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 .
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after appeal to the Board of Patent Appeals and Interferences, but prior to a decision on the appeal. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 2/10/2026 has been entered.
Information Disclosure Statement
IDS filed on 09/10/2025 has been recorded.
Status of Claims
Claims 8, 10, and 12-19 have been cancelled; ; Claims 1-2 and 20 have been amended; Claims 1-7, 9, 11 and 20-26 remain for examination, wherein claims 1 and 9 are independent claims.
Previous Rejections/Objections
Previous rejection of Claims 2 and 20 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or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 02/10/2026.
However, in view of the Applicant’s “Arguments/Remarks with amendment” and reconsideration, a new ground rejection has been listed as following.
Claim Objections
Claim 1 is objected to because of the following informalities: “a cold rolled thickness” on line 17 has no specific range.
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). alone or 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).
Regarding claims 1-4, 9, 20-22, and 26, PG’781 teaches a high strength steel plate with an ultimate tensile strength of 900 MPa or more which is excellent in hydrogen embrittlement resistance and a method of production of the same (Title, Abstract and claims of PG’781) manufactured by galvanizing or galvannealing treatment (cl.13, 17, and par.[0206]-[0207] of PG’781) and cold-rolling by a draft of 40-70% (cl.11-12, par.[0060], and [0065] of PG’781), which reads on the galvanized cold rolled steel with a thickness as recited in the instant claims. The comparison between composition ranges, phases, and properties in the instant claims and the composition of the sample #AD in table 9; properties and microstructure of #70 in table 13 of PG’781 is listed in following table. All of the major composition ranges, phases, and properties disclosed by the working sample #AD in table 9 and #70 in table 13 of PG’781 are within the claimed ranges of the instant claims. The working sample #70 in table 13 of PG’781 includes 33 vol.% martensite in the alloy, which is very close to the low limit 35 Vol.% martensite as recited in the instant claims 1 and 9. Furthermore, PG’781 specify adjusting the tempered martensite amount in range of 10-50 vol.% (cl.1 and abstract of PG’781), and PG’781 teaches adjusting Al in range 0.005-2.5wt% (cl.1 and par.[0148]-[0149] of PG’718); and adjusting C in range 0.07-0.25 wt% (cl.1 and par.[0145]-[0146] of PG’781), which overlap the claimed martensite amount, Al range, and C range (cl.2) as recited in the instant claims, Overlapping in TM, Al, and C ranges creates a prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the amount of martensite amount, Al, and C amount in the alloy as claimed since PG’781 teaches the same steel sheet manufactured by the same galvanized and cold-rolling processes throughout whole disclosing range.
Element
From instant Claims 1 and 9 (in wt%)
PG’781 (wt%)
#AD (table 9)
Within range
(in wt.%)
C
0.02- 0.2 (cl.1)
0.02-0.1 (cl.9)
0.198
0.07-0.25
0.198 (cl.1)
overlapping: 0.07-0.1(cl.9)
Mn
1.0- 3.5
3.00
3.00
P
0.1 or less
0.02
0.02
Si
1.2 or less
0.80
0.80
Al
0.01- 0.1
0.187
0.005-2.5
0.02
overlapping: 0.01-0.1
N
0.02 or less
0.0057
0.0057
Cu
0.6 or less
Trace amount
Trace amount
V
0.12 or less
Trace amount
Trace amount
B
No intentional adding
No intentional adding
No intentional adding
Fe
Balance + impurities
Balance + impurities
Balance + impurities
From instant Claims 2 and 20 (in wt%)
At least one chosen from
0.05-3.5 from: Mo, Cr, Ni, and combination
One or more:
Mo: 0.01-0.8;
Cr: 0.01-2.0;
Ni: 0.01-2.0
Overlapping:
Mo: 0.05-0.8;
Cr: 0.05-2.0;
Ni: 0.05-2.0
From instant Claims 3 and 21 (in wt%)
At least one
0.005-0.8 from
Ti, Nb or combination
Nb: 0.009
Nb: 0.009
From instant Claims 1 and 9 (Vol%)
PG’781 example #70 in table 13
Martensite
35-65
TM: 31
M: 2
TM: 10-50 (cl.1)
FM 10 or less (cl.2)
Total M: 33 is close to low limit 35 in the claims 1 and 9
Overlapping 35-60
Bainite
30-45
32
32
Ferrite
balance
balance
balance
Claims 4-6, 21, and 23-24
TS
1000 MPa or more (Cl.4, 6, 21, 24)
1168 MPa
1168 MPa
Elongation
10% or more (cl.5-6 and 23-24)
Inherently exist
Inherently exist
YS/TS
60% or more (Cl.5-6 and 23-24)
Inherently exist
Inherently exist
Regarding claims 7 and 11, PG’781 specify welding application as recited in the instant claims. (par.[0008]-[0009] and examples of PG’781).
