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 & Status of Claims
Applicant’s election without traverse of Group I, claims 1-4, drawn to a high strength steel sheet. in the reply filed on 09/24/2025 is acknowledged.
Claims 5-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/24/2025.
Claim Objections
Claims 1 and 3-4 are objected to because of the following informalities: The various units, vol%, wt%, units of strength, HER and the various calculations in claims 1 and 4 and the term “including 0%” in claim 3 should not be in parentheses. 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.
Regarding claims 1-4, the terms "high strength" "excellent workability" in claims 1-4 are relative terms which renders the claim indefinite. The terms 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. Neither the instant claims nor the specification explicitly define what type of strength (tensile, yield) and values would meet the term. Similarly neither the instant claims nor the specification define what would measurable property and values constitute “excellent” workability.
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
List 1
Element
Instant Claims
(mass%)
Prior Art
(mass%)
C
0.1 – 0.25
0.15 – 0.30
Si
0.01 – 1.5
0.8 – 2.4
Mn
1.0 – 4.0
2.4 – 3.5
Al
0.01 – 1.5
0.01 – 0.08
P
0.15 or less
0.08 or less
S
0.03 or less
0.005 or less
N
0.03 or less
0.010 or less
B
0.0005 – 0.005
0.0002 – 0.0050
V
Claim 2: one or more of the following (1) to (8):
(1) one or more of Ti: 0 to 0.5, Nb: 0 to 0.5, and V: 0 to 0.5;
(2) one or more of Cr: 0 to 3.0 and Mo: 0 to 3.0;
(3) one or more of Cu: 0 to 4.0 and Ni: 0 to 4.0;
(4) one or more of Ca: 0 to 0.05, REM: 0 to 0.05 excluding Y, and Mg: 0 to 0.05;
(5) one or more of W: 0 to 0.5 and Zr: 0 to 0.5;
(6) one or more of Sb: 0 to 0.5 and Sn: 0 to 0.5;
(7) one or more of Y: 0 to 0.2 and Hf: 0 to 0.2; and
(8) Co: 0 to 1.5.
V: 0.10 or less
Fe +
impurities
Balance
Balance
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over US 2016/0369369 A1 of Takashima (US’369).
Regarding claims 1-4, US 2016/0369369 A1 of Takashima (US’369) teaches {US’369 abstract, [0012]-[0075], claims 1-4} “[0021] [1] A high-strength cold-rolled steel sheet having a chemical composition containing, by mass %, C: 0.15% or more and 0.30% or less, Si: 0.8% or more and 2.4% or less, Mn: 2.4% or more and 3.5% or less, P: 0.08% or less, S: 0.005% or less, Al: 0.01% or more and 0.08% or less, N: 0.010% or less, Ti: 0.002% or more and 0.05% or less, B: 0.0002% or more and 0.0050% or less, and the balance being Fe and inevitable impurities, a microstructure including ferrite having an average grain diameter of 3 μm or less and a volume fraction of 5% or less (including 0%), retained austenite having a volume fraction of 10% or more and 20% or less, martensite having an average grain diameter of 4 μm or less and a volume fraction of 20% or less (including 0%), and the balance including bainite and/or tempered martensite, in which an average number of cementite grains having a grain diameter of 0.1 μm or more per 100 μm2 in a cross section in the thickness direction parallel to the rolling direction of the steel sheet is 30 or more. [0022] [2] The high-strength cold-rolled steel sheet according to item [1] above, the steel sheet having the chemical composition further containing, by mass %, one or more selected from V: 0.10% or less and Nb: 0.10% or less. [0023] [3] The high-strength cold-rolled steel sheet according to item [1] or [2] above, the steel sheet having the chemical composition further containing, by mass %, one or more selected from Cr: 0.50% or less, Mo: 0.50% or less, Cu: 0.50% or less, and Ni: 0.50% or less. [0024] [4] The high-strength cold-rolled steel sheet according to any one of items [1] to [3] above, the steel sheet having the chemical composition further containing, by mass %, Ca and/or REM in an amount of 0.0050% or less in total.”
