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 .
Election/Restrictions & Status of Claims
Applicant’s election without traverse of Group I, claims 1-4 and 9-10, drawn to a steel sheet in the reply filed on 26 September 2025 is acknowledged.
Claims 5-8 and 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/26/2025.
Specification
The disclosure is objected to because of the following informalities:
The tables 1-3 contain illegible characters – See marked up specification dated 12/16/2022.
Appropriate correction is required.
Claim Objections
Claims 4 and 9-10 are objected to because of the following informalities: The term “thereof” should be replaced by what it refers to. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 1-4 and 9-10 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.
Regarding claims 1-4 and 9-10, claim 1 requires “an equivalent carbon content Ceq of 0.35% or more and less than 0.60%”. However, instant claim does not recite the formula for the Ceq or the units for Ceq. As there exists many formulaic expressions to calculate Ceq, it is unclear what is required by the instant claim and its dependents thereby making them indefinite.
Regarding claims 1-4 and 9-10, claim 1 recites the limitation “90-degree bending at a curvature radius/thickness ratio of 4.2 in a rolling (L) direction with respect to an axis extending in a width (C) direction causes a change of 0.50 or more in (a grain size in a thickness direction)/(a grain size in a direction perpendicular to the thickness) of the tempered martensite in an L cross section in a 0- to 50-μm region from a surface of the steel sheet on a compression side”. However, the claim also recites the limitation “a steel microstructure with an area fraction of ferrite: 40% to 85%, tempered martensite and bainite: 10% to 55% in total, retained austenite: 3% to 15%, and ferrite, tempered martensite, bainite, and retained austenite: 93% or more in total”. The second limitation provides that the tempered martensite is not required to be present in the steel since the sums that involve the tempered martensite allows it to be zero. Therefore, it is unclear if the claim is requiring the presence of tempered martensite and the limitation directed to the change of 0.50 or more is required be met or whether the limitation directed the change of 0.50 or more is only required to be met if the microstructure has tempered martensite since the claim allows a microstructure without the presence of tempered martensite. Claims 2-4 and 9-10 are dependents of claim 1, do not resolve the aforementioned issue and thereby also indefinite.
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
List 1
Element
Instant Claims
(mass%)
Prior Art
(mass%)
C
0.03 – 0.20 claim 2
0.12 – 0.30
Si
0.1 – 2.0 claim 2
0.5 – 3.0
Mn
0.5 – 2.5 claim 2
2.0 – 4.0
P
0.05 or less claim 2
0.100 or less
S
0.05 or less claim 2
0.02 or less
Al
0.005 – 0.1 claim 2
0.01 – 1.50
N
0.010 or less claim 2
0.010 or less
claim 3: at least one selected from the group consisting of: Cr: 1.0 or less, Mo: 0.5 or less, V: 0.5 or less, Ti: 0.5 or less, Nb: 0.5 or less, B: 0.005 or less, Ni: 1.0 or less, Cu: 1.0 or less, Sb: 1.0 or less, Sn: 1.0 or less, Ca: 0.005 or less, and REM: 0.005 or less.
at least one selected from V: 0.1% to 1.5%, Mo: 0.1% to 1.5%, Ti: 0.005% to 0.10%, and Nb: 0.005% to 0.10%
optional; Cr: 0.005% to 2.0%
optional; Ni: 0.005% to 2.0%
Fe + impurities
Balance
Balance
Claims 1-4 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/159771 A1 via its US English equivalent US 2021/0102278 A1 of Hasegawa (US’278) of record.
Regarding claims 1-3, WO 2019/159771 A1 via its US English equivalent US 2021/0102278 A1 of Hasegawa (US’278) teaches “A high-strength steel sheet has a component composition containing, on a percent by mass basis, C: 0.12% to 0.30%, Si: 0.5% to 3.0%, Mn: 2.0% to 4.0%, P: 0.100% or less, S: 0.02% or less, Al: 0.01% to 1.50%, and at least one selected from V: 0.1% to 1.5%, Mo: 0.1% to 1.5%, Ti: 0.005% to 0.10%, and Nb: 0.005% to 0.10%, the balance being Fe and incidental impurities, and a steel microstructure containing, on an area percent basis, 1% to 35% ferrite having an aspect ratio of 2.0 or more, 10% or less ferrite having an aspect ratio of less than 2.0, less than 5% non-recrystallized ferrite, 40% to 80% in total of bainite and martensite containing carbide, 5% to 35% in total of fresh martensite and retained austenite, and 3% to 35% retained austenite, the retained austenite having a C content of 0.40% to 0.70% by mass.” “As an incidental impurity, N may be contained in an amount of 0.010% or less” “In accordance with aspects of the present invention, martensite containing carbide is tempered martensite”. Therefore, the prior art teaches a high-strength steel sheet with a composition wherein the claimed ranges of the constituent elements of the instant alloy of the instant claims overlap or lie inside the ranges of various elements of the alloy of the prior art as shown in the List 1 above. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed composition over the prior art disclosure since the prior art teaches the similar property/utility throughout the disclosed ranges. 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I. {abstract, [0001]-[0004], [0007]-[0013], [0016]-[0056]}.
