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 and Status of Claims
Applicant's election with traverse of Invention I, claims 1-11 in the reply filed on 3/2/26 is acknowledged. The traversal is on the ground(s) that the groups can be searched without undue burden. This is not found persuasive because in the restriction requirement dated 1/14/26, it was established that invention I was drawn to class C21D 9/46 while invention II was classified in C22C 38/14 and given their different classification these inventions would have distinct fields of search employing different search strategies and queries.
The requirement is still deemed proper and is therefore made FINAL.
Claims 12-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 3/2/26.
As such, claims 1-11 are examined in this office action below.
Claim Objections
Claim 8 is objected to because of the following informalities: claim 8 does not end with a period and all claims must be a single sentence that ends with a period, see MPEP § 608.01(m). Appropriate correction is required.
Applicant is advised that should claim 1 be found allowable, claim 2 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 1-11 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.
Claims 1 and 2 both require controlling both annealing time (A) and moisture content (B) based upon the product of a positive square root of A and a natural logarithm value of a reciprocal value of the moisture concentration. It is not clear how the annealing time and moisture concentration is “controlled” and how this is “based on” a product of the square root and natural logarithm of these values. It is not clear how these variables are being manipulated and what changes in one result in changes in another.
Further, this limitation is circular in its requirements. It is not clear how both annealing time and moisture content can be individually controlled based upon those same parameters. Claims 2-11 are also rejected as they depend from claim 1 and do not solve the above issue.
The term “ultra-high strength” in claims 1-2 is a relative term which renders the claim indefinite. The term “ultra-high” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. While applicant notes that the material of the finally produced steel sheet has a yield strength of 600 MPa or more and a tensile strength of 980 MPa or more (Specification, pg. 27, lines 12-13), this is not recited as being “ultra-high strength” and it is not clear what makes strength “ultra-high”.
Claim 3 recites where “the annealing time (A) for performing the annealing is short” in the last two lines. The term “short” in claim 3 is a relative term which renders the claim indefinite. The term “short” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. While Table 4 in the specification shows inventive examples from 60 to 130 seconds, these examples do not provide a definition for what is meant by “short”.
Claim 4 recites where “the moisture concentration (B) in the annealing furnace is low” in the last two lines. The term “low” in claim 4 is a relative term which renders the claim indefinite. The term “low” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. While Table 4 in the specification shows inventive examples from 375 to 8500ppm, these examples do not provide a definition for what is meant by “low”.
Claim 6 recites the limitation “a surface layer of the steel sheet” in the last line. Similarly Claim 10 recites the limitation “wherein a microstructure of a single phase of ferrite is formed on a surface layer of the steel sheet after performing the zinc plating treatment” in lines 1-2. While the claim as well as the specification recites that a “a decarburization layer formed on the surface layer of the steel sheet has a thickness of 18 µm or more” (emphasis added), it is not clear what thickness constitutes the surface layer and thereby it is not clear what portion of the galvanized steel sheet must have a microstructure of a single phase of ferrite.
Claim 8 recites an annealing time (A) and a moisture concentration (B) and lays out an Equation 1 which uses each of these variables which must be satisfied. However, as there are no units for either an annealing time (A) nor moisture concentration (B) given, it is not clear how Equation 1 can be satisfied. Claim 9-11 are also rejected as they depend from claim 8 and do not solve the above issue.
Claim 9 recites the limitation “first cooling the steel sheet at an average cooling rate of 1 to 20°C/s and at a temperature of 600°C or more and less than 800°C; second cooling the steel sheet at an average cooling rate of 20°C/s or more and a temperature of 200°C or more and less than 300°C;” in lines 2-5. It is not clear what is meant by cooling “at” a temperature in conjunction with a cooling rate. It is not clear how a temperature can be decreasing at a rate, i.e. a cooling rate, while also being cooled at a temperature. It is not clear whether this is intended to be a cooling rate during this temperature range, whether this is intended to be a temperature that is cooled to or from, or some other meaning. Claims 10-11 are also rejected as they depend from claim 9 and do not solve the above issue.
Claim 11 recites the limitation “an applicable welding current range of the galvanized steel sheet is 6.0 kA to 7.5 kA”. It is not clear whether this recitation requires welding at the claimed current range, whether the galvanized steel sheet merely must be capable of welding at this current range, or some other meaning.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-8 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by US 2018/0371570 A1 of Kim.
As to claims 1 and 2, it is not clear what is meant by “ultra-high strength” nor how annealing time and moisture concentration is controlled based on the square root of annealing time and natural logarithm of the reciprocal value of moisture concentration, see 112(b) rejections above. For the purposes of applying prior art, this will be interpreted as requiring a galvanized steel sheet annealing is performed where the annealing time and moisture content are controlled as a steel sheet will have high strength and annealing time and moisture content are parameters in annealing.
