DETAILED ACTION
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 1-7 and 14-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 14-19 of co-pending Application No. 18/038,914 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending application discloses each and every feature as claimed in the instant application with the exception that the GDS profile values and compositional proportions overlap. One of ordinary skill in the art would have found it obvious to select from with the overlapping subject matter including steel sheets having GDS profile values and compositional proportions which fall within the claims of the instant application.
Claims 1-7 and 14-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-15 of co-pending Application No. 18/868,518 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the compositional proportions claimed in the co-pending application fall within or overlap those claimed in the instant application. With regards to those proportions which overlap, one of ordinary skill in the art would have found it obvious to select from the proportions of the co-pending claims including proportions that fall within the claims of the instant application.
Regarding instant claims 7 and 14-19, the co-pending application does not appear to claim a hot-dipped galvanized plating on the steel sheet, however the examiner takes official notice that hot-dip galvanized coatings are well known conventional coatings plated on steel sheets to provide corrosion protection. One of ordinary skill in the art before would have found it obvious to provide the steel sheet of the co-pending claims with a hot-dip galvanized layer in order to provide the steel sheet with improved correction protection.
Claims 1-7 and 14-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-15 of co-pending Application No. 18/870,209 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending application discloses each and every feature as claimed in the instant application with the exception that the GDS profile values and compositional proportions overlap. One of ordinary skill in the art would have found it obvious to select from with the overlapping subject matter including steel sheets having GDS profile values and compositional proportions which fall within the claims of the instant application.
Regarding instant claims 7 and 14-19, the co-pending application does not appear to claim a hot-dipped galvanized plating on the steel sheet, however the examiner takes official notice that hot-dip galvanized coatings are well known conventional coatings plated on steel sheets to provide corrosion protection. One of ordinary skill in the art before would have found it obvious to provide the steel sheet of the co-pending claims with a hot-dip galvanized layer in order to provide the steel sheet with improved correction protection.
Claims 1-7 and 14-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-15 of co-pending Application No. 18/873,318 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending application discloses each and every feature as claimed in the instant application with the exception that the GDS profile values and compositional proportions overlap. One of ordinary skill in the art would have found it obvious to select from with the overlapping subject matter including steel sheets having GDS profile values and compositional proportions which fall within the claims of the instant application.
Regarding instant claims 7 and 14-19, the co-pending application does not appear to claim a hot-dipped galvanized plating on the steel sheet, however the examiner takes official notice that hot-dip galvanized coatings are well known conventional coatings plated on steel sheets to provide corrosion protection. One of ordinary skill in the art before would have found it obvious to provide the steel sheet of the co-pending claims with a hot-dip galvanized layer in order to provide the steel sheet with improved correction protection.
Claims 1-7 and 14-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-15 of co-pending Application No. 18/873,319 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending application discloses each and every feature as claimed in the instant application with the exception that the GDS profile values and compositional proportions overlap. One of ordinary skill in the art would have found it obvious to select from with the overlapping subject matter including steel sheets having GDS profile values and compositional proportions which fall within the claims of the instant application.
Regarding instant claims 7 and 14-19, the co-pending application does not appear to claim a hot-dipped galvanized plating on the steel sheet, however the examiner takes official notice that hot-dip galvanized coatings are well known conventional coatings plated on steel sheets to provide corrosion protection. One of ordinary skill in the art before would have found it obvious to provide the steel sheet of the co-pending claims with a hot-dip galvanized layer in order to provide the steel sheet with improved correction protection.
Claims 1-7 and 14-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-15 of co-pending Application No. 18/873,503 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending application discloses each and every feature as claimed in the instant application with the exception that the GDS profile values and compositional proportions overlap. One of ordinary skill in the art would have found it obvious to select from with the overlapping subject matter including steel sheets having GDS profile values and compositional proportions which fall within the claims of the instant application.
Regarding instant claim 7, the co-pending application does not appear to claim a hot-dipped galvanized plating on the steel sheet, however the examiner takes official notice that hot-dip galvanized coatings are well known conventional coatings plated on steel sheets to provide corrosion protection. One of ordinary skill in the art before would have found it obvious to provide the steel sheet of the co-pending claims with a hot-dip galvanized layer in order to provide the steel sheet with improved correction protection.
Claims 1-7 and 14-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-15 of co-pending Application No. 18/873,508 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending application discloses each and every feature as claimed in the instant application with the exception that the GDS profile values and compositional proportions overlap. One of ordinary skill in the art would have found it obvious to select from with the overlapping subject matter including steel sheets having GDS profile values and compositional proportions which fall within the claims of the instant application.
Regarding instant claim 7, the co-pending application does not appear to claim a hot-dipped galvanized plating on the steel sheet, however the examiner takes official notice that hot-dip galvanized coatings are well known conventional coatings plated on steel sheets to provide corrosion protection. One of ordinary skill in the art before would have found it obvious to provide the steel sheet of the co-pending claims with a hot-dip galvanized layer in order to provide the steel sheet with improved correction protection.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 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.
Claims 1-7 and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Kohler et al. (PGPub US 2022/0170164).
