DETAILED ACTION
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 3/26/2026 has been entered.
Response to Arguments
The provisional Double Patenting rejections have been maintained as Applicant did not substantively traverse them.
Applicant's arguments filed 6/4/2024 with respect to the 35 U.S.C. 103 rejections of claims 1 and 3-5 over Takafumi et al. (US 2022/0090248), claims 6-10 over Wada et al. (US 2023/0349020) and claims 1 and 3-10 over Komine et al. (US 2023/0220510) have been fully considered but are not persuasive. Applicant makes the following arguments:
A) Takafumi discloses a steel sheet having a soft layer which is distinct from the claimed invention. This argument is not persuasive. The claimed invention neither requires the presence or the absence of a soft layer. This is therefore not a patentable distinction because the feature Applicant relies upon is not recited. Applicant also remarks that the processing steps for making the claimed invention cannot be compared with claim 6. The process of Takafumi is not discussed in the rejection of claims 1 and 3-5 over Takafumi. Claim 6 is not rejected over Takafumi. Applicant’s arguments regarding the process of Takafumi have no relevance to the rejection at issue.
B) Neither Takafumi, Wada, or Komine teach or suggest Relational Expression 1. This argument is not persuasive. Takafumi, Wada, and Komine disclose steel compositions that necessarily overlap with Relational Expression 1. It is immaterial that the prior art examples do not disclose a composition which meets Relational Expression 1. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. See MPEP 2123. In this case, the prior art references of record recognize C, Si, Mn, Al, Nb, Ti, Cr, and Mo as result-effective variables (see Takafumi ¶¶ 126-136, Wada ¶¶ 44-70, and Komine ¶¶ 103-125). Discovering the optimal amounts of these elements and determining the relationships between the optimal amounts of these elements would have been obvious to one of ordinary skill in the art. See MPEP 2144.05 II. Applicant has not presented sufficient evidence to rebut the prima facie case of obviousness. See MPEP 2144.05 I.
C) Wada discloses a steel sheet whose microstructure and processing conditions are different from those claimed. Claims 6-10 do not recite a microstructure. Thus, Applicant’s arguments regarding Wada’s microstructure have no relevance to the rejection at issue. Applicant’s arguments regarding the distinction in Wada’s process are not persuasive. In claim 6, the steel sheet is cooled to a temperature of 250-320°C followed by reheating and maintaining within a range of the cooled temperature+50°C to the cooled temperature+200°C for 0.1-60 minutes. Applicant’s statement that the claimed process requires a “holding temperature [of] 320°C or lower” (see Remarks, p. 8) is plainly incorrect, as the process clearly recites a “reheating” step after cooling, and the reheating temperature is between 50°C and 200°C more than the cooled temperature.
On the other hand, Wada teaches cooling to 150°C-420°C (¶ 100). This overlaps with the claimed cooling step of 250-320°C. Wada teaches a 1st holding step at a temperature of 380-420°C for 10-500 seconds (¶ 103) and a 2nd holding step at temperature of 440°C -540°C for less than 200s (¶ 105). Either of these holding steps overlaps the claimed reheating and maintaining step (between 50°C and 200°C more than the cooled temperature gives a temperature range of 200°C -620°C based on the cooled temperature in Wada of 150°C-420°C). The prior art rejections are maintained.
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 1, 3, and 5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of US Patent No. 12,590,349. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claims 1, 3, and 5, the steel sheet of claim 1 ‘349 recites a composition and microstructure which overlap the claimed range, creating a prima facie case of obviousness.
Claims 1 and 3-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of copending Application No. 18/266,765 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claims 1 and 3-5, the steel sheet of claims 1-6 of copending ‘765 recites a composition, microstructure and properties which overlap the claimed range, creating a prima facie case of obviousness.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1 and 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Takafumi et al. (US 2022/0090248).
Regarding claims 1, 3 and 5, Takafumi discloses a hot dip galvanized steel sheet (¶ 1) having the following composition as compared to the claimed composition, wt%:
Claim 1
Takafumi, ¶¶ 28-57
C
0.1%-0.2%
0.050%-0.350%
Si
0.1%-1.0%
0.10%-2.50%
Mn
2.0%-3.0%
1.00%-3.50%
Al
0%-1.0% (excl. 0%)
0.001%-1.500%
Cr
0%-1.0%
0%-2.00%
Mo
0%-0.5%
0%-1.00%
Ti
0%-0.1%
0%-0.200%
Nb
0%-0.1%
0%-0.100%
Sb
0%-0.1% (excl. 0
0%-1.00%
P
0%-0.05%
0%-0.050%
S
0%-0.02%
0%-0.0100%
N
0%-0.02%
0%-0.0100%
Fe
Balance
Balance
Relational Expression 1:
-1362 to 2647
Relational Expression 2:
75 to 3660
Relational Expression 3:
-59 to 17
These ranges overlap the claimed ranges, creating a prima facie case of obviousness. See MPEP 2144.05 I. Regarding the relational expressions, Takafumi recognizes C, Si, Mn, Al, Nb, Ti, Cr, and Mo as result-effective variables (see ¶¶ 126-136). Discovering the optimal amounts of these elements and determining the relationships between the optimal amounts of these elements would have been obvious to one of ordinary skill in the art. See MPEP 2144.05 II.
