DETAILED ACTION
Response to Amendment
The Amendment filed 10/27/2025 has been entered. Claims 13-28 remain pending in the application. Claim 24 has been withdrawn due to a restriction requirement. Claims 1-12 have been canceled. New claims 25-28 have been added. Applicant's amendments to the drawings have overcome the objections previously set forth in the Non-Final Rejection mailed 08/07/2025. Applicant's amendments to the abstract and specification have overcome the objections previously set forth in the Non-Final Rejection mailed 08/07/2025. Applicant's amendments to the claims have overcome the objections previously set forth in the Non-Final Rejection mailed 08/07/2025 with the exception of claim 22 as outlined in Claim Objections in this Office action. Applicant's amendments to the claims have overcome the 112(b) rejections previously set forth in the Non-Final Rejection mailed 08/07/2025. The nonstatutory double patenting rejections previously set forth in the Non-Final Rejection mailed 08/07/2025 are maintained and have been updated in this Office action to reflect that copending applications 18/016,543 and 18/016,572 have been issued as US 12473620 B2 and US 12503740 B2 respectively.
Claim Objections
Claims 22 and 25 are objected to because of the following informalities:
Claim 22 should add the abbreviations between parenthesis for clarity (e.g. “total elongation (TE)”), and
Claim 25 recites the limitation “0% to 0.02” adding a percentage symbol to one of the numbers but not the other.
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 13-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. US 11965225 B2.
US 11965225 B2 teaches “a cold-rolled and heat treated steel sheet, made of a steel having a composition comprising, by weight percent:
0.1%≤C≤0.4%
3.5%≤Mn≤8.0%
0.1%≤Si≤1.5%
Al≤3%
Mo≤0.5%
Cr≤1%
Nb≤0.1%
Ti≤0.1%
V≤0.2%
B≤0.004%
0.002%≤N≤0.013%
S≤0.003%
P≤0.015%,
a remainder being iron and unavoidable impurities,
the cold-rolled and heat-treated steel sheet having a structure consisting of, in surface fraction:
between 8 and 50% of retained austenite;
at most 80% of intercritical ferrite, ferrite grains of the intercritical ferrite having an average size of at most 1.5 μm;
at most 1% of cementite, wherein particles of the cementite have an average size lower than 50 nm; and
martensite and/or bainite”.
Although the claims at issue are not identical, they are not patentably distinct from each other because of overlapping chemical compositions, microstructures, and properties. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. See MPEP § 2144.05 I.
US 11965225 B2 does not explicitly teach a carbon [C]A and manganese [Mn]A content in austenite, expressed in weight percent, wherein [C]A*√[Mn]A is from 0.48 to 1.8, and an inhomogeneous repartition of manganese defined by a manganese distribution with a slope above or equal to -50. However, one of ordinary skill in the art would expect the steel of US 11965225 B2 to possess the properties of the instant application since the instant and patented products are identical or substantially identical in composition, microstructure, and processing. See MPEP § 2112.01 I.
Claims 13-20 and 23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. US 12473620 B2.
US 12473620 B2 teaches “a cold rolled and annealed steel sheet, made of a steel having a composition comprising, by weight percent:
C: 0.03-0.18%
Mn: 6.0-11.0%
Al: 0.2-3%
Mo: 0.05-0.5%
B: 0.0005-0.005%
S≤0.010%
P≤0.020%
N≤0.008%
and optionally one or more of the following elements, in weight percentage:
Si≤1.20%
Ti≤0.050%
Nb≤0.050%
Cr≤0.5%
V≤0.2%
a remainder of the composition being iron and unavoidable impurities resulting from processing;
the steel sheet having a microstructure comprising, in surface fraction, from 25% to 55% of retained austenite, from 45% to 75% of ferrite, less than 5% of fresh martensite, a carbon [C]A and manganese [Mn]A content in austenite, expressed in weight percent, such that the ratio ([C]A×[Mn]A 2)/(C %×Mn %) is from 19.0 to 41.0 wt %, C % and Mn % being the nominal values in carbon and manganese in weight %, a carbides density below 3×106/mm2 and an inhomogeneous repartition of manganese defined by a manganese distribution with a slope above or equal to −30.”
Although the claims at issue are not identical, they are not patentably distinct from each other because of overlapping chemical compositions, microstructures, and properties, including an inhomogeneous repartition of manganese defined by a manganese distribution with a slope above or equal to −30. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. See MPEP § 2144.05 I.
