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 certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 06/12/2024 and 05/13/2025 have been considered by the examiner.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4 and 6-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Saito et al. (U.S. 2016/0160308; Cited in IDS of 05/13/2025).
Regarding claim 1, Saito et al. (hereinafter “Saito”) teaches a steel sheet (Table 1 Example N) having a composition as follows:
Element
Claimed
Example N
C
0.04 to 0.08
0.0400
Si
0.05 or less (excluding 0)
0.01
Mn
0.1 to 0.6
0.45
P
0.015 or less (excluding 0)
0.010
S
0.015 or les (excluding 0)
0.012
Al
0.02 to 0.06
0.020
N
0.006 or less (excluding 0)
0.003
Nb
0.02 to 0.04
0.025
Fe
Remainder
Balance
Further, the reported values of C, Mn, and Nb would yield a value meeting applicant’s claimed Expression 1, i.e., 370 (160+40+45+125) which anticipates the claimed range of ‘470 or less’.
Saito is silent to the crystal grain aspect ratio and the composite reinforcement index as claimed by Expressions 2 and 3. However, Saito teaches manufacturing conditions in Paragraph 0063 and Table 2 that are substantially similar to the manufacturing conditions utilized by Applicant.
Specifically, Saito teaches at Paragraph 0063 that the steel sheet is produced by heating a steel slab at a heating temperature of 1100C or higher, performing hot rolling at a finish temperature of 800-950C, performing coiling at a coiling temperature of 500-700C, performing pickling, performing cold-rolling at a rolling reduction of 85% or more, performing annealing at a recrystallization temperature or higher wherein Paragraph 0071 expressly teaches that the annealing temperature is from 710-800C, and then a temper rolling (see Paragraph 0073).
Applicant’s specification describes at Page 17 that the heating occurs at a temperature of 1150C or higher (line 3), hot rolling is carried at a temperature that is 900C or higher (line 12), winding at a temperature of 560-700C (line 13), cold-rolling at a reduction rate of 80 to 95% (Page 18 lines 5-6), annealed at a temperature of 720 to 800C (Page 18 lines 17-18), and then subject to a secondary rolling (Page 19 line 5).
It has been held that ‘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, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
It has been held that ‘when the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not’ In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and it’s fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products See In re Brown, 459 F.2d 531, 59 CCPA 1036, 173 USPQ 685 (1972).
In the instant case, there is a sufficient prima facie basis to believe that the sheet of Saito is the same as that claimed by Applicant in view of the anticipatory chemical composition of the steel sheet as well as the substantially similar method of manufacturing the steel sheet.
Regarding claims 2 and 3, Saito anticipates the sheet as applied to claim 1 above but is silent to the sheet possessing a yield strength of 500 to 600 MPa and/or an elongation of 8% or more.
However, it has been held that ‘[p]roducts of identical chemical composition cannot have mutually exclusive properties’. In re Spada, 911 F.2d 705, 709, 15 USPQ 2d 1655, 1658 (Fed. Cir. 1998).
Thus, there is a sufficient prima facie basis to believe that the sheet of Saito is the same as that claimed by Applicant in view of the anticipatory chemical composition of the steel sheet as well as the substantially similar method of manufacturing the steel sheet.
Regarding claim 4, Saito anticipates the sheet as applied to claim 1 above and further teaches that the sheet may have a coating, meeting claimed ‘plating layer’, applied (Paragraph 0074 and/or 0084). Specifically, Paragraph 0084 states that the steel sheet was subject to a chromium coating treatment.
Regarding claims 6-8, Saito et al. (hereinafter “Saito”) teaches a steel sheet (Table 1 Example N) having a composition as follows:
Element
Claimed
Example N
C
0.04 to 0.08
0.0400
Si
0.05 or less (excluding 0)
0.01
Mn
0.1 to 0.6
0.45
P
0.015 or less (excluding 0)
0.010
S
0.015 or less (excluding 0)
0.012
Al
0.02 to 0.06
0.020
N
0.006 or less (excluding 0)
0.003
Nb
0.02 to 0.04
0.025
Fe
Remainder
Balance
Further, the reported values of C, Mn, and Nb would yield a value meeting applicant’s claimed Expression 1, i.e., 370 (160+40+45+125) which anticipates the claimed range of ‘470 or less’.
