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 1-7 have been cancelled; claim 15-24 are added as new claims.
Election/Restrictions
The Applicant indicates Claims 9-14 have been withdrawn as non-elected claims. Although the newly added claims 19-22 depend on claim 8, however the claims 19-20 belong to the withdrawn invention II, claim 21 belong to the withdrawn invention IV; and , claim 22-24 belong to the withdrawn invention III. These claims are withdrawn from consideration as non-elected claims. Therefore, claims 8 and 15-18 remain for examination, wherein claim 8 is an independent claim.
Claim Objections
Claim 1 is objected to because of the following informalities: the “-“ on line 20, line 22, and line 24 in the instant claim should be deleted. Appropriate correction is required.
Claims 15-18 are objected to because of the following informalities: proper unit should be added for the claimed element(s) (wt% according to corresponding independent claim 8).
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 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.
Claims 8 and 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Yasui et al (US-PG-pub 2018/0312954 A1, listed in IDS filed on 12/03/2025, corresponding to US 10,704,132 B2 thereafter PG’954).
Regarding claim 8 and 15-18, PG’954 teaches a high-strength hot-dip galvanized steel sheet including a hot-dip galvanized plating layer on a steel sheet base material (Abstract, examples, and claims of PG’954) with Al concentration of plating layer (par.[0074]-[0075 of PG’954). The comparison between the claimed alloy composition ranges, microstructures, decarburized layer, and coating alloy and those disclosed by PG’954 (Claims, examples, and abstract of PG’954) has been listed in following table. PG’954 teaches forming Fe-Al surface layers on the steel sheet (par.[0069]-[0071]). All of the essential alloy composition ranges disclosed by PG’954 (par.[0098]-[0116] of PG’954) overlap the claimed alloy composition ranges. MPEP 2144 05 I. PG’954 specify an average thickness of the decarburized layer is 10 to 200 μm, and an average volume fraction of the ferrite phase in the decarburized layer is 70% or more, and a remaining structure is made up of austenite, bainite, martensite, or pearlite. (par.[0034] and cl.8 of PG’954), which overlaps the claimed ferrite fraction and thickness of the decarburized layer as claimed in the instant claim. MPEP 2144 05 I. Overlapping in alloy composition ranges, fraction of the ferrite phase, and the thickness of the decarburized layer create a prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the alloy composition ranges including C, Mn, Si, Al, Cr, Ti, B, P, S, N, Fe, and optionally including Ni, Mo, Nb, and Ca from the disclosure of PG’954 and optimize the amount of ferrite fraction and thickness of decarburized layer from PG’954 since PG’954 teaches the same coated steel sheet as claimed throughout whole disclosing range.
Element
From instant Claims 8 and 15-18 (wt %)
From PG’954 (wt %)
Overlapping range
(wt %)
C
0.26-0.4
0.05-0.4
0.26-0.4
Mn
0.5-1.8
1.0-4.0
0.5-1.8
Si
0.1-1.25
0.4-3.0
0.4-1.25
Al
0.01-0.1
0.05-0.1
0.05-0.1
Cr
0.1-1.0
0.01-2.0
0.1-1.0
Ti
0.01-0.1
0.001-0.15
0.01-0.1
B
0.001-0.004
0.0001-0.01
0.001-0.004
P
≤ 0.020
0.0001-0.1
0.0001-0.02
S
≤ 0.010
0.0001-0.01
0.0001-0.01
N
≤ 0.010
0.0005-0.01
0.0005-0.01
Fe
Balance +impurities
Balance +impurities
Balance +impurities
One or more
Ni ≤ 0.5 (cl.8 and 15)
Mo: ≤ 0.40 (cl.8 and 16)
Nb: ≤ 0.08(cl.8 and 17)
Ca: ≤ 0.1(cl.8 and 18)
Ni: 0.01-2.0;
Mo: 0.01-2.0;
Nb: 0.001-0.10
Ca: not intended added
Ni: 0.01-0.5 (cl.8 and 15)
Mo: 0.01-0.40 (cl.8 and 16)
Nb: 0.01-0.08 (cl.8 and 17)
Ca: 0-trace amount (cl.8 and 18)
Microstructure
Area%
Ferrite: 60-90;
Remain: M-A islands, pearlite or Bainite
70 or more Ferrite (Cl.8 and par.[0034] of PG’954)
Overlapping
Ferrite: 70-90 (PG’954)
Decarburized layer (mm)
1-100
10-200 (cl.8 and par.[0034] of PG’954))
Overlapping range 10-100 (PG’954)
Coating layer
Al or Al alloy
Forming Fe-Al surface layers (par.[0069]-[0071])
Reads on
Claims 8 and 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Cabo et al (US-PG-pub 2017/0253941 A1, listed in IDS filed on 12/03/2025, thereafter PG’941) in view of PG’954.
Regarding claim 8 and 15-18, PG’941 teaches a steel sheets intended to yield very high strength mechanical parts after press hardening with pre-coating (Abstract, par.[0002], examples, and claims of PG’941), which reads on the coated steel sheet as claimed in the instant claims. The comparison between the claimed alloy composition ranges and those disclosed by PG’941 (Claims, examples, and abstract of PG’941) has been listed in following table. PG’941 teaches Al or Al alloy coating (par.[0034], [0105]-[0108]) and all of the alloy composition ranges (Abstract, claims, and par.[0020]-[0030] of PG’941), disclosed by PG’941 overlap the claimed ranges as claimed in the instant claims, which creates a prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the alloy composition ranges including C, Mn, Si, Al, Cr, Ti, B, P, S, N, Fe, and optionally including Ni, Mo, Nb, and Ca from the disclosure of PG’941 since PG’941 teaches the same coated steel sheet as claimed throughout whole disclosing range.
