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 .
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.
Allowable Subject Matter
Claims 3-4 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Claims 3-4 are dependent upon claim 1. The prior art fails to disclose or fairly suggest the cold rolled steel strip or sheet as recited in claim 1. In particular, the closest prior art, Rehrl et al. (WO 2020/151856), as cited in the IDS dated 6/28/2023, hereinafter “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, with the exception of the B content. Rehrl further teaches a yield strength of ≥1000 MPa, a yield ratio of ≥0.60, and a bendability ≤ 5 (Abstract, p. 9 ln. 21-28, p. 11 ln. 9-15, p. 13 ln. 16-20), which satisfies or overlaps with the conditions recited. Rehrl also 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. Additionally, Rehrl teaches the same methods of measurement as recited in e)-g) of claim (p. 9 ln 13-15, p. 10 ln. 14-15, p. 11 ln. 9-15).
However, Rehrl discloses B: 0.001-0.010% ([0047]), which is outside of the instantly claimed range of B ≤ 0.0006%. Rehrl further teaches away from a B content of under 0.001%, indicating that a B content of at least 0.001% should be added in order to have noticeable effects of suppressing formation of ferrite and improving weldability of the steel sheet ([0048]). Thus, claim 1, as well as claims 3-4, are distinct over the teachings of the prior art.
Response to Arguments
Applicant’s arguments, see pp. 6-10, filed 4/30/2026, with respect to the previous claim objections, rejections under 35 U.S.C 112, and rejections under 35 U.S.C 103 have been fully considered and are persuasive in view of the current amendments to the claims. Thus, the previous claim objections, rejections under 35 U.S.C 112, and rejections under 35 U.S.C 103 have been withdrawn. However, claims 1-2 remain provisionally rejected on the ground of nonstatutory double patenting, as detailed above.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at (571)272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY M LIANG/Primary Examiner, Art Unit 1734
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