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 .
Claim Objections
Claim 8 is objected to because of the following informalities: There is no space between “(0.3 to 1.5)%” and “Al”. Appropriate correction is required.
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 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 18/288223 (reference application) in view of Kawada (JP2013-060630 – machine translation provided by applicant). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 recites a steel sheet with composition by mass of C: 0.05-0.40%, Si: 0.2-3.0%, Mn: 0.1-5.0%, sol. Al: 0 to less than 0.4000%, P: 0.0300% or less, S: 0.0300% or less, N: 0.0100% or less, and optional amounts of B, Ti, Nb, V, Cr, Ni, Cu, Mo, W, Ca, Mg, Zr, Hf, REM, balance Fe and impurities, a surface layer of granular oxides having an average size of 300 nm or less and a density of 4.0/µm2 or more, a Si-Mn depleted layer with a thickness of 3.0 µm or more from the surface and where the Si and Mn contents at ½ position of the thickness not containing oxides are less than 10% of the Si and Mn contents at the sheet thickness center.
This is patentably indistinct of claim 1 of the ‘223 application which recites a steel sheet with composition by mass of C: 0.05-0.40%, Si: 0.2-3.0%, Mn: 0.1-5.0%, sol. Al: 0 to less than 0.4000%, P: 0.0300% or less, S: 0.0300% or less, N: 0.0100% or less, and optional amounts of B, Ti, Nb, V, Cr, Ni, Cu, Mo, W, Ca, Mg, Zr, Hf, REM, balance Fe and impurities, a Ratio A of a length of grain boundary oxides projected on a surface of the steel sheet in cross section being 50-100%, a number density of granular oxides being less than 4.0/µm2, a Si-Mn depleted layer with a thickness of 3.0 µm or more from the surface and where the Si and Mn contents at ½ position of the thickness not containing oxides are less than 10% of the Si and Mn contents at the sheet thickness center. The ‘223 application does not recite the claimed particle size.
In a related field of endeavor, Kawada teaches a high-strength steel sheet with excellent galling resistance (abstract) having Si and/or Mn fine oxides dispersed at a certain depth from the surface (Paragraph 10) with a size of 20 nm or more dispersed at an average interparticle spacing of 2.5 µm (Paragraph 12) which improves galling resistance (Paragraph 29).
The instant claims, the ‘223 application, and Kawada are directed to steel sheets with oxide particles they are considered analogous. The instant claims would have been obvious to one of ordinary skill in the art before the effective filing date in view of the teachings of Kawada as oxide particle sizes of 20 nm or more are known to improve galling resistance and one would have had a reasonable expectation of success. The recited composition, depleted layer, and particle sizes overlap those of the modified ‘228 application and the courts have held that where claimed ranges overlap a prima facie case of obviousness exists. See MPEP 2144.05. While not expressly claiming where the number density of granular oxides overlap, it has been held that where claimed ranges are so close that one of ordinary skill in the art would expect them to possess the same properties. See Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). It is the examiner’s position that there is no patentable distinction between the two ranges (e.g. 4.0/µm2 is patentably indistinct of 3.99999999/ µm2 encompassed by the ‘228 application) due to significant figures, rounding, etc.
Instant claim 2 recites an average grain size overlapping claim 1 of the ‘228 application in view of Paragraph 12 of Kawada. Instant claims 3 and 9 recite a number density overlapping claim 1 of the ‘228 application in view of Paragraph 12 of Kawada. Instant claims 4 and 10-11 recite grain boundary oxides overlapping claim 1 of the ‘228 application. Instant claims 5-6 recite a ratio A overlapping claim 1 of the ‘228 application. Instant claims 7-8 and 12-16 recite a Zn plating overlapping claims 5 and 8-10 of the ‘228 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 1-16 may be placed in condition for allowance if a terminal disclaimer were filed over 18/288223 as outlined above.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art to the instant claims is that of Kawada as outlined above. Kawada teaches a similar steel composition and granular oxides, but does not teach the claimed Si-Mn depleted layer. Kim (US 2017/0369974) teaches a hot-dip galvanized steel with overlapping composition as that which is claimed (abstract) and a surface layer depletion of Si and Mn (Fig.3, Paragraph 139). However, this depleted layer is only ~90 nm in thickness and only is about 10% of the center thickness concentration for about a 30 nm depth in the thickness direction which is significantly outside the claimed range. Accordingly, the instant claims would not have been obvious to one of ordinary skill in the art.
Other art demonstrating the level of ordinary skill in the art is that of Yasui et al. (US 2015/0329946), Toda et al. (US 2020/0001342), and Kang et al. (US 2023/0002845)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SETH DUMBRIS whose telephone number is (571)272-5105. The examiner can normally be reached M-F 6:00 AM - 3:30 PM.
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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784