DETAILED ACTION
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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-7 and 9-10, in the reply filed on 1/8/2026 is acknowledged.
Claim 8 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/8/2026.
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.
Claim 2, 7, and 10 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation “at least one of the following,” and the claim also recites “preferably all the requirements” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
With respect to Claim 7, the claim recites a broad recitation “at least one of the elements,” and the claim also recites “preferably all of the elements” which is a narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. See MPEP § 2173.05(c).
Claim 10 recites the limitation "The automotive structural part according to claim 1" in line 1. There is insufficient antecedent basis for this limitation in the claim. Further, based on the context of the claims, it is unclear if claim 10 intends to incorporate the limitations of claim 1 (drawn to a steel sheet) or the automotive part of claim 9.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-5, 7, and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Hebesberger (US 10227683).
With respect to Claim 1, Hebesberger teaches a high strength cold rolled steel sheet, the steel sheet having a composition, in wt%, as follows (col. 3, ln. 15-35; claim 1):
Claim 1
Hebesberger
C
0.08-0.14
0.1-0.3
Mn
2.5-3.0
1.4-2.7
Si
0.7-1.1
0.4-0.9
Cr
0.05-0.4
0.1-0.9
Al
≤ 0.2*
≤ 0.6
Nb
≤ 0.1*
< 0.1
Mo
≤ 0.1*
< 0.3
V
≤ 0.1*
< 0.2
Ti
≤ 0.1*
< 0.2
Ca
≤ 0.05*
< 0.005
Cu
≤ 0.1*
< 0.5
Ni
≤ 0.2*
< 0.5
B
≤ 0.005*
< 0.005
Fe
Balance with impurities
Balance with impurities
*optional element
Compositional ranges including zero are interpreted as optional elements. Thus, Hebesberger teaches a steel sheet with compositional ranges overlapping each of the instantly claimed ranges and that does not require any elements outside those claimed. It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Hebesberger further teaches wherein the steel sheet has a multiphase microstructure comprising 5-22 vol% of retained austenite, ≤ 80 vol% of bainitic ferrite + tempered martensite + bainite, and >5 vol% of polygonal ferrite, overlapping the instantly claimed ranges. (Hebesberger, claim 1). Additionally, the reference teaches wherein the steel sheet has a tensile strength of 980 MPa or more and a yield ratio of ≤ 0.7, rendering a steel with tensile strength, yield strength, and yield ratio values overlapping each of the instantly claimed ranges. (col. 7, ln. 4-7; col. 5, ln. 63-65). It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping microstructural phase and mechanical property ranges. Overlapping ranges have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Finally, Hebesberger is silent as to a bendability value as measured under the claimed conditions in claim 1. However, as the reference teaches a high strength cold rolled steel sheet with a composition, microstructure, and tensile and yield strength values substantially overlapping those instantly claimed, it would necessarily be expected to result in the same properties, including the claimed bendability property.
"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, 195 USPQ 430, 433 (CCPA 1977). Thus, the burden is shifted to the applicant to prove that the product of the prior art does not necessarily or inherently possess the characteristics attributed to the claimed product. See In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (“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."); MPEP 2112.01. Therefore, the prima facie case can only be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product.
With respect to Claim 2, the claim requires only one of the recited requirements. Hebesberger teaches a content of retained austenite, bainitic ferrite + tempered martensite, and polygonal ferrite overlapping the instantly claimed ranges. (see rejection of claim 1 above). Overlapping ranges have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claim 3, Hebesberger teaches a steel sheet with compositional ranges overlapping each of the instantly claimed ranges of claim 3. (see rejection of claim 1 above). It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claim 4, Hebesberger teaches wherein the steel sheet has a total elongation of 13% or more, a tensile strength of 980 MPa or more, preferably 980-1200 MPa, a yield ratio of ≤ 0.7, rendering a steel with total elongation, tensile strength, yield strength, and yield ratio values overlapping the instantly claimed ranges. (col. 7, ln. 4-30; col. 5, ln. 63-65). Overlapping ranges have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claim 5, Hebesberger teaches wherein the steel sheet has a total elongation of 13% or more, a tensile strength of 980 MPa or more, preferably 980-1200 MPa, a yield ratio of ≤ 0.7, rendering a steel with total elongation, tensile strength, yield strength, and yield ratio values overlapping the instantly claimed ranges. (col. 7, ln. 4-30; col. 5, ln. 63-65). Overlapping ranges have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05. Hebesberger is silent as to a bendability value; however, as the reference teaches a high strength cold rolled steel sheet with a composition, microstructure, and tensile and yield strength values substantially overlapping those instantly claimed, it would necessarily be expected to result in the same properties, including the claimed bendability property. MPEP 2112.01.
