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
Status of claims
Specification and Claims 1-12 have been amended; Claims 1-12 remain for examination, wherein claims 1 and 7 are independent claims.
Previous Rejections/Objections
Previous objection of Claims 1 and 7 because of informality is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 11/22/2025.
Previous objection of Claim 3 because of informality is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 11/22/2025.
Previous objection of Claim 5 because of informality is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 11/22/2025.
Previous objection of Claim 7 because of informality is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 11/22/2025.
Previous rejection of Claims 1-4 and 6-12 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 11/22/2025.
However, In view of the Applicant’s amendments in the instant claims, newly recorded reference(s), and reconsideration, a new ground rejection is listed as following:
Specification
The amendment filed 11/22/2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: the amended [Relational Expression 3] in par.[0025]-[0026], [0032]-[0033], and [0083]-[0084] has introduced new matter according to the disclosures in “Certified copy of foreign priority of application” (Claim 1, par.[0012], [0014], and [0041]) and original application (par.[0025], [0031], and [0082], which corresponding to US-PG-pub 2024/0052468 A1 (Claim 1, par.[0012], [0014], and [0041]).
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The amended [Relational Expression 3] in the instant independent claims 1 and 7 has no literal support from the original disclosure of the application (refer to the certified copy of foreign priority of application and US-PG-pub 2024/0052468 A1, which corresponding to the original application), which is considered as a new matter. Since claims 2-6 and 8-12 depend on claim 1 and 7 separately, these claims are also be rejected.
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 1-9 and 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Seo et al (US-PG-pub 2021/0071278 A1, corresponding to WO 2019/124766 A1, thereafter PG’278) in view of Hasegawa et al (US-PG-pub 2017/0037488 A1, updated as US 10,227,672 B2, thereafter PG’488).
PG’278 in view of PG’488 is applied to the instant claims 1-9 and 11-12 for the same reason as stated in the previous office action dated 8/14/2025.
Regarding the amended [Relational Expression 3] in the instant claims 1 and 7, it is recognized as a general formula fully depended on the steel dimension and Nb amount in the alloy. It is well settled that there is no invention in the discovery of a general formula if it covers a composition and dimension described in the prior art. In re Cooper and Foley 1943 C.D.357, 553 O.G.177; 57 USPQ 117, Taklatwalla v. Marburg. 620 O.G.685, 1949 C.D.77, and In re Pilling, 403 O.G.513, 44 F(2) 878, 1931 C.D.75. In the instant case, in the absence of evidence to the contrary, the selection of the proportions of Nb and material dimension from PG’278 in view of PG’488 in order to meet the claimed equation would appear to require no more than routine investigation by those ordinary skilled in the art. In re Austin, et al., 149 USPQ 685, 688.
The other amended features in the instant claims do not change the scope of the instant claims.
Claim 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over PG’278 in view of PG’488, and further in view of Bae et al (WO 9308313 A1, thereafter WO’313).
PG’278 in view of PG’488 and WO’313 is applied to the instant claim 10 for the same reason as stated in the previous office action dated 8/14/2025.
The amended features in the instant claim do not change the scope of the instant claims.
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 1-12 are rejected on the ground of non-statutory obviousness type double patenting as being unpatentable over Claims 1-10 of co-pending application No. 18/029,865 (US-PG-pub 2023/0357881 A1).
Claims 1-10 of co-pending application No. 18/029,865 (US-PG-pub 2023/0357881 A1) is applied to the instant claims 1-12 for the same reason as stated in the previous office action dated 8/14/2025.
Regarding the amended feature of [Relational Expression 3] in the instant claims 1 and 7, it is recognized as a general formula fully depended on the steel dimension and Nb amount in the alloy. It is well settled that there is no invention in the discovery of a general formula if it covers a composition and dimension described in the prior art. In re Cooper and Foley 1943 C.D.357, 553 O.G.177; 57 USPQ 117, Taklatwalla v. Marburg. 620 O.G.685, 1949 C.D.77, and In re Pilling, 403 O.G.513, 44 F(2) 878, 1931 C.D.75. In the instant case, in the absence of evidence to the contrary, the selection of the proportions of elements from Claims 1-10 of co-pending application No. 18/029,865 (US-PG-pub 2023/0357881 A1) in order to meet the claimed equation would appear to require no more than routine investigation by those ordinary skilled in the art. In re Austin, et al., 149 USPQ 685, 688.
The other amended features in the instant claims do not change the scope of the instant claims.
This is a provisional obvious-type double patenting rejection since the conflict claims in the co-pending application have not in fact been patented.
Claims 1-12 are rejected on the ground of non-statutory obviousness type double patenting as being unpatentable over Claims 1-6 of co-pending application No. 18/265,246 (US-PG-pub 2024/0026483 A1).
Claims 1-6 of co-pending application No. 18/265,246 (US-PG-pub 2024/0026483 A1) is applied to the instant claims 1-12 for the same reason as stated in the previous office action dated 8/14/2025.
