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
Claims 2-4 are objected to because of the following informalities:
In claim 2, line 1, “Claim 1” should read –claim 1–.
In claim 3, line 1, “manufacturing a” should read –manufacturing the–.
In claim 3, line 2, “Claim 1” should read –claim 1–.
In claim 4, line 1, “manufacturing a” should read –manufacturing the–.
In claim 4, line 2, “Claim 2” should read –claim 2–.
Appropriate correction is required.
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.
Claims 1-4 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.
The term “high-strength” in claims 1-4 is a relative term which renders the claim indefinite. The term “high-strength” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what degree of strength would and would not be considered “high-strength,” which renders the metes and bounds of the claims indefinite.
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 1-2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of copending Application No. 18/289,606 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-2 of the reference application discloses a high-strength hot-rolled steel sheet with a chemical composition and microstructure area fractions that are identical to that of the instant claims 1 and 2. Claim 1 of the reference application discloses “an area fraction of martensite each having an orientation difference of 15⁰ or more between a crystal orientation of the martensite and a crystal orientation of at least one of bainite adjacent to the martensite is more than 50% relative to the whole martensite dispersed in the bainite,” which is just outside of the instantly claimed range of “an area fraction of martensite each having an orientation difference of less than 15⁰ between a crystal orientation of the martensite and a crystal orientation of at least one of the bainite adjacent to the martensite is 50% or more relative to the whole martensite dispersed in the bainite.” However, in the case where the claimed ranges and prior art ranges do not overlap but are close enough that one of ordinary skill in the art would have expected them to have the same properties, a prima facie case of obviousness exists. See MPEP §2144.05.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 3-4 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claims 3 and 4, the prior art fails to disclose or adequately suggest the steel sheet as recited. In particular, the closest prior art, Yamazaki et al. (US 2018/0237874), as cited in the IDS dated 11/6/2023, hereinafter “Yamazaki,” teaches a high strength hot-rolled steel sheet comprising a chemical composition containing, by mass%, C: 0.04-0.18%, Si: 0.2-2.0%, Mn: 1.0% or less, P: 0.03% or less, S: 0.005% or less, Al: 0.005-0.100%, Cr: 0.10-1.00%, Ti: 0.02-0.15%, Nb: 0.005-0.050%, Mo: 0.05-0.30%, V: 0.05-0.30%, the balance being Fe and inevitable impurities, and a steel microstructure including a bainite phase having an area ratio of 85% or more as a main phase and a martensite phase having an area ratio of 15% or less as a second phase (Abstract, [0033]), which satisfies or overlaps with the instantly claimed chemical composition and area fraction ranges. However, Yamazaki does not teach or fairly suggest wherein among the martensite dispersed in the bainite, an area fraction of martensite each having an orientation difference of less than 15⁰ between a crystal orientation of the martensite and a crystal orientation of at least one of the bainite adjacent to the martensite is 50% or more relative to the whole martensite dispersed in the bainite, as required by claims 3 and 4. Thus, claims 3 and 4 are distinct over the teachings of the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY M LIANG whose telephone number is (571)272-0483. The examiner can normally be reached M-F: 9:00am-5:00pm.
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/ANTHONY M LIANG/Primary Examiner, Art Unit 1734