With respect to Claim 7, Hebesberger teaches a steel sheet wherein each of the recited elements is respectively optionally present and including compositional ranges overlapping an impurity content. (see rejection of claim 1 above). It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claims 9-10, Hebesberger teaches wherein the steel sheet is useful to form automotive body parts (col. 1, ln. 16-35). It would have been obvious to one of ordinary skill in the art to form a conventional automotive body part, such as a B-pillar hinge, roof rail, or door panel as required by claim 10.
Claim(s) 1-4, 7, and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Paul (US 10106874).
With respect to Claim 1, Paul teaches a high strength cold rolled steel sheet, the steel sheet having a composition, in wt%, as follows (Paul, claim 1):
Claim 1
Paul
C
0.08-0.14
0.1-0.19
Mn
2.5-3.0
2.0-3.0
Si
0.7-1.1
0.4-0.9
Cr
0.05-0.4
0.2-0.6
Al
≤ 0.2*
≤ 0.06
Nb
≤ 0.1*
< 0.1
Mo
≤ 0.1*
< 0.3
V
≤ 0.1*
< 0.2
Ti
≤ 0.1*
< 0.2
Ca
≤ 0.05*
< 0.005
Cu
≤ 0.1*
< 0.5
Ni
≤ 0.2*
< 0.5
B
≤ 0.005*
< 0.005
Fe
Balance with impurities
Balance with impurities
*optional element
Compositional ranges including zero are interpreted as optional elements. Thus, Paul teaches a steel sheet with compositional ranges overlapping each of the instantly claimed ranges and that does not require any elements outside of those claimed. It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Paul further teaches wherein the steel sheet has a multiphase microstructure comprising 5-20 vol% of retained austenite, ≥ 80 vol% of bainitic ferrite + tempered martensite + bainite wherein bainitic ferrite >50 vol%, and ≤ 10 vol% of polygonal ferrite, overlapping the instantly claimed ranges. (Paul, claim 1). Additionally, the reference teaches wherein the steel sheet has a tensile strength of 980-1200 MPa, examples of yield strength overlapping the claimed range as well as examples having a yield ratio of less 0.72. (claim 1; Table III). It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping microstructural phase and mechanical property ranges. Overlapping ranges have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Finally, Paul is silent as to a bendability value as measured under the claimed conditions in claim 1. However, as the reference teaches a high strength cold rolled steel sheet with a composition, microstructure, and tensile and yield strength values substantially overlapping those instantly claimed, it would necessarily be expected to result in the same properties, including the claimed bendability property. MPEP 2112.01.
With respect to Claim 2, the claim requires only one of the recited requirements. Paul teaches a content of retained austenite, bainitic ferrite + tempered martensite, and polygonal ferrite overlapping the instantly claimed ranges. (see rejection of claim 1 above). Overlapping ranges have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claim 3, Paul teaches a steel sheet with compositional ranges overlapping each of the instantly claimed ranges of claim 3. (see rejection of claim 1 above). It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claim 4, Paul teaches wherein the steel sheet may comprise an elongation of 13% or more, a tensile strength of 1000-1100 MPa, a yield ratio of ≤ 0.7, rendering a steel with total elongation, tensile strength, and yield ratio values overlapping the instantly claimed ranges, wherein the claim requires only one of such values to be satisfied. (Table III). Overlapping ranges have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claim 7, Paul teaches a steel sheet wherein each of the recited elements is respectively optionally present and including compositional ranges overlapping an impurity content. (see rejection of claim 1 above). It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claims 9-10, Hebesberger teaches wherein the steel sheet is useful to form automotive body parts (col. 1, ln. 16-36). It would have been obvious to one of ordinary skill in the art to form a conventional automotive body part, such as a B-pillar hinge, roof rail, or door panel as required by claim 10.
Claim(s) 6 is rejected under 35 U.S.C. 103 as being unpatentable over Hebesberger (US 10227683), as applied to claim 1 above, in view of Hebesberger (US 20190352750)(“Hebesberger ’750”).
With respect to Claim 6, Hebesberger teaches a cold rolled steel sheet as in claim 1, but is silent as to the thickness the steel sheet is cold rolled to.
Hebesberger ’750 teaches a high strength cold rolled steel sheet, wherein the steel sheet is cold rolled to a final thickness of about 1.4 mm, falling within the claimed range. (para. 1, 87).
