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 .
Status of Claims
Claims 1-6 are pending and are presented for this examination.
Priority
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 7/28/2023 and 12/02/2024 and is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-6 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 pre-AIA the applicant regards as the invention.
The terms “fine granular” and “coarse granular” in claim 1 are relative terms which renders the claim indefinite. The terms “fine” and “coarse” 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. Applicant is suggested to incorporate aspect ratio and/or grain size of the “coarse” and “fine” granular oxide from the original specification to properly differentiate between “fine” and “coarse”.
Claim 1 recited “in which steel sheet” lacks antecedent basis for “steel sheet”. It is unclear whether steel sheet refers to claimed “a steel sheet” or something else. Second, there appear to be a disconnection between “in which steel sheet” and the limitations following “in which steel sheet”.
Claim 1 recites the limitations " a number density of fine granular oxides” and “a number density of coarse granular oxides”. There is insufficient antecedent basis for these limitations in the claim.
As a result of rejected claim 1, all dependent claims are rejected under the same statue.
Claim Interpretation
Instant claim 1 “when examining a cross-section of a surface layer of the steel sheet” is a conditional limitation due to subordinating conjunction term “when” meaning “at the time that”. Applicant is suggested to remove such conditional limitation to have the limitations after the condition limitation being considered.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 3 and 5 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Yasui (US20150329946).
As for claims 1, 3 and 5, Yasui discloses galvannealed steel sheet comprising steel Type S10 (Table 1 of Col 10)having every elemental composition within presently claimed ranges as illustrated in Table 1 below. Figure 1C illustrates an internal oxidation layer (bottom white area) having oxides 4. The shapes of oxides (4) are elongated and circular which broadly reads on claimed granular oxide. Elongated oxide reads claimed coarse oxide and circular reads on claimed fine oxide.
Limitations after subordinating conjunction term “when examining a cross section of a surface layer of the steel sheet” is not given patentable distinction over prior art according to claim interpretation above.
Since the steel sheet is coated in a molten zinc bath (paragraph [0134]), it supports instants claim 3 and 5 required plating layer including Zn.
Table 1
Element
Applicant
(weight %)
Yasui et al.
(weight %)
Table 1
Steel Type S10
Within
(weight %)
C
0.05-0.4
0.22
0.22
Si
0.2-3
0.45
0.45
Mn
0.1-5
2.2
2.2
Al
0.4-1.5
1.02
1.02
P
<=0.03
0.013
0.22
S
<=0.03
0.0022
0.45
N
<=0.01
0.0025
2.2
B
0-0.01
0
1.02
Ti
0-0.15
0
0.013
Nb
0-0.15
0
0.0022
V
0-0.15
0
0.0025
Cr
0-2
0
0
Ni
0-2
0
0
Cu
0-2
0
0
Mo
0-1
0
0
W
0-1
0
0
Ca
0-0.1
0
0
Mg
0-0.1
0
0
Zr
0-0.1
0
0
Hf
0-0.1
0
0
REM
0-0.1
0
0
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.
Claim(s) 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Yasui (US20150329946).
As for claims 1-6, Yasui discloses instant claimed steel sheet compositions and an internal oxidation layer including fine granular oxides and coarse granular oxide as indicated in 102 rejection of claim 1 above.
Since the steel sheet is coated in a molten zinc bath containing 0.01-1% Al (paragraph [0134]), it supports instants claim 3 and 5 required plating layer including Zn. 0.01-1% Al overlaps instant claims 4 and 6 required 0.3-1.5% Al by mass.
A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
Yasui differs from instant claim 1 and 2 such that it does not disclose or suggests “a number density of fine granular oxides in the internal oxidation layer is 4.0/µm2 or more, a number density of coarse granular oxides in the internal oxidation layer is 4.0/25 µm2 or more 30.0/25 µm2 or less, and a surface depleted layer with a steel composition not including the fine granular oxides and coarse granular oxides which satisfies, by mass%, Si:<=0.6% and Al>0.05% is included at a depth of 1/2 of the average depth of the internal oxidation layer” as required by instant claim 1 and “wherein the number density of fine granular oxides is 10/µm2 or more” As required by instant claim 2. Both limitations are interpreted as structure limitation due to a combination of steel sheet compositions and process of making.
Yasui discloses a substantially similar process of making as required by instant application as follows:
Casting and hot rolling (paragraph [0074])
Cold rolling (paragraph [0149])
Heavy grinding (paragraph [0145])
Annealing between 640-740 degree C at a temperature rising rate of 0.2-6 degree C/s for 30 second to 300 seconds. The annealing atmosphere is 0.1-50 vol% of hydrogen with a dew point of -30 to 20 degree C. (paragraph [0035])
Plating step by immersing the steel sheet in a molten zinc bath containing 0.01-1% Al (paragraph [0134])
Since the steel sheet product of Yasui has compositions that meet the instant application composition and is made from similar process steps and overlapping process parameters as demonstrated above, it is therefore reasonable to believe that the claimed structure limitations would have naturally flowed following the suggestion of Yasui absent evidence of the contrary. See MPEP 2112.01 I.
When the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the prior art products necessarily possess the characteristics of the claimed product. See MPEP 2112.01.
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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)
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 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of copending Application No. 18/274,970. Although the claims at issue are not identical, they are not patentably distinct from each other because both claimed invention claim a steel sheet having same elemental composition, internal oxidation layer including fine granular oxides is present in a surface layer of the steel sheet,number density of fine granular oxides in the internal oxidation layer is 4.0/µm2 or more, and a surface depleted layer with a steel composition not including the fine granular oxides and coarse granular oxides which satisfies, by mass%, Si:<=0.6% and Al>0.05% is included at a depth of 1/2 of the average depth of the internal oxidation layer
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of US Patent No. 12,173,391. Although the claims at issue are not identical, they are not patentably distinct from each other because both claimed invention claim a steel sheet having same elemental composition, internal oxidation layer including fine granular oxides is present in a surface layer of the steel sheet,number density of fine granular oxides in the internal oxidation layer is 4.0/µm2 or more, and a surface depleted layer with a steel composition not including the fine granular oxides and coarse granular oxides which satisfies, by mass%, Si:<=0.6% and Al>0.05% is included at a depth of 1/2 of the average depth of the internal oxidation layer
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNY R WU whose telephone number is (571)270-5515. The examiner can normally be reached on 8:30 AM-5:00 PM.
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/JENNY R WU/Primary Examiner, Art Unit 1733