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
Claims 1-9 have been cancelled, claims 22-29 are withdrawn as non-elected claims; claims 30-31 are added as a new claims; Claims 10-21 and 30-31 remain for examination, wherein claim 10 is an independent claim.
Previous claim Objections/Rejections
Previous rejection of Claims 10-21 and 30-31 on the ground of non-statutory obviousness type double patenting as being unpatentable over Claims 13-32 of co-pending application No. 18/863164 (US-PG-pub 2025/0290185 A1) has been withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 4/23/2026..
Previous rejection of Claims 10-21 and 30-31 on the ground of non-statutory obviousness type double patenting as being unpatentable over Claims 1-18 of co-pending application No. 18/727246 (US-PG-pub 2025/0084515 A1) has been withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 4/23/2026.
Previous rejection of Claims 10-21 and 30-31 on the ground of non-statutory obviousness type double patenting as being unpatentable over Claims 16-35 of co-pending application No. 18/568407 (US-PG-pub 2025/0271243 A1) has been withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 4/23/2026.
Allowance Subject matter
Claim 30-31 include allowable subject matter.
Claims 30-31 are still objected to as depending from rejected independent claim(s), but would be allowed if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Notes: 1) claims 30-31 are still 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 as listed in the following.
2) claims 30-31 are still rejected on the ground of non-statutory obviousness type double patenting as being unpatentable over the claims of copending applications as listed in the following.
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 10-21 and 30-31 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. In the instant case, 1) the instant claim 10 indicates: “a value obtained by dividing an average C content (by mass%) of retained austenite with an aspect ratio of 2.0 or more by an average C content (by mass%) of retained austenite with an aspect ratio of 3.0 or more”, however, there is no specific value has been included in the instant claim. Since there is no specific amount of retained austenite with an aspect ratio of 2.0 or more and retained austenite with an aspect ratio of 3.0 or more in the instant claims, this limitation need further clarification/amendment; 2) the term “C content of a T0 composition” in claim 10 is unclear which renders the claim indefinite. It is noted that par.[0087] of PG-Pub 2024/0167127 A1, corresponding to the instant specification indicates that: “The C content of the T0 composition can be calculated unambiguously from the composition of steel and its content using integrated thermodynamic calculation software Thermo-Calc and database TCFE7. The T0 composition for calculation is the composition calculated at the reheating temperature before immersion in a galvanizing bath.” This definition should be added to the instant claim. Since Claims 11-21 and 30-31 depend on claim 10, they are also rejected. Proper amendment is necessary.
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.
Claims 12-13 are 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 claims, claims 12-13 depend on claim 10 directly/indirectly, however, “massive retained austenite” and “massive fresh martensite” in the instant claims are not included in the corresponding independent 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
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 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.
Claims 10-21 are rejected under 35 U.S.C. 103 as being unpatentable over Kawasaki et al (US-PG-pub 2017/0218472 A1, thereafter PG’472).
PG’472 is applied to the instant claims 10-21 for the same reason as stated in the previous office action dated 2/5/2026.
It is further noted that PG’472 teaches the same high-strength steel sheet as claimed throughout whole disclosing range. The C content in retained austenite over C amount in T0 composition (calculated) is recognized as a material feature fully depended on the alloy composition and alloy microstructures. PG’472 specify all of the essential process steps including hot-rolling, cold-rolling, cooling, reheating, cooling, reheating before galvanizing as disclosed in the instant invention (refer to the withdrawn claim 22). PG’472 teaches the same alloy composition with similar microstructures. The working Example #N in tables of PG’472 has been reheated at 480oC for 500 seconds before galvanizing (table 2 of PG’472), which is within the same reheating temperature range of 120-480oC for 2-600 seconds before immersion in a galvanizing bath as disclosed in the withdrawn process claim 22. This discussion support the conclusion that the C content in retained austenite over C amount in T0 composition (calculated) is recognized as a material feature fully depended on the alloy composition and alloy microstructures. PG’472 teaches the same alloy composition with similar microstructures as discussed above, the claimed ratio of The C content in retained austenite over C amount in T0 composition would be highly expected in the alloy of PG’472. MPEP 2112 01 and 2145 II.
