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 .
DETAILED ACTION
Claims 1-13 have been cancelled; Claims 15-20 and 23 have been amended; claims 27-32 are added as new claims; Claims 25-26 are withdrawn as non-elected claims. Claims 14-24, and 27-32 remain for examination, wherein claim 14 is an independent claim.
Allowable Subject Matter
Claims 27-31 include allowable subject matter.
Claim 27-31 are still objected to as depending from rejected independent claim(s), but would be allowed if rewritten in independent form including all of the limitations of the base claim and any intervening claims since it is noted that the recorded prior art(s) does not specify the claimed specific fraction of austenite island with a size of 0.5 mm being 2-5% as claimed in the instant claim 27, which related to the properties of the steel sheet (table on par.[0113] of PG-pub 2023/0295782 A1--corresponding to the instant specification of the application). Claim 28-31 depend on claim 27, they also include allowable subject matter.
Notes: claims 27-31 are still rejected on the ground of nonstatutory obviousness type double patenting as listed following.
Previous Rejections/Objections
Previous objection of Claims 14 and 18-19 because of the informalities is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 12/24/2025.
Previous objection of Claims 15-16 because of the informalities is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 12/24/2025.
Previous objection of Claim 23 because of the informalities is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 12/24/2025.
Previous rejection of Claim 23 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 12/24/2025.
However, in view of the Applicant’s “Arguments/Remarks with amendment” filed on 12/24/2025, and reconsideration, a new ground rejection has listed as following:
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 14-24 and 32 are rejected under 35 U.S.C. 103(a) as being unpatentable over Jung et al (US-PG-pub 2020/0362432 A1, listed in IDS filed on 9/25/2025, updated as US 11,591,665 B2, corresponding to WO2019/123240A2, , thereafter PG’432).
PG’432 is applied to the instant claims 14-24 for the same reason as stated in the previous office action dated 10/07/2025.
Regarding the amendments in the instant claims 15-20 and 23, they do not change the scope of the instant claims scope.
Regarding claim 32, the claimed hot-band batch anneal is recognized as process limitation in a product-by-process claim. The claimed cold rolled steel sheet is manipulated by the product (composition, microstructure, and properties) itself. The claimed hot-band batch annealing does not add patentable weight for the instant claim. MPEP 2113 [R-1]. Actually, PG’432 specify subjecting the hot-rolled steel sheet, prior to cold-rolling, to a batch annealing (par.[0010]-[0011] of PG’432).
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 14-32 are rejected on the ground of nonstatutory obviousness type double patenting as being unpatentable over Claims 1-13 of copending application No. 18/097,492 (US patent 11,965,225 B2).
Claims 1-13 of copending application No. 18/097,492 (US patent 11,965,225 B2) is applied to the instant claims 14-24 for the same reason as stated in the previous office action dated 10/07/2025.
Regarding the amendments in the instant claims 15-20 and 23, they do not change the scope of the instant claims scope.
Regarding the newly added claims 27-32, Claims 1-13 of copending application No. 18/097,492 (US patent 11,965,225 B2) teaches the similar alloy composition ranges, microstructures, and properties manufactured by the same cold rolling, batch annealing, and partitioning (Col.1, lins.48-60 of copending application No. 18/097,492 (US patent 11,965,225 B2). The claimed features in the instant claims would be highly expected for the steel sheet of copending application No. 18/097,492 (US patent 11,965,225 B2). MPEP 2112 01 and 2145 II.
Claims 14-32 are rejected on the ground of nonstatutory obviousness type double patenting as being unpatentable over Claims 12-22 of copending application No. 18/016,595 (US-PG-pub 2023/0295781 A1).
Claims 12-22 of copending application No. 18/016,595 (US-PG-pub 2023/0295781 A1) is applied to the instant claims 14-24 for the same reason as stated in the previous office action dated 10/07/2025.
Regarding the amendments in the instant claims 15-20 and 23, they do not change the scope of the instant claims scope.
Regarding the newly added claims 27-32, Claims 12-22 of copending application No. 18/016,595 (US-PG-pub 2023/0295781 A1) teaches the similar alloy composition ranges, microstructures, and properties manufactured by the same cold rolling, batch annealing, and partitioning (Abstract and par.[0004] of copending application No. 18/016,595 (US-PG-pub 2023/0295781 A1)). The claimed features in the instant claims would be highly expected for the steel sheet of copending application No. 18/016,595 (US-PG-pub 2023/0295781 A1). MPEP 2112 01 and 2145 II.