Takafumi discloses the steel sheet has the following microstructure, as compared to the claimed microstructure:
Claim 1
Takafumi, ¶¶ 59-63
Ferrite
3%-20%
0%-50%
r-Austenite
1%-10%
0%-30%
Bainite
1%-30%
Balance (5%-100%)
t-Martensite
30%-70%
≥5%
f-Martensite
Balance (0%-65%)
0%-10%
f-Martensite (Claim 3)
≥3%
These ranges overlap the claimed ranges, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Regarding claim 4, Takafumi discloses a tensile strength of over 980 MPa (see Table 3) and an elongation of 8%-25% (see Table 3). Although Takafumi does not expressly disclose a yield strength, one of ordinary skill in the art would expect the yield strength of the steel of Takafumi to overlap the claimed ranges given the similar in composition, microstructure, and process of manufacture (see discussion of claims 1 and 6 above). Accordingly, the prior art ranges overlap or are expected to overlap the claimed ranges, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Claim 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over Wada et al. (US 2023/0349020).
Regarding claim 6, Wada discloses a steel sheet (¶ 2), which is hot-dip galvanized (¶ 41), having the following composition as compared to the claimed composition, wt%:
Claim 6
Wada, ¶¶ 22-31
C
0.1%-0.2%
0.07%-0.18%
Si
0.1%-1.0%
0.01%-2.0%
Mn
2.0%-3.0%
1.5%-2.6%
Al
0%-1.0% (excl. 0%)
0.01%-2.0%
Cr
0%-1.0%
-
Mo
0%-0.5%
-
Ti
0%-0.1%
0%-0.20% (¶ 35)
Nb
0%-0.1%
0%-0.20% (¶ 36)
Sb
0%-0.1% (excl. 0
0%-0.05% (¶ 40)
P
0%-0.05%
0%-0.1%
S
0%-0.02%
0%-0.02%
N
0%-0.02%
0%-0.010%
Fe
Balance
Balance
Relational Expression 1:
-2280 to 1767
Relational Expression 2:
280 to 2438
Relational Expression 3:
-53 to 16
These ranges overlap the claimed ranges, creating a prima facie case of obviousness. See MPEP 2144.05 I. Wada recognizes C, Si, Mn, Al, Nb, Ti, Cr, and Mo as result-effective variables (see ¶¶ 44-70). Discovering the optimal amounts of these elements and determining the relationships between the optimal amounts of these elements would have been obvious to one of ordinary skill in the art. See MPEP 2144.05 II.
With respect to the process steps recited in claim 6, Wada discloses the following as compared to the claimed process steps:
Claim 6
Wada
Obtaining slab with claimed composition
Obtaining slab with disclosed composition (¶ 97)
Heating slab to 1050°C-1300°C
Heat slab to 1100°C -1300°C (¶ 97)
Hot rolling slab at 800°C-1000°C
Hot rolling at 850°C or higher (¶ 97)
Coiling at 400°C-700°C
Coiling at 400°C-750°C (¶ 97)
Cold rolling coiled sheet at 20%-70% ratio
Cold rolling coiled sheet at 30% reduction or more (¶ 97)
Annealing at 800°C-900°C
Annealing at 700°C -950°C (¶ 98)
Cooling 250°C-320°C
Cooling to 150°C-420°C (¶ 100)
Reheating and maintaining at temperature within cooled temperature+50°C to cooled temperature+200°C for 0.1-60min
(2nd) Holding at temperature of 440°C -540°C for less than 200s (¶ 105)
The parameters for the manufacturing steps of making the steel sheet of Wada overlap the parameters for the claimed manufacturing steps, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Regarding claim 7, Wada discloses the cooling rate after annealing is 10-200°C/s (¶ 101). This overlaps the claimed range, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Regarding claim 8, Wada discloses a first holding step within the cooling stop temperature at 380°C -420°C for 10-500 seconds (¶ 103). This overlaps the claimed range, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Regarding claim 9, Wada discloses the hot dip galvanizing step takes place after the 2nd holding step (¶ 110).
Regarding claim 10, Wada discloses an alloying treatment is performed after the galvanizing step (¶ 110).
