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
Response to Amendments
The response filed on 11/04/2025 has been entered. Claim 28 has been amended and finds support in the specification. Claims 19 – 37 remain pending.
Restriction/Election
Applicant’s election of Group I, Claims 19 – 27 in the reply filed on 11/04/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 28 – 37 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected Groups II – IV, there being no allowable generic or linking claim.
Claim Objections
Claims 19 – 24 are objected to because of the following informalities:
Regarding claims 19 – 20, the names of the elements iron and carbon should be capitalized.
Regarding claim 22, there is a space between 0.001 and “%” which should be removed.
Appropriate correction is required.
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 – 23 and 25 – 26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sato (JP2014196557, using espacenet translation)
Regarding claim 19, Sato teaches a steel sheet which is subjected to cold-rolling and heat treating [0074, 0075], meeting the claimed limitation of heat treated cold-rolled steel sheet, that comprises a composition that anticipates the claimed composition [Table 1, Example J]
Element
Claimed Invention (Wt%)
Sato (mass%)
Carbon (C)
0.1 – 0.2%
0.14%
Manganese (Mn)
1.2 – 2.2%
1.9%
Silicon (Si)
0.05 – 0.6%
0.44%
Aluminum (Al)
0.001 – 0.1%
0.048%
Chromium (Cr)
0.01 – 0.5%
0.5%
Sulfur (S)
0 – 0.09%
0.001%
Phosphorous (P)
0 – 0.09%
0.005%
Nitrogen (N)
0 – 0.09%
0.0038%
Molybdenum (Mo)
0 – 0.5%
-
Titanium (Ti)
0 – 0.1%
0.048%
Niobium (Nb)
0 – 0.1%
-
Vanadium (V)
0 – 0.1%
-
Nickel (Ni)
0 – 1%
-
Copper (Cu)
0 – 1%
-
Calcium (Ca)
0 – 0.005%
-
Boron (B)
0 – 0.05%
0.0018%
Iron (Fe)
Balance
Balance
Shaded Area = optionally one or more of
Sato teaches an example in which a steel sheet with the composition of Example J has 34.1% bainite, which anticipates the claimed range of cumulative ferrite and bainite, 2.2% residual austenite which meet the claimed range, and 63.7% tempered martensite which meets the claimed range [Table 3A, Example 30]
"[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))
Regarding claim 20, Sato teaches the invention as applied above in claim 19. Sato teaches carbon is present in an amount of 0.14 mass% [Table 1, Example J], which meets the claimed range.
Regarding claim 21, Sato teaches the invention as applied above in claim 19. Sato teaches silicon is present in an amount of 0.44 mass% [Table 1, Example J], which meets the claimed range.
Regarding claim 22, Sato teaches the invention as applied above in claim 19. Sato teaches aluminum is present in an amount of 0.048 mass% [Table 1, Example J], which meets the claimed range.
Regarding claim 23, Sato teaches the invention as applied above in claim 19. Sato teaches manganese is present in an amount of 1.9 mass% [Table 1, Example J], which meets the claimed range.
Regarding claim 25, Sato teaches the invention as applied above in claim 19. Sato teaches that the steel sheet has 63.7% tempered martensite [Table 3A, Example 30], which meets the claimed range.
Regarding claim 26, Sato teaches the invention as applied above in claim 19. Sato teaches that the steel sheet has 34.1% bainite [Table 3A, Example 30], 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Sato (JP2014196557, using espacenet translation), as applied to claim 19.