US 12473620 B2 does not explicitly teach a carbon [C]A and manganese [Mn]A content in austenite, expressed in weight percent, wherein [C]A*√[Mn]A is from 0.48 to 1.8. However, one of ordinary skill in the art would expect the steel of US 11965225 B2 to possess the properties of the instant application since the instant and patented products are identical or substantially identical in composition, microstructure, and processing. See MPEP § 2112.01 I.
Claims 13-20 and 23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 8-10 of U.S. Patent No. US 12503740 B2.
US 12503740 B2 teaches “a cold rolled and double annealed steel sheet, made of a steel having a composition comprising, by weight percent:C: 0.03-0.18%
Mn: 6.0-11.0%0.2≤Al<3%Mo: 0.05 -0.5%B: 0.0005-0.005%S≤0.010%P≤0.020%N≤0.008%
and optionally one or more of the following elements:Si≤1.20%Nb≤0.050%Ti≤0.050%Cr≤0.5%V≤0.2%
a remainder of the composition being iron and unavoidable impurities resulting from processing;
the steel sheet having a microstructure comprising in surface fraction from 0% to 45% of ferrite, from 20% to 50% of retained austenite, from 5 to 80% of annealed martensite, less than 5% of fresh martensite, a carbon [C]A and manganese [Mn]A content in austenite, expressed in wt %, such that the ratio ([C]A 2×[Mn]A)/(C %2×Mn %) is from 4.5 to 11.0, C % and Mn % being the nominal C and Mn weight percent in the steel, and a carbides density below 4×106/mm2.”
Although the claims at issue are not identical, they are not patentably distinct from each other because of overlapping chemical compositions, microstructures, and properties. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. See MPEP § 2144.05 I.
US 12503740 B2 does not explicitly teach a carbon [C]A and manganese [Mn]A content in austenite, expressed in weight percent, wherein [C]A*√[Mn]A is from 0.48 to 1.8, and an inhomogeneous repartition of manganese defined by a manganese distribution with a slope above or equal to -50. However, one of ordinary skill in the art would expect the steel of US 11965225 B2 to possess the properties of the instant application since the instant and patented products are identical or substantially identical in composition, microstructure, and processing. See MPEP § 2112.01 I.
Claims 13-16, 18-20, and 23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-15, 17-18, and 20-21 of copending Application No. 18/016,595 (reference application).
The copending application teaches “a cold rolled and annealed steel sheet, made of a steel having a composition comprising, by weight percent:
C: 0.03 - 0.18 %
Mn: 6.0 - 11.0 %
Al: 0.2 -3%
Mo: 0.05 - 0.5 %
B: 0.0005 - 0.005%
S ≤ 0.010%
P ≤ 0.020%
N ≤ 0.008%
and optionally one or more of the following elements:
Si ≤ 1.20%
Ti ≤ 0.050%
Nb ≤ 0.050%
Cr ≤ 0.5%
V ≤ 0.2%
a remainder of the composition being iron and unavoidable impurities resulting from processing, the steel sheet having a microstructure comprising, in surface fraction, from 25% to 55% of retained austenite, from 5% to 50% of ferrite, from 5 to 70% of partitioned martensite, less than 5% of fresh martensite, a carbon [C]A and manganese [Mn]A content in austenite, expressed in weight percent, such that the ratio ([C]A2 x [Mn]A) /(C%2XMn%) is from 3.0 to 8.0, C% and Mn% being the nominal values in carbon and manganese in weight %, and an inhomogeneous repartition of manganese defined by a manganese distribution with a slope above or equal to -40”.
Although the claims at issue are not identical, they are not patentably distinct from each other because of overlapping chemical compositions, microstructures, and properties. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. See MPEP § 2144.05 I.
The copending application does not explicitly teach a carbon [C]A and manganese [Mn]A content in austenite, expressed in weight percent, wherein [C]A*√[Mn]A is from 0.48 to 1.8. However, one of ordinary skill in the art would expect the steel of the copending application to possess the properties of the instant application since the instant and copending products are identical or substantially identical in composition, microstructure, and processing. See MPEP § 2112.01 I.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Similarly, the following copending applications are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable since the claims at issue are not identical, but they are not patentably distinct from each other because of overlapping chemical compositions, microstructures, and properties:
18/016,396
18/016,733
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 13-23 and 27-28 are rejected under 35 U.S.C. 103 as being unpatentable over US 2014/0230971 A1 of Kawasaki (as cited in prior Office action).
