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 .
Priority
Receipt is acknowledged of a certified copy of JP 2021-203094 filed December 15, 2021 as required by 37 CFR 1.55. Receipt is also acknowledged of a copy of WO 2023/112763, the WIPO publication of PCT/JP2022/044816 filed December 6, 2022.
Claim Status
This Office Action is in response to Applicant’s Amended Claims filed May 29, 2024.
Claims Filing Date
May 29, 2024
Amended
1, 2
Pending
1, 2
Abstract Objection
The abstract of the disclosure is objected to because
Line 1 uses legal phraseology “comprising”.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Applicant is reminded of the proper language and format for an abstract of the disclosure.
Legal phraseology often used in patent claims should be avoided.
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.
Claims 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Ito (WO 2021/117711 with citations from US 2022/0372588) in view of Yamazaki (WO 2020/250735 machine translation).
Regarding claim 1, Ito discloses a hot-rolled steel sheet ([0001], [0066]) having an overlapping chemical composition ([0028]-[0048], [0056]-[0065], [0069]-[0128]) and an overlapping microstructure ([0049]-[0050], [0130]-[0142]). 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).
Element
Claim 1 (mass %)
Ito (mass%)
Ito Citation
C
0.100 to 0.350
0.040 to 0.150
[0070]-[0072]
Si
0.30 to 3.00
0.50 to 1.50
[0073]-[0075]
Mn
1.00 to 4.00
1.00 to 2.50
[0076]-[0078]
Sol. Al
0.001 to 2.000
0.01 to 0.10
[0085]-[0087]
Si + sol. Al
1.00 to 5.00
0.51 to 1.60
[0073]-[0075],
[0085]-[0087]
P
0.100 or less
0.100 or less
[0079]-[0081]
S
0.0300 or less
0.010 or less
[0082]-[0084]
N
0.1000 or less
0.0100 or less
[0088]-[0090]
O
0.0100 or less
-
-
Ti
0 to 0.380
0.005 to 0.150
[0091]-[0093]
Nb
0 to 0.100
0 to 0.06
[0102]-[0104]
V
0 to 0.500
0 to 0.50
[0105]-[0107]
Cu
0 to 2.00
0 to 0.50
[0111]-[0113]
Cr
0 to 2.00
0.10 to 1.00
[0097]-[0099]
Mo
0 to 1.00
0 to 0.50
[0108]-[0110]
Ni
0 to 2.00
0 to 0.50
[0114]-[0116]
B
0 to 0.0100
0.0005 to 0.0050
[0094]-[0096]
Ca
0 to 0.0200
0 to 0.010
[0119]-[0121]
Mg
0 to 0.0200
0 to 0.010
[0126]-0128]
REM
0 to 0.1000
0 to 0.010
[0122]-[0125]
Bi
0 to 0.020
-
-
One, two or more of Zr, Co, Zn, and W
0 to 1.00 total
-
-
Sn
0 to 0.050
-
-
Fe
Remainder
Remainder
[0048]
Microstructure
Claim 1 (area %)
Ito (area%)
Ito Citation
Bainite
55 to 95
90.0 to 98.0
[0134]-[0138]
Retained Austenite
5 to 30
Martensite + Residual Austenite: 2.0 to 10.0
[0139]-[0141]
Fresh Martensite
5 or less
-
-
Ferrite
5 or less
5 or less
[0142]
Pearlite
5 or less
-
-
Ito discloses in a texture at a region from a surface to a 1/8 thickness depth from the surface, a pole density of {110}<111> orientation is 3.0 or less (from surface to 1/16 of sheet thickness a pole density (110)<1111> is 3.0 or less) ([0054], [0164]-[0168]). With respect to the thickness depth, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” MPEP 2144.05(II)(A).
Ito is silent to an arithmetic average roughness Ra of the surface after pickling is less than 1.2 um.
Yamazaki discloses a hot-rolled steel sheet ([0001]) having an arithmetic average roughness Ra of the surface after pickling is less than 1.2 um (2.00 um or less) ([0007], [0010], [0062]).
It would have been obvious to one of ordinary skill in the art in the hot-rolled steel sheet of Ito to control the average arithmetic surface roughness Ra of the surface after pickling to 2.00 um or less to prevent deterioration of fatigue properties (Yamazaki [0059]). 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).