Regarding claim 24, Sato teaches the invention as applied above in claim 19. Sato teaches chromium is present in an amount of 0.5 mass% [Table 1, Example J], which falls 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) (MPEP 2144.05 I)
Claims 19 – 26 are rejected under 35 U.S.C. 103 as being unpatentable over Seo (US2018/0355453, cited in the IDS 02/24/23)
Regarding claim 19, Seo teaches a steel sheet which is subjected to cold-rolling and annealing [0097, 0098], meeting the claimed limitation of heat treated cold-rolled steel sheet, that comprises a composition of:
Element
Claimed Invention (Wt%)
Seo (wt%)
Relation
Carbon (C)
0.1 – 0.2%
0.08 – 0.2%
Overlaps [0026]
Manganese (Mn)
1.2 – 2.2%
2.0 – 3.0%
Overlaps [0034]
Silicon (Si)
0.05 – 0.6%
0.05 – 1.3%
Overlaps [0030]
Aluminum (Al)
0.001 – 0.1%
0.01 – 0.1%
Overlaps [0045]
Chromium (Cr)
0.01 – 0.5%
0.3 – 1.2%
Overlaps [0049]
Sulfur (S)
0 – 0.09%
0.01% or less
Overlaps [0042]
Phosphorous (P)
0 – 0.09%
0.001 – 0.1%
Overlaps [0038]
Nitrogen (N)
0 – 0.09%
0.001 – 0.01%
Overlaps [0061]
Molybdenum (Mo)
0 – 0.5%
0.01 – 0.2%
Overlaps [0077]
Titanium (Ti)
0 – 0.1%
0.01 – 0.05%
Overlaps [0057]
Niobium (Nb)
0 – 0.1%
0.01 – 0.05%
Overlaps [0073]
Vanadium (V)
0 – 0.1%
0.01 – 0.2%
Overlaps [0077]
Nickel (Ni)
0 – 1%
Copper (Cu)
0 – 1%
Calcium (Ca)
0 – 0.005%
Boron (B)
0 – 0.05%
0.001 – 0.003%
Overlaps [0053]
Iron (Fe)
Balance
Balance
Meets
Shaded Area = optionally one or more of
Seo teaches that this steel sheet is produced to have 50 – 80% tempered martensite [0085], which overlaps with the claimed range, less than 5% residual austenite [0088], which overlaps with the claimed range, and 10 – 30% bainite with the remainder being ferrite (in particular, 20% or less [0089]), which overlaps with the claimed total of bainite and ferrite [0084].
With regards to the overlapping ranges taught, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to have selected overlapping ranges as disclosed. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I). “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)”
Regarding claim 20, Seo teaches the invention as applied above in claim 19. Seo teaches carbon is present in a range of 0.08 – 0.2 wt% [0026], which overlaps with the claimed range. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I).
Regarding claim 21, Seo teaches the invention as applied above in claim 19. Seo teaches silicon is present in a range of 0.05 – 1.3 wt% [0033], which overlaps with the claimed range. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I).
Regarding claim 22, Seo teaches the invention as applied above in claim 19. Seo teaches aluminum is present in a range of 0.01 – 0.1 wt% [0045], which overlaps with the claimed range. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I).
Regarding claim 23, Seo teaches the invention as applied above in claim 19. Seo teaches manganese is present in a range of 2.0 – 3.0 wt% [0037], which overlaps with the claimed range. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I).
Regarding claim 24, Seo teaches the invention as applied above in claim 19. Seo teaches chromium is present in a range of 0.3 – 1.2 wt% [0052], which overlaps with the claimed range. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I).
Regarding claim 25, Seo teaches the invention as applied above in claim 19. Seo teaches that the steel sheet has 50 – 80% tempered martensite [0085, 0087], which overlaps with the claimed range. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I).
Regarding claim 26, Seo teaches the invention as applied above in claim 19. Seo teaches that the steel sheet has 10 – 30% bainite with the remainder being ferrite (in particular, 20% or less [0089]), which overlaps with the claimed total of bainite and ferrite [0084]. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I).
Claims 19 – 27 are rejected under 35 U.S.C. 103 as being unpatentable over Shiraki (JP2016191106, using espacenet translation).