Regarding claims 13-23 and 27-28, Kawasaki teaches a high strength steel sheet having excellent formability (Abstract, reads on the claimed steel sheet). Kawasaki teaches a cold-rolled and annealed steel sheet ([0109], [0113], reads on the claimed cold rolled and annealed steel sheet).
List 1
Instant claims (wt%)
Kawasaki (mass%)
C
0.03-0.18
0.05-0.15 (claim 14)
0.03-0.35
Mn
6.0-11.0
6.5-9.0 (claim 15)
3.5-10.0
Al
0.2-3
0.7-2.2 (claim 16)
0.01-2.5
Mo
0.05-0.5
0.005-0.5 (at least one selected from group)
Ti
0.010-0.050
0.01-0.1 (at least one selected from group)
B
0.0005-0.005
0.0003-0.005 (at least one selected from group)
S
≤ 0.010
0.01
P
≤ 0.020
0.1
N
≤ 0.008
0.008
Optionally one or more of:
Si
≤ 1.20
0.5-3.0
Nb
≤ 0.050
0.01-0.1 (at least one selected from group)
Cr
≤ 0.5
0.05-1.0 (at least one selected from group)
V
≤ 0.2
0.005-0.5 (at least one selected from group)
At least one selected from:
Ni, Cu
Ca, REM
Sn, Sb
Further containing: Mg, Ta
Fe and unavoidable impurities
Remainder
Balance (inevitable impurities)
Retained austenite
25-54%
≥ 10%
Ferrite
46-75%
≥ 30%
Fresh martensite
< 8%
-
Tensile strength (MPa)
≥ 980 (claim 18)
≥ 980
Total elongation (%)
≥ 20%
28.2-35 (Table 3B, Examples)
LME index
< 0.36 (claim 20)
0.16-1.1
Ceq
< 0.4% (claim 23)
0.22-0.36
Kawasaki teaches a steel with a chemical composition (claims 13 and 16-21, [0033]-[0062]), microstructure (claim 13, [0063]-[0064], [0068]-[0070]), tensile strength ([0005], [0030]), and total elongation (Examples in Table 3B) overlapping with the claimed steel, as shown in List 1. While Kawasaki does not explicitly disclose an LME index and Ceq value, one can perform the calculations which result in values overlapping with the claimed ranges as shown in List 1. 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 microstructure of claims 13 and 27, since the claimed fresh martensite rate of claim 13 is less than 8%, no martensite is required to meet the claimed microstructure. Therefore, the microstructure of Kawasaki reads on the claimed microstructures of claims 13 and 27.
Kawasaki therefore reads on the limitations a cold rolled and annealed steel sheet, made of a steel having a composition comprising, by weight percent: C: 0.03 - 0.18%, Mn: 6.0 - 11.0 %, Al: 0.2 - 3%, Mo: 0.05 - 0.5 %, Ti: 0.010 - 0.050%, B: 0.0005 - 0.005%, S ≤ 0.010 %, P ≤ 0.020 %, N ≤ 0.008 %, and optionally one or more of the following elements, in weight percentage: Si ≤ 1.20 %, Nb ≤ 0.050 %, Cr ≤ 0.5 %, V ≤ 0.2 %, a remainder of the composition being iron and unavoidable impurities resulting from processing, the cold rolled and annealed steel sheet having a microstructure comprising, in surface fraction, from 25% to 54% of retained austenite, from 46% to 75% of ferrite, less than 8% of fresh martensite of claim 13, wherein the C content is from 0.05% to 0.15% of claim 14, wherein the Mn content is from 6.5% to 9.0% of claim 15, wherein the Al content is from 0.7% to 2.2% of claim 16, wherein the tensile strength is above or equal to 980 MPa and the total elongation (TE) is above or equal to 20.0% of claim 18, wherein the Liquid Metal Embrittlement (LME) index is below 0.36 of claim 20, wherein the steel has a carbon equivalent (Ceq) lower than 0.4%, the carbon equivalent being defined as Ceq = C%+Si%/55+Cr%/20+Mn%/19-Al%/18+2.2P%-3.24B%-0.133*Mn%*Mo% with elements being expressed by weight percent of claim 23, and wherein the microstructure consists, in surface fraction, from 25% to 54% of retained austenite and from 46% to 75% of ferrite of claim 27.
