DETAILED ACTION
Claims 13-24 are pending, and claims 13-17 and 19-22 are currently under review.
Claims 1-12 are cancelled.
Claims 18 and 23-24 are withdrawn.
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
Applicant’s election without traverse of group I and species of claim 17 in the reply filed on 12/31/2025 is acknowledged.
Claims 18 and 23-24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/31/2025.
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.
Claim(s) 13-16 and 19-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Magar et al. (WO2018055425).
Regarding claim 13, Magar et al. discloses a cold rolled, annealed, and tempered steel having a yield strength of at least 1100 MPa [abstract, p.1, 12]; wherein said steel has a composition as seen in table 1 below [p.2-3]. Magar et al. further teaches a microstructure of 10 to 50 percent retained austenite, up to 8 percent fresh martensite, and a balance of tempered martensite [p.2-3]. The examiner notes that the overlap between the steel composition and microstructure of Magar et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I). Magar et al. also discloses controlling Mn in the retained austenite to be 1.3Mn of the total steel and controlling C in the retained austenite to be 0.4 to 1 weight percent [p.2]. Although Magar et al. does not expressly teach a relationship between Mn in retained austenite and C in retained austenite as claimed, the examiner notes that the disclosed ranges of Magar et al. above still overlap with the claimed relationship which is prima facie obvious. See MPEP 2144.05(I).
Table 1.
Element (wt.%)
Claim 13 (wt.%)
Magar et al. (wt.%)
C
0.03 – 0.18
0.1 – 0.4
Mn
6 – 11
3.5 – 8
Mo
0.05 – 0.5
0.001 – 0.5
B
0.0005 – 0.005
0.0005 – 0.003
S
0 – 0.01
0 – 0.01
P
0 – 0.02
0 – 0.02
N
0 – 0.008
0 – 0.08
Al (optional)
0 – 3
0.003 – 3
Si (optional)
0 – 1.2
0.5 – 2.5
Ti (optional)
0 – 0.05
0.01 – 0.08
Nb (optional)
0 – 0.05
0.01 – 0.08
Cr (optional)
0 – 0.5
0.01 – 2
V (optional)
0 – 0.2
0.01 – 0.3
Fe & Impurities
Balance
Balance
Regarding claims 14-16 and 21-22, Magar et al. discloses the steel of claim 13 (see previous). The examiner notes that the aforementioned composition of Magar et al. further overlaps with the claimed ranges. See MPEP 2144.05(I). Although Magar et al. does not expressly teach an LME index or carbon equivalent as claimed, the examiner notes that these formulas merely further narrow the claimed C, Si, Cr, Mn, Al, P, B, and Mo amounts, which still overlaps with the disclosed ranges of Magar et al.
Regarding claims 19-20, Magar et al. discloses the steel of claim 13 (see previous). Magar et al. further teaches obtaining a tensile strength of at least 1300 MPa, uniform elongation of at least 10%, and total elongation of at least 13%, which overlaps with the claimed ranges and product ranges [p.1]. See MPEP 2144.05(I).
Claim(s) 13-17 and 19-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xu et al. (US 2017/0137909).
Regarding claim 13, Xu et al. discloses a cold rolled, annealed, and tempered steel having a yield strength of at least 700 MPa [abstract, 0039]; wherein said steel has a composition as seen in table 2 below [0029-0036]. Xu et al. further teaches a microstructure of at least 20 percent retained austenite, up to 10 percent ferrite, and at least 65 percent martensite which is further tempered (ie. tempered martensite) [0010]. Xu et al. is silent regarding the presence of fresh, non-tempered martensite, which one of ordinary skill would understand to mean that fresh martensite is not required to be present. The examiner notes that the overlap and closeness between the steel composition and microstructure of Xu et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I). Regarding closeness, the examiner submits that the ranges of Xu et al. are substantially close to the claimed ranges such that similar mechanical properties are achieved as shown further below.
