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 .
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 allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). 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, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 05/05/2026 has been entered.
Status of Claims
Claims 38-44 are new. Claims 28-37 are withdrawn. Claims 19-27 and 38-44 are examined herein.
Claim Rejections - 35 USC § 103
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.
Claims 19-27 and 38-44 are rejected under 35 U.S.C. 103 as being unpatentable over KR’646 (KR2015-0072646, IDS dated 05/05/2026).
Regarding claims 19-26 and 38-43, KR’646 discloses (Abstract) a cold-rolled steel sheet with a composition that overlaps the instant claimed composition of C, Si, Mn, Cr, Al, Ti, S, P, N, Nb, B and Fe, and therefore it would have been obvious to one of ordinary skill in the art to have selected amounts of each element from the ranges disclosed in KR’646 to produce a steel that meets the recited composition in claims 19-24, 38 and 42-43. See MPEP 2144.05 I.
Element
Claim 19
(mass %)
KR’646
(mass %)
Overlap
(mass %)
C
0.1-0.2
0.05-0.13
0.1-0.13
Mn
1.5-2.5
1-2
1.5-2
Si
0.1-0.25
≤0.5 (excluding 0)
0.1-0.25
Cr
0.1-1
≤0.5 (excluding 0)
0.1-0.5
Al
0.01-0.1
0.01-0.1
0.01-0.1
Ti
0.001-0.1
48/14x[N]-0.1
0.001-0.1
S
0.0-0.09
≤0.015 (excluding 0)
≤0.015 (excluding 0)
P
0.0-0.09
≤0.03 (excluding 0)
≤0.03 (excluding 0)
N
0.0-0.09
≤0.01 (excluding 0)
≤0.01 (excluding 0)
Nb
0.0-0.1
≤0.1 (excluding 0)
≤0.1 (excluding 0)
B
0-0.05
≤0.005 (excluding 0)
≤0.005 (excluding 0)
Fe + Impurities
Balance
Balance
Balance
KR’646 discloses that the steel consists of at least 90% tempered martensite and 10% or less ferrite+bainite (Abstract; Page 4 and Page 5; Table 3, Samples 1-14), which overlap the recited phase contents in claims 19, 25-26 and 39-41. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05 I. Thus, the recited phase content in claims 19, 25-26 and 39-41 is a prima face case of obviousness over KR’646.
Regarding claim 27, KR’646 discloses that the steel has a tensile strength of 1000 MPa or greater and a yield strength of 850 MPa or greater (Page 6, last paragraph), which overlap the recited tensile strength and yield strength in claim 27. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05 I. Thus, the recited properties are a prima face case of obviousness over KR’646.
Regarding claim 44, KR’646 discloses that the steel consists of at least 90% tempered martensite and 10% or less ferrite+bainite (Abstract; Page 4 and Page 5; Table 3, Samples 1-14), which meets the limitation recited in claim 44.
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 19-27 and 38-44 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15-29 of copending Application No. 18/704,533 (US 20250019786). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 15-29 of copending Application No. 18/704,533 teach a cold-rolled steel sheet that overlap the recited composition, structure and property limitations recited in the instant claims. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05 I. Thus, claims 19-27 and 38-44 are obvious over claims 15-29 of copending Application No. 18/704,533.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/XIAOWEI SU/Primary Examiner, Art Unit 1733
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