Kawasaki teaches the steel may contain carbides such as cementite, and Nb, Ti, and Ta carbides and carbonitrides ([0060], [0083], [0094]).
Kawasaki therefore reads on the limitation wherein the microstructure comprises carbides of claim 17.
However, Kawasaki does not explicitly disclose a carbon [C]A and manganese [Mn]A content in austenite, expressed in weight percent, wherein [C]A*[Mn]A is from 0.48 to 1.8, and an inhomogeneous repartition of manganese defined by a manganese distribution with a slope above or equal to -50 of claim 13, wherein the microstructure comprises a density of carbides below or equal to 0.8 x106/mm2 of claim 17, wherein the uniform elongation (UE) is above or equal to 15% of claim 18, wherein the yield strength is above or equal to 800 MPa of claim 19, wherein the hole expansion ratio (HE) is above or equal to 25% of claim 21, wherein the total elongation TE expressed in % and the hole expansion ratio (HE) expressed in %, satisfy the following equation: TE*HE> 670 of claim 22, and having Charpy impact energy at 20°C higher than 0.4J/mm2 of claim 28.
The instant specification recites the steel sheet according to the invention can be produced by any appropriate manufacturing method and the person skilled in the art can define one (page 7, lines 18-19). The instant specification further recites a preferable method comprises hot rolling, annealing the hot-rolled steel sheet, pickling, cold rolling, a first and second annealing of the cold rolled steel sheet, and coating the steel sheet ([0074]-[0078]). Regarding the slope of Mn distribution of claim 13, the instant specifications recite the slope of manganese distribution is a result of annealing the hot-rolled steel sheet at a temperature between Ac1 and Ac3, preferably from 580°C to 680°C (page 7, line 30 – page 8, line 2). Regarding the Charpy impact energy of claim 28, the instant specification recites another purpose of the invention is to obtain a hot rolled and heat-treated steel sheet having high toughness with Charpy impact energy at 200°C higher than 0.4J/mm2 and the object of the present invention is achieved by providing a steel sheet according to claim 1 (page 3, lines 6-11).
Kawasaki teaches hot-rolling, coiling, heat treating the hot-rolled sheet, pickling, cold-rolling, subjecting cold-rolled steel sheet to heat treatment, and coating the steel by hot-dip galvanizing ([0084]-[103], [0109], heat treatment reads on the annealing step as explained in [0099]). Kawasaki teaches performing two annealing steps after cold-rolling (Table 2, heat treatment after cold rolling 1 and 2). Kawasaki teaches the annealing step for the hot-rolled steel sheet is performed at a temperature of Ac1-200°C to Ac1 ([0094], the annealing temperature ranges touch at Ac1 and examples 39-40 of Table 2 use a temperature of 600°C which overlaps with the disclosed preferred temperature range of the instant invention).
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 steel 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 (see microstructure analysis above), and c) the claimed and prior art products are produced by identical or substantially identical processes (see processing analysis above). 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).
Kawasaki therefore reads on the limitations a carbon [C]A and manganese [Mn]A content in austenite, expressed in weight percent, wherein [C]A*[Mn]A is from 0.48 to 1.8, and an inhomogeneous repartition of manganese defined by a manganese distribution with a slope above or equal to -50 of claim 13, wherein the microstructure comprises a density of carbides below or equal to 0.8 x106/mm2 of claim 17, wherein the uniform elongation (UE) is above or equal to 15% of claim 18, wherein the yield strength is above or equal to 800 MPa of claim 19, wherein the hole expansion ratio (HE) is above or equal to 25% of claim 21, wherein the total elongation TE expressed in % and the hole expansion ratio (HE) expressed in %, satisfy the following equation: TE*HE> 670 of claim 22, and having Charpy impact energy at 20°C higher than 0.4J/mm2 of claim 28.
Kawasaki therefore reads on all the limitations of claims 13-23 and 27-28.
Claims 25-26 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0363088 A1 of Tsuzumi.
Regarding claims 25-26 and 28, Tsuzumi teaches a high strength steel sheet having excellent formability (Abstract, reads on the claimed steel sheet). Tsuzumi teaches cold rolling and annealing ([0129]-[0130], [0228], claims 30-33, reads on the claimed cold rolled and annealed steel sheet since the method of Tsuzumi teaches cold rolling and annealing steps to manufacture the steel sheet).
