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 .
Status of Claims
Claims 8, 10, and 12-19 have been cancelled; Claims 1-7, 9, 11 and 20-26 remain for examination, wherein claims 1 and 9 are independent claims. There is no amendment since last office action dated 3/17/2026. It is acknowledged of the receipt of the Applicant’s “132 Declaration” filed on 7/14/2026.
Claim Objections
Claim 1 is objected to because of the following informalities: “a cold rolled thickness” on line 17 has no specific range (refer to the previous office action dated 3/17/2026.
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 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.
Claims 1-7, 9, 11 and 20-26 are rejected under 35 U.S.C. 103 as being unpatentable over Azuma et al (US-PG-pub 2012/0222781 A1, thereafter PG’781) (PG’950 is further applied to claims 5-6 and 23-24 as listed following).
PG’781 alone or further in view of PG’950 is applied to the instant claims 1-7, 9, 11 and 20-26 for the same reason as stated in the previous office action dated 3/17/2026.
Claims 5-6 and 23-24 are rejected under 35 U.S.C. 103 as being unpatentable PG’781 and further in view of Azuma et al (US-PG-pub 2015/0329950 A1, corresponding to US 9,862,428 B2, listed in IDS filed on 2/5/2021, thereafter PG’950).
PG’781 in view of PG’950 is applied to the instant claims 5-6 and 23-24 for the same reason as stated in the previous office action dated 3/17/2026.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-7, 9, 11 and 20-26 are rejected on the ground of nonstatutory obviousness type double patenting as being unpatentable over claims 1-15 of copending application No. 17/201723 (updated as claims 1-15 of US 11,965,230 B2) in view of PG’781.
Claims 1-15 of copending application No. 17/201723 (updated as claims 1-15 of US 11,965,230 B2) in view of PG’781 is applied to the instant claims of 1-7, 9, 11, and 20-26 for the same reason as stated in the previous office action dated 3/17/2026.
Response to Arguments
Applicant’s arguments to the art rejection to Claims 1-7, 9, 11 and 20-26 have been considered but they are not persuasive. Regarding the Applicant’s “132 Declaration” filed on 7/14/2026, which has been fully considered but it is insufficient to overcome the rejection as sated above and in the previous office action dated 3/17/2026. The Applicant argued the claimed “martensite” is different to the “tempered martensite” as disclosed in the prior art (PG’781 in view of PG’950). In response, 1) there is no limitation in the instant claims to exclude tempering treatment for the formed martensite; 2 there is no limitation in the instant claims to limit the claimed martensite without forming tempered martensite. 3) martensite tempering is a process to treat martensite at tempering temperature, for example, “Tempering is a critical heat treatment process (150-700°C) applied to martensitic steels to modify their mechanical properties, transforming the brittle yet strong martensite phase into a more usable material.” ( https://www.totalmateria.com/en-us/articles/the-tempering-of-martensite-1/). The instant invention indicates annealing at temperature 450-650oC for at least 5 seconds (par.[0019], [0076], [0114], and [0136] of US-PG-pub 2021/0156010 A1, corresponding to the application specification), and the temperature in the galvanizing bath (also known as a zinc alloy pot) was set in a range between 450°C. (842°F) and 480°C (896°F) (par.[0146] of US-PG-pub 2021/0156010 A1, corresponding to the application specification), which are within the general tempering temperature. Therefore, it is reasonable to conclude the instant claimed martensite include tempered martensite.
The Applicant’s arguments have been summarized as following:
The specification of the instant application describes a single martensite phase, which different to the two distinct martensite (fresh and tempered) type required by PG’781). Also referring to the Applicant’s “132 Declaration” filed on 7/14/2026, cited prior art(s) does not specify the claimed martensite volume in the instant claims.
Azuma et al (PG’781) (M+B dual phase) does not specify the multiphase as claimed in the instant claim and PG’950 does not cure the cure the deficiency of PG’781.
Copending application No. 17/201723 (updated as claims 1-15 of US 11,965,230 B2) do not claim the same invention since copending application No. 17/201723 (updated as claims 1-15 of US 11,965,230 B2) teaches a steel performed after only hot-rolling, the cold rolling in PG’781 does not render article claims to a cold rolled steel obvious over article claims to a hot rolled steel, where each have different microstructures.
In response,
Regarding the argument 1), refer to the discussing in the response for the Applicant’s “132 Declaration” filed on 7/14/2026, it is no evidence to show the claimed martensite are different to the martensite disclosed by cited prior art(s).
Regarding the argument 2), Azuma et al (PG’781) indicates ferrite is present in 10 to 50%, bainitic ferrite and/or bainite in 10 to 60%, and tempered martensite in 10 to 50% (abstract of JP’781), which reads on the claimed multiphase as claimed in the instant claims.
Regarding the argument 3), Claims 1-15 of copending application No. 17/201723 (updated as claims 1-15 of US 11,965,230 B2) in view of PG’781 is applied to the instant Claims 1-7, 9, 11, and 20-26 as stated as above. There is no limitation in copending application No. 17/201723 (updated as claims 1-15 of US 11,965,230 B2) to exclude cold rolling after hot-rolling. PG’781 indicates cold-rolling by a draft of 40-70% (cl.11-12, par.[0060], and [0065] of PG’781). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to apply proper cold-rolling as demonstrated by PG’781 in the process of claims 1-15 of copending application No. 17/201723 (updated as claims 1-15 of US 11,965,230 B2) to obtain the desired cold rolling structure features.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/JIE YANG/Primary Examiner, Art Unit 1734
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