Regarding the amended feature of [Relational Expression 3] in the instant claims 1 and 7, it is recognized as a general formula fully depended on the steel dimension and Nb amount in the alloy. It is well settled that there is no invention in the discovery of a general formula if it covers a composition and dimension described in the prior art. In re Cooper and Foley 1943 C.D.357, 553 O.G.177; 57 USPQ 117, Taklatwalla v. Marburg. 620 O.G.685, 1949 C.D.77, and In re Pilling, 403 O.G.513, 44 F(2) 878, 1931 C.D.75. In the instant case, in the absence of evidence to the contrary, the selection of the proportions of elements from Claims 1-6 of co-pending application No. 18/265,246 (US-PG-pub 2024/0026483 A1) in order to meet the claimed equation would appear to require no more than routine investigation by those ordinary skilled in the art. In re Austin, et al., 149 USPQ 685, 688.
The other amended features in the instant claims do not change the scope of the instant claims.
This is a provisional obvious-type double patenting rejection since the conflict claims in the co-pending application have not in fact been patented.
Claims 1-12 are rejected on the ground of non-statutory obviousness type double patenting as being unpatentable over Claims 1-14 of co-pending application No. 18/711,439 (US-PG-pub 2025/0003022 A1).
Claims 1-14 of co-pending application No. 18/711,439 (US-PG-pub 2025/0003022 A1) is applied to the instant claims 1-12 for the same reason as stated in the previous office action dated 8/14/2025.
Regarding the amended feature of [Relational Expression 3] in the instant claims 1 and 7, it is recognized as a general formula fully depended on the steel dimension and Nb amount in the alloy. It is well settled that there is no invention in the discovery of a general formula if it covers a composition and dimension described in the prior art. In re Cooper and Foley 1943 C.D.357, 553 O.G.177; 57 USPQ 117, Taklatwalla v. Marburg. 620 O.G.685, 1949 C.D.77, and In re Pilling, 403 O.G.513, 44 F(2) 878, 1931 C.D.75. In the instant case, in the absence of evidence to the contrary, the selection of the proportions of elements from Claims 1-14 of co-pending application No. 18/711,439 (US-PG-pub 2025/0003022 A1) in order to meet the claimed equation would appear to require no more than routine investigation by those ordinary skilled in the art. In re Austin, et al., 149 USPQ 685, 688.
The other amended features in the instant claims do not change the scope of the instant claims.
This is a provisional obvious-type double patenting rejection since the conflict claims in the co-pending application have not in fact been patented.
Response to Arguments
Applicant’s arguments to the art rejection to Claims 1-12 have been considered but they are moot in view of the new ground rejection as stated above. Regarding the arguments related to the amended features in the instant claims, the Examiner’s position has stated as above.
The Applicant’s arguments are summarized as following:
1, The specification of the instant application has voluntarily been amended to correct clerical errors and conform to the above amendments to the claims. Substitute specifications are being submitted, along with this paper. Reconsideration and entrance thereof are courteously requested.
2, The fresh martensite and retained austenite of PG’488 cannot be combined into PG’ 278 to arrive at the claimed microstructure, without significant change or redesign in all the schemes of PG’278, and also without losing the original purposes and operational principles intended in PG’278.
3, Regarding the rejection for claim 7, claimed invention and PG’278 differ in terms of expression and the claimed temperature range is completely different from that of PG’278.
4, Regarding the rejections of ODPs, the corresponding co-pending applications do not specify the claimed average grain size.
In response,
Regarding the argument 1, the amendments in specification and claims should rely on the original disclosures of the instant application. The amended [Relational Expression 3] in the specification and instant independent claims 1 and 7 has no literal support from the original disclosure of the application (refer to the certified copy of foreign priority of application and US-PG-pub 2024/0052468 A1, which corresponding to the original application), which is considered as a new matter. The newly added paratheses change the scope of the invention scope and there is different ways to add paratheses in the amended [Relational Expression 3].
Regarding the argument 2, Firstly, both PG’488 and PG’278 teach the same high strength cold rolled steel sheet throughout whole disclosing range. Secondly, the Applicant’s arguments the combined prior arts individually, one should not show non-obviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the instant case, PG’278 in view of PG’488 is applied to the instant claims 1-9 and 11-12. The reason and motivation for the combination can further refer to the rejection for in the office action above and previous office action dated 8/14/2025.
Regarding the argument 3, as pointed out in the rejection for the claim 7 in the previous office action dated 8/14/2025, PG’278 teaches process steps including hot-rolling, cooling, cold rolling, continuously annealing, soaking, primary cooling, secondary cooling, and over-aging (par.[0008], and [0104]-[0145] of PG’278), which reads on all of the essential process steps as claimed in the instant claim. PG’278 provides process parameters (Examples and par.[0008], and [0104]-[0145] of PG’278) overlap the claimed parameters. There is no evidence to show that the claimed temperature range is completely different from that of PG’278 as argued.
Regarding argument 4, the average grain size is recognized as a material feature fully depended on the alloy composition and microstructures. Claims of co-pending applications teach the same cold rolled steel sheet with similar alloy composition, microstructures manufactured by the similar cold rolling and treatment as claimed throughout whole disclosing range. The claimed average grain size would be highly expected from the co-pending applications (Claims 1-10 of co-pending application No. 18/029,865 (US-PG-pub 2023/0357881 A1); Claims 1-6 of co-pending application No. 18/265,246 (US-PG-pub 2024/0026483 A1); and Claims 1-14 of co-pending application No. 18/711,439 (US-PG-pub 2025/0003022 A1)).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIE YANG whose telephone number is (571)270-1884. The examiner can normally be reached on IFP.
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/JIE YANG/Primary Examiner, Art Unit 1734