Xu et al. does not expressly teach a ferrite grain size or amount of Mn and C in retained austenite as claimed. However, the examiner submits that overlapping parameters would have naturally flowed from the disclosure of Xu et al. One of ordinary skill would readily understand that steel properties are directly influenced by steel composition and microstructure. Accordingly, Xu et al. already discloses an overlapping steel composition and further discloses overlapping steel mechanical properties as will be explained below, such that one of ordinary skill would expect similar overlapping microstructural parameters relative to those claimed above to naturally flow. See MPEP 2144.05(I) & MPEP 2112.
Table 2.
Element (wt.%)
Claim 13 (wt.%)
Xu et al. (wt.%)
C
0.03 – 0.18
0.1 – 0.25
Mn
6 – 11
4.5 – 10
Mo
0.05 – 0.5
0 – 0.05
B
0.0005 – 0.005
0 – 0.001
S
0 – 0.01
0 – 0.01
P
0 – 0.02
0 – 0.02
N
0 – 0.008
0 – 0.01
Al (optional)
0 – 3
0.03 – 2.5
Si (optional)
0 – 1.2
1 – 3
Ti (optional)
0 – 0.05
0 – 0.1
Nb (optional)
0 – 0.05
0 – 0.1
Cr (optional)
0 – 0.5
0 – 0.1
V (optional)
0 – 0.2
0 – 0.1
Fe & Impurities
Balance
Balance
Regarding claims 14-16 and 21-22, Xu et al. discloses the steel of claim 13 (see previous). The examiner notes that the aforementioned composition of Xu et al. further overlaps with the claimed ranges. See MPEP 2144.05(I). Although Xu et al. does not expressly teach an LME index or carbon equivalent as claimed, the examiner notes that these formulas merely further narrow the claimed C, Si, Cr, Mn, Al, P, B, and Mo amounts, which still overlaps with the disclosed ranges of Xu et al.
Regarding claim 17, Xu et al. discloses the steel of claim 13 (see previous). The examiner notes that the aforementioned microstructure of Xu et al. further overlaps with the claimed ranges. See MPEP 2144.05(I).
Regarding claims 19-20, Xu et al. discloses the steel of claim 13 (see previous). Xu et al. further teaches obtaining a tensile strength of at least 1100 MPa, uniform elongation of at least 8%, and total elongation of at least 10%, which overlaps with the claimed ranges and product ranges [abstract]. See MPEP 2144.05(I).
Claim(s) 13-17 and 19-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jung et al. (WO2019123240) alone or alternatively in view of Magar et al. (WO2018055425).
Regarding claim 13, Jung et al. discloses a cold rolled, annealed, and tempered steel having yield strengths of at least 1000 MPa [abstract, p.4-5, tables 4-5]; wherein said steel has a composition as seen in table 3 below [p.5-6]. Jung et al. further teaches a microstructure of 8 to 50 percent retained austenite, up to 80 percent ferrite having a grain size of up to 1.5 micrometers, and a remainder of martensite which is further tempered (ie. tempered martensite) [p.5-6]. Jung et al. alternatively also further teaches limiting fresh martensite to be at most 8 percent [p.7]. The examiner notes that the overlap between the steel composition and microstructure of Jung et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I). Although the specific examples of Jung et al. are not particularly relied upon in the instant rejections, the examiner submits that one of ordinary skill would readily understand that the disclosure of Jung et al. suggests a desirable and achievable range of yield strengths which meets the instantly claimed range.
Jung et al. does not expressly teach an amount of Mn and C in retained austenite as claimed. However, the examiner submits that overlapping parameters would have naturally flowed from the disclosure of Jung et al. One of ordinary skill would readily understand that steel properties are directly influenced by steel composition and processing. Accordingly, Jung et al. already discloses an overlapping steel composition and further discloses substantially similar, overlapping manufacturing parameters shown in table 3 below. Therefore, one of ordinary skill would expect similar overlapping microstructural parameters of Mn and C content in retained austenite to naturally flow relative to those claimed. See MPEP 2144.05(I) & MPEP 2112.
