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 with traverse of Group I in the reply filed on April 01, 2026 is acknowledged. The traversal is on the ground(s) that the prior art does not teach claim 1 as presently amended. This is not found persuasive because unity of invention is not reconsidered at every office action, it is reconsidered in light of allowable subject matter. As presently rejected, the claims of Group I are not allowable. The prior art of record does teach the special technical feature of claim 1 as originally filed and as such the restriction is presently maintained. Applicant further argues that there is no serious search burden, which is not persuasive as this is a 371 Unity of Invention restriction, not a 121 restriction and search burden is not a requirement.
The requirement is still deemed proper and is therefore made FINAL.
Claims withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on April 01, 2026
Claims 1-4, 6, 8-9 and 16-19 are pending, claim 1 is independent.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Examiner Note
Regarding claim 1, “high-hole-expansion” is definite in light of claim 1, which defines that the punching hole expansion ratio is 50% or more and the reaming hole expansion ratio of 80% or more and “800 MPa-grade” is a term of art and considered definite.
Regarding claims 1, 8 and 17, it is definite that “the steel plate” in claim 1 line 13; claim 8 line 2 and claim 17 line 2, refers the “800MPa-grade high-hole-expansion hot-dip galvanized steel plate”, but it is recommended to include this for consistency.
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, “Disclosed in the present invention are” is language that can be implied.
Claim Objections
Claims 8, 9 and 17 are objected to because of the following informalities: the properties claimed are introduced with “a” and it should be “the” or said”. It is definite that these properties are those introduced in claim 1, from which claims 8, 9 and 17 depend, therefore they should be appropriately introduced. 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.
Claim 17 is 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. Claim 17 has a punching hole expansion ratio lower limit of 50% and a lower limit of a reaming hole-expansion ratio of 80%, which are lower than the claim from which they depend (claim 8, punching hole-expansion ratio of 55% or more and reaming hole-expansion ratio of 90% or more), and it is indefinite what the correct lower limit is.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 17 is rejected under 35 U.S.C. 112(d), as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 17 has a punching hole expansion ratio lower limit of 50% and a lower limit of a reaming hole-expansion ratio of 80%, which are lower (more broad) than the claim from which they depend (claim 8, punching hole-expansion ratio of 55% or more and reaming hole-expansion ratio of 90% or more). Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) 1-4, 8-9 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Wakita et al. (US 2018/037980 A1), hereinafter Wakita.
Regarding claim 1, Wakita teaches a hot-rolled steel sheet (plate) with a chemical composition shown in the below table in mass% ([0019]-[0038]) with a galvanized film on a surface ([0066]) that is galvanized in a bath ([0153]; hot-dip plated) with a tensile strength of 780 MPa or more (800 MPa grade) and a hole expansion ratio of 80% or more (overlaps “high-hole-expansion) ([0154]) in a punching process ([0105]) with elongations of 18-27% (Table 3) an average composite carbide size of 10nm or less ([0112]), and C forms precipitates with Nb and Ti in the steel (composite carbides of TiC, NbC, TiNbC) ([0071]) and the structure (matrix) can include one or more of bainitic ferrite (a type of bainite), granular bainitic ferrite (a type of bainite), quasi polygonal ferrite, retained austenite and martensite austenite where the total amount of MA and retained austenite is 3 vol% or less ([0116]; overlaps with the claimed amount of bainite), further the impurities are ones from raw materials ([0069]; .i.e. inevitable).
Regarding longitudinal yield strength of 660 MPa or more and reaming hole expansion ratio of 80% or more, applicant teaches these are dependent on the composition and microstructure of the steel (which are set by the processing parameters); where the composition and microstructure meet the claimed limitations, so do the properties (Tables 1, 3 and 4; Pgs. 20-21). As cited above, the claimed product and prior art composition and microstructure are substantially identical. This establishes a prima facie case of obviousness that the claimed properties are presumed inherent, “a chemical composition and its properties are inseparable” (MPEP 2112.01 I and II). Stated another way, the mechanical properties are a property of the composition and microstructure, which overlaps that of the prior art. Therefore, the prior art teaches the claimed mechanical properties (In. re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fe. Cir. 1990)).
