001] of PG’545).
Response to Arguments
Applicant’s arguments to the art rejection to Claims 1 and 3-4 have been considered but they are not persuasive in view of the new ground rejection as stated above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIE YANG whose telephone number is (571)270-1884. The examiner can normally be reached on IFP.
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/JIE YANG/Primary Examiner, Art Unit 1734