List 1
Instant claims (wt%)
Tsuzumi (mass%)
C
0.03-0.18
0.05-0.15 (claim 14)
0.08-0.30
Mn
6.0-11.0
6.5-9.0 (claim 15)
More than 3.0 – 10.0
Al
0.2-3
0.7-2.2 (claim 16)
≤ 1.5
Mo
0.05-0.5
≤ 1.0
Ti
0.010-0.050
0.010-0.30
B
0.0005-0.005
≤ 0.0050
S
≤ 0.010
≤ 0.01
P
≤ 0.020
≤ 0.05
N
≤ 0.008
0.002-0.01
Si
0-0.02 (claim 25)
0 (claim 26)
≤ 2.0
Optionally one or more of:
Nb
≤ 0.050
≤ 0.1
Cr
≤ 0.5
≤ 1.0
V
≤ 0.2
≤ 0.1
Fe and unavoidable impurities
Remainder
Balance (“and incidental impurities”)
Retained austenite
25-54%
10-60 vol%
Ferrite
46-75%
30-80 vol%
Fresh martensite
< 8%
5-40 vol% (“martensite”)
Bainite: ≤ 5 vol%
Tensile strength (MPa)
≥ 980 (claim 18)
≥ 980
Total elongation (%)
≥ 20
> 30.6
Tsuzumi teaches a steel with a chemical composition ([0135]-[0171]), microstructure ([0179]-[0188]), tensile strength ([0247]), and total elongation ([0247]) overlapping with the claimed steel, as shown in List 1. 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 Si content of claims 25 and 26, Tsuzumi teaches a Si content of 2.0% or less ([0138]-[0139]). The limitation “or less” is interpreted as including a value of 0 mass%. 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 fresh martensite of claims 25-26 and 28, Tsuzumi teaches martensite in a range of 5-40% ([0185]-[0186]), but does not explicitly disclose what type of martensite structure is formed. Tsuzumi teaches tempering may be optionally performed ([0236]). In the embodiment of Tsuzumi where no tempering is performed, one of ordinary skill in the art would reasonably expect the martensite of Tsuzumi to be “fresh martensite” rather than “tempered martensite”. Therefore, the martensite of Tsuzumi reads on the claimed fresh martensite and has overlapping ranges, as shown in List 1 above. 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.
Tsuzumi therefore reads on the limitation a cold rolled and annealed steel sheet, made of a steel having a composition comprising, by weight percent: C: 0.03 - 0.18%, Mn: 6.0 - 11.0 %, Al: 0.2 - 3%, Mo: 0.05 - 0.5 %, Ti: 0.010 - 0.050%, B: 0.0005 - 0.005%, S ≤ 0.010 %, P ≤ 0.020 %, N ≤ 0.008 %, and optionally one or more of the following elements, in weight percentage: Si ≤ 1.20 %, Nb ≤ 0.050 %, Cr ≤ 0.5 %, V ≤ 0.2 %, a remainder of the composition being iron and unavoidable impurities resulting from processing, the cold rolled and annealed steel sheet having a microstructure comprising, in surface fraction, from 25% to 54% of retained austenite, from 46% to 75% of ferrite, less than 8% of fresh martensite of claims 25-26 and 28, wherein the Si content is from 0% to 0.02 of claim 25, and wherein the Si content is 0% of claim 26.
However, Tsuzumi does not explicitly disclose a carbon [C]A and manganese [Mn]A content in austenite, expressed in weight percent, wherein [C]A*[Mn]A is from 0.48 to 1.8, and an inhomogeneous repartition of manganese defined by a manganese distribution with a slope above or equal to -50 of claims 25-26 and 28, and having Charpy impact energy at 20°C higher than 0.4J/mm2 of claim 28.
The instant specification recites the steel sheet according to the invention can be produced by any appropriate manufacturing method and the person skilled in the art can define one (page 7, lines 18-19). The instant specification further recites a preferable method comprises hot rolling, annealing the hot-rolled steel sheet, pickling, cold rolling, a first and second annealing of the cold rolled steel sheet, and coating the steel sheet ([0074]-[0078]). Regarding the slope of Mn distribution of claims 25-26 and 28, the instant specifications recite the slope of manganese distribution is a result of annealing the hot-rolled steel sheet at a temperature between Ac1 and Ac3, preferably from 580°C to 680°C (page 7, line 30 – page 8, line 2). Regarding the Charpy impact energy of claim 28, the instant specification recites another purpose of the invention is to obtain a hot rolled and heat-treated steel sheet having high toughness with Charpy impact energy at 200°C higher than 0.4J/mm2 and the object of the present invention is achieved by providing a steel sheet according to claim 1 (page 3, lines 6-11).
