CTFR 18/546,428 CTFR 92170 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 07-29-01 AIA Claim s 4 and 16 are objected to because of the following informalities: In claim 4, last line, “(e)” should read –(c)–. In claim 16, last line, “(e)” should read –(c) –. Appropriate correction is required. Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-23-aia AIA 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. 07-21-aia AIA Claim (s) 1, 3-4, 16, and 23-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/162556, as cited in the IDS dated 3/14/2025, wherein Yokoyama et al. (US 2022/0090248), as cited in the IDS dated 3/14/2025, hereinafter “Yokoyama,” is used and cited herein as an English language equivalent, in view of Hironaka et al. (JP 2008-231493), hereinafter “Hironaka,” wherein an English machine translation is used and cited herein . Regarding claims 1 and 3, Yokoyama teaches a galvanized steel sheet comprising a base steel sheet and a galvanized layer on a surface of the base steel sheet, wherein the base steel sheet has a chemical composition comprising, in mass%, C: 0.050-0.350%, Si: 0.10-2.50%, Mn: 1.00-3.50%, P: 0.050% or less, S: 0.0100% or less, Al: 0.001-1.500%, N: 0.100% or less, Ti: 0-0.200%, Nb: 0-0.100%, V: 0-1.00%, B: 0-0.0100%, Cu: 0-1.00%, Cr: 0-2.00%, Ni: 0-1.005, Mo: 0-1.00%, Sb: 0-1.00%, Sn: 0-1.00%, W: 0-1.00%, Mg: 0-0.0100%, Co: 0-1.00%, Zr: 0-0.0100%, Ca: 0-0.0100%, Ce: 0-0.0100%, Hf: 0-0.0100%, Bi: 0-0.0100%, REM: 0-0.0100%, and a balance of Fe and impurities ([0028]-[0057]), which satisfies or overlaps with the instantly claimed chemical composition ranges and Ceq. Yokoyama further teaches wherein the base steel sheet has a microstructure containing, by area%, ferrite: 0-50%, tempered martensite: 5% or more, retained austenite: 0-30%, and fresh martensite: 0-10% ([0058]-[0062]), which satisfies or overlaps with the instantly claimed chemical composition ranges. Additionally, Yokoyama teaches wherein the base steel sheet has a tensile strength of 980 MPa or more ([0200]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP §2144.05. Yokoyama does not explicitly teach that the base steel sheet has a microstructure wherein an area ratio of bainitic ferrite is 5.0-40.0%, S BF + S TM + 2 x S MA : 65.0% or more, S MA1 /S MA : 0.80 or less, and S MA2 /S MA : 0.20 or more, as required by claim 1, and S MA3 /S MA is 0.05 or more, as required by claim 3. However, Yokoyama teaches a steel sheet having an overlapping chemical composition ([0028]-[0057]), and further teaches a method of production of its steel sheet comprising a hot rolling process, a cold rolling process, heating the steel sheet to a temperature of Ac1 + 30⁰C or more and 950⁰C or less and holding at this temperature for 1-1000 seconds, a first cooling to a first cooling stop temperature of 300- 600⁰C and holding for 80-500 seconds, a coating process in which the cold-rolled steel sheet is subjected to hot dip galvanizing, wherein the first cooling stop temperature is within +