It would have been obvious to one of ordinary skill in the art to modify the cold rolled steel sheet of Hebesberger, to cold roll the steel to a thickness of 1.4 mm, as taught by Hebesberger ’750, in order to obtain a suitable thickness sheet useful for automotive components. (see Hebesberger ’750, para. 2-3, 9). Furthermore, rolling a steel sheet to a desired thickness involves a mere change in form. MPEP 2144.05; Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.").
Claim(s) 6 is rejected under 35 U.S.C. 103 as being unpatentable over Paul (US 10106874), as applied to claim 1 above, in view of Hebesberger (US 20190352750)(“Hebesberger ’750”).
With respect to Claim 6, Paul teaches a cold rolled steel sheet as in claim 1, but is silent as to the thickness the steel sheet is cold rolled to.
Hebesberger ’750 teaches a high strength cold rolled steel sheet, wherein the steel sheet is cold rolled to a final thickness of about 1.4 mm, falling within the claimed range. (para. 1, 87).
It would have been obvious to one of ordinary skill in the art to modify the cold rolled steel sheet of Paul, to cold roll the steel to a thickness of 1.4 mm, as taught by Hebesberger ’750, in order to obtain a suitable thickness sheet useful for automotive components. (see Hebesberger ’750, para. 2-3, 9). Furthermore, rolling a steel sheet to a desired thickness involves a mere change in form. MPEP 2144.05; Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent").
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 1-5, 7, and 9-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-29 of U.S. Patent No. 10227683. Although the claims at issue are not identical, they are not patentably distinct from each other because: the instant claims and the related patent are both drawn to high strength cold rolled steel sheets having overlapping compositional ranges, overlapping microstructural phase ranges of retained austenite, bainitic ferrite, tempered martensite, and polygonal ferrite, and overlapping mechanical properties including tensile strength and elongation. (see also 103 rejection of claims 1-5, 7, and 9-10 over the same reference). It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05. In addition, while the related patent claims are silent as to certain instantly claimed properties such as bendability and yield strength, the related disclosure teaches a yield strength and yield ratio meeting the instant claims and as the related steel sheet has the same or substantially overlapping composition, structure, and strength properties, it would be expected to result in the same properties, including the instantly claimed bending property. MPEP 2112.01. Additionally, with respect to the instant claims 9-10, it would have been obvious to one of ordinary skill in the art to use a conventional material, such a high strength steel, in conventional applications such as automobile components with a predictable result of success.
Claims 1-4, 7, and 9-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 10202664. Although the claims at issue are not identical, they are not patentably distinct from each other because: the instant claims and the related patent are both drawn to high strength cold rolled steel sheets having overlapping compositional ranges, overlapping microstructural phase ranges of retained austenite, bainitic ferrite, tempered martensite, and polygonal ferrite, and overlapping mechanical properties including tensile strength and elongation. It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05. In addition, while the related patent claims are silent as to certain instantly claimed properties such as bendability and yield strength, the related disclosure teaches a yield strength and yield ratio meeting the instant claims and as the related steel sheet has the same or substantially overlapping composition, structure, and strength properties, it would be expected to result in the same properties, including the instantly claimed bending property. MPEP 2112.01. Additionally, with respect to the instant claims 9-10, it would have been obvious to one of ordinary skill in the art to use a conventional material, such a high strength steel, in conventional applications such as automobile components with a predictable result of success.
Claims 1-4, 7, and 9-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 10106874. Although the claims at issue are not identical, they are not patentably distinct from each other because:
the instant claims and the related patent are both drawn to high strength cold rolled steel sheets having overlapping compositional ranges, overlapping microstructural phase ranges of retained austenite, bainitic ferrite, tempered martensite, and polygonal ferrite, and overlapping mechanical properties including tensile strength and elongation. (see also 103 rejection above over the same reference). It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05. In addition, while the related patent claims are silent as to certain instantly claimed properties such as bendability and yield strength, the related disclosure teaches a yield strength and yield ratio meeting the instant claims and as the related steel sheet has the same or substantially overlapping composition, structure, and strength properties, it would be expected to result in the same properties, including the instantly claimed bending property. MPEP 2112.01. Additionally, with respect to the instant claims 9-10, it would have been obvious to one of ordinary skill in the art to use a conventional material, such a high strength steel, in conventional applications such as automobile components with a predictable result of success.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN A HEVEY whose telephone number is (571)270-0361. The examiner can normally be reached Monday-Friday 9:00-5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN A HEVEY/ Primary Examiner, Art Unit 1735