Tsuzumi teaches hot-rolling, coiling, heat treatment of holding the hot-rolled steel in a temperature range of [Ac1 transformation point−200° C.] or more and [Ac1 transformation point+100° C.] or less for 30 min or more, pickling, cold-rolling, heat treatment of the cold-rolled steel sheet, and coating by hot-dip galvanizing, hot-dip aluminum coating, or electroplating ([0212]-[0235], heat treatment of the hot-rolled steel corresponds to the annealing the hot-rolled steel sheet of the instant invention; the temperature range of Tsuzumi from Ac1-200°C to Ac1+100°C overlaps with the temperature between Ac1 and Ac3 of the instant invention). Tsuzumi further teaches conforming examples with Ac1 temperatures of 484-648°C which, based on the range of Ac1-200°C to Ac1+100°C of Tsuzumi, results in a hot-rolled annealing temperature range of at least 284-748°C which further overlaps with the preferred temperatures of 580°C to 680°C disclosed in the instant specification of the present invention (page 7, line 30 – page 8, line 2).
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 steel 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 (see microstructure analysis above), and c) the claimed and prior art products are produced by identical or substantially identical processes (see processing analysis above). 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).
Given the overlapping chemical composition, microstructure, tensile strength, total elongation, and hot-rolled annealing steps of the steel sheet of Tsuzumi and the instant invention, one of ordinary skill in the art would reasonably expect the steel of Tsuzumi to necessarily possess the claimed carbon and manganese content in retained austenite and inhomogenous repartition of manganese of the instant invention.
Tsuzumi therefore reads on the limitations a carbon [C]A and manganese [Mn]A content in retained austenite, expressed in weight percent, wherein [C]A*[Mn]A is from 0.48 to 1.8, and an inhomogeneous repartition of manganese defined by a manganese distribution with a slope above or equal to -50 of claims 25-26 and 28.
Tsuzumi therefore reads on all the limitations of claims 25-26 and 28.
Response to Arguments
Applicant's arguments filed 10/27/2025 have been fully considered but they are not persuasive.
Regarding the 35 U.S.C. 103 rejections, Applicant argues that: (1) Kawasaki teaches compositions that are too broad (remarks, pages 12-14).
In response to argument (1), the composition of Kawasaki overlaps with the instant invention as outlined in the 35 U.S.C. 103 rejections previously set forth in the Non-Final Rejection mailed 08/07/2025 and in this Office action. 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. In this case, a prima facie case of obviousness has been established since the steels of Kawasaki and the instant invention are both cold-rolled, annealed, and have overlapping chemical composition, microstructure, and properties.
Further regarding the 35 U.S.C. 103 rejections, Applicant argues that: (2) Kawasaki does not have and would not have led one of ordinary skill in the art to the claimed microstructure including carbon and manganese content in retained austenite and the inhomogeneous repartition of manganese recited in claim 13 (remarks, pages 14-28). Regarding argument (2), Applicant further argues that the preferred THBA temperature range in the present specification is Ac1+5°C to Ac3 ([0054]) and consequently is higher than Ac1 and therefore the annealing temperature ranges of Kawasaki and the preferred THBA temperature range disclosed in the present specification do not “touch at Ac1” as alleged by the Examiner (remarks, pages 15-16).
