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 of species A (Mn: 0.01-1.30%) in the reply filed on December 22, 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1-7 are pending, claim 1 is independent.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided. Specifically, “is disclosed” is language that can be implied.
Claim Objections
Claims 4, 6 and 7 are objected to because of the following informalities: each claim is objected to for an inappropriate period after "a balance" before the colon in the penultimate line of each claim. Appropriate correction is required.
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 1-7 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.
Regarding claim 1, claim 1 recites the limitations:
“the following formulas” in line 2 page 2
“the extraction residue” lines 4-5 page 2
“the relationship” and “the following formula” line 5 page 2
“the following formulas” line 14 page 2.
There is insufficient antecedent basis for these limitations in this claim.
Regarding claims 2-7, these claims are rejected for their incorporation of the above due to their respective dependencies on claim 1.
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) 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Fujita et al. (US 2004/0202889 A1), hereinafter Fujita.
Regarding claims 1-3 and 5, Fujita teaches a hot-dip galvannealed steel sheet ([0024]; i.e. an alloyed galvanized steel sheet) having a plating layer on a surface of a base layer consisting of a steel sheet ([0076]), the steel sheet contains in microstructure in volume of 50-97% ferrite as a main phase and a second phase of either or both of martensite and retained austenite 3-50% (one of ordinary skill in the art reasonable understands steel microstructures of area and volume to be equivalent absent a teaching to the contrary and these values include 3% martensite and 0% retained austenite; [00087]), the average grain size of the main phase is ≤20 micron and the second phase is ≤ 10 micron ([0101]; these encompass the grain size of the entire microstructure and overlap the claimed range), a composition of the steel sheet in mass% as shown below in Table 1 ([0079]-[0086]; [0136]-[0144]; [038]).
Table 1
Instant claim 1
Instant claim 2
Fujita [0079]-[0086]; [0136]-[0144];[0238]
C
0.0005-0.0100
0.0001-0.3
Si
0.01-0.50
0.001 to <0.1
Mn
0.01-1.30
0.001-3
P
≤ 0.100
0.001-0.3
S
≤ 0.010
0.0001-0.1
N
≤ 0.0200
Ti
0.040-0.180
One or more of included with Nb, V, Hf, Zr and Ta at 0.001-1% total
B
0.0005-0.0100
further contained 0.0001-0.1
Fe & impurities
balance
balance
One or more of
Al
≤ 1.000
0.001 to 1.000
0.001-4
Sn
≤ 1.00
0.001 to 1.000
≤0.01
Mo
≤ 3.00
0.001 to 3.000
0.001-1
One or more of
Sb
≤ 0.500
0.001 to 0.500
As
≤ 0.050
0.001 to 0.050
O
≤ 0.020
0.001 to 0.020
Cu
≤ 1.000
0.001 to 1.000
0.001-5
Cr
≤ 2.000
0.001 to 2.000
0.001-25
Ni
≤ 0.500
0.001 to 0.500
0.001-10
W
≤ 0.100
0.001 to 0.100
0.001-5
Co
≤ 3.000
0.001 to 3.000
0.001-5
Nb
≤ 0.100
0.001 to 0.100
One or more of included with Ti and Hf too, at 0.001-1% total
Zr
≤ 0.050
0.001 to 0.050
Ta
≤ 0.100
0.001 to 0.100
V
≤1.00
0.001 to 1.000
Mg
≤ 0.050
0.001 to 0.050
optionally one or more of included with Y & Ce too, at 0.001-1% total
Ca
≤ 0.0500
0.001 to 0.0500
REM
≤ 0.0500
0.001 to 0.0500
Regarding N, O, As and Sb, Fujita is silent to the presence of these elements, such that they are not considered to be present in an appreciable amount, also note examples. If these elements are not listed it is understood to one of ordinary skill in the art that it is reasonable that they are not present. Therefore the elements are considered to be present in an amount within, or at least overlapping, applicant’s claimed proportions (which include 0%).
Regarding the contents of elements in equation 4, “mass in extraction residue” in ratio to the “mass of electrolyzed base steel sheet” are considered to be product by process language to the measurement process of the contents by amount the individual elements. Product-by-process language, provides no structural limitations beyond that of a ratio of an amount of each element, which is addressed above in the composition of the steel. The structure implied by the process steps should be considered when assessing the patentability of product-by process claims over the prior art (MPEP 2113 I). In this instance, no additional structure is implied beyond the amounts of each element, addressed above. The burden therefore shifts to applicant to come forward with a non obvious difference between the claimed product and the prior art product (MPEP 2113 II).
Regarding equations 1, 3 and 4, the composition above in Table 1 in includes values that meet equations 1, 3 and 4. For example, in mass% Si: 0.099, Mn: 1.3, P: 0.09, C: 0.01, Ti: 0.05, N: 0, Nb: 0.5, B: 0.01, Si: 0.0001 result in equation 1 of 142.9, equation 3 of 0.0415 and equation 4 of 0.0008 ≤ 0.0064 ≤ 0.0274.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions including equations and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements including equations (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Regarding claims 4, 6 and 7, Fujita teaches each limitation of claims 1-3 and 5, as discussed above. Fujita further teaches the plating layer containing in mass% as shown below in Table 2 ([0076]-[0079]; [0105]-[0119]).
Table 2
Instant claims 4, 6, 7
Fujita [0076]-[0079]; [0105]-[0119]
Fe
0.5-25.0
5-25
Al
≤ 1.0
0.001-4
Si
≤ 1.0
(optional) 0.001-0.1
Mg
≤ 1.0
(optional) 0.001-3
Mn
≤ 1.0
Ni
≤ 1.0
(optional) 0.001-0.5
Sb
≤ 1.0
Zn and impurities
balance
balance
Regarding Mn, Fujita does not teach an Mn in this embodiment, but does teach Mn in multiple other embodiments; therefore, one of ordinary skill in the art reasonably understands it is not present in this embodiment. Regarding Sb, Fujita is silent to the presence of this, such that it is not considered to be present in an appreciable amount, also note examples. If these elements are not listed it is understood to one of ordinary skill in the art that it is reasonable that they are not present. Therefore, it is considered to be present in an amount within, or at least overlapping, applicant’s claimed proportions (which include 0%).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE CHRISTY whose telephone number is (303)297-4363. The examiner can normally be reached Monday-Thursday, 7am-4pm MT.
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, 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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/KATHERINE A CHRISTY/Primary Examiner, Art Unit 1784