Element
From instant Claims 8 and 15-18 (wt %)
From PG’941 (wt %)
Overlapping range
(wt %)
C
0.26-0.4
0.24-0.38
0.26-0.38
Mn
0.5-1.8
0.4-3
0.8-1.5
Si
0.1-1.25
0.10-0.70
0.1-0.7
Al
0.01-0.1
0.015-0.070
0.015-0.1
Cr
0.1-1.0
0.01-2
0.1-1.0
Ti
0.01-0.1
0.015-0.10
0.015-0.1
B
0.001-0.004
0.0005-0.004
0.001-0.004
P
≤ 0.020
0.0001-0.025
0.0001-0.02
S
≤ 0.010
0.0001-0.005
0.0001-0.01
N
≤ 0.010
0.003-0.01
0.003-0.01
Fe
Balance +impurities
Balance +impurities
Balance +impurities
One or more
Ni ≤ 0.5 (cl.8 and 15)
Mo: ≤ 0.40 (cl.8 and 16)
Nb: ≤ 0.08(cl.8 and 17)
Ca: ≤ 0.1(cl.8 and 18)
Ni: 0.25-2;
Mo: 0.05-0.65;
Nb: 0-0.060
Ca: 0.0005-0.005
Ni: 0.25-0.5 (cl.8 and 15)
Mo: 0.05-0.40 (cl.8 and 16)
Nb: 0-0.060 (cl.8 and 17)
Ca: 0.0005-0.005(cl.8 and 18)
Microstructure
Area%
Ferrite: 60-90;
Remain: M-A islands, pearlite or Bainite
Ferrite: ferrite-pearlitic structure (Fig.8-9 and par.[0031], [0119])
70 or more Ferrite (Cl.8 and par.[0034] of PG’954)
Overlapping
Ferrite: 70-90 (PG’954)
Decarburized layer (mm)
1-100
10-200 (cl.8 and par.[0034] of PG’954))
Overlapping range 10-100 (PG’954)
Coating layer
Al or Al alloy
Al or Al alloy coating (par.[0034], [0105]-[0108])
Reads on
Still regarding claim 8, PG’941 teaches including ferrite-pearlitic structure (Fig.8-9 and par.[0031], [0119]). PG’941 does not specify the claimed amount of ferrite fraction and thickness range of decarburized layer as claimed in the instant claim. PG’954 teaches a high-strength hot-dip galvanized steel sheet including a hot-dip galvanized plating layer on a steel sheet base material (Abstract, examples, and claims of PG’954) with Al concentration of plating layer (par.[0074]-[0075 of PG’954). All of the essential alloy composition ranges disclosed by PG’954 (par.[0098]-[0116] of PG’954) overlap the claimed alloy composition ranges. MPEP 2144 05 I. PG’954 specify an average thickness of the decarburized layer is 10 to 200 μm, and an average volume fraction of the ferrite phase in the decarburized layer is 70% or more, and a remaining structure is made up of austenite, bainite, martensite, or pearlite. (par.[0034] and cl.8 of PG’954), which overlaps the claimed ferrite fraction and thickness of the decarburized layer as claimed in the instant claim. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the ferrite fraction and thickness of the decarburized layer as demonstrated by PG’954 for the steel sheet of PG’941 since both PG’954 and PG’941 teach the same coated steel sheet as claimed throughout whole disclosing range.
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 8 and 15-18 are rejected on the ground of non-statutory obviousness type double patenting as being unpatentable over Claims 1-7 of co-pending application No. 18/038104 (US 12,385,121 B2) in view of PG’954.
Regarding instant Claims 8 and 15-18, although the conflicting claims are not identical, they are not patentable distinct from each other because Claims 1-7 of co-pending application No. 18/038104 (US 12,385,121 B2) teaches the same coated steel sheet. The essential alloy composition ranges and microstructure phases and decarburization thickness disclosed by Claims 1-7 of co-pending application No. 18/038104 (US 12,385,121 B2) reads on or overlaps the claimed ranges. Overlapping in alloy composition ranges creates a prima facie case of obviousness. MPERP 2144 05 I. It is noted that 0.15-0.25 wt% C disclosed by Claims 1-7 of co-pending application No. 18/038104 (US 12,385,121 B2) is different to the claimed 0.26-0.40wt% C as claimed in the instant claim 8. PG’954 teaches a high-strength hot-dip galvanized steel sheet including a hot-dip galvanized plating layer on a steel sheet base material (Abstract, examples, and claims of PG’954) with Al concentration of plating layer (par.[0074]-[0075 of PG’954). All of the essential alloy composition ranges disclosed by PG’954 (par.[0098]-[0116] of PG’954) overlap the claimed alloy composition ranges. MPEP 2144 05 I. PG’954 specify adjusting C in range 0.04-0.4 mass% and more specifically, the content is preferably set in a range of 0.07 to 0.3 mass % in view of workability and weldability (par.[0098] of PG’954), which overlaps the claimed C range as claimed in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the C from the disclosure of PG’954 for the alloys disclosed from Claims 1-7 of co-pending application No. 18/038104 (US 12,385,121 B2) since both PG’954 and Claims 1-7 of co-pending application No. 18/038104 (US 12,385,121 B2) teach the same steel sheet with coating as claimed throughout whole disclosing range.
Conclusion
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/JIE YANG/Primary Examiner, Art Unit 1734