In response to argument (2), the instant specifications recite the slope of manganese distribution is a result of annealing the hot-rolled steel sheet at a temperature THBA between Ac1 and Ac3, preferably from 580°C to 680°C (emphasis added, page 7, line 30 – page 8, line 2). The instant specification further recites the temperature THBA is preferably comprised from Ac1+5°C to Ac3 (emphasis added, page 8, lines 1-2). Therefore, the annealing temperature of Ac1 of Kawasaki relied upon in the Non-Final Rejection mailed 08/07/2025 and in this Office action overlaps with the broader disclosure of the instant invention. Since Kawasaki teaches the annealing step for the hot-rolled steel sheet is performed at a temperature of Ac1-200°C to Ac1 ([0094], the annealing temperature ranges touch at Ac1 and examples 39-40 of Table 2 use a temperature of 600°C which overlaps with the disclosed preferred temperature range of the instant invention), both the Ac1 temperature and the example of 600°C of Kawasaki overlap with the THBA temperatures recited in the instant specification. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP § 2123 II. In this case, the annealing temperature of Kawasaki overlaps with the instant invention since the instant specification recites a broader disclosure of THBA temperatures between Ac1 and Ac3, as described above, and a preferred temperature THBA of Ac1+5°C to Ac3 of the instant invention does not negate the broader disclosure of a THBA range between Ac1 and Ac3. Since Kawasaki teaches a cold-rolled and annealed steel sheet with overlapping composition, microstructure, tensile strength, total elongation, LME index, Ceq values, and processing steps, including cold-rolling and annealing at temperatures overlapping with the disclosed THBA temperatures of the instant invention, one of ordinary skill in the art would reasonably expect the steel of Kawasaki to necessarily possess the claimed carbon and manganese amounts in the retained austenite and inhomogeneous Mn repartition. See MPEP 2112.01.
Regarding the double patenting rejections previously set forth in the Non-Final Rejection mailed 08/07/2025, Applicant argues that for the reasons explained above and evidenced by the data in the present specification, "a carbon [C]A and manganese [Mn]A content in the retained austenite, expressed in weight percent, wherein [C]A* \[Mn]A is from 0.48 to 1.8, and an inhomogeneous repartition of manganese defined by a manganese distribution with a slope above or equal to -50" as recited in claim 13 do not naturally flow from the composition recited in the U.S. Patent and copending applications (remarks, pages 28-31).
In response, the issued patents and copending applications all teach a steel sheet with overlapping chemical composition, microstructure, properties, and processing steps. Specifically, the issued patents and copending applications cited in the double patenting rejections teach “a cold-rolled and heat treated steel sheet” in US 11965225 B2, “a cold rolled and annealed steel sheet” in US 12473620 B2, “a cold rolled and double annealed steel sheet” in US 12503740 B2, “a cold rolled and annealed steel sheet” in 18/016,595, “a cold rolled and annealed steel sheet” in 18/016,396, and “a hot rolled and heat treated steel sheet” in 18/016,733. Since the steels of the instant invention and the issued patents and copending applications listed above have overlapping chemical composition, microstructure, and processing, one of ordinary skill in the art would expect the steel of the issued patents and copending applications to necessarily possess the claimed carbon and manganese amounts in the retained austenite and inhomogeneous Mn repartition of the instant application since the instant and patented products or copending applications are identical or substantially identical in composition, microstructure, tensile strength, total elongation, LME index, Ceq values, and processing steps, including cold-rolling and annealing at temperatures overlapping with the disclosed THBA temperatures of the instant invention. See MPEP § 2112.01 I.
Regarding the Mn repartition, the following explicitly teach an inhomogeneous repartition of manganese overlapping with the claimed invention: US 12473620 B2 and copending application 18/016,396 teach an inhomogeneous repartition of manganese with a slope above or equal to -30, and copending applications 18/016,595 and 18/016,733 teach an inhomogeneous repartition of manganese with a slope above or equal to -40, which overlaps with the claimed invention.
Further regarding the Mn repartition, the instant specifications recite the slope of manganese distribution is a result of annealing the hot-rolled steel sheet at a temperature THBA between Ac1 and Ac3, preferably from 580°C to 680°C (page 7, line 30 – page 8, line 2). US 11965225 B2 teaches an annealing temperature of TICA from 650°C to TICA max (column 3, lines 5-8), which corresponds to the THBA temperature of the instant invention and has overlapping temperatures with the preferred range of 580-680°C of the instant invention. US 12503740 B2 teaches a preferred temperature THBA from 600°C to 680°C (Description section close to the Examples section), which overlaps with the instant invention. Copending application 18/016,396 teaches annealing temperature THBA between Ac1 and Ac3 and preferably the temperature THBA is from 580°C to 680°C (page 7, lines 23-25), which is the same disclosure as the instant invention. Despite not claiming the Mn repartition, one of ordinary skill in the art would reasonably expect the steel of these issued patents and copending applications to necessarily possess the claimed Mn repartition given the overlapping chemical composition, microstructure, cold-rolling, and annealing with overlapping THBA ranges.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Contact Information
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/M.A./Examiner, Art Unit 1733
/REBECCA JANSSEN/Primary Examiner, Art Unit 1733