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 without traverse of Group I, claims 1-4, in the reply filed on 11/3/2025 is acknowledged.
Claims 5-7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/3/2025.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hasegawa (US 9290834).
With respect to Claim 1, Hasegawa teaches a high strength steel sheet with excellent formability (i.e. workability), the steel having a composition, in weight%, as follows (col. 4, ln. 41-56; col. 8, ln .27 to col. 9, ln. 55; Table 1):
Claim 1
Hasegawa
Hasegawa, Ex. C
C
0.1-0.25
0.05-0.50
0.20
Si
0.01-1.5
0.01-2.5
1.0
Mn
1.0-4.0
0.5-3.5
2.0
Al
0.01-1.5
0.010-0.5
0.40
P
≤ 0.15
0.003-0.10
0.02
S
≤ 0.03
≤ 0.02
0.003
N
≤ 0.03
≤ 0.0125*
0.002
B
0.0005-0.005
0.0002-0.005
0.002
Fe
Balance with unavoidable impurities
Balance with unavoidable impurities
balance
Other
-
Ti: ≤ 0.05*
Ti: 0.02
*Ti>4N
Compositional ranges including zero are interpreted as optional elements. Thus, Hasegawa teaches a steel sheet with compositional ranges overlapping each of the instantly claimed ranges and examples, such as Ex. C falling within each of the instantly claimed ranges, and therefore, sufficiently specific to anticipate the claimed ranges under 35 U.S.C. 102.
Hasegawa further teaches and teaches specific examples, such as Ex. 12 (having the corresponding composition Ex. C above), comprising fresh martensite, tempered martensite, retained austenite, and bainite and thus, includes each of the required microstructural phases. (Tables 1, 2, and 4; see also col. 4, ln. 52-61; col. 6, ln. 46 to col. 7, ln. 40).
Hasegawa, therefore, teaches a high strength steel sheet having excellent workability, the steel having a composition with sufficient specificity to anticipate the claimed ranges and comprising each of the required microstructural phases. Hasegawa is silent as to the “Relational Expression 1,” drawn to a relationship between the boron content in the fresh martensite and tempered martensite; however, as the reference teaches a steel sheet with the same composition (including boron) and microstructure (including fresh martensite and tempered martensite) it would necessarily be expected to result in the same properties, including the claimed Relational Expression 1.
"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, 195 USPQ 430, 433 (CCPA 1977). Thus, the burden is shifted to the applicant to prove that the product of the prior art does not necessarily or inherently possess the characteristics attributed to the claimed product. See In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (“When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not."); MPEP 2112.01. Therefore, the prima facie case can only be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product.
With respect to Claim 2, the claim requires only one of the limitations (1) to (8). Hasegawa teaches a content of titanium, including specific examples such as Ex. 3, with a content of 0.02 wt% Ti falling within the instantly claimed range of limitation (1) of claim 2. (see rejection of claim 1 above).
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.
Claim(s) 3 is rejected under 35 U.S.C. 103 as being unpatentable over Hasegawa (US 9290834) as applied to claim 1 above.
With respect to Claim 3, Hasegawa teaches wherein the steel sheet comprises 60-95% of tempered martensite, 5-20% retained austenite, 10% or less fresh martensite, and 15% or less of bainite and other optional phases, overlapping the instantly claimed ranges. (col. 4, ln. 52-61; col. 6, ln. 46 to col. 7, ln. 40). It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
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 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18267082 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because: the instant and related claims are both drawn to high strength steel sheets having excellent workability, the steels having the same or substantially overlapping compositional ranges, the same microstructure of bainite, tempered martensite, fresh martensite, and retained austenite, and having the same relational expressions 1-4 (where the related application names them relational expression 1, 3, 4, and 5). Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
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. 18267435 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because: the instant and related claims are both drawn to high strength steel sheets having excellent workability, the steels having the same or substantially overlapping compositional ranges, the same microstructure of bainite, tempered martensite, fresh martensite, and retained austenite, and having the same relational expressions 1-4 (where the related application names them relational expression 1, 5, 6, and 7). Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
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 1-4of copending Application No. 18267428 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because: the instant and related claims are both drawn to high strength steel sheets having excellent workability, the steels having the same or substantially overlapping compositional ranges, the same microstructure of bainite, tempered martensite, fresh martensite, and retained austenite, and having the same relational expressions 1-4 (where the related application names them relational expression 1, 3, 4, and 5). Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2021/0355559.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN A HEVEY whose telephone number is (571)270-0361. The examiner can normally be reached Monday-Friday 9:00-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN A HEVEY/ Primary Examiner, Art Unit 1735