DETAILED ACTION
Examiner’s Note
This office action is in response to applicants’ remarks filed June 17, 2026. Claims 1-19 are pending with claims 8-13 withdrawn as directed to non-elected subject matter.
Restriction
Claims 8-13 remain withdrawn as directed to non-elected subject matter and are not in condition for rejoinder as they do not contain every limitation of an allowable claim. Applicants’ election group I, claims 1-7 and 14-19 on May 9, 2025 was without traverse. If applicants would like the withdrawn claims considered for rejoinder, applicants should amend the withdrawn claims to depend from an allowable claim, or to include all of the limitations of an allowable claim. Absent an amendment to include all the limitations of an allowable claim, the withdrawn claims will be canceled by examiners’ amendment at the time of allowance.
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 1-5, 7 and 14-16 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 14-16, 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 1-5, 7, and 14-16 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 claims 7 and 14-16, the co-pending application does not appear to claim a hot-dipped galvanized plating on the steel sheet, however the examiner previously took official notice (now applicant admitted prior art MPEP 2144.03 C) 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 claims 7 and 14-16, 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.
Allowable Subject Matter
Claims 1-7 and 14-19 distinguish over the prior art. Kohler et al. (PGPub US 2022/0170164) 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. In view of applicants’ arguments there is insufficient evidence such that one of ordinary skill in the art would have concluded compositional structure of the steel strip of Kohler et al. would have inherently exhibited a compositional profile as claimed. Further there is insufficient motivation such that one of ordinary skill in the art before the effective filing date of applicants’ claimed invention to modify the compositional profile to conform to the claimed parameters.
Response to Arguments
Applicants’ remarks filed June 17, 2026 have been considered and are found to be persuasive. Specifically applicants’ discussion of differences between the manufacturing process and layer structure as discussed by applicants, and that of Kohler et al. Given distinct structural differences within the manufacturing processes there is insufficient evidence to conclude that the steel sheet of Kohler et al. would exhibit an identical or substantially identical compositional profile to applicants claimed steel sheet. The rejections over Kohler et al. have been withdrawn. Claims 1-7 and 14-19 remain rejected under double patenting. Claims 8-13 remain pending but withdrawn and are NOT in condition to be rejoined. Applicants should either cancel the withdrawn claims, or amend the claims to place them in condition for rejoinder.
Conclusion
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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
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