Kim discloses a high-strength hot-dip galvanized steel sheet having good surface quality and spot weldability (Kim, paragraph [0001]). Kim discloses performing a primary recrystallization annealing process on the cold-rolled steel sheet at a temperature of 750° C. to 950° C. for 5 seconds to 120 seconds in an annealing furnace adjusted to have a gas atmosphere comprising 3% to 70% H2 and a balance of N2 and a dew point of −40° C. to −20° C.; and performing a secondary recrystallization annealing process on the cold-rolled steel sheet at a temperature of 700° C. to 950° C. for 5 seconds to 120 seconds in the annealing furnace adjusted to have a gas atmosphere comprising 3% to 70% H2 and a balance of N2 and a dew point of −20° C. to 5° C (Kim, claim 5), meeting the limitation of performing annealing on a cold-rolled steel sheet in an annealing furnace while controlling both the annealing time and moisture content via dew point.
As to claims 3-4, it is not clear what is meant by “short” and “low”, see 112(b) rejections above. For the purposes of applying prior art, this will be interpreted as requiring performing annealing for a time period while also maintaining a moisture concentration in the annealing furnace. Kim discloses performing a primary recrystallization annealing process on the cold-rolled steel sheet at a temperature of 750° C. to 950° C. for 5 seconds to 120 seconds in an annealing furnace adjusted to have a gas atmosphere comprising 3% to 70% H2 and a balance of N2 and a dew point of −40° C. to −20° C.; and performing a secondary recrystallization annealing process on the cold-rolled steel sheet at a temperature of 700° C. to 950° C. for 5 seconds to 120 seconds in the annealing furnace adjusted to have a gas atmosphere comprising 3% to 70% H2 and a balance of N2 and a dew point of −20° C. to 5° C (Kim, claim 5), meeting the limitation of performing annealing on a cold-rolled steel sheet in an annealing furnace while controlling both the annealing time and moisture content via dew point.
As to claim 5, Kim discloses the composition in comparison to the claims in Table A below.
Table A
Element
Claim 5 Limitation (% by Weight)
Kim (claim 5, wt%)
Kim Steel E (Table 1, wt%)
Carbon
0.1 to 0.5%
0.1% to 0.3%
0.17%
Silicon
1.0 to 3.0%
0.5% to 2.5%
1.45%
Manganese
1.5 to 3.5%
2.0% to 8.0%
2.66%
Phosphorus
greater than 0 and 0.02% or less
0.04% or less (excluding 0%)
0.0100%
Sulfur
greater than 0% and 0.01% or less
0.015% or less (excluding 0%)
0.0029%
Aluminum
greater than 0% and 0.1% or less
0.001% to 0.5%
0.031%
Nitrogen
greater than 0% and 0.01% or less
0.02% or less (excluding 0%)
0.0040%
Iron and unavoidable impurities
Remainder
balance
Balance
As Kim discloses a steel which in Steel E has a composition which is within the claimed range for the composition, Kim anticipates the composition. "[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985), see MPEP § 2131.03(I).
As to claims 6-7, Kim discloses performing a primary recrystallization annealing process on the cold-rolled steel sheet at a temperature of 750° C. to 950° C. for 5 seconds to 120 seconds in an annealing furnace adjusted to have a gas atmosphere comprising 3% to 70% H2 and a balance of N2 and a dew point of −40° C. to −20° C.; and performing a secondary recrystallization annealing process on the cold-rolled steel sheet at a temperature of 700° C. to 950° C. for 5 seconds to 120 seconds in the annealing furnace adjusted to have a gas atmosphere comprising 3% to 70% H2 and a balance of N2 and a dew point of −20° C. to 5° C (Kim, claim 5). Kim discloses example IE7 where secondary annealing is done at 850°C for 55 seconds (Kim, Table 2), meeting the claim 7 limitation of performing an annealing at a temperature of 830 to 900°C. While Kim does not explicitly state that this is in a dual phase region of austenite and ferrite, as IE7 falls within the claim 7 range and IE7 has the composition of Steel E of Kim as shown in Table A above, the same composition applied to the same temperature would necessarily be in a dual phase region of austenite and ferrite.
Kim discloses where decarbonization occurs in the surface together with internal oxidation, thereby effectively increasing the fraction of ferrite in the surface layer region (Kim, paragraph [0102]), meeting the limitation of annealing including decarburization reaction on the surface of the steel sheet. While Kim does not explicitly state where the annealing comprises transforming austenite present in a surface layer of the steel sheet into ferrite, as Kim discloses the same starting material and applies the same annealing method, it would produce the same result of transforming austenite present in a surface layer of the steel sheet into ferrite. “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) (emphasis added), see MPEP § 2112.01(I).
