DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02/06/2026 has been entered.
Status of Claims
Claims 1, 2, and 5-20 are pending and presented for examination on the merits.
Claims 1, 6, 7, 10, 11, 14, 16, and 19 are currently amended.
Status of Previous Claim Rejections Under 35 USC § 112
The previous rejections of claims 1, 2, and 5-20 under 35 U.S.C. 112(a) are withdrawn in view of the amendments to claims 1, 7, 11, and 16.
The previous rejections of claims 21-24 under 35 U.S.C. 112(a) and 35 U.S.C. 112(b) are moot in view of the canceled status of the claims.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 2, and 5-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1, 7, 11, and 16, the claimed lower limit of the hole expansion ratio (HER) property (“at least 25%” in the range “at least 25% up to 31%”) is new matter because the specification does not disclose a lower limit HER inclusive of 25% for steels of the present invention. The instant specification as originally filed states that it is desirable for steel sheets to have a HER of more than 25% according to ISO standard 16630:2009 (para. [0006]). This disclosure appears exclusive of a HER value of 25%. In addition, there are no inventive examples in Tables I or II in which HER is 25%. Since the specification provides no support for the entire claimed range, the claims do not comply with the written description requirement.
Regarding claims 2, 5, 6, 8-10, 12-15, and 17-20, the claims are likewise rejected, as they require all the limitations of rejected claims 1, 7, 11, and 16.
Double Patenting
Claims 1, 2, and 5-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4 and 5 of copending Application No. 17/835,347 (claim set filed 12/30/2025) in view of US 2012/0175028 (A1) to Matsuda et al. (“Matsuda”).
The copending claims recite the claimed composition, mechanical properties (overlapping yield strength, tensile strength, total elongation, ISO 16630:2009 hole expansion ratio), and microstructure, but they do not recite a galvanized (claims 1, 2, 5, and 6) or galvannealed (claims 7-10) coating on the steel sheet.
Matsuda is directed to a high strength steel sheet and teaches forming a galvanized or galvannealed layer (coating at least one face of the steel sheet with a galvanized or galvannealed metallic coating) on the steel sheet. Para. [0113], [0117]. The coating enhances corrosion resistance. Para. [0118]. It would have been obvious to one of ordinary skill in the art to have galvanized or galvannealed the steel sheets of the copending claims in order to improve the corrosion resistance of the steel sheet.
This is a provisional nonstatutory double patenting rejection.
Claims 11-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4 and 5 of copending Application No. 17/835,347 (claim set filed 12/30/2025) in view of US 2014/0322559 (A1) (also WO 2012/156428 (A1)) to Becker et al. (“Becker”) and further in view of Matsuda.
The copending claims recite the claimed composition, mechanical properties (overlapping yield strength, tensile strength, total elongation, ISO 16630:2009 hole expansion ratio), and microstructure, but they do not recite the martensite being partitioned martensite and a galvanized (claims 11-15) or galvannealed (claims 16-20) coating on the steel sheet.
With respect to partitioned martensite, Becker is directed to a high strength flat steel product and teaches a microstructure containing residual austenite 5-30%, bainite less than 10%, tempered martensite 25-80%, untempered martensite 5-70%, and ferrite less than 5% (including 0%) in surface percent. Abstract; para. [0034], [0121]; claim 1. To achieve this structure, the steel was subjected to partitioning to avoid over-tempering the martensite. Para. [0100]. Over-tempered martensite is undesirable because it negatively affects elongation, bending angle, and hole expansion forming properties. Para. [0101].
It would have been obvious to one of ordinary skill in the art to have produced the steel of the copending claims by partitioning (thereby forming partitioned martensite) because it would prevent the formation of over-tempered martensite and the negative effects of that phase on the mechanical properties of the steel.
With respect to the coating, Matsuda is directed to a high strength steel sheet and teaches forming a galvanized or galvannealed layer (coating at least one face of the steel sheet with a galvanized or galvannealed metallic coating) on the steel sheet. Para. [0113], [0117]. The coating enhances corrosion resistance. Para. [0118]. It would have been obvious to one of ordinary skill in the art to have galvanized or galvannealed the steel sheets of the copending claims in order to improve the corrosion resistance of the steel sheet.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed 02/06/2026 have been fully considered.
Applicant is notified that the claims are free from prior art rejections, but are rejected under 35 U.S.C. § 112(a) and double patenting, as noted above.
Applicant’s arguments with respect to Becker and Matsuda have been considered but are moot because there are no prior art rejections of the claims that rely upon those references.
The double patenting rejections are maintained, as a terminal disclaimer has not been filed and the amended claims are not patentably distinct from the copending claims, for the reasons presented above.
Conclusion
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/VANESSA T. LUK/Primary Examiner, Art Unit 1733
March 19, 2026