Therefore, the prior art teaches a high-strength cold-rolled steel sheet with a composition wherein the claimed ranges of the constituent elements of the instant alloy of the instant claims 1 and 2 overlap or lie inside the ranges of various elements of the alloy of the prior art as shown in the List 1 above. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed composition over the prior art disclosure since the prior art teaches the similar property/utility throughout the disclosed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Regarding the recited microstructures of “as microstructures, bainite, tempered martensite, fresh martensite, retained austenite and unavoidable structures” of instant claims 1 and “the microstructures of the steel sheet include, by volume fraction, 10 to 30% of bainite, 50 to 70% of tempered martensite, 10 to 30% of fresh martensite, 2 to 10% of retained austenite, and 5% or less (including 0%) of ferrite” of instant claim 3, the prior art teaches [0063] “The high-strength cold-rolled steel sheet according to aspects of the present invention has a microstructure including ferrite having an average grain diameter of 3 μm or less and a volume fraction of 5% or less (including 0%), retained austenite having a volume fraction of 10% or more and 20% or less, martensite having an average grain diameter of 4 μm or less and a volume fraction of 20% or less (including 0%), and the balance including bainite and/or tempered martensite, in which an average number of cementite grains having a. grain diameter of 0.1 μm or more per 100 μm2 in a cross section in the thickness direction parallel to the rolling direction of the steel sheet is 30 or more” [0064] “Ferrite: having an average grain diameter of 3 μm or less and a volume fraction of 5% or less (including 0%)” [0066] “Retained austenite: having a volume fraction of 10% more and 20% or less”. [0068] “Martensite: having an average grain diameter of 4 μm or less and a volume fraction of 20% or less (including 0%)” [0070] “Remainder of microstructure: microstructure including bainite and/or tempered martensite” [0071] “It is preferable that the volume fraction of bainite be 15% or more and 50% or less and the volume fraction of tempered martensite be 30% or more and 70% or less. In addition, it is preferable that bainite and tempered martensite be included. It is preferable that the average grain diameter of tempered martensite be 12 μm or less. Here, “volume fraction of a bainite phase” refers to the volume proportion of bainitic ferrite (ferrite having a high dislocation density) to an observed surface.” thereby meeting the recited limitation.
Regarding the recited limitation of “T(γ)/V(γ)≥0.08 [Relational Expression 2] where T(γ) is a fraction (vol %) of tempered retained austenite of the steel sheet, and V(γ) is a fraction (vol %) of the retained austenite of the steel sheet” of instant claim 1, as the prior art discloses that the claimed ranges of tempered martensite and retained austenite overlap or lie inside ranges disclosed by the prior art (see above), the claimed ratio ranges of these structures would also overlap or lie inside ranges disclosed by the prior art. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
The prior art teaches that [0020] “a high-strength cold-rolled steel sheet having a tensile strength of 1180 MPa or more” [0026] “According to aspects of the present invention, by controlling the chemical composition and microstructure of a steel sheet, it is possible to stably obtain a high-strength cold-rolled steel sheet excellent in terms of both elongation and stretch flange formability having a tensile strength of 1180 MPa or more, a yield ratio of 75% or more, an elongation of 17% or more, and a hole expansion ratio of 30% or more” thereby indicating that claimed ranges of Relational Expressions 3, 4 and 5 would also overlap or lie inside ranges disclosed by the prior art. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
It is noted that the prior art is silent regarding its alloy having the properties of a) [Relational Expression 1] 0.03≤[B] FM /[B] TM≤0.55 where [B]FM is a content (wt %) of Boron (B) contained in the fresh martensite, and [B]TM is a content (wt %) of Boron (B) contained in the tempered martensite [claim 1], as recited in the instant claims. 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. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Therefore, it is expected that the alloy of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (see compositional analysis above), b) the claimed and prior art products are identical or substantially identical in structure (see microstructural analysis above) and c) the claimed and prior art products are produced by identical or substantially identical processes {instant alloy: instant specification [0078]-[0098]; Prior art: [0025], [0076]-[0114]}. Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
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 1-8 of U.S. Patent No. US 12,509,751 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because it teaches a high strength steel sheet with substantially identical composition, microstructure, and properties. Regarding those properties that are not explicitly recited, it is expected that the alloy of the patent possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (see compositional analysis above), b) the claimed and prior art products are identical or substantially identical in structure (see microstructural analysis above) and c) the claimed and prior art products are produced by identical or substantially identical processes {instant alloy: instant specification [0078]-[0098]; Prior art: claims 5-8}. Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
Claims 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/267,082 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application teaches a high strength steel sheet with substantially identical composition, microstructure, and properties. Regarding those properties that are not explicitly recited, it is expected that the alloy of the reference application possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (see compositional analysis above), b) the claimed and prior art products are identical or substantially identical in structure (see microstructural analysis above) and c) the claimed and prior art products are produced by identical or substantially identical processes {instant alloy: instant specification [0078]-[0098]; Prior art: claims 5-8}. Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
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 1-7 of copending Application No. 18/267,084 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application teaches a high strength steel sheet with substantially identical composition, microstructure, and properties. Regarding those properties that are not explicitly recited, it is expected that the alloy of the reference application possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (see compositional analysis above), b) the claimed and prior art products are identical or substantially identical in structure (see microstructural analysis above) and c) the claimed and prior art products are produced by identical or substantially identical processes {instant alloy: instant specification [0078]-[0098]; Prior art: claims 5-7}. Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOPHY S. KOSHY whose telephone number is (571)272-0030. The examiner can normally be reached M-F 8:30 AM- 5:00 PM.
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/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733