As to claim 8, it is not clear how equation 1 is satisfied since it is lacking units for annealing time and moisture concentration, see 112(b) rejection above. For the purposes of applying prior art, this will be interpreted as requiring annealing time in seconds and moisture content in ppmv. Kim discloses performing a primary recrystallization annealing process on the cold-rolled steel sheet at a temperature of 750° C. to 950° C. for 5 seconds to 120 seconds in an annealing furnace adjusted to have a gas atmosphere comprising 3% to 70% H2 and a balance of N2 and a dew point of −40° C. to −20° C.; and performing a secondary recrystallization annealing process on the cold-rolled steel sheet at a temperature of 700° C. to 950° C. for 5 seconds to 120 seconds in the annealing furnace adjusted to have a gas atmosphere comprising 3% to 70% H2 and a balance of N2 and a dew point of −20° C. to 5° C (Kim, claim 5). Kim also discloses example IE7 where secondary annealing is done at 850°C for 55 seconds at a dew point of 5°C (8603 ppmv ) (Kim, Table 2). Thus, this means that Equation 1 is:
55
s
e
c
0.5
×
ln
1
8603
p
p
m
v
=
-
67.18
≤
-
65
. Thus Kim’s example IE7 meets by having an annealing treatment which satisfies equation 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.
Claims 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0371570 A1 of Kim
As to claim 9, Kim discloses in example IE7 cooling to 290°C at 26°C/s (Kim, Table 2). However, Kim does not explicitly disclose first cooling the steel sheet at an average cooling rate of 1 to 20° C./s and at a temperature of 600° C. or more and less than 800° C.; second cooling the steel sheet at an average cooling rate of 20° C./s or more and a temperature of 200° C. or more and less than 300° C.
However, Kim discloses where preferably, the cooling process may be performed step by step (through primary and secondary cooling processes) at an average cooling rate of 5° C./s to 100° C./s, and the cooling rate in the secondary cooling process may be greater than the cooling rate in the primary cooling process. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to disclose first cooling the steel sheet at an average cooling rate of 1 to 20° C./s and at a temperature of 600° C. or more and less than 800° C.; second cooling the steel sheet at an average cooling rate of 20° C./s or more and a temperature of 200° C. or more and less than 300° C as Kim teaches overlapping ranges for average cooling rates and teaches breaking up the cooling process into primary and secondary parts where the secondary cooling has a higher cooling rate.
Kim then teaches cold-rolled steel sheet may be reheated to a temperature of 450° C. to 500° C. and may be maintained at a temperature of 440° C. to 500° C (Kim, paragraph [0113]), overlapping the claimed range of reheating at to 350° C. to 490° C. and maintaining it for 100 second or less. Thus, it would be obvious to select within the overlapping temperature range for reheating to reach the claimed invention. “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.”, see MPEP § 2144.05(I).
Kim then teaches the cold-rolled steel sheet may be dipped into the galvanizing bath having an Al content of 0.13% to 0.3% and the balance of zinc (Zn) and inevitable impurities (Kim, paragraph [0113]) meeting the limitation of performing zinc plating treatment on the steel sheet.
As to claim 10, it is not clear what is meant by surface layer, see 112(b) rejection above. For the purposes of applying prior art, this will be interpreted as a layer which is next to the zinc-plated layer. While Kim discloses where the microstructure of the base steel sheet in a surface layer region may be adjusted to have ferrite as a primary phase (Kim, paragraph [0065]), Kim does not explicitly disclose where a microstructure of a single phase of ferrite is formed on a surface layer of the steel sheet after performing the zinc plating treatment, and a decarburization layer formed on the surface layer of the steel sheet has a thickness of 18 μm or more.
Nevertheless, as Kim discloses the same starting composition, see Table A above, and Kim discloses a substantially identical method of manufacture involving annealing satisfying equation 1, cooling, reheating, and zinc plating, the same method applied to the same starting material would produce the same properties of a microstructure of a single phase of ferrite is formed on a surface layer of the steel sheet after performing the zinc plating treatment, and a decarburization layer formed on the surface layer of the steel sheet has a thickness of 18 μm or more. “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.”, see MPEP § 2144.05(I).
As to claim 11, it is not clear whether the claim requires welding or not, see 112(b) rejection above. For the purposes of applying prior art, this will be interpreted as requiring that the produced galvanized steel sheet is capable of welding with current range of the galvanized steel sheet is 6.0 kA to 7.5 kA. While Kim teaches a high-strength hot-dip galvanized steel sheet having good surface quality and spot weldability (Kim, paragraph [0001]), Kim does not disclose galvanized steel sheet is capable of welding with current range of the galvanized steel sheet is 6.0 kA to 7.5 kA.
Nevertheless, as Kim discloses the same starting composition, see Table A above, and Kim discloses a substantially identical method of manufacture involving annealing satisfying equation 1, cooling, reheating, and zinc plating, the same method applied to the same starting material would produce the same properties of a galvanized steel sheet is capable of welding with current range of the galvanized steel sheet is 6.0 kA to 7.5 kA. “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.”, see MPEP § 2144.05(I).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Joshua S Carpenter whose telephone number is (571)272-2724. The examiner can normally be reached Monday - Friday 8:00 am - 5:30 pm.
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/JOSHUA S CARPENTER/Examiner, Art Unit 1733
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
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