This is a provisional obvious-type double patenting rejection since the conflict claims in the copending application have not in fact been patented.
Claims 14-32 are rejected on the ground of nonstatutory obviousness type double patenting as being unpatentable over Claims 13-24 of copending application No. 18/016,799 (US-PG-pub 2023/0287548 A1).
Claims 13-24 of copending application No. 18/016,799 (US-PG-pub 2023/0287548 A1) is applied to the instant claims 14-24 for the same reason as stated in the previous office action dated 10/07/2025.
Regarding the amendments in the instant claims 15-20 and 23, they do not change the scope of the instant claims scope.
Regarding the newly added claims 27-32, Claims 13-24 of copending application No. 18/016,799 (US-PG-pub 2023/0287548 A1) teaches the similar alloy composition ranges, microstructures, and properties manufactured by the same cold rolling, batch annealing, and treatment (Abstract and par.[0003]-[0009], and examples of copending application No. 18/016,799 (US-PG-pub 2023/0287548 A1)). The claimed features in the instant claims would be highly expected for the steel sheet of copending application No. 18/016,799 (US-PG-pub 2023/0287548 A1). MPEP 2112 01 and 2145 II.
This is a provisional obvious-type double patenting rejection since the conflict claims in the copending application have not in fact been patented.
Response to Arguments
Applicant’s arguments to the art rejection to Claims 14-32 have been considered but they are moot in view of the new ground rejection as stated as above.
The Applicant’s arguments are summarized as following:
1, regarding the rejection of Claims 14-24 under 35 U.S.C. 103(a) as being unpatentable over Jung et al (US-PG-pub 2020/0362432 A1, listed in IDS filed on 9/25/2025, updated as US 11,591,665 B2, corresponding to WO2019/123240A2, , thereafter PG’432), the Applicant argued that the PG’432 does not specify the claimed fraction of austenite island as claimed in the instant claim 14 and PG’432 would not have led one of ordinary skill in the art to the instant claimed microstructure.
2, PG’432 have a very broad individual elemental ranges compared to the claimed narrow alloy composition ranges.
3, claims 20 and 22 are separated argued. These claims are allowable since the cited example of PG’432 does not specify the claimed Mn range in the instant claims.
4, Regarding the rejection of on the ground of nonstatutory obviousness type double patenting as being unpatentable over Claims 1-13 of copending application No. 18/097,492 (US patent 11,965,225 B2), the Applicant’s arguments for the reason as rejection for the PG’432 above.
5, “Terminal Disclaimer” may provide solely for the purpose of ODP rejection on the ground of nonstatutory obviousness type double patenting as being unpatentable over Claims 12-22 of copending application No. 18/016,595 (US-PG-pub 2023/0295781 A1) and on the ground of nonstatutory obviousness type double patenting as being unpatentable over Claims 13-24 of copending application No. 18/016,799 (US-PG-pub 2023/0287548 A1).
In response,
Regarding the argument 1, Firstly, as pointed out in the rejection above and the previous office action dated 10/07/2025, PG’432 teaches a cold rolled steel sheet with all of the essential alloy composition ranges, microstructure fractions, grain size, and C and Mn in RA disclosed in PG’432 (claims and par.[0129]-[0148] of PG’432) overlap the claimed ranges as recited in the instant claims, which creates prima facie case of obviousness. MEPE 2144 05 I. Secondly, the claimed fraction of austenite island is 5% or less, which including “zero” fraction. In alternate, PG’432 provides image of the microstructure of steel sheet (a micrograph illustrating the structure of a hot-rolled steel continuously annealed according to an embodiment of the invention-- Fig.2 of PG’432), which including austenite island.
Regarding the argument 2, the invention of PG’432 ought to be taken as a whole, and should not in any way be limited to the examples provided in the reference. It has been well settled in many court decisions that it would have been obvious to one having ordinary skill in the art to construct the process comprising said parameter within the disclosed range. Finally, It is noted that the Applicant has not provided evidence to show the criticality of the claimed narrow composition ranges in term of the claimed features.
Regarding the remark 3, the rejection is not imitated to the cited example(s) in the cited prior art (PG’432). It is noted that the Applicant has not provided evidence to show the criticality of the claimed Mn ranges in term of the claimed features.
Regarding the argument 4, similar response can refer to the response for the arguments 1-2.
Regarding the argument 5, proper “Terminal Disclaimer” can overcome the present ODP rejection.
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.
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/JIE YANG/Primary Examiner, Art Unit 1734