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 arguments, see particularly the arguments which show that that the invention of Yamazaki (US20200063227) encompasses comparative examples, filed May 26, 2026, with respect to the requirement for unity of invention mailed February 26, 2026 have been fully considered and are persuasive.
The requirement for restriction mailed February 26, 2062 is withdrawn. As claims were never withdrawn from consideration, there are no withdrawn claims to rejoin.
Claim Interpretation
The disclosure as filed states “[t]he term "high strength" as used herein means that TS (tensile strength) is 980 MPa or more” (paragraph [0010] of the disclosure as filed). In view of this unambiguous definition, the term “high-strength hot-rolled steel sheet” recited in the preamble of each of claims 1-4 will be interpreted as a hot-rolled steel sheet having a tensile strength of 980 MPa or more.
Claim Objections
Claims 3 and 4 are objected to because of the following informalities:
In claim 3 and claim 4, please change “a high-strength hot-rolled steel sheet” to “the high-strength hot-rolled steel sheet”.
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 1-2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of copending Application No. 18289601 in view of Kim (US20220106656). Kim is the publication of an application for patent in the United States effectively filed prior to the earliest filing date of the present application.
Regarding claims 1 and 2, the reference application claims a hot-rolled steel sheet with the composition ranges recited in instant claims 1 and 2 (reference claims 1 and 2). The reference application claims “a steel microstructure including, as main phases, 80% to 100% of martensite and bainite in terms of total area fraction wherein an entire area fraction of the martensite dispersed in the bainite is 2% to 20%” (reference claim 1).
Reference application claims “among the martensite dispersed in the bainite, an area fraction of the martensite each having an orientation difference of less than 15° 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” (reference claim 1). The reference application therefore indirectly claims that an area fraction of the martensite dispersed in the bainite which does not have an orientation difference of less than 15° between a crystal orientation of the martensite and a crystal orientation of at least one of the bainite adjacent to the martensite of 50% or less relative to the whole martensite dispersed in the bainite. The instant application claims “an area fraction of martensite each having an orientation difference of 15
°
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” (instant claim 1). The instant application thereby indirectly claims that an area fraction of martensite which does not have an orientation difference of 15
°
or more between a crystal orientation of the martensite and a crystal orientation of at least one of bainite adjacent to the martensite is 50% or less relative to the whole martensite dispersed in the bainite. Both the reference and the instant application claim the bainite as the higher-proportion phase in which martensite is distributed; therefore, the boundaries of martensite gains in both the instant and reference applications would form with adjacent bainite. The reference and instant martensite orientation proportion limitations meet at an area fraction of 50%. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05(I).
In claiming martensite grains having an orientation difference of less than 15° 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, the reference application claims a range of structures encompassing some proportion of martensite grains having an orientation difference 15° or more between a crystal orientation of the martensite and a crystal orientation of at least one of the bainite adjacent to the martensite because “an area fraction of 50% or more encompasses values less than 100%. Martensite grains must necessarily have some aspect ratio, but the reference application does not claim an aspect ratio for grains.
Kim teaches a high-strength hot-rolled steel sheet (Title, [0001]). Kim teaches that the steel sheet comprises a chemical composition containing, by mass %, C: 0.10-0.30%; Si: 0.001-1.0%; Mn: 0.5-2.5%; Cr: 0.001-1.5%; Mo: 0.001-0.5%; Al: 0.001-0.5%; P: 0.001-0.01%; S: 0.001-0.01%; N: 0.001-0.01%; B: 0.0001-0.004%; Ti: 0.001-0.1%; Nb: 0.001 to 0.1%; and the balance consisting of Fe and inevitable impurities (abstract, [0010]). Kim teaches a steel microstructure including, as main phases 90% or more of martensite and bainite in terms of total microstructure fraction (abstract, [0011], [0024]). Kim teaches that an aspect ratio of crystal grains (packet) present in a region extending from a surface of a steel sheet to a depth 1/8 the thickness of the steel sheet is 1.1 to 6.0 [0013], [0056], [0062]. Kim teaches that if the aspect ratio is less than 1.1 in the surface layer part (surface layer to 1/8 a thickness) in the thickness direction, the recrystallization delay phenomenon by rolling hardly occurs even in the surface layer, and thus, the surface hardening effect to obtain the target hardness is insufficient [0064]. Kim further teaches that if the aspect ratio in the surface exceeds 6, excessive partial recrystallization occurs in the surface layer, causing deterioration of blanking properties due to material deviation in the thickness direction [0064].
Kim teaches and the reference application claims a high-strength hot-rolled steel sheets with overlapping compositions and a bainite-martensite microstructure.
The martensitic grains of the hot-rolled steel sheet claimed in the reference application, including any grains which are regions surrounded by boundaries between adjacent crystals having an orientation difference of 15
°
or more, must necessarily have some aspect ratio. It would have been obvious for one of ordinary skill in the art at the time of filing to provide the steel sheet claimed in the reference application with a surface layer grain aspect ratio of 1.1 to 6.0 from the surface to a depth of 1/8 sheet thickness, because Kim teaches that if the aspect ratio is less than 1.1 in the surface layer part (surface layer to 1/8 a thickness) in the thickness direction, the recrystallization delay phenomenon by rolling hardly occurs even in the surface layer, and thus, the surface hardening effect to obtain the target hardness is insufficient [0064], and that that if the aspect ratio in the surface exceeds 6, excessive partial recrystallization occurs in the surface layer, causing deterioration of blanking properties due to material deviation in the thickness direction for a hot-rolled steel sheet with an overlapping composition and a similar microstructure. As steel sheets (as opposed to a foils) have thickness in the order of magnitude of ~0.5-5 mm, a portion extending from the surface to 1/8 thickness encompasses the region extending from a surface of a steel sheet to a depth of 5 μm. A range of 1.1 to 6.0 overlaps a range of 2.0 or less. When claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. See MPEP 2144.05(I).