Regarding claim 11 (corrected from the previous office action dated 2/5/2026), PG’472 indicates further including Ti: 0.005% or more and 0.100% or less, Nb: 0.005% or more and 0.100% or less, B: 0.0001% or more and 0.0050% or less, Cr: 0.05% or more and 1.00% or less, Cu: 0.05% or more and 1.00% or less, Sb: 0.0020% or more and 0.2000% or less, Sn: 0.0020% or more and 0.2000% or less, Ta: 0.0010% or more and 0.1000% or less, Ca: 0.0003% or more and 0.0050% or less, Mg: 0.0003% or more and 0.0050% or less, and REM: 0.0003% or more and 0.0050% or less, which reads on the claimed optional elements as claimed in the instant claim.
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 10-21 and 30-31 are rejected on the ground of non-statutory obviousness type double patenting as being unpatentable over Claims 1-20 of co-pending application No. 18/568407 (US 12442056 B2).
Claims 1-20 of co-pending application No. 18/568407 (US 12442056 B2) is applied to the instant claims 10-21 for the same reason as stated in the previous office action dated 2/5/2026.
Regarding the newly added claims 30-31, claim 16 of co-pending application No. 18/568407 (US 12442056 B2) indicates 2.00-4.00 mass% Mn in the alloy and 60-95 area% TM + B, which overlap the claimed Mn (cl.30) and TM + B (Cl.31), which creates a prima facie case of obviousness. MPERP 2144 05 I.
Furthermore, Claim 24 of co-pending application No. 18/568407 (US 12442056 B2) including all of the essential process steps including hot-rolling, cold-rolling, cooling, reheating, cooling, reheating before galvanizing as disclosed in the instant invention (refer to the withdrawn claim 22). Since the Mn in retained austenite and C in retained austenite are recognized as a material features fully depended on the alloy composition and alloy microstructures. Claims 1-20 of co-pending application No. 18/568407 (US 12442056 B2) teaches the similar alloy composition with similar microstructures and similar process steps as claimed in the instant claims, the claimed ratios related to the Mn and C contents in retained austenite over C amount in T0 composition would be highly expected in the alloy of Claims 1-20 of co-pending application No. 18/568407 (US 12442056 B2). MPEP 2112 01 and 2145 II. Thus, no patentable distinction was found in the instant claims compared with Claims 1-20 of co-pending application No. 18/568407 (US 12442056 B2).
Claims 10-21 are rejected on the ground of non-statutory obviousness type double patenting as being unpatentable over Claims 1-22 of co-pending application No. 18/546428 (US-PG-pub 2024/0124964 A1).
Claims 1-22 of co-pending application No. 18/546428 (US-PG-pub 2024/0124964 A1) is applied to the instant claims 10-21 for the same reason as stated in the previous office action dated 2/5/2026.
Regarding the newly added claims 30-31, claim 1 of co-pending application No. 18/546428 (US-PG-pub 2024/0124964 A1) indicates 1.00-3.5 mass% Mn in the alloy and 5.0-40.0 area% B and 0.5-80 area% TM, which overlap the claimed Mn (cl.30) and TM + B (Cl.31), which creates a prima facie case of obviousness. MPERP 2144 05 I.
Furthermore, Claim 10 of co-pending application No. 18/546428 (US-PG-pub 2024/0124964 A1) including all of the essential process steps including hot-rolling, cold-rolling, cooling, reheating, cooling, reheating before galvanizing as disclosed in the instant invention (refer to the withdrawn claim 22). Since the Mn in retained austenite and C in retained austenite are recognized as a material features fully depended on the alloy composition and alloy microstructures. Claims 1-22 of co-pending application No. 18/546428 (US-PG-pub 2024/0124964 A1) teaches the similar alloy composition with similar microstructures and similar process steps as claimed in the instant claims, the claimed ratios related to the Mn and C contents in retained austenite over C amount in T0 composition would be highly expected in the alloy of Claims 1-22 of co-pending application No. 18/546428 (US-PG-pub 2024/0124964 A1).
