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 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/24/26 has been entered.
Status of Claims
Claims 1-16 are examined in this office action as claim 1 was amended in the amendment received 4/24/26.
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.
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 1-16 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.
Claim 1 has been amended to recite the limitation “the end part is a portion located 3-9 mm from the edge part towards a center of the panel”. Regarding the end part being a portion located 3-9 mm from the edge part, the specification only teaches in paragraph [0023] that the end part is “advanced by several mm toward the center side of the panel from the edge part”. It does not disclose a specific amount by which the end part is advanced beyond the indefinite term of “several”. While applicant argues and submits a declaration that one of ordinary skill would readily understand an end part of the present application corresponds with a region at a distance of 3-9 mm from the edge part toward the center of the panel (Applicant’s remarks, pg. 7, 3rd paragraph), it is not clear why “several” would be limited to single digit integers and why it would specifically encompass 3-9 mm rather than 2-11 or 3-6. Several is defined as being an amount that is not exact but is fewer than many, however this indefinite definition does not lead a person of ordinary skill to the claimed range. Therefore, the specification does not describe the claimed subject matter of “the end part is a portion located 3-9 mm from the edge part towards a center of the panel” in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor had possession of the claimed invention. Claims 2-16 are also rejected as they depend from claim 1 and do not solve the above issue.
Claims 1-16 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.
Claim 1 recites the limitation “in laths of the martensite” line 26. It is not clear if this requires the martensite to be in laths and have the further claimed number density of precipitates, whether this is requiring the number density of precipitates only when laths of martensite exist, or some other meaning. Claims 2-16 are also rejected as they depend from claim 1 and do not solve the above issue.
Response to Declaration under 37 C.F.R. § 1.132
The declaration under 37 CFR 1.132 filed 4/24/26 is insufficient to overcome the rejection of claims 1-16 based upon 35 U.S.C. 112(a) as set forth in the last Office action because:
Declarant, who is a senior researcher with applicant (Declaration, point 2), argues that end part is interpreted as a portion located 3-9 mm from the edge part towards a center of the panel based on common knowledge and the instant specification (Declaration, point 5). Declarant argues that “several” in several mm indicates a single-digit number of an integer between 1 and 9 and this is how the terminology is expressed in Japanese (Declaration, pg. 2, 1st two paragraphs of discussion section). Declarant argues that as the edge part is defined as a region not affected by hemming or spot welding, a person skilled in the art would understand these process to affect 1-3 mm of the sheet resulting in the end part corresponding to a distance for 3-9 mm from the edge part to towards the center of the panel (Declaration, pg. 2 last paragraph – pg. 3, first three paragraphs).
Several has an English definition of being an amount that is not exact but is fewer than many, however this indefinite definition does not lead a person of ordinary skill to the claimed range. Even accepting declarant’s arguments, it is not clear why “several” would be limited to single digit integers and why it would specifically encompass 3-9 mm rather than a larger range of 2-11 or a smaller range of 4-7. The English disclosure is much more vague than Declarant’s arguments suggest and there is nothing in the specification that is pointed at to suggest the range of 3-9 mm that has been selected. Applicant may have intended to recite a distance of 3-9 mm from the edge part for the end part, but this is not a clear error in translation and Declarant’s arguments concerning the interpretation of the language in Japanese is not compelling as to how “several” is interpreted in English.
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Response to Arguments
With respect to the 112(b) rejections, it is agreed that applicant’s amendments have cured the previous indefiniteness issues. Therefore those rejections are withdrawn. However, there are new 112(a) written description issues concerning 3-9 mm.
With respect to support for the end part being a portion located 3-9 mm from the edge part towards a center of the panel, applicant argues and submits a declaration that one of ordinary skill would readily understand an end part of the present application corresponds with a region at a distance of 3-9 mm from the edge part toward the center of the panel (Applicant’s remarks, pg. 7, 3rd paragraph).
However, it is not clear why “several” would be limited to single digit integers and why it would specifically encompass 3-9 mm rather than 2-11 or 3-6. Several is defined as being an amount that is not exact but is fewer than many, however this indefinite definition does not lead a person of ordinary skill to the claimed range. The English disclosure is much more vague than applicant’s arguments suggest and there is nothing in the specification that is pointed to suggest the range of 3-9 mm that has been selected. Applicant may have intended to recite a distance of 3-9 mm from the edge part for the end part, but this is not a clear error in translation and applicant’s arguments concerning the interpretation of the language in Japanese is not compelling as to how “several” is interpreted in English.
Applicant’s arguments, see pg. 10, first five paragraphs, filed 4/24/26, with respect to the 103 rejection over Kim have been fully considered and are persuasive. The 103 rejection of 11/26/25 has been withdrawn.
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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