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 1-11 have been cancelled, claim 13 and 24-27 have been amended; claim 28 is added as a new claim; Claims 12-28 remain for examination, wherein claim 12 is an independent claim.
Previous Rejections/Objections
Previous objection of Claim 13 because of the informalities is withdrawn since these claims have been cancelled in view of the Applicant’s “Arguments/Remarks with amendment” filed on 02/24/2026.
Previous rejection of Claims 24-27 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or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn since these claims have been cancelled in view of the Applicant’s “Arguments/Remarks with amendment” filed on 02/24/2026.
Claim Objections
Claim 12 is objected to because of the following informalities: proper up limit should be added for the RA since TM and B are considered as major phases in the alloy. Appropriate correction is required.
Allowance Subject matter
Claim 28 includes allowable subject matter.
Claim 28 is 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 since it is noted that the recorded prior art(s) does not specify the claimed properties as claimed in the instant claim.
Notes: claim 28 is still rejected on the ODP rejection as stated in the following, which can be overcome with proper “Terminal Disclaimer”.
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) 12-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yokoyama et al (US-PG-pub 2021/0230712 A1, listed in IDS filed on 5/13/2025, thereafter PG’712).
PG’712 is applied to the instant claims 12-27 for the same reason as stated in the previous office action dated 10/29/2026.
Regarding the amendments in the instant claims 13 and 24-27, which do not change the scope of the instant claims.
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 12-28 are rejected on the ground of nonstatutory obviousness type double patenting as being unpatentable over claims 1-16 of copending application No. 18/844574 (US-PG-pub 2025/0179602 A1).
Claims 1-16 of copending application No. 18/844574 (US-PG-pub 2025/0179602 A1) is applied to the instant claims 12-27 for the same reason as stated in the previous office action dated 10/29/2026.
Regarding the newly added claim 28, the claimed properties in the instant claim is recognized as a property of material depended on the alloy composition and microstructures in the steel sheet. Since Claims 1-16 of copending application No. 18/844574 (US-PG-pub 2025/0179602 A1) specify the similar alloy with the similar microstructure distribution manufactured by the same rolling and tempering treatment, the claimed properties would be highly expected to the steel sheet as disclosed in Claims 1-16 of copending application No. 18/844574 (US-PG-pub 2025/0179602 A1). MPEP 2112 01 and 2145 II.
This is a provisional obvious-type double patenting rejection since the conflict claims in the copending application have not in fact been patented.
Notes: Yokoyama et al (US-PG-pub 2021/0155999 A1) is cited as a reference only.
Response to Arguments
Applicant’s arguments to the art rejection to Claims 12-28 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, PG'712 does not specify the features of carbides, which related to the process conditions in the process.
2, Although PG'712 indicates process having overlapping cooling and treatment parameters, the features of carbides are not necessary included in the alloy. There is comparison data (No.36 and No.39 steel Type H in the instant specification) to show the criticality of the cooling conditions in the instant claims.
3, A person having ordinary skill in the art would not have modified PG’712 in an attempt to arrive the claimed subject matter.
4, Even assuming arguendo a showing of prima facie obviousness (which there is not), evidence of record rebuts obviousness since the claimed carbide size directly related to delayed fracture resistance.
5, Regarding the rejection of Claims 12-28 on the ground of nonstatutory obviousness type double patenting as being unpatentable over claims 1-16 of copending application No. 18/844574 (US-PG-pub 2025/0179602 A1), claims of the copending application No. 18/844574 (US-PG-pub 2025/0179602 A1) is silent the RA in the microstructure and carbon in the RA as recited in the instant claims.
In response,
Regarding the argument 1, as pointed out in the rejection for the instant claims in the previous office action dated 10/29/2025, PG’712 provide the same alloy composition with the same amount TM and RA with same TS manufactured by the same GA plating (Example #P in table 1 and table 4B of PG’712) as claimed in the instant claims.
Regarding the argument 2, PG’712 teaches manufacturing process for the steel sheet with hot rolling, cold rolling, annealing after cold rolling, 1st and 2nd retention (par.[0193]-[0213], [0217]-[0230], table 2B-3B, and claims 14-15 of PG’712) and all of the major process parameters disclosed by PG’712 overlap the claimed operation parameters (See the comparison table above), which creates a prima facie case of obviousness. MPEP 2144 05 I. To show the criticality of the argued process parameters in term the claimed features, proper "132 declaration" with comparison data with the closest examples in the prior art is suggested.
Regarding the argument 3, PG’712 teaches the same steel sheet throughout whole disclosing range and PG’712 indicates to optimize the operation conditions to obtain the desired steel sheet in order to obtain the desired properties in the steel sheet (par.[0193]-[0213], [0217]-[0230], table 2B-3B, and claims 14-15 of PG’712), which provides proper motivation for the modification the process parameters for the desired steel sheet.
Regarding the argument 4, It is noted that the argued property of delay fracture resistance is not actually included in the instant claims 12-27.
Regarding the argument 5, Firstly, all of the alloy composition ranges and phase amount, manufacturing process steps, TS, and member disclosed in claims 1-16 of copending application No. 18/844574 (US-PG-pub 2025/0179602 A1) overlap the ranges of composition ranges, phase amount, TS, and manufacturing process parameters as recited in the instant claims, which is a prima facie case of obviousness. MPEP 2144.05 I. Secondly, the copending application No. 18/844574 (US-PG-pub 2025/0179602 A1) discloses including less than 10.0% RA (Par.[0005] of US-PG-pub 2025/0179602 A1), which overlap the claimed RA range as claimed in the instant claims.
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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/JIE YANG/Primary Examiner, Art Unit 1734
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