This is a provisional ODP rejection since the conflict claims in the co-pending application has not in fact been patented
Notes: Yokoyama et al (US-PG-pub 20220090248 A1 corresponding to US 12,006,562 B2) is cited as a reference only.
Response to Arguments
Applicant’s arguments to the art rejection to Claims 10-21 and 30-31 have been considered but they are not persuasive in view of the new ground rejection as stated above. Regarding the arguments related to the amendments in the instant claims, the Examiner’s position has been stated as following.
The Applicant’s arguments have been summarized as following:
1, The T0 definition should in light of the specification.
2, PG’472 fails to teach or suggest each limitation of claim 10 including Mn amount in RA; C in specific RA; and ratio of C in RA over C after To reheating.
3, the properties disclosed by claim 10 are not inherently disclosed by PG’472.
4, Alleged inherency is rebutted by evidence of record
5, claims 12-13 are independently allowable.
6, the process steps disclosed by the invention does not specify by the claims of co-pending application No. 18/568407 (US 12442056 B2).
In response,
Regarding the argument 1, although the limitation should in light of the specification, but claim itself should be clearly definite to avoid confusing.
Regarding the arguments 2-3, as discussed above and refer to the previous office action dated 2/5/2026, PG’472 specify all of the essential process steps including hot-rolling, cold-rolling, cooling, reheating, cooling, reheating before galvanizing as disclosed in the instant invention (refer to the withdrawn claim 22). PG’472 teaches the same alloy composition with similar microstructures. The working Example #N in tables of PG’472 has been reheated at 480oC for 500 seconds before galvanizing (table 2 of PG’472), which is within the same reheating temperature range of 120-480oC for 2-600 seconds before immersion in a galvanizing bath as disclosed in the withdrawn process claim 22. This discussion support the conclusion that the C content in retained austenite over C amount in T0 composition (calculated) is recognized as a material feature fully depended on the alloy composition and alloy microstructures. PG’472 teaches the same alloy composition with similar microstructures as discussed above, the claimed ratio of The C content in retained austenite over C amount in T0 composition would be highly expected in the alloy of PG’472. MPEP 2112 01 and 2145 II.
Regarding the argument 4, 1) there is no process limitations in the instant claim 10. 2) To the criticality of the argued process steps, the Applicant should provide proper “132 Declaration” with data comparison compared with to the closest example in the cited prior art. 3) The working Example #N in tables of PG’472 has been reheated at 480oC for 500 seconds before galvanizing (table 2 of PG’472), which is within the same reheating temperature range of 120-480oC for 2-600 seconds before immersion in a galvanizing bath as disclosed in the withdrawn process claim 22.
Regarding 5, the claimed limitations in the instant claims 12-13. The limitations of “massive retained austenite” and “massive fresh martensite” in the instant claims are not actually included in the corresponding independent claim 10 (See the rejection for the instant claims 12-13 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.
Regarding the argument 6, Claims 1-20 of co-pending application No. 18/568407 (US 12442056 B2) not only teaches the similar alloy composition, microstructures as claimed in the instant claims, but also teaches all of the essential process steps including hot-rolling, cold-rolling, cooling, reheating, cooling, reheating before galvanizing as disclosed in the instant invention (refer to the withdrawn claim 22). Proper “132 declaration” may be necessary to show the criticality of the argued process steps in term of the claimed features. Proper “Terminal Disclaimer” can overcome the ODP rejections.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIE YANG whose telephone number is (571)270-1884. The examiner can normally be reached on IFP.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan J Johnson can be reached on 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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/JIE YANG/Primary Examiner, Art Unit 1734
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