Regarding applicants’ claims 1-4, Kohler et al. disclose a steel strip with improved bonding having a metallic coating, the steel strip comprising Mn and elements such as Si (paragraph 0016), however Kohler et al. do not appear to explicitly disclose a GDS profile for Mn and Si, and more specifically GDS profiles resulting in converted concertation differences and a minimum point within the claimed ranges.
While Kohler et al. do not appear to disclose GDS profiles, one of ordinary skill in the art would expect substantially identical materials treated in a substantially identical manner to have substantially identical structure and properties.
Applicants disclose plating of a steel sheet (comprising Mn and Si) with an Fe plating layer containing 5 to 50 wt.% oxygen, and subjecting the plated steel to an annealing process at an annealing temperature of 600 to 900ºC in an atmosphere with a dew point of -15 to +30ºC and a hydrogen concentration of 1% or more and 70% or less with a holding time of 5 to 120 seconds (present specification, paragraphs 0055-0059).
Kohler et al. disclose a steel sheet comprising silicon and manganese with a plating of iron comprising 5 to 50 wt.% oxygen (paragraphs 0021 and 0035). The plated steel sheet is heated to 550 to 880ºC in an atmosphere with a dew point of -70 to +15ºC and a hydrogen concentration of 2 to 40%, and a holding time of 30 to 650 seconds (paragraph 0053). While Kohler et al. do not appear to disclose the exact ranges disclosed by applicants, one of ordinary skill in the art before the effective filing date the claimed invention, would have found it obvious to select from within the parameters disclosed by Kohler et al. including those which fall within applicants’ disclosed ranges.
Given the treatment of substantially identical materials in a substantially identical manner, the plated steel sheets of Kohler et al. would be expected to have concertation profiles substantially identical to those of applicants’ plated steel sheets, and thus have GDS profiles substantially identical to those disclosed by applicants, including GDS profiles that conform to applicants’ claimed requirements.
Regarding applicants’ claims 5-6, Kohler et al. disclose a steel comprising (in weight percent) elements which include: Mn: 8.1 to 25.0%, Si: 0.01 to 3.0%, C: 0.1-1.0%, Al: 1.0 to 8.0%, P: ≤ 0.10%, S: ≤ 0.010%, Cr: 0.01- 0.7%, B: 0.001 to 0.08%, the remainder being iron and unavoidable impurities (paragraphs 0038-0052).
While Kohler et al. do not appear to disclose the exact ranges claimed by applicants one of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to select from the values disclosed by Kohlar et al. including those which fall within applicants’ claimed ranges, or come so close to applicants’ claimed ranges as to establish a prima facie case of obviousness (MPEP 2144.05 I).
With regards to the manganese content, applicants’ disclose that “The upper limit of the concentration of Mn in the base iron is not particularly limited, but considering the commonly used composition, the upper limit may be limited to 8% by weight” (present specification paragraph 0044). Given that applicants’ disclose that the upper content of manganese is not particularly limited, the amounts disclosed by Kohlar et al. (8.1 to 25.0 wt.%) would be so close to applicants’ claimed range, that the steel sheets of applicants’ Kohlar et al. would be expected to exhibit the same properties.
Regarding applicants’ claims 7 and 14-16, Kohler et al. disclose coatings such as galfan and galvalume (paragraph 0056), and further disclose tests carried out on a hot-dip simulator and further discuss hot-dip coat quality (paragraphs 0058 and 0060). One of ordinary skill in the art considering Kohler et al. would understand the application of zinc and aluminum coatings disclosed to include formation of a hot-dip galvanized layer. Alternatively one of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to form a hot-dip galvanized coating layer on the steel strip given the disclosure of galvanized coating materials and the use of hot-dip plating.
Regarding applicants’ claims 14-19, Kohler et al. disclose a steel comprising (in weight percent) elements which include: Mn: 8.1 to 25.0%, Si: 0.01 to 3.0%, C: 0.1-1.0%, Al: 1.0 to 8.0%, P: ≤ 0.10%, S: ≤ 0.010%, Cr: 0.01- 0.7%, B: 0.001 to 0.08%, the remainder being iron and unavoidable impurities (paragraphs 0038-0052).
While Kohler et al. do not appear to disclose the exact ranges claimed by applicants one of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to select from the values disclosed by Kohlar et al. including those which fall within applicants’ claimed ranges, or come so close to applicants’ claimed ranges as to establish a prima facie case of obviousness (MPEP 2144.05 I).
With regards to the manganese content, applicants’ disclose that “The upper limit of the concentration of Mn in the base iron is not particularly limited, but considering the commonly used composition, the upper limit may be limited to 8% by weight” (present specification paragraph 0044). Given that applicants’ disclose that the upper content of manganese is not particularly limited, the amounts disclosed by Kohlar et al. (8.1 to 25.0 wt.%) would be so close to applicants’ claimed range, that the steel sheets of applicants’ Kohlar et al. would be expected to exhibit the same properties.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM C KRUPICKA whose telephone number is (571)270-7086. The examiner can normally be reached Monday-Friday 8-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at (571)272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Adam Krupicka/Primary Examiner, Art Unit 1784