Regarding claim 2, Ito discloses the hot-rolled steel sheet according to claim 1 as cited above, having an overlapping chemical composition ([0028]-[0048], [0056]-[0065], [0069]-[0128]). 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).
Element
Claim 2 (mass %)
Ito (mass%)
Ito Citation
One, Two, or more of:
Ti
0.005 to 0.380
0.005 to 0.150
[0091]-[0093]
Nb
0.005 to 0.100
0 to 0.06
[0102]-[0104]
V
0.005 to 0.500
0 to 0.50
[0105]-[0107]
Cu
0.01 to 2.00
0 to 0.50
[0111]-[0113]
Cr
0.01 to 2.00
0.10 to 1.00
[0097]-[0099]
Mo
0.01 to 1.00
0 to 0.50
[0108]-[0110]
Ni
0.02 to 2.00
0 to 0.50
[0114]-[0116]
B
0.0001 to 0.0100
0.0005 to 0.0050
[0094]-[0096]
Ca
0.0005 to 0.0200
0 to 0.010
[0119]-[0121]
Mg
0.0005 to 0.0200
0 to 0.010
[0126]-0128]
REM
0.0005 to 0.1000
0 to 0.010
[0122]-[0125]
Bi
0.0005 to 0.020
-
-
Claims 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Yabu (WO 2020/110855 with citations from US 2022/0389545) in view of Yamazaki (WO 2020/250735 machine translation).
Regarding claim 1, Yabu discloses a hot-rolled steel sheet ([0001], [0022]-[0024]) having an overlapping chemical composition ([0043]-[0084]) and an overlapping microstructure, including a bainite single structure with 25% or less residual austenite ([0109]-[0112]). 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).
Element
Claim 1 (mass %)
Yabu (mass%)
Yabu Citation
C
0.100 to 0.350
0.030 to 0.400
[0046]-[0047]
Si
0.30 to 3.00
0.050 to 2.5
[0048]-[0049]
Mn
1.00 to 4.00
1.00 to 4.00
[0050]-[0051]
Sol. Al
0.001 to 2.000
0.001 to 2.0
[0052]-[0053]
Si + sol. Al
1.00 to 5.00
0.051 to 4.5
[0048]-[0049],
[0052]-[0053]
P
0.100 or less
0.020 or less
[0055]-[0056]
S
0.0300 or less
0.020 or less
[0057]-[0058]
N
0.1000 or less
0.010 or less
[0059]-[0060]
O
0.0100 or less
-
-
Ti
0 to 0.380
0 to 0.20
[0062]-[0063]
Nb
0 to 0.100
0 to 0.20
[0064]-[0065]
V
0 to 0.500
0 to 1.0
[0069], [0076]
Cu
0 to 2.00
0 to 1.0
[0072], [0076]
Cr
0 to 2.00
0 to 1.0
[0070], [0076]
Mo
0 to 1.00
0 to 1.0
[0071], [0076]
Ni
0 to 2.00
0 to 1.0
[0075]-[0076]
B
0 to 0.0100
0 to 0.010
[0067]-[0068]
Ca
0 to 0.0200
0 to 0.01
[0078], [0082]
Mg
0 to 0.0200
0 to 0.01
[0079] , [0082]
REM
0 to 0.1000
0 to 0.01
[0080] , [0082]
Bi
0 to 0.020
-
-
One, two or more of Zr, Co, Zn, and W
0 to 1.00 total
W: 0 to 1.0
Zr: 0 to 0.01
[0074], [0076]
[0081] , [0082]
Sn
0 to 0.050
-
-
Fe
Remainder
Balance
[0022]
Microstructure
Claim 1 (area %)
Yabu [0112]
Bainite
55 to 95
0 to 100%
Retained Austenite
5 to 30
25% or less
Fresh Martensite
5 or less
0 to 100%
Ferrite
5 or less
0 to 70%
Pearlite
5 or less
5% or less
Yabu discloses in a texture at a region from a surface to a 1/8 thickness depth from the surface, a pole density of {110}<111> Orientation is 3.0 or less (surface region from sheet surface to 1/10 of sheet thickness crystal orientations {110}<110> to {110}<001> is 3.0 or less, where this group includes {110}<111> crystal orientation) ([0089]-[0095], [0104]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. With respect to a thickness depth, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are close. MPEP 2144.05(I).
