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 .
Claim Objections
Claims 1-3 are objected to because of the following informalities:
In claim 1, line 2, “(in wt. %)”” should read –, in wt. %:–.
In claim 1, lines 1-2 of step c), “y-axle” and “x-axle” should read –y-axis– and –x-axis–.
In claim 2, line 2, “(in wt. %)”” should read –, in wt. %:–.
In claim 2, third to last line, “3 50 – 600 MPa” should read –350 – 600 MPa–.
In claim 3, step g), “Continuously Annealing Line” and “Hot Dip Galvanizing Line” should read –continuous annealing line– and –hot dip galvanizing line–.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 2 recites “composition comprising” which fails to further limit claim 1, which recites “a composition consisting of.” The transitional term "comprising", which is synonymous with "including" or "containing," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. The transitional phrase "consisting of" excludes any element, step, or ingredient not specified in the claim. See MPEP 2111.03. Claim 2 allows for additional elements not recited in claim 1 and thus fails to further limit claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rehrl et al. (WO 2020/151856), as cited in the IDS dated 6/28/2023, hereinafter “Rehrl.”
Regarding claims 1-2, Rehrl teaches a cold rolled steel sheet or strip having a chemical composition consisting of, in wt.%, C: 0.15-0.25, Mn: 2.2-3.2, Cr: ≤ 0.8, Si: 0.5-1.6, Al: 0.03-1.0, Nb: ≤ 0.04, Ti: 0.01-0.04%, Mo: ≤ 0.2, Ca: ≤ 0.01, V: ≤ 0.04, Cu: ≤0.15, Ni: ≤ 0.15, B: 0.001-0.010, P: ≤ 0.02, S: ≤ 0.005, Zr: ≤ 0.006, Sn: ≤ 0.015%, O: ≤0.0020, H: ≤ 0.0003, N: ≤0.01, and balance Fe apart from impurities (Abstract, p. 8 ln. 15-19, p. 15 ln. 18-29), which satisfies or overlaps with the instantly claimed chemical composition ranges. In the case where the claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP §2144.05.
Rehrl teaches wherein the sheet or strip should satisfy at least one of these mechanical properties, but preferably all of these properties are met: a tensile strength of ≥1380 MPa, a yield strength of ≥1000 MPa, and a yield ratio of ≥0.60 (p. 9 ln. 21-30), and further teaches a bendability ≤ 5 (p. 11 ln. 9-15), which satisfies or overlaps with the conditions recited in b) and c) of claim 1 and the conditions recited in claim 2. In the case where the claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP §2144.05. Note that Rehrl does not require that all of these mechanical property requirements are met (p. 11 ln. 9-15); therefore, Rehrl allows for a tensile strength of <1380 MPa, which overlaps with the TS ranges recited in claims 1-2.
Rehrl further teaches wherein the sheet or strip has a multiphase microstructure comprising, in vol.%, tempered martensite: ≥ 40, fresh martensite: ≤ 20, retained austenite: 2-20, polygonal ferrite ≤ 10 (p. 8 ln. 30 – p. 9 ln. 19), which satisfies or overlaps with the microstructures as instantly claimed. In the case where the claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP §2144.05. Regarding the limitations e) - g) recited in claim 1, note that patentable weight is given to the properties and not to the methods of measurement. Nonetheless, Rehrl teaches the very same methods of measurement (p. 9 ln 13-15, p. 10 ln. 14-15, p. 11 ln. 9-15).
Regarding claims 3-4, Rehrl teaches a method of manufacturing a cold rolled sheet or strip comprising the steps of providing a steel strip, reheating and hot rolling to a thickness of about 2.8 mm, wherein the hot rolling finishing temperature is about 900⁰C, which reads on hot rolling in the austenitic range and finishing at greater than or equal to 850⁰C, coiling at a temperature of about 550⁰C, pickling, batch annealing at about 580⁰C for a total time of 10 hours, cold rolling to a final thickness of 1.35 mm (i.e., 51.79% reduction), continuous annealing in a continuous annealing line, in which the soaking temperature is about 850⁰C and a holding temperature is 250⁰C for time of about 3 minutes, and further cooling the steel strip down to ambient temperature (p. 16 ln. 24 – p. 17 ln. 4). Rehrl teaches a coiling temperature of about 550⁰C, which reasonably includes 540⁰C. Alternatively, in the case where the claimed ranges and prior art ranges do not overlap but are close enough that one of ordinary skill in the art would have expected them to have the same properties, a prima facie case of obviousness exists. See MPEP §2144.05. Rehrl teaches a cold rolled sheet with properties that are overlapping with or the same as the instant claims, as detailed above regarding claim 1.
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 1-2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of copending Application No. 18/269,262 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-11 of the reference application teaches a cold rolled steel strip or sheet with a chemical composition, microstructure, and properties that are the same or overlapping with that recited in the instant claims 1-2.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/269,282 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-8 of the reference application teaches a cold rolled steel strip or sheet with a chemical composition, microstructure, and properties that are the same or overlapping with that recited in the instant claim 1.
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 ANTHONY M LIANG whose telephone number is (571)272-0483. The examiner can normally be reached M-F: 9:00am-5:00pm.
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/ANTHONY M LIANG/Primary Examiner, Art Unit 1734