Claims 1 and 3-10 are rejected under 35 U.S.C. 103 as being unpatentable over Komine et al. (US 2023/0220510).
Regarding claims 1, 3, and 5-6, Komine discloses a steel sheet (¶ 1), which is hot-dip galvanized (¶ 36) having the following composition as compared to the claimed composition, wt%:
Claims 1 and 6
Komine, ¶¶ 16-36
C
0.1%-0.2%
0.07%-0.20%
Si
0.1%-1.0%
0.1%-2.0%
Mn
2.0%-3.0%
2.0%-3.5%
Al
0%-1.0% (excl. 0%)
0.005%-0.1%
Cr
0%-1.0%
0%-1.00%
Mo
0%-0.5%
0%-0.5%
Ti
0%-0.1%
0%-0.5%
Nb
0%-0.1%
0%-0.5%
Sb
0%-0.1% (excl. 0
0%-1.00%
P
0%-0.05%
0%-0.050%
S
0%-0.02%
0%-0.050%
N
0%-0.02%
0%-0.010%
Fe
Balance
Balance
Relational Expression 1:
-672 to 2902
Relational Expression 2:
421 to 4610
Relational Expression 3:
-108 to 17
These ranges overlap the claimed ranges, creating a prima facie case of obviousness. See MPEP 2144.05 I. Komine recognizes C, Si, Mn, Al, Nb, Ti, Cr, and Mo as result-effective variables (see Komine ¶¶ 103-125). Discovering the optimal amounts of these elements and determining the relationships between the optimal amounts of these elements would have been obvious to one of ordinary skill in the art. See MPEP 2144.05 II.
With respect to the process steps recited in claim 6, Komine discloses the following as compared to the claimed process steps:
Claim 6
Komine
Obtaining slab with claimed composition
Obtaining slab with disclosed composition (¶ 128)
Heating slab to 1050°C-1300°C
Heating slab to 1100°C -1300°C (¶ 160)
Hot rolling slab at 800°C-1000°C
Hot rolling at 850°C-950°C (¶ 130)
Coiling at 400°C-700°C
Coiling at 400-600°C (¶ 132)
Cold rolling coiled sheet at 20%-70% ratio
Cold rolling coiled sheet at ≥20% (¶ 135)
Annealing at 800°C-900°C
Annealing at 750°C -890°C (¶ 138)
Cooling to 250°C-320°C
Cooling to Ms temperature, followed by cooling to Ms-250°C to Ms-50°C (¶ 147) (Ms is about 320°C-400°C according to Table 2)
Reheating and maintaining at temperature within cooled temperature+50°C to cooled temperature+200°C for 0.1-60min
Tempering at 300°C-500°C for 20s-500s (¶ 151)
The parameters for the manufacturing steps of making the steel sheet of Takafumi overlap the parameters for the claimed manufacturing steps, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Komine discloses the steel sheet has the following microstructure, as compared to the claimed microstructure:
Claim 1
Komine, ¶¶ 58-67
Ferrite
3%-20%
Pref. 10%-30%
r-Austenite
1%-10%
3%-15%, Pref. 3%-10%
Bainite
1%-30%
Pref. 3%-20%
t-Martensite
30%-70%
40%-93% (together with bainite)
f-Martensite
Balance (0%-65%)
≥7% (together with cementite and pearlite)
f-Martensite (Claim 3)
≥3%
These ranges overlap the claimed ranges, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Regarding claim 4, Komine discloses a tensile strength of over 980 MPa (¶ 9). Although Komine does not expressly disclose a yield strength or elongation, one of ordinary skill in the art would expect the yield strength and elongation of the steel of Komine to overlap the claimed ranges given the similar in composition, microstructure, and process of manufacture (see discussion of claims 1 and 6 above). Accordingly, the prior art ranges overlap or are expected to overlap the claimed ranges, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Regarding claim 7, Komine discloses the cooling rate after annealing is 2-200°C/s (¶¶ 140-145). This overlaps the claimed range, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Regarding claim 8, Komine teaches upon reaching the Ms temperature, the steel sheet is further cooled to Ms-200°C to Ms-50°C at a rate of 2-15°C/s (see ¶¶ 145-148). This represents a time of 3.3s to 100s at the cooled temperature, which overlaps the claimed range, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Regarding claim 9, Komine discloses the hot dip galvanizing step takes place after the tempering (¶ 156).
Regarding claim 10, Komine discloses an alloying treatment is performed after the galvanizing step (¶ 157).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to XIAOBEI WANG whose telephone number is (571)270-5705. The examiner can normally be reached M-F 8AM-5PM EST.
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/XIAOBEI WANG/Primary Examiner, Art Unit 1784
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