Detailed Office Action
Notice of Pre-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
Information Disclosure Statement
The information disclosure (IDS) submitted on 05/28/26 was filed after the mailing date of the Non-Final on 11/20/26. The submission is in compliance with the provisions of 37 CFR 1.97 (the fee was paid). Accordingly, the IDS has been considered by the examiner.
Response to Amendments
The amendment filed on 05/18/26 has been entered. Claims 19 – 26 and 28 – 42 are pending. Claims 38 – 42 are newly added and find support in at least the original claim set. Claims 28 – 37 remain withdrawn.
Applicant’s amendments have overcome the previous objections
Claim Rejections – U.S.C. §102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 19 – 20, 22 – 23, 25 – 26, 39, and 42 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shiraki (JP2016194135, using espacenet translation cited with the previous OA on 11/20/25)
Regarding claim 19, Shiraki teaches a steel sheet which is subjected to cold-rolling and heat treating [0045, 0046], meeting the claimed limitation of heat treated cold-rolled steel sheet, that comprises a composition that anticipates the claimed composition [Table 1, Example 7]
Element
Claimed Invention (Wt%)
Shiraki (mass%)
Carbon (C)
0.1 – 0.2%
0.149%
Manganese (Mn)
1.2 – 2.2%
1.35%
Silicon (Si)
0.05 – 0.6%
0.05%
Aluminum (Al)
0.001 – 0.1%
0.037%
Chromium (Cr)
0.01 – 0.5%
0.5%
Sulfur (S)
0 – 0.09%
0.0012%
Phosphorous (P)
0 – 0.09%
0.004%
Nitrogen (N)
0 – 0.09%
0.0052%
Molybdenum (Mo)
0 – 0.5%
-
Titanium (Ti)
0 – 0.1%
0.03%
Niobium (Nb)
0 – 0.1%
0.03%
Vanadium (V)
0 – 0.1%
0.03%
Nickel (Ni)
0 – 1%
-
Copper (Cu)
0 – 1%
-
Calcium (Ca)
0 – 0.005%
-
Boron (B)
0 – 0.05%
0.0023%
Iron (Fe)
Balance
Balance
Shaded Area = optionally one or more of
Shiraki teaches an example in which a steel sheet with the composition of Example 7 has 32% ferrite, which anticipates the claimed range of cumulative ferrite and 65 – 68% tempered martensite which meets the claimed range [Table 32, Example 32; 0060]. See [0037] regarding residual microstructure.
"[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962))
Shiraki teaches that the tensile strength in a direction perpendicular to the rolling direction is 1043 MPa, which falls within claimed range [0061; Table 3, Example 32]. Shiraki does not expressly teach the tensile strength in the rolling direction. However, Shiraki teaches a steel with a substantially identical composition, microstructure, and tensile strength in a perpendicular direction to the rolling direction to the claimed invention. As such, there is a reasonable expectation to an ordinarily skilled artisan that Shiraki would possess a tensile strength in the rolling direction that is within the claimed range. 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, in this case composition, microstructure, and properties (tensile strength in direction perpendicular to rolling direction) a prima facie case of anticipation is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (MPEP 2112.01 I).
Regarding claim 20, Shiraki teaches the invention as applied in claim 19. Shiraki teaches carbon is present in an amount of 0.149 mass% [Table 1, Example 7], which meets the claimed range.
Regarding claim 22, Shiraki teaches the invention as applied in claim 19. Shiraki teaches aluminum is present in an amount of 0.037 mass% [Table 1, Example 7], which meets the claimed range.
Regarding claim 23, Shiraki teaches the invention as applied in claim 19. Shiraki teaches manganese is present in an amount of 1.35 mass% [Table 1, Example 7], which meets the claimed range.
Regarding claim 25, Shiraki teaches the invention as applied in claim 19. Shiraki teaches that the steel sheet has 65 – 68% tempered martensite [Table 3, Example 32], which meets the claimed range.
Regarding claim 26, Shiraki teaches the invention as applied in claim 19. Shiraki teaches that the steel sheet has 32% ferrite [Table 3, Example 32], which meets the claimed range.
Regarding claim 39, Shiraki teaches the invention as applied in claim 19.
Element
Claimed Invention (wt%)
Shiraki (mass%)
Carbon (C)
0.1 – 0.2%
0.149%
Manganese (Mn)
1.2 – 2.2%
1.35%
Silicon (Si)
0.05 – 0.6%
0.05%
Aluminum (Al)
0.001 – 0.1%
0.037%
Chromium (Cr)
0.01 – 0.5%
0.5%
Sulfur (S)
0 – 0.09%
0.0012%
Phosphorous (P)
0 – 0.09%
0.004%
Nitrogen (N)
0 – 0.09%
0.0052%
Molybdenum (Mo)
0 – 0.5%
-
Titanium (Ti)
0 – 0.1%
0.03%
Niobium (Nb)
0 – 0.1%
0.03%
Vanadium (V)
0 – 0.1%
0.03%
Nickel (Ni)
0 – 1%
-
Copper (Cu)
0 – 1%
-
Calcium (Ca)
0 – 0.005%
-
Boron (B)
0 – 0.05%
0.0023%
Iron (Fe)
Balance
Balance
Shiraki does not teach additional alloying elements not listed in claim 39, meeting the claimed “consisting of”.
