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 .
Detail Action
Claims 1-4 remain for examination, wherein claim 1 is an independent claim.
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.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hirashima et al ( US-PG-pub 2020/0224294 A1, listed in IDS filed on 9/20/2023, updated as US 11,326,235 B2, thereafter PG’294).
Regarding claims 1-4, PG’294 teaches a hot rolled steel sheet which is suitable as a material for structural components and frames of vehicles and truck frames, and is excellent in strength and toughness and also excellent toughness isotropy, and a method for manufacturing the same (Abstract and par.[0001] of PG’294), which reads on the claimed high-strength hot-rolled steel sheet (cl.1-2) and manufacturing process (cl.3-4). The comparison between the claimed alloy composition and microstructures and those disclosed by example #A in table 1 pf PG’294 is listed in the following table. All of the essential alloy composition ranges and microstructures disclosed by the example #A in table 1 of PG’294 are within the claimed alloy composition ranges. 90vol% or more martensite disclosed by PG’294 (par.[0057] of PG’294) reads on the claimed microstructure in the instant claim 1. PG’294 teaches all of essential process steps including heating, rough rolling, hot-rolling, cooling, and coiling (par.[0073]-[0105] of PG’294). The parameters disclosed by example #1 in table 2A of PG’294 reads on all of the essential parameters as claimed in the instant claims 3-4 as shown in the comparison table. It is noted that PG’294 does not specify the claimed orientation density distribution as claimed in the instant claim 1. However, the orientation density is recognized as a steel property fully depended on the alloy composition, microstructure, and manufacturing process. As discussed above, the example #A in table 1 of PG’294 teaches the same alloy composition and microstructure manufactured by the manufacturing process with same process parameters, the claimed orientation density distribution would inherently existed in the hot rolled steel sheet of PG’249. MPEP 2112 III&IV.
Element
From instant Claim 1 (mass%)
Example #A in table 1 of PG’294 (mass %)
within range
(mass %)
C
0.02-0.23
0.08
0.08
Si
0.10-3.00
0.90
0.90
Mn
0.5-3.5
1.8
1.8
P
0.100 or less
0.004
0.004
S
0.02 or less
0.003
0.003
Al
1.5 or less
0.05
0.05
Fe
Balance + impurities
Balance + impurities
Balance + impurities
From claim 2
One or more consisting of
Cr: 0.005-2.0;
V:0.05-1.0;
Cu: 0.05-4.0;
Ni: 0.005-2.0;
Ti: 0.005-0.20;
Nb: 0.005-0.20;
B: 0.0003-0.0050;
Ca: 0.0001-0.0050;
REM: 0.0001-0.0050;
Sb: 0.0010-0.10;
Sn: 0.001-0.10;
Ti: 0.10
Ti: 0.10
Microstructure
Martensite+ Bainite (area%)
80-100
Martensite: 90 or more (par.[0057])
90-100
Orientation density
MPEP 2112 III&IV
From Claims 3-4
From PG’294
Heating (oC)
slab
Heating step
(par.[0073]-[0076])
Reads on
Rough rolling
Included
Rough rolling (par.[0077]-[0078]
From Example #1 in table 2A of PG’294
Hot-rolling
Finish rolling at ≤1000oC;
Total reduction ≥ 50%;
Number of pass ≥ 3;
Final pass T: 750-900oC;
Final reduction ≤ 35%
Finish rolling at: 898oC;
Total reduction: 87%;
Number of pass: 6;
Final pass T: 898;
Final reduction A: 12.1 out of 34.06 (total)
Reads on
Cooling
Cooling aft Final rolling:
≤ 2 sec.
Colling rate to 550oC:
≥ 50oC/s
Colling rate in range 300-400oC: ≥ 100oC/s
Cooling aft Final rolling:
0.5 sec
Colling rate :
234oC/s
Reads on
Coiling (T)
≤ 300oC
105oC
Reads on
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 1-4 are rejected on the ground of non-statutory obviousness type double patenting as being unpatentable over claims 1-8 of co-pending application No. 18/282299 (US 12,392,006 B2).
Regarding claims 1-4, although the conflicting claims are not identical, they are not patentable distinct from each other with claims 1-8 of co-pending application No. 18/282299 (US 12,392,006 B2). All of the alloy composition ranges, microstructures, and manufacturing process disclosed in claims 1-8 of co-pending application No. 18/282299 (US 12,392,006 B2) overlap the claimed ranges, which is 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 include ferrite as claimed from the disclosures claims 1-8 of co-pending application No. 18/282299 (US 12,392,006 B2) because claims 1-8 of co-pending application No. 18/282299 (US 12,392,006 B2) teaches the same manufacturing process a hot-rolled steel sheet. Since the orientation density fully depends on the alloy composition, microstructure, and manufacturing process. Since claims 1-8 of co-pending application No. 18/282299 (US 12,392,006 B2) teaches the similar alloy, microstructure, and manufacturing steps as claimed in the instant claims, the claimed orientation density distribution would be highly expected for the hot rolled steel sheet of claims 1-8 of co-pending application No. 18/282299 (US 12,392,006 B2). MPEP 2112 01 & 2145 II.
Thus, no patentable distinction was found in the instant claims compared with the manufacturing process a grain-oriented electrical steel sheet as disclosed by claims 1-9 of co-pending application No. 18/282299 (US 12,392,006 B2).
Claims 1-4 are rejected on the ground of non-statutory obviousness type double patenting as being unpatentable over claims 1-13 of co-pending application No. 18/282,304 (US-PG-pub 2024/0158881 A1).
Regarding claims 1-4, although the conflicting claims are not identical, they are not patentable distinct from each other with claims 1-13 of co-pending application No. 18/282,304 (US-PG-pub 2024/0158881 A1). All of the alloy composition ranges, microstructures, and manufacturing process disclosed in claims 1-13 of co-pending application No. 18/282,304 (US-PG-pub 2024/0158881 A1) overlap the claimed ranges, which is 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 include ferrite as claimed from the disclosures claims 1-13 of co-pending application No. 18/282,304 (US-PG-pub 2024/0158881 A1) because claims 1-13 of co-pending application No. 18/282,304 (US-PG-pub 2024/0158881 A1) teaches the same manufacturing process a hot-rolled steel sheet. Since the orientation density fully depends on the alloy composition, microstructure, and manufacturing process. Since claims 1-13 of co-pending application No. 18/282,304 (US-PG-pub 2024/0158881 A1) teaches the similar alloy, microstructure, and manufacturing steps as claimed in the instant claims, the claimed orientation density distribution would be highly expected for the hot rolled steel sheet of claims 1-13 of co-pending application No. 18/282,304 (US-PG-pub 2024/0158881 A1). MPEP 2112 01 & 2145 II. Thus, no patentable distinction was found in the instant claims compared with the manufacturing process a grain-oriented electrical steel sheet as disclosed by claims 1-13 of co-pending application No. 18/282,304 (US-PG-pub 2024/0158881 A1).
This a provisional ODP rejection since the conflict claims in the co-pending application have not in fact been patented.
Conclusion
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
Prosecution Insights