Alternatively, Jung et al. does not expressly teach an amount of Mn and C in retained austenite as claimed. Magar et al. discloses that it is known to control Mn and C in retained austenite to be 1.3Mn of the total steel and 0.4 to 1 weight percent, respectively, in order to desirably control microstructure formation and steel properties [p.2, 11-13]. Therefore, it would have been obvious to one of ordinary skill to modify the disclosure of Jung et al. by controlling Mn and C contents in retained austenite for the aforementioned benefit disclosed by Magar et al. Although Magar et al. does not expressly teach a relationship between Mn in retained austenite and C in retained austenite as claimed, the examiner notes that the disclosed ranges of Magar et al. above still overlap with the claimed relationship which is prima facie obvious. See MPEP 2144.05(I).
Table 3.
Element (wt.%)
Claim 13 (wt.%)
Jung et al. (wt.%)
C
0.03 – 0.18
0.1 – 0.4
Mn
6 – 11
3.5 – 8
Mo
0.05 – 0.5
0 – 0.5
B
0.0005 – 0.005
0 – 0.004
S
0 – 0.01
0 – 0.003
P
0 – 0.02
0 – 0.015
N
0 – 0.008
0.002 – 0.013
Al (optional)
0 – 3
0 – 3
Si (optional)
0 – 1.2
0.1 – 1.5
Ti (optional)
0 – 0.05
0 – 0.1
Nb (optional)
0 – 0.05
0 – 0.1
Cr (optional)
0 – 0.5
0 – 1
V (optional)
0 – 0.2
0 – 0.2
Fe & Impurities
Balance
Balance
Manufacturing Parameters
Instant specification [0046-0057]
Jung et al. [p.3-5]
Slab heating to 1150 to 1300 degrees C
Slab heating to 1150 to 1300 degrees C
Hot rolling with finish rolling at 800 to 1000 degrees C
Hot rolling with finish rolling at least 800 degrees C
Coiling at 20 to 650 degrees C
Coiling at 650 degrees C or lower
Annealing at Ac1 to Ac3 for up to 120 hours
Annealing at least 650 degrees C for 3 to 3600 seconds
Cold rolling at reduction rate of 20 to 80 percent
Cold rolling at reduction rate of 30 to 70 percent
Annealing at 720 to 860 degrees C for 100 to 1000 seconds
Annealing at 650 to 1000 degrees C for 30 seconds to 10 minutes
Quenching to below 80 degrees C at a cooling rate of at least 0.1 degrees C per second
Quenching to room temperature at a cooling rate of 1 to 70 degrees C per second
Tempering at up to 300 degrees C for 100 to 1800 seconds
Tempering at 170 to 450 degrees C for 10 to 1200 seconds
Regarding claims 14-16 and 21-22, Jung et al. discloses the steel of claim 13 (see previous). The examiner notes that the aforementioned composition of Jung et al. further overlaps with the claimed ranges. See MPEP 2144.05(I). Although Jung et al. does not expressly teach an LME index or carbon equivalent as claimed, the examiner notes that these formulas merely further narrow the claimed C, Si, Cr, Mn, Al, P, B, and Mo amounts, which still overlaps with the disclosed ranges of Jung et al.
Regarding claim 17, Jung et al. discloses the steel of claim 13 (see previous). The examiner notes that the aforementioned microstructure of Jung et al. further overlaps with the claimed ranges. See MPEP 2144.05(I).
Regarding claims 19-20, Jung et al. discloses the steel of claim 13 (see previous). Jung et al. does not expressly teach general steel properties of tensile strength, uniform elongation, ultimate elongation, and products thereof. However, as shown above, Jung et al. discloses an overlapping steel composition, overlapping steel microstructure, and overlapping substantially similar method of manufacturing, such that overlapping substantially similar mechanical properties would have naturally flowed absent concrete evidence to the contrary. See MPEP 2144.05(I) & MPEP 2112.
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 13-17 and 19-22 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 8-10 of U.S. Patent No. 12,503,740. Although the claims at issue are not identical, they are not patentably distinct from each other because the overlap between the claimed ranges and patented ranges is prima facie obvious. See MPEP 2144.05(I).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS A WANG whose telephone number is (408)918-7576. The examiner can normally be reached usually M-Th: 7-5.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734