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 1-3 remain for examination, wherein claims 1 and 3 are independent claims.
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 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshidaet al ( US-PG-pub 2022/0025499 A1, listed in IDS filed on 6/12/2025, thereafter PG’499).
Regarding claims 1-3, PG’499 teaches a hot-rolled steel sheet (Claims and examples of PG’499). The comparison between the claimed alloy composition ranges and microstructures with those disclosed by the example #E in table 1 and #15 in table 3A of PG’499 is listed in the following table. All of the essential alloy composition ranges, microstructures, and properties disclosed by the example #E in table 1 and #15 in table 3A of PG’499 are within the claimed alloy composition ranges, microstructures, and properties in the instant claims, which reads on the claimed alloy in the instant claims and the “consisting of” language in the instant claim 1. The #15 in table 3A of PG’499 teaches including 61 area% TM + TB, which overlaps the claimed 50-70 area% TM as claimed in the instant claims 1 and 3, which creates 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 including proper amount of TM as claimed from the disclosure of PG’499 since PG’499 teaches the same hot-rolled steel sheet throughout whole disclosing range. The claimed pole density ratio Pt/Ps is recognized as material feature related the alloy’s composition and microstructures. PG’499 teaches the same hot-rolled steel sheet with the same alloy composition, similar microstructures, and the same properties as claimed in the instant claims, the claimed pole density ratio Pt/Ps would be highly expected in the steel sheet of PG’499. MPEP 2112 01 and 2145 II.
Element
From instant Claims 1-3 (mass%)
From #E in table 1 of PG’499 (mass %)
Within range
(mass %)
C
0.02-0.3
0.06
0.06
Si
0.10-2.00
0.950
0.950
Mn
0.5-3.0
1.75
1.75
P
0.100 or less
0.01
0.01
S
0.010 or less
0.0018
0.0018
Al
0.10-1.0
0.380
0.380
N
0.0100 or less
0.0022
0.0022
Ti
0.06-0.10
0.107
0.107
Nb
0-0.10 (cl.1,3)
0.01-0.10 (optional) (cl.2)
0.008
0.008
Ca
0-0.0060 (cl.1,3)
0.0005-0.006 (optional) (cl.2)
Not intended added
0-impurity level
Mo
0-1.00 (cl.1,3)
0.02-1.00 (optional) (cl.2)
Not intended added
0-impurity level
Cr
0-1.00 (cl.1,3)
0.02-1.00 (optional) (cl.2)
Not intended added
0-impurity level
V
0-0.40 (cl.1,3)
0.01-0.40 (optional) (cl.2)
Not intended added
0-impurity level
Ni
0-0.40 (cl.1,3)
0.01-0.40 (optional) (cl.2)
Not intended added
0-impurity level
B
0-0.0020 (cl.1,3)
0.0001-0.0020 (optional) (cl.2)
Not intended added
0-impurity level
Cu
0-1.00 (cl.1,3)
0.02-1.00 (optional) (cl.2)
Not intended added
0-impurity level
Sn
0-0.50 (cl.1,3)
0.01-0.50 (optional) (cl.2)
Not intended added
0-impurity level
Zr
0-0.05 (cl.1,3)
0.001-0.050 (optional) (cl.2)
Not intended added
0-impurity level
Fe
Balance +impurities
Balance + impurities
Balance + impurities
Microstructures (Area%)
From #15 in table 3A of PG’499 (mass %)
Within range
F+B
30-47
36 (F)
36 (F)
TM
50-70
61 (TM+B)
61 (TM+B)
FM
3-10
3
3
Properties
From #15 in table 3A of PG’499 (mass %)
TS (MPa)
950 or more
1033
1033
Pt/Ps
1.2-2.0
Same alloy with similar manufacturing process
MPEP 2112 01 and 2145 II
Still regarding claims 1 and 3, the instant application indicates that ratio Pt/Ps is related to the hot rolling shape ratio (par.[0134]-[0145] of PG-Pub 2024/0384381 A1). PG’499 specify to control the hot rolling reduction, and more specifically, total rolling reduction within temperature range of from higher than FT+50°C to FT+150°C: 50% or more and total rolling reduction within temperature range of from FT to FT+50° C: 40% to 80% (par.[0174]-[0182] of PG’499), which overlaps the hot rolling conditions as disclosed in the instant application (par.[0134]-[0145] of PG-Pub 2024/0384381 A1). PG’499 teaches the same hot-rolled steel sheet with the same alloy composition, similar microstructures, and the same properties as claimed in the instant claims and PG’499 teaches the similar hot rolling with rolling shape ratio control, the claimed pole density ratio Pt/Ps would be highly expected in the steel sheet of PG’499. MPEP 2112 01 and 2145 II.
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 1-3 are rejected on the ground of non-statutory obviousness type double patenting as being unpatentable over Claims 1-2 of co-pending application No. 18/700,028 (US-PG-pub 2025/0236922 A1) in view of PG’499.
Regarding instant Claims 1-3, although the conflicting claims are not identical, they are not patentable distinct from each other because Claims 1-2 of co-pending application No. 18/700,028 (US-PG-pub 2025/0236922 A1) teaches the same hot-rolled steel sheet. All of the essential alloy composition ranges, properties, and manufacturing process steps disclosed by Claims 1-2 of co-pending application No. 18/700,028 (US-PG-pub 2025/0236922 A1) overlaps the claimed ranges, which creates a prima facie case of obviousness. MPERP 2144 05 I. Claims 1-2 of co-pending application No. 18/700,028 (US-PG-pub 2025/0236922 A1) does not specify the claimed microstructures as claimed in the instant claims. PG’499 teaches including 61 area% TM + TB, which overlaps the claimed 50-70 area% TM as claimed in the instant claims 1 and 3, which creates 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 optimize the microstructures from the disclosure of PG’499 for the steel sheet of Claims 1-2 of co-pending application No. 18/700,028 (US-PG-pub 2025/0236922 A1). Thus, no patentable distinction was found in the instant claims compared with Claims 1-2 of co-pending application No. 18/700,028 (US-PG-pub 2025/0236922 A1) in view of PG’499.
This is a provisional ODP rejection since the conflict claims in the co-pending application has not in fact been patented.
Conclusion
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/JIE YANG/Primary Examiner, Art Unit 1734
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