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 .
Election/Restrictions
Applicant’s election of Group I (Claims 1-4) in the reply filed on 12/18/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Claims 5-7 are withdrawn. Claims 1-4 are examined herein.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 recites “as microstructures, bainite, tempered martensite, fresh martensite, retained austenite and unavoidable structures” in line 7-9, which should be “the steel microstructure comprises bainite, tempered martensite, fresh martensite, retained austenite and unavoidable structures”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4 are rejected 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.
The terms “high” and “excellent” in claim 1 (line 1 and line 10) and claims 2-4 (line 1) are relative terms which render the claim indefinite. The terms “high” and “excellent” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Appropriate correction is required.
Claim 4 recites a yield ratio in the last line. Please define the meaning of yield ratio to improve claim clarity. Appropriate correction is required.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over US’369 (US 2016/0369369) in view of Ono (US 2020/0157647), and further in view of JP’310 (JP2016-008310A).
Regarding claims 1 and 3, US’369 discloses (Abstract; [0027] to [0061]) a high strength sheet with a composition that overlaps with the instant claimed composition and therefore it would have been obvious to one of ordinary skill in the art to have selected amounts of each element from the ranges disclosed in US’369 to produce a steel sheet that meets the recited composition in claim 1. US’369 discloses many examples that meet the recited composition in claim 1 (See Table 1, Steel B, C, E, F, H, I, J).
Element
Claim 1
(mass %)
US’369
(mass %)
Overlap
(mass %)
C
0.1-0.25
0.15-0.3
0.15-0.25
Si
0.01-1.5
0.8-2.4
0.8-1.5
Mn
1.0-4.0
2.4-3.5
2.4-3.5
Al
0.01-1.5
0.01-0.08
0.01-0.08
P
0-0.15
0-0.08
0-0.08
S
0-0.03
0-0.005
0-0.005
N
0-0.03
0-0.01
0-0.01
B
0.0005-0.005
0.0002-0.005
0.0005-0.005
Fe + Impurities
Balance
Balance
Balance
US’369 discloses that the steel microstructure comprises bainite, tempered martensite, fresh martensite, retained austenite and unavoidable structures ([0063]), which meets the recited structure limitation in claim 1.
US’369 does not explicitly disclose Relational Expression 1 and Relational Expression 1 as recited in claim 1 and the phase content as recited in claim 3. However, these limitations depend on the steel composition and a method of making the steel sheet.
US’369 discloses ([0094] to [0114]) a method for making the steel sheet comprising: making a cold-rolled steel sheet; heating the cold-rolled steel sheet to a soaking temperature of 830° C-900° C at an average heating rate of 3-30° C/s followed by soaking the steel sheet at the soaking temperature for 30-600 seconds; cooling the steel sheet from the soaking temperature to a temperature 220-320°C at an average cooling rate of 3° C/s or more; heating the cooled steel sheet to 350-450° C and soaking at 350-450° C for 20 seconds or longer; and cooling steel sheet to room temperature.
The difference between the method disclosed by US’369 and the method recited in claim 5 is US’369 does not disclose the primary cooling step, the heating rate during tertiarily heating, and the cooling rate during tertiarily cooling as recited in claim 5.
Ono teaches ([0143] to [0165]) a method of making a high strength steel sheet that is analogous to the method of US’369. Ono discloses that a primary cooling is performed to 470 ºC at a cooling rate of 5 ºC/s to 2000 ºC/s followed by maintaining at 405-470 ºC for 14-200 seconds and heating the steel sheet from cooling stop temperature to 370 ºC at a heating rate of 3 ºC/s or more in order to form a structure having enhanced ductility ([0148] to [0152]). Thus, it would be obvious to one of ordinary skill in the art to perform a primary cooling to 470 ºC at a cooling rate of 5 ºC/s to 2000 ºC/s followed by maintaining the steel sheet at 405-470 ºC for 14-200 seconds and to heat the steel sheet from cooling stop temperature to 370 ºC at a heating rate of 3 ºC/s or more as taught by Ono in the process of US’369 in order to form a structure having enhanced ductility as disclosed by Ono.
US’369 in view of Ono does not explicitly disclose that the cooling rate after the tempering heat treatment is 1 ºC/s or more. JP’310 teaches ([0097] to [0140]) a method of making a high strength steel sheet that is analogous to the method of US’369. JP’310 discloses that after tempering heat treatment, water cooling is performed on the steel sheet and the produced steel sheet has excellent workability and high strength ([0001]; [0138]). Thus, it would be obvious to one of ordinary skill in the art to perform water cooling after tempering heat treatment as taught by JP’310 in the process of US’369 in view of Ono in order to make a steel sheet having high strength and excellent workability as disclosed by JP’310. Water cooling is known to have a cooling rate >20 ºC/s and meets the recited cooling rate in claim 5.
In view of the fact that US’369 in view of Ono and JP’310 teaches a composition that meets the recited composition in claim 1 and a method of making the steel sheet having processing temperature, heating rate and cooling rate that overlap the processing conditions recited in claim 5, one of ordinary skill in the art would expect that the steel sheet disclosed by US’369 in view of Ono and JP’310 to meet the Relational Expression 1 and Relational Expression 1 recited in claim 1 and the phase content as recited in claim 3. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 I.
Regarding claim 2, US’369 discloses that steel J contains 0.026 wt% Ti and 0.0028 wt% REM (Table 1, Steel J), which meets the limitation recited in claim 2.
Regarding claim 4, US’369 discloses that Sample No. 13 made of steel J has tensile strength of 1213 MPa, elongation of 17.9%, YR of 82% and hole expansion ratio of 38% (Table 3, Sample No. 13). BTE=6.22x106, which is close to the recited BTE. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). See MPEP 2144.05 I.
BTH=9.07x106 and IYR=0.18, which meets the recited range of BTH and IYR.
Thus, claim 4 is obvious over US’369 in view of Ono and JP’310.
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 1-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 12,509,751. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-4 of U.S. Patent No. 12,509,751 teach every limitation recited in instant claims 1-4.
Claims 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18/267084 (US 20240011118 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-4 of copending Application No. 18/267084 teach all the composition, structure and property limitations recited in claims 1-4. Claims 1-4 of copending Application No. 18/267084 do not disclose the recited Relational Expression 2 in claim 1. However, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 I. In view of the fact that claims 1-4 of copending Application No. 18/267084 teach a high strength steel sheet having the same composition, phase structure and properties as the steel sheet recited in the instant claims 1-4, one of ordinary skill in the art would expect that the steel sheet disclosed by claims 1-4 of copending Application No. 18/267084 to meet the recited Relational Expression 2 in claim 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18/267428 (US 20240060161 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-4 of copending Application No. 18/267428 teach all the composition, structure and property limitations recited in claims 1-4. Claims 1-4 of copending Application No. 18/267428 do not disclose the recited Relational Expression 2 in claim 1. However, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 I. In view of the fact that claims 1-4 of copending Application No. 18/267428 teach a high strength steel sheet having the same composition, phase structure and properties as the steel sheet recited in the instant claims 1-4, one of ordinary skill in the art would expect that the steel sheet disclosed by claims 1-4 of copending Application No. 18/267428 to meet the recited Relational Expression 2 in claim 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/XIAOWEI SU/Primary Examiner, Art Unit 1733