Regarding claims 5-6 and 23-24, PG’781 does not provides elongation and yield/tensile ratio as claimed in the instant claims. However, the elongation and yield/tensile ratio are recognized as alloy’s properties fully depended on the alloy’s composition and microstructures. As discussed above, PG’781 teaches the similar alloy manufactured by the same cold rolling and same galvanizing/galvannealing treatment with the similar multi-phase microstructure as claimed in the instant claims, the claimed elongation and yield/tensile ratio would be highly expected for the steel sheet of PG’781. MPEP 2112 01 and 2145 II.
Regarding claim 25, PG’781 teaches the steel plate in the steel sheet by volume fraction, ferrite is present in 10 to 50%, bainitic ferrite and/or bainite in 10 to 60%, and tempered martensite in 10 to 50% (abstract and claims of PG’781), which overlaps the claimed overlap the claimed 40-50 Vol% martensite amount and 35-45 Vol% bainite amount as recited in the instant claim. Overlapping in martensite amount and bainite amount create prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the amount of martensite amount and bainite amount in the alloy as claimed since PG’781 teaches the same steel sheet manufactured by the same galvanized and cold-rolling processes throughout whole disclosing range.
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).
Regarding claims 5-6 and 23-24, PG’781 does not provides elongation and yield/tensile ratio as claimed in the instant claims. PG’950 teaches a steel sheet (Title, Abstract and claims of PG’950) manufactured by galvanizing or galvannealing treatment (Cl.8, par.[0086], [0132] of PG’950) and cold-rolling (par.[0149] of PG’950). All of the composition ranges, major phases, and properties disclosed by PG’950 are within or overlap the claimed ranges the claimed ranges of the instant claims. MPEP 2144 05 I. PG’950 provides working sample S in table 1 and #S-8 in table 3-2 of PG’950 having properties: TS 1492 MPa; Elongation 10%, and YS/TS ratio 93%, which reads on the claimed properties in the instant claims. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the alloy’s properties as claimed from the disclosure of PG’950 for the alloy PG’781 since both PG’781 and PG’950 teaches the same steel sheet manufactured by the same galvanized and cold-rolling processes throughout whole disclosing range.
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 claims 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.
Regarding Claims 1-7, 9, 11, and 20-26, although the conflicting claims are not identical, they are not patentable distinct from each other with claims 1-15 of copending application No. 17/201723 (updated as claims 1-15 of US 11,965,230 B2). All of the alloy composition ranges and phase amount disclosed in claims 1-15 of copending application No. 17/201723 (updated as claims 1-15 of US 11,965,230 B2) overlap the ranges of composition ranges, phase amount, and properties as recited in the instant claims, which is a prima facie case of obviousness. MPEP 2144.05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the amount of alloy compositions, phase amount, and essential manufacturing steps according to the disclosures claims 1-15 of copending application No. 17/201723 (updated as claims 1-15 of US 11,965,230 B2) because claims 1-15 of copending application No. 17/201723 (updated as claims 1-15 of US 11,965,230 B2) teaches the same steel alloy throughout the whole disclosed ranges. Claims 1-15 of copending application No. 17/201723 (updated as claims 1-15 of US 11,965,230 B2) does not specify the cold-rolling features as claimed in the instant claims 1 and 9. PG’781 teaches a high strength steel plate with an ultimate tensile strength of 900 MPa or more which is excellent in hydrogen embrittlement resistance and a method of production of the same (Title, Abstract and claims of PG’781) manufactured by galvanizing or galvannealing treatment (cl.13, 17, and par.[0206]-[0207] of PG’781) and cold-rolling by a draft of 40-70% (cl.11-12, par.[0060], and [0065] of PG’781), which overlap the claimed cold-rolling features as indicated in the instant claims. 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. Thus, no patentable distinction was found in the instant claims compared with the 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.
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 arguments related to the amended features in the instant claims, the Examiner’s position has been stated as above.
The Applicant’s arguments have been summarized as following:
Claims 1 and 20 (should be 9) are patentable over Azuma et al (PG’781) since “close enough” is not a legal ground for rejection under 103 without support from patent/literature. .
Azuma et al (PG’781) (M+B dual phase) does not specify the multiphase as claimed in the instant claim.
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), As pointed out in the rejection above, The working sample #70 in table 13 of Azuma et al (PG’781) includes 33 vol.% martensite in the alloy, which is very close to the low limit 35 Vol.% martensite as recited in the instant claims 1 and 9. Furthermore, Azuma et al (PG’781) specify adjusting the tempered martensite amount in range of 10-50 vol.% (cl.1 and abstract of PG’781) and less than 10 vol% fresh martensite (cl.2 of PG’781), which overlaps the claimed martensite range as claimed in the instant claims. MPEP 2144 05 I. It would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the amount of martensite amount, Al, and C amount in the alloy as claimed since Azuma et al (PG’781) teaches the same steel sheet manufactured by the same galvanized and cold-rolling processes throughout whole disclosing range.
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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIE YANG whose telephone number is (571)270-1884. The examiner can normally be reached on IFP.
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/JIE YANG/Primary Examiner, Art Unit 1734