Specifically, Saito teaches at Paragraph 0063 that the steel sheet is produced by heating a steel slab at a heating temperature of 1100C or higher (meeting claimed ‘slab preparation’ and ‘reheating the slab’ as well as instant dependent claim 7 requiring the slab to be heated to 1150C or higher),
performing hot rolling at a finish temperature of 800-950C (meeting claimed ‘hot rolling… and finish hot rolling the slab at Ar3 or higher to manufacture a hot rolled steel sheet’),
performing coiling at a coiling temperature of 500-700C (meeting claimed ‘winding the hot rolled steel sheet at 560 to 700C’),
performing pickling (not expressly claimed by instant claim 6 but is permissible due to the open-ended language ‘comprising’ as well as the fact that POSITA would not expect the pickling to influence/impact the steel microstructure but instead to simply remove scale, if any developed, from the steel sheet surface),
performing cold-rolling at a rolling reduction of 85% or more (meeting claimed ‘cold rolling…at a reduction rate of 80 to 95%...),
performing annealing at a recrystallization temperature or higher wherein Paragraph 0071 expressly teaches that the annealing temperature is from 710-800C (meeting claimed ‘annealing the cold-rolled steel sheet at a temperature of 720-800C’),
and then a temper rolling at a reduction rate of 0.5-5.0% (see Paragraph 0073; meeting claimed secondary rolling the annealed cold-rolled steel sheet and the features of instant dependent claim 8 requiring the secondary rolling to be performed at a reduction rate of 4 to 10%).
When considering the teachings of Saito and comparing the disclosure to the instantly claimed invention, the teachings of Saito anticipate the claimed ranges with sufficient specificity in view of the significant shared features/scope of the disclosed processing conditions.
It has been held that ‘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, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
It has been held that ‘when the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not’ In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and it’s fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products See In re Brown, 459 F.2d 531, 59 CCPA 1036, 173 USPQ 685 (1972).
In the instant case, there is a sufficient prima facie basis to believe that the sheet of Saito is the same as that claimed by Applicant in view of the anticipatory chemical composition of the steel sheet as well as the substantially similar method of manufacturing the steel sheet.
Regarding claims 9 and 10, Saito anticipates the method as applied to claim 6 above but is silent to the crystal grain aspect ratio (feature of instant dependent claim 9) and the composite reinforcement index (feature of instant dependent claim 10) as claimed by Expressions 2 and 3. However, Saito teaches manufacturing conditions in Paragraph 0063 and Table 2 that are substantially similar to the manufacturing conditions utilized by Applicant such that there is a reasonable basis to presume that the steel of Saito would possess such features absent evidence to the contrary. It has been held that ‘[p]roducts of identical chemical composition cannot have mutually exclusive properties’. In re Spada, 911 F.2d 705, 709, 15 USPQ 2d 1655, 1658 (Fed. Cir. 1998).
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.
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 5 is rejected under 35 U.S.C. 103 as being unpatentable over Saito as applied to claim 4 above.
Regarding claim 5, Saito anticipates the steel sheet as applied to claim 4 above and teaches that the coating, meeting claimed plating layer, may be selected from a Cr coating (Paragraphs 0074 and 0084) but is silent to the applied plating layer having a thickness of 5 micron or less as claimed.
However, it would be obvious to the person having ordinary skill in the art before the effective filing date of the claimed invention to determine the appropriate and/or desirable thickness of the applied coating layer absent evidence to the contrary. For the clarity of the record, it is noted that the plating layer thickness of 5 micron or less has not been shown to be critical and/or produce unexpected results. Thus, based on the state of the art, the selection of the thickness of the applied coating would be routine and conventional to persons of skill before the effective filing date of the claimed invention. Furthermore, the thickness of 5 micron or less would, at most, be a difference of degree rather than a difference in kind.
Conclusion
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ALEXANDRA M MOORE
Primary Examiner
Art Unit 1738
/ALEXANDRA M MOORE/Primary Examiner, Art Unit 1738
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