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 & Status of Claims
Applicant’s election without traverse of Group I, claims 12-23 in the reply filed on 08 JAN 2026 is acknowledged.
Claims 24-31 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08 JAN 2026.
Specification
The disclosure is objected to because of the following informalities: Table 2 contains illegible characters.
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.
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 12-23 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.
Regarding claims 12-23, claim 12, the independent claim, requires the steel sheet to have a chemical composition that abides by a carbon equivalent (CE) with a specific range but does not point out a formulaic expression to determine the CE. However, one skilled in the art recognizes that there are multiple formulaic expressions to determine the carbon equivalent of a steel. Some of the various formulaic expression can be found in US 2008/0202639 A1, US 2009/0246067 A1 and US 2023/0287548 A1 (See attached PTO-892). Using these various formulas results in different values for the carbon equivalent of the same steel. Therefore, it is unclear how to determine the CE range of the instant claims as the instant claims do not specify the formulaic expression to be used for the calculation.
Claim 12 also requires the limitation “coefficient of variation (CV) of ferrite grain size×carbon equivalent (CE) is 0.28 or less” but fails to recite the CV is being or to be calculated thereby making it unclear how to determine the “CV”
Claims 13-23 are dependents of claim 12, do not resolve the aforementioned issues and thereby also indefinite.
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.
List 1
Element
Instant Claims
(mass%)
Prior Art
(mass%)
C
0.07 – 0.20 claim 13
1.00 or less
Si
0.10 – 2.00 claim 13
0.80 – 3.00
Mn
1.5 – 4.0 claim 13
0.2 – 7.0
P
0.100 or less claim 13
0.10 or less
S
0.050 or less claim 13
0.030 or less
Al
0.005 to 0.100 claim 13
3.00 or less
N
0.0100 or less claim 13
0.010 or less
V
claim 14: at least one of: Cr: 1.000 or less, Mo: 0.500 or less, V: 0.500 or less, Ti: 0.500 or less, Nb: 0.500 or less, B: 0.0050 or less, Ni: 1.000 or less, Cu: 1.000 or less, Sb: 1.000 or less, Sn: 1.000 or less, As: 1.000 or less, Ca: 0.0050 or less, W: 0.500 or less, Ta: 0.100 or less, Mg: 0.050 or less, Zr: 0.050 or less, and REM: 0.005 or less
V: 0 – 1.0
Fe + impurities
Balance
Balance
Claims 12-23 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2020-059880 A of Hata and its English machine translation (JP’880).
Regarding claims 12-23, JP 2020-059880 A of Hata and its English machine translation (JP’880) teaches {abstract, claims 1-7, [0001]-0095} [0001] “a steel material and a method for manufacturing the same” [0086] The steel sheet after reheating is cooled to room temperature at any cooling rate [0054] “Ceq:0.10-1.00 Ceq means a carbon equivalent” thereby reading on the instant limitation of steel sheet and a composition of instant claim 12. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
In addition, the prior art teaches that its steel has a composition wherein the claimed ranges of the constituent elements of the instant alloy of the instant claims specifically the ranges of instant claims 13 and 14 overlap or lie inside the ranges of various elements of the alloy of the prior art as shown in the List 1 above. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed composition over the prior art disclosure since the prior art teaches the similar property/utility throughout the disclosed ranges. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Regarding the recited microstructure of instant claim 12, the prior art teaches that its steel has, [0055]-[0063] in volume%, 40% or more Tempered martensite, 10% or more Bainite, 5% or more Retained austenite, 5% or more Ferrite” and points out “Structures other than those described above are not particularly limited, but in addition, one or more selected from structures such as martensite and pearlite may be included. However, the total volume ratio thereof is preferably 25% or less, more preferably 20% or less, and still more preferably 15% or less” thereby reading on various phases and ranges including the total range of instant claim 12. It is noted that the prior art teaches microstructure ranges in volume% while the instant claims recite it in area%. However, one skilled in the art recognizes that point counting method employed in determining microstructure phases teaches that area% and volume% are identical in terms of the absolute values. Therefore, the units of the prior art and the instant claims are deemed to be the same. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Regarding the recited limitation of ferrite grain size and tensile strength, the prior art teaches that its steel has ([0010], claim 2) “An average crystal grain size of ferrite grains in the metallographic structure is 3.0 μm or less”[0074] “the tensile strength of the steel is made the 1150MPa or more” thereby meeting the recited limitations of instant claim 12. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
It is noted that the prior art is silent regarding its alloy having the properties of “coefficient of variation (CV) of ferrite grain size×carbon equivalent (CE) is 0.28 or less” and “a number ratio (NFvoid/NF) of ferrite grains having a void at an interface to all ferrite grains is 15% or less in an L section in a region extending by 0 to 50 μm from a steel sheet surface on a compressive-tensile deformation side” as recited in the instant claim 12. 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). See MPEP § 2112.01 I. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Therefore, it is expected that the alloy of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in structure or composition (see compositional analysis above) and b) the claimed and prior art products are identical or substantially identical in structure or composition (see microstructure analysis above). Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
Regarding claims 15-17, it is noted that the prior art does not teach its steel of having “on a surface of the steel sheet, an electrogalvanized layer, a hot-dip galvanized layer, or a hot-dip galvannealed layer” as recited in the instant claims. However, one skilled in the art recognizes that galvanized layers are placed on the surface of steel sheets to improve the corrosion resistance. Therefore, it 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 to take the steel sheet of the prior art and apply a galvanized layer to improve the corrosion resistance properties of the sheet.
Regarding claims 18-23, the prior art teaches [0075]-[0092] hot working, cold working [0094] “A 180kg steel ingot having a chemical composition shown in Table 1 was melted in a high-frequency vacuum melting furnace and hot-forged into a slab having a 30mm thickness. The obtained slab was hot-rolled by a hot-rolling tester to obtain a hot-rolled steel sheet having a thickness 2mm portion” [0121] “According to the present invention, it is possible to obtain a steel material having more excellent ductility than conventional TRIP steel by forming a metallographic structure containing a large amount of crystal grains having a low aspect ratio and containing retained austenite.” thereby reading on the forming step. In addition, the prior art teaches [0054] “Ceq means a carbon equivalent and is defined by the following formula (I). When Ceq is less than 0.10, the strength of the steel material is not sufficiently obtained. On the other hand, when Ceq exceeds 1.00, not only toughness and ductility are deteriorated, but also weldability and weld zone properties are deteriorated when welding is performed. Therefore, Ceq is set to 0.10 to 1.00. Ceq is preferably 0.20 or more, and more preferably 0.30 or more. In addition, Ceq is preferably 0.90 or less.” Therefore, it 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 to take the steel sheet of the prior art and have it undergo welding to create a welded member since the prior art teaches that its steel abides by specific range of Ceq to ensure weldability and weld zone properties are not deteriorated when welding is performed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOPHY S. KOSHY whose telephone number is (571)272-0030. The examiner can normally be reached M-F 8:30 AM- 5:00 PM.
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/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733