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 .
DETAILED ACTION
The Applicant has elected Invention II (claims 9-11) for the further prosecution as filed in the response dated 1/14/2026. Claims 1-8 have been withdrawn as non-elected claims; Claims 9-11 remain for Examination.
Claim Objections
Claim 1 (the limitation should be added to the elected claim 9) is objected to because of the following informalities: “%” on lines 15-22 and 25 should be deleted since wt.% is indicated on line of the claim.
Claim 9 is objected to because of the following informalities: 1) the elected claim 9 should be amended as an independent claim form; 2) the limitations in the non-elected claim 1 should be included in the claim 9.
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 11 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. In the instant case, claim 11 depends on claim 10, the claimed temperature range above Ac3 + 20oC in the instant claim 11 is outside the claimed temperature range of 830-890oC in the instant claim 10. 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(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 9-11 are rejected under 35 U.S.C. 103(a) as being unpatentable over Kohsaka et al (US-PG-pub 2020/0347473 A1, listed in IDS filed on 6/28/2023, updated as US 11,186,889 B2, thereafter PG’473) in view of Yokoyama et al (US-PG-pub 2022/0090248 A1, thereafter PG’248).
Regarding claims 9 (the compositions, microstructures, and properties from the non-elected claim 1), PG’473 teaches a high-strength cold-rolled steel sheet with Zn based alloy hot-dip coating layer (Abstract, claims, and par.[0003]-[0005], [0013], and [0044] of PG’473). The comparison between the alloy composition ranges and treatment parameters disclosed by Example #A in table 1 with treatment of Example #2 in table 2 of PG’473 and those disclosed in the instant claims are listed in the following table. All of the essential alloy composition ranges, microstructure, and properties disclosed by Example #A in table 1 with treatment of Example #2 in table 2 and microstructure and properties of Example #2 in table 3 of PG’473 are within the claimed alloy in the instant claim. The process steps and parameters including hot rolling; coiling; cold rolling; annealing;; and Zn-coating disclosed by PG’473 reads on the claimed process steps as claimed in the instant claim. Overlapping in annealing temperature creates a prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the annealing temperature range as claimed form the disclosure of PG’473 since PG’473 teach the same cold rolled Zn-coated steel sheet throughout whole disclosing range. Regarding the measurement methods in the steps e)-h), they do not added patentable weight for the instant claim. MPEP 2113 [R-1].
Still regarding the claim 9, PG’473 does not specify the claimed decarburized zone, and the soaking process as claimed in the instant claim. PG’248 teaches a hot dip galvanized steel sheet comprising cold rolled steel sheet with a soft layer at its surface layer part produced by decarburizing annealing steel sheet (Abstract, par.[0009] of PG’248) with all of the essential alloy composition ranges (par.[0087]-[0115] of PG’248) overlapping the claimed alloy composition ranges. MPEP 2144 05 I. PG’248 indicates that: “when defining a region having a hardness of 90% or less of the hardness at a position of ¼ thickness to the base steel sheet side from an interface of the base steel sheet and the hot dip galvanized layer as a “soft layer”, there is a soft layer having a thickness of 10 μm or more at the base steel sheet side from the interface” (par.[0065] of PG’248), which reads on the claimed decarburized zone and overlap the claimed soft zone as claimed in the instant claim. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to including decarburized zone as demonstrated by PG’248 for in the process of PG’473 to obtain the desired hot dip galvanized steel sheet (Abstract, par.[0009] and [0065] of PG’248). PG’248 specify the detail of soaking process, atmosphere, and related parameters (par.[0074] and [0160] of PG’248), which reads on the claimed soaking process and overlaps the claimed soaking process parameters as claimed in the instant claim. Overlapping in the soaking parameters creates a prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the soaking parameters as claimed form the disclosure of PG’248 in the process of PG’473 in order to obtain the desired hot dip galvanized steel sheet (Abstract, par.[0009] and [0065] of PG’248).