Yabu is silent to an arithmetic average roughness Ra of the surface after pickling is less than 1.2 um.
Yamazaki discloses a hot-rolled steel sheet ([0001]) having an arithmetic average roughness Ra of the surface after pickling is less than 1.2 um (2.00 um or less) ([0007], [0010], [0062]).
It would have been obvious to one of ordinary skill in the art in the hot-rolled steel sheet of Yabu to control the average arithmetic surface roughness Ra of the surface after pickling to 2.00 um or less to prevent deterioration of fatigue properties (Yamazaki [0059]). 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).
Regarding claim 2, Yabu in view of Yamazaki discloses the hot-rolled steel sheet according to claim 1 as cited above, having an overlapping chemical composition (Yabu [0043]-[0084]). 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).
Element
Claim 2 (mass %)
Yabu (mass%)
Yabu Citation
One, Two, or more of:
Ti
0.005 to 0.380
0 to 0.20
[0062]-[0063]
Nb
0.005 to 0.100
0 to 0.20
[0064]-[0065]
V
0.005 to 0.500
0 to 1.0
[0069], [0076]
Cu
0.01 to 2.00
0 to 1.0
[0072], [0076]
Cr
0.01 to 2.00
0 to 1.0
[0070], [0076]
Mo
0.01 to 1.00
0 to 1.0
[0071], [0076]
Ni
0.02 to 2.00
0 to 1.0
[0075]-[0076]
B
0.0001 to 0.0100
0 to 0.010
[0067]-[0068]
Ca
0.0005 to 0.0200
0 to 0.01
[0078], [0082]
Mg
0.0005 to 0.0200
0 to 0.01
[0079] , [0082]
REM
0.0005 to 0.1000
0 to 0.01
[0080] , [0082]
Bi
0.0005 to 0.020
-
-
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 2 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 12,203,148 (US ‘148) in view of Yamazaki (WO 2020/250735 machine translation).
US ‘148 discloses a hot-rolled steel sheet with an overlapping composition (claims 1, 3, 4), microstructure (claim 1), and pole density (claim 1).
US ‘148 is silent to an arithmetic average roughness Ra of the surface after pickling is less than 1.2 um.
Yamazaki discloses a hot-rolled steel sheet ([0001]) having an arithmetic average roughness Ra of the surface after pickling is less than 1.2 um (2.00 um or less) ([0007], [0010], [0062]).
It would have been obvious to one of ordinary skill in the art in the hot-rolled steel sheet of US ‘148 to control the average arithmetic surface roughness Ra of the surface after pickling to 2.00 um or less to prevent deterioration of fatigue properties (Yamazaki [0059]).
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).
Related Art
Otsuka (JP 2009-263718 machine translation)
Otsuka discloses a hot-rolled steel sheet ([0001], [0005]-[0007]) with a similar composition ([0020]-[0030]), a microstructure including bainite, 5% or more ferrite, up to 20% pearlite, 5% or less martensite and residual austenite ([0031]-[0032]), an x-ray random intensity for the three crystal orientations {554}<225>, {111}<112>, and {111}<110> is 4.5 or less ([0036]-[0037]).
Yokoi (US 2004/0244877)
Yokoi discloses a hot-rolled ([0028], [0134]) steel sheet ([0013]) with an average strength in three orientation components of {554}<225>, {111}<112>, and {111}<110> of 3.5 or less ([0016], [0042]), a microstructure of bainite as the largest volume, such as 30 to 70 vol%, with 5 to 25 vol% retained austenite ([0017], [0059]), a similar composition ([0018]-[0026], [0061]-[0081]), and a surface roughness Ra of 1 to 3.5 um ([0015], [0045], [0094], [0134], [0153], [0168]).
Maruyama (US 2014/0178712)
Maruyama discloses a hot rolled steel sheet ([0001]) with a structure that has a balance of bainite ([0039]) in which the final rolling temperature Tf is greater than 830 + 4 - ([Ti]+[Nb]) ([0120]-[0125]).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANI HILL whose telephone number is (571)272-2523. The examiner can normally be reached Monday, Wednesday-Friday 7am-12pm.
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/STEPHANI HILL/Examiner, Art Unit 1735
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