This is a provisional nonstatutory double patenting rejection.
Allowable Subject Matter
The only pending rejections of claims 1 and 2 are rejections on the ground of nonstatutory double patenting over claims of copending Application No. 18289601. As stated above, 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).
Claims 3 and 4 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, and if minor informalities were corrected.
The following is a statement of reasons for the indication of allowable subject matter:
Independent claim 1 claims a high-strength hot-rolled steel sheet. See the above statement of claim interpretation regarding “high-strength”. Claim 1 claims the steel sheet comprises a chemical composition containing, by mass % elements in the ranges recited in claim 1. Claim 1 claims that the steel sheet comprises a steel microstructure including, as main phases, 80% to 100% of martensite and bainite in terms of total area fraction. As claim 1 recites a proportion of martensite and bainite in terms of total area, claim 1 clearly establishes what degree is considered a “main” phase. Claim 1 claims that an entire area fraction of the martensite dispersed in the bainite is 2% to 20%, among the martensite dispersed in the bainite. Claim 1 claims that an area fraction of martensite each having an orientation difference of 15° 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. Claim 1 claims that regions surrounded by boundaries between adjacent crystals having an orientation difference of 15° or more are defined as crystal grains, an average aspect ratio of the crystal grains [the regions surrounded by boundaries between adjacent crystals having an orientation difference of 15° or more] present in a region extending from a surface of a steel sheet to a depth of 5 μm is 2.0 or less.
In remarks filed May 26, 2026, applicant identifies two claim limitations as Feature (1) and Feature (2):
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The May 26, 2026 remarks set forth four conditions for the disclosed production of the claimed high-strength steel sheet:
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The May 26, 2026 remarks explicitly identify these conditions as necessary to obtain claimed features of the claimed high-strength steel sheet:
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A requirement to show unity of invention relied on Yamazaki (US20200063227) to show that a shared technical feature was not a special technical feature, which made a contribution over the art. Yamazaki is the closest prior art reference of record to independent claim 1. The showing of a lack of unity of invention set forth reasons why the Yamazaki disclosure establishes a sound basis for believing that the steel sheet disclosed by Yamazaki would necessarily have the claimed features which applicant’s remarks identify and Feature (1) and Feature (2). In remarks filed May 26, 2026, applicant curated presented examples, disclosed in the specification as filed, which do not meet Features (1) and (2). As argued by applicant, the presented comparative examples 2, 7, 11, 22, and 23 fall within the manufacturing conditions which Yamazaki considers inventive. Applicant therefore sufficiently establishes that the steel sheet of Yamazaki does not necessarily or inherently possess the characteristics of the claimed product. Applicant therefore meets the burden for rebutting a challenge based on inherency established in MPEP 2113(V). Present claim 1 defines over Yamazaki at least in claiming that an area fraction of martensite each having an orientation difference of 15° 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, and that an average aspect ratio of the crystal grains [the regions surrounded by boundaries between adjacent crystals having an orientation difference of 15° or more] present in a region extending from a surface of a steel sheet to a depth of 5 μm is 2.0 or less.
The present office action provisionally rejects claims over claims of copending Application No. 18289601 in view of Kim (US20220106656) on the ground of nonstatutory double patenting. Kim teaches a high-strength steel sheet with a bainite-martensite main phase microstructure with a surface layer grain aspect ratio overlapping the claimed surface layer aspect ratio range [0012-13], [0056], [0062-63]. Kim teaches that a fraction of the martensite phase is 50% or more and less than 90%, a fraction of the bainite phase is 5% or more and 50% or less [0011]. While Kim is sufficient to teach appropriate surface layer grain aspect ratios for high-strength bainite-martensite steel sheets, the overall microstructure range disclosed by Kim would not meet the limitation that an area fraction of martensite each having an orientation difference of 15° 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. Claim 1 defines over Kim at least in claiming that an area fraction of martensite each having an orientation difference of 15° 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.
Claim 2 depends on claim 1. Claims 3 and 4 recite methods of making high-strength steel sheets according claims 1 and 2, respectively. Claims 2-4 define over the prior art at least for the reasons given above with respect to claim 1.
Conclusion
The reference(s) made of record and not relied upon is considered pertinent to applicant's disclosure.
US20240254584 is the publication of US patent application 18289601. The present office action rejects claims on the ground of nonstatutory double patenting over claims of 18289601.
Okubo (JP2010280932A), with reference to the examiner supplied English language translation, discloses a steel with a martensite grain aspect ratio <10 [0010], [0036], [0066], [0081], preferably 5 or less [0081-82].
US20140290807 discloses a steel sheet with a bainitic ferrite main phase and martensitic grains with an aspect ratio of 5.0 or less.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN P O'KEEFE whose telephone number is (571)272-7647. The examiner can normally be reached MR 8:00-6:30.
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, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SEAN P. O'KEEFE/ Examiner, Art Unit 1738
/SALLY A MERKLING/ SPE, Art Unit 1738
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