Element
From instant Claim 9 (non-elected claim 1), (wt.%)
From #A in table 1 of PG’473 (wt.%)
Within range
(wt.%)
C
0.08-0.28
0.11
0.11
Mn
1.4-4.5
2.23
2.23
Cr
0.01-0.5
0.02
0.02
Si
0.01-2.5
1.52
1.52
Al
0.01-0.06
0.05
0.05
Si + Al
≥ 0.1
1.57
1.57
Si +Al +Cr
≥ 0.4
1.59
1.59
Nb
≤ 0.1
Not intended included
Not intended included
Ti
≤ 0.1
0.019
0.019
Mo
≤ 0.5
0.19
0.19
Ca
≤ 0.05
Not intended included
Not intended included
V
≤ 0.1
Not intended included
Not intended included
Cu
≤ 0.06
Not intended included
Not intended included
Ni
≤ 0.08
Not intended included
Not intended included
B
≤ 0.0006
0.0006
0.0006
P
≤ 0.02
0.02
0.02
S
≤ 0.005
0.003
0.003
As
≤ 0.010
Not intended included
Not intended included
Zr
≤ 0.006
Not intended included
Not intended included
Sn
≤ 0.015
Not intended included
Not intended included
O
≤ 0.0003
Not intended included
Not intended included
H
≤ 0.0020
Not intended included
Not intended included
N
≤ 0.015
Not intended included
Not intended included
Fe
Balance + impurities
Balance and impurities
Balance and impurities
Properties
From Example #2 in table 3 of PG’473
Within range
TS (MPa)
950-1550
1003
1003
YS (MPa)
550-1400
832
832
YS yield ratio
≥ 0.50
About 0.83
About 0.83
Bendability (Ri/t)
≤ 4
Good
Good
Microstructures
TM + Bainite
≥ 70
TM: 89
TM: 89
Fresh martensite
≤ 10
Not included
Not included
RA
2-20
4
4
Polygonal ferrite
≤ 20
7
7
Treatment
From Example #2 in table 2 of PG’473
Hot rolling with finish temperature (oC)
≥ 850
910
910
Coiling temperature (oC)
500-700
620
620
Cold rolling reduction rate
35-90
65
65
Annealing temperature (oC)
500-650
500 to (Ac.sub.3-120) (par.[0013] of PG’473
Overlapping 500-650
Zinc coating
Included
Zn based alloy hot-dip coating layer (par.[0044] of PG’473)
Reads on
Regarding claims 10-11, PG’248 indicates soaking temperature range of Ac1°C+30°C or more and 950°C or less (par.[0074] and [0160] of PG’248), which overlaps the claimed soaking temperature range as claimed in the instant claims. MPEP 2144 05 I.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 9-11 are rejected on the ground of non-statutory obviousness type double patenting as being unpatentable over Claims 1-4 of co-pending application No. 18/269,279(US-PG-pub 2024/0229184 A1).
Regarding instant Claims 9-11, although the conflicting claims are not identical, they are not patentable distinct from each other because Claims 1-4 of co-pending application No. 18/269,279(US-PG-pub 2024/0229184 A1) teaches the similar manufacturing process for the cold-rolled steel sheet. All of the essential alloy composition ranges, microstructure phases, properties, and manufacturing process steps disclosed by Claims 1-4 of co-pending application No. 18/269,279(US-PG-pub 2024/0229184 A1) overlaps the claimed ranges, which creates a prima facie case of obviousness. MPERP 2144 05 I. Thus, no patentable distinction was found in the instant claims compared with Claims 1-4 of co-pending application No. 18/269,279(US-PG-pub 2024/0229184 A1).
This is a provisional ODP rejection since the conflict claims in the co-pending application has not in fact been patented.
Claims 9-11 are rejected on the ground of non-statutory obviousness type double patenting as being unpatentable over Claims 1-17 of co-pending application No. 18/269,266(US-PG-pub 2024/0132989 A1).
Regarding instant Claims 9-11, although the conflicting claims are not identical, they are not patentable distinct from each other because Claims 1-17 of co-pending application No. 18/269,266(US-PG-pub 2024/0132989 A1) teaches the similar manufacturing process for the cold-rolled steel sheet. All of the essential alloy composition ranges, microstructure phases, properties, and manufacturing process steps disclosed by Claims 1-17 of co-pending application No. 18/269,266(US-PG-pub 2024/0132989 A1) overlaps the claimed ranges, which creates a prima facie case of obviousness. MPERP 2144 05 I. Thus, no patentable distinction was found in the instant claims compared with Claims 1-17 of co-pending application No. 18/269,266(US-PG-pub 2024/0132989 A1).
This is a provisional ODP rejection since the conflict claims in the co-pending application has not in fact been patented.
Conclusion
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/JIE YANG/Primary Examiner, Art Unit 1734