Regarding claim 19, Shiraki teaches a steel sheet which is subjected to cold-rolling and heat treating [0011], meeting the claimed limitation of heat treated cold-rolled steel sheet, that comprises a composition of:
Element
Claimed Invention (Wt%)
Shiraki (wt%)
Relation
Carbon (C)
0.1 – 0.2%
0.07 – 0.15%
Overlaps [0017]
Manganese (Mn)
1.2 – 2.2%
1.2 – 2.6%
Overlaps [0018]
Silicon (Si)
0.05 – 0.6%
0.2 – 0.8%
Overlaps [0019]
Aluminum (Al)
0.001 – 0.1%
0.03 – 0.1%
Overlaps [0023]
Chromium (Cr)
0.01 – 0.5%
0.5 – 2.1%
Overlaps [0020]
Sulfur (S)
0 – 0.09%
0 – 0.01%
Overlaps [0022]
Phosphorous (P)
0 – 0.09%
0 – 0.02%
Overlaps [0021]
Nitrogen (N)
0 – 0.09%
0 – 0.01%
Overlaps [0024]
Molybdenum (Mo)
0 – 0.5%
Titanium (Ti)
0 – 0.1%
0 – 0.1%
Overlaps [0026]
Niobium (Nb)
0 – 0.1%
0 – 0.1%
Overlaps [0026]
Vanadium (V)
0 – 0.1%
0 – 0.1%
Overlaps [0026]
Nickel (Ni)
0 – 1%
Copper (Cu)
0 – 1%
Calcium (Ca)
0 – 0.005%
Boron (B)
0 – 0.05%
0 – 0.01%
Overlaps [0027]
Iron (Fe)
Balance
Balance
Meets
Shaded Area = optionally one or more of
Shiraki teaches that this steel sheet is produced to have 60 – 80% tempered martensite [0031], which overlaps with the claimed range and 20 – 40% ferrite [0030], which overlaps with the claimed total of ferrite [0084]. Residual austenite and bainite is ~5% or less [0031].
With regards to the overlapping ranges taught, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to have selected overlapping ranges as disclosed. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I). “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)”
Regarding claim 20, Shiraki teaches the invention as applied above in claim 19. Shiraki teaches carbon is present in a range of 0.07 – 0.15 wt% [0017], which overlaps with the claimed range. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I).
Regarding claim 21, Shiraki teaches the invention as applied above in claim 19. Shiraki teaches silicon is present in a range of 0.2 – 0.8% wt% [0018], which overlaps with the claimed range. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I).
Regarding claim 22, Shiraki teaches the invention as applied above in claim 19. Shiraki teaches aluminum is present in a range of 0.03 – 0.15 wt% [0023], which overlaps with the claimed range. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I).
Regarding claim 23, Shiraki teaches the invention as applied above in claim 19. Shiraki teaches manganese is present in a range of 1.2 – 2.6 wt% [0019], which overlaps with the claimed range. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I).
Regarding claim 24, Shiraki teaches the invention as applied above in claim 19. Shiraki teaches chromium is present in a range of 0.5 – 2.1 wt% [0020], which falls is outside the upper bounds of 0.4%. 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) (MPEP 2144.05 I)
Regarding claim 25, Shiraki teaches the invention as applied above in claim 19. Shiraki teaches that the steel sheet has 60 – 80% tempered martensite [0030, 0031], which overlaps with the claimed range. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I).
Regarding claim 26, Shiraki teaches the invention as applied above in claim 19. Shiraki teaches that the steel sheet has 10 – 30% bainite with the remainder being ferrite (in particular, 20% or less [0089]), which overlaps with the claimed total of bainite and ferrite [0084]. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I).
Regarding claim 27, Shiraki teaches the invention as applied above in claim 19. Shiraki teaches that the steel sheet must have a tensile strength between 980 – 1065 MPa [0032] in the transversal direction [0070]. Wherein the tensile strength in the rolling direction would be the same or more than the transversal direction due to grain alignment and as such, would also overlap with the claimed range.
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 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 – 27 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.
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 12,338,505 – Overlapping composition and microstructure
US 11,220,722 – Overlapping composition, microstructure, and tensile strength
US 11,208,704 – Overlapping composition, microstructure, and tensile strength
US 10,822,672 – Overlapping composition and microstructure
US 10,808,291 – Overlapping composition, microstructure, and tensile strength
US 10,450,642 – Overlapping composition, microstructure, and tensile strength
WO2018127984 – Overlapping composition and microstructure
JP2016194135 – Highly overlapping microstructure and composition
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