Table (mass%)
Instant cls. 1-2
Instant cl. 3, 4 & 18
Wakita ([0019]-[0038])
C
0.03-0.08
0.03-0.07 (cl. 4)
0.04-0.07 (cl. 18)
0.01-0.100
Si
>0 to ≤0.45
>0 to ≤0.2 (cl. 4, 18)
≤ 0.30
Mn
1.3-1.8
0.40-3.00
Al
0.02-0.1
0.01-0.500
Cr
0.2-0.6
0.2-0.35 (cl. 4, 18)
0.05-1.00
Ti
0.05-0.15
0.003-0.200
Nb
< 0.05
≤ 0.02 (cl. 4, 18)
0.003-0.050
B
≤ 0.03
0.0000-0.0020
N
≤ 0.005 (cl. 3, 18)
≤ 0.0100
(Ti-3.43N+.52Nb) /4
≤ 0.03 (cl. 1)
0.01-0.03 (cl. 2)
Calculates to -0.030 to 0.0565
Fe & inevitable impurities
Included (cl 1) balance (cl. 2)
balance
P
≤ 0.02 (cl. 3, 18)
S
≤ 0.005 (cl. 3, 18)
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 including the claimed equation (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 2 and 4, Wakita teaches each limitation of claim 1, as discussed above, and further teaches a hot-rolled steel sheet with a chemical composition shown in the above table in mass% ([0019]-[0038]), further the impurities are ones from raw materials ([0069]; .i.e. inevitable). 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 including the claimed equation (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 3 and 18, Wakita teaches each limitation of claims 1 and 2 , as discussed above, and further teaches a hot-rolled steel sheet with a chemical composition shown in the above table in mass% ([0019]-[0038]), further the impurities are ones from raw materials ([0069]; .i.e. inevitable) and P, S and N are impurities ([0077]-[0083]). 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 including the claimed equation (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 8, 9 and 17, Wakita teaches each limitation of claim 1, as discussed above, and further teaches with a tensile strength of 780 MPa or more (800 MPa grade) and a hole expansion ratio of 80% or more (overlaps “high-hole-expansion) ([0154]) in a punching process ([0105]) with elongations of 18-27% (Table 3) Regarding the claimed longitudinal yield strengths and reaming hole expansion ratios, applicant teaches these are dependent on the composition and microstructure of the steel (which are set by the processing parameters), but where the composition and microstructure meet the claimed limitations, so do the properties (Tables 1, 3 and 4; Pgs. 20-21). As cited above, the claimed product and prior art composition and microstructure are substantially identical. This establishes a prima facie case of obviousness that the claimed properties are presumed inherent, “a chemical composition and its properties are inseparable” (MPEP 2112.01 I and II). Stated another way, the mechanical properties are a property of the composition and microstructure, which overlaps that of the prior art. Therefore, the prior art teaches the claimed mechanical properties (In. re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fe. Cir. 1990)).
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 including the claimed equation (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 claim 16, Wakita teaches each limitation of claim 1, as discussed above, and further teaches Ti nitrides in the steel (precipitates; [0083]). Wakita does not specifically teach the diameter of the TiN is < 10 microns. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention to modify Wakita to teach this size. The motivation or doing so would have been where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (MPEP 2144.04 IV A).
Claim(s) 6 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Wakita in view of Bi et al. (WO2020108594A1, herein referring to the Google Patents April 30, 2026 machine translation), hereinafter Bi (original and translation provided herewith).
Regarding claims 6 and 19, Wakita teaches each limitation of claims 1 and 2, as discussed above and further teaches a hot-rolled steel sheet ([0019]-[0038]) with a galvanized film on a surface ([0066]) that is galvanized in a bath ([0153]; hot-dipped). Wakita does not specifically teach the hot-dip galvanized layer single side average weight of 20-600 g/m2.
Bi is in the similar field of endeavor of zinc based plated steel plates (Abstract) and teaches an adhesion amount of the zinc based plating layer of 10-100 g/m2 on each side of the steel sheet (Pg. 3 [9]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Wakita to incorporate the adhesion amount of Bi the motivation for doing so would have been to provide sufficient corrosion prevention (Bi Pg. 3 [9]), which is a desired property in the galvanized steel of Wakita ([0153]).
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 including the claimed equation (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.
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/KATHERINE A CHRISTY/Primary Examiner, Art Unit 1784
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