Regarding the carbon equivalent or Ceq range recited in claim 1, although the prior art does not teach of Ceq range, the prior art teaches ranges for the elements C, Si, Mn, Ni, Cr, Mo and V, the elements typically involved in the calculation of Ceq, wherein the claimed ranges of these elements of the instant alloy of the instant claims overlap or lie inside the ranges of various elements of the alloy of the prior art as shown in the List 1 above. This means that the claimed range of Ceq would also overlap or lie inside the Ceq value of the steel of the prior art thereby rendering the instant claimed range obvious. 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Regarding the recited limitation “a steel microstructure with an area fraction of ferrite: 40% to 85%, tempered martensite and bainite: 10% to 55% in total, retained austenite: 3% to 15%, and ferrite, tempered martensite, bainite, and retained austenite: 93% or more in total” of claim 1, the prior art teaches [0039] “The steel microstructure of the high-strength steel sheet according to aspects of the present invention contains, on an area percentage basis, 1% to 35% ferrite having an aspect ratio of 2.0 or more, 10% or less ferrite having an aspect ratio of less than 2.0, less than 5% non-recrystallized ferrite, 40% to 80% in total of bainite and martensite containing carbide, 5% to 35% in total of fresh martensite and retained austenite, and 3% to 35% retained austenite” [0049] “In accordance with aspects of the present invention, martensite containing carbide is tempered martensite” “[0047] Basically, pearlite is not contained in accordance with aspects of the present invention. Pearlite is not preferred, and thus the amount of pearlite is preferably 3% or less in terms of area percentage.” “[0048] Structures other than the structures described above may be acceptable up to 3% in total.” thereby meeting the recited limitations of the instant claim.
Regarding the tensile range recited in claim 1, the prior art teaches [0053] “The high-strength steel sheet according to aspects of the present invention has a tensile strength (TS) of 1,180 MPa or more” thereby meeting instant claimed limitation.
It is noted that the prior art is silent regarding its alloy having the properties of a) “90-degree bending at a curvature radius/thickness ratio of 4.2 in a rolling (L) direction with respect to an axis extending in a width (C) direction causes a change of 0.50 or more in (a grain size in a thickness direction)/(a grain size in a direction perpendicular to the thickness) of the tempered martensite in an L cross section in a 0- to 50-μm region from a surface of the steel sheet on a compression side”, as recited in the instant claim 1. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP § 2112.01 I. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Therefore, it is expected that the alloy of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (see compositional analysis above), b) the claimed and prior art products are identical or substantially identical in structure or composition (see microstructure analysis above) and c) the claimed and prior art products are produced by identical or substantially identical processes {instant alloy: instant specification [0060]-[0078]; Prior art: [0057]-[0081]}. Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
Regarding claims 4, 9 and 10, the prior art teaches “[0052] The high-strength steel sheet according to aspects of the present invention may be a high-strength steel sheet including a coated layer on a surface thereof. The coated layer may be a hot-dip galvanized layer, an electrogalvanized layer, or a hot-dip aluminum-coated layer. The coated layer may be a hot-dip galvannealed layer formed by performing hot-dip galvanization and then alloying treatment.” thereby meeting instant claimed limitations.
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 1-4 and 9-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. US 11,976,341 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent disclosed a steel sheet with substantially identical composition, Ceq, change/property caused by “90-degree bending at a curvature radius/thickness ratio of 4.2 in a rolling (L) direction with respect to an axis extending in a width (C) direction”, microstructure and strength (see below for differences).
It is noted that there is a slight difference between the claims for Ceq and ferrite. For example: “an equivalent carbon content Ceq of 0.60% or more and less than 0.85%” (patent) vs. “an equivalent carbon content Ceq of 0.35% or more and less than 0.60%” (instant claim 1); “a steel microstructure with an area fraction of ferrite: less than 40%, tempered martensite and bainite: 40% or more in total, retained austenite: 3% to 15%, and ferrite, tempered martensite, bainite, and retained austenite: 93% or more in total” (patent) vs. “a steel microstructure with an area fraction of ferrite: 40% to 85%, tempered martensite and bainite: 10% to 55% in total, retained austenite: 3% to 15%, and ferrite, tempered martensite, bainite, and retained austenite: 93% or more in total” (instant claim 1) (differences emphasized). However, the ranges are so close to each other that one would expect similar properties. This expectation of similar properties is met by the strength and the change/property caused by “90-degree bending at a curvature radius/thickness ratio of 4.2 in a rolling (L) direction with respect to an axis extending in a width (C) direction” as these properties of the instant claims lie inside or overlap with that of the claims of the patent. Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner,778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). See MPEP § 2144.05 I.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOPHY S. KOSHY whose telephone number is (571)272-0030. The examiner can normally be reached M-F 8:30 AM- 5:00 PM.
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/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733