Regarding claim 42, Sato teaches the invention as applied above in claim 19. Shiraki teaches manganese is present in an amount of 1.35 mass% [Table 1, Example 7], which meets the claimed range.
Claim Rejections – U.S.C. §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.
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.
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 21, 24, 38, and 40 – 41 are rejected under 35 U.S.C. 103 as being unpatentable over Shiraki (JP2016194135, using espacenet translation, cited with the previous OA on 11/20/25), as applied to claim 19 and 39.
Regarding claim 21, Shiraki teaches the invention as applied in claim 19. Shiraki teaches silicon is present in an amount of 0.05 mass% [Table 1, Example 7], which lies outside the claimed range. However, “[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.").” (MPEP 2144.05 I).
In this case, the claimed range and silicon content of Shiraki is so close that one would expect them to have the same properties. Indeed, Shiraki teaches a microstructure and tensile strength that meets the limitations of claim 19. As such, a prima facie case of obviousness exists without evidence of criticality or unexpected results.
Regarding claim 24, 38, and 40, Shiraki teaches the invention as applied in claims 19 and 39. Shiraki teaches chromium is present in an amount of 0.5 mass% [Table 1, Example 7], which lies outside the claimed ranges of 24, 38, and 40. However, “[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.").” (MPEP 2144.05 I).
In this case, the claimed range and chromium content of Shiraki is so close that one would expect them to have the same properties. Indeed, Shiraki teaches a microstructure and tensile strength that meets the limitations of claim 19. As such, a prima facie case of obviousness exists without evidence of criticality or unexpected results.
Regarding claim 41, Shiraki teaches the invention as applied in claim 19. Shiraki teaches chromium is present in an amount of 0.5 mass% [Table 1, Example 7], which lies outside the claimed range. However, In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of "less than 6 pounds per cubic feet" and the prior art range of "between 6 lbs./ft3 and 25 lbs./ft3" were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.).
Likewise, “[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.").” (MPEP 2144.05 I).
In this case, the claimed range and chromium content of Shiraki is so close that one would expect them to have the same properties. Indeed, Shiraki teaches a microstructure and tensile strength that meets the limitations of claim 19. As such, a prima facie case of obviousness exists without evidence of criticality or unexpected results.
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 – 26 and 38 – 42 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 20 – 29 of copending Application No. 17/783,442 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because 17/783,442 claims a heat treated cold rolled steel sheet with an overlapping composition [Claims 20 – 25] and microstructure [Claims 20, 26 – 29]. The steel sheet has an overlapping tensile strength [claim 20].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 19 – 26 and 38 – 42 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 20 – 31 of copending Application No. 17/783,409 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because 17/783,409 claims a heat treated cold rolled steel sheet with an overlapping composition [Claims 20 – 26] and microstructure [Claims 20, 26 – 29]. The steel sheet has an overlapping tensile strength [claims 30 – 31].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's amendments and arguments thereto have overcome the previous rejections. Specifically, applicant has incorporated the limitations of claim 27 into claim 19. As such, the amendment has overcome the previous rejections of:
Claims 19 – 23 and 25 – 26 under 35 U.S.C. 102(a)(1) as being anticipated by Sato (JP2014196557)
Claim 24 under 35 U.S.C. 103 as being unpatentable over Sato (JP2014196557)
Claims 19 – 26 under 35 U.S.C. 103 as being unpatentable over Seo (US2018/0355453)
The Examiner agrees with Applicant’s argument that the data provided shows that the tensile strength in the rolling direction would not necessarily be the same or more than the tensile strength in a transverse direction to the rolling direction. Therefore, the rejection of claim 27 (the limitations of which are now incorporated into claim 19) has been overcome. The rejection of claims 19 – 27 under 35 U.S.C. 103 as being unpatentable over Shiraki (JP2016191106) has been withdrawn.
However, upon further consideration, a new rejection is made of:
Claims 19 – 20, 22 – 23, 25 – 26, 39, and 42 under 35 U.S.C. 102(a)(1) as being anticipated by Shiraki (JP2016194135, using espacenet cited with the previous OA)
Claims 21, 24, 38, and 40 – 41 under 35 U.S.C. 103 as being unpatentable over Shiraki (JP2016194135)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Austin M Pollock whose telephone number is (571)272-5602. The examiner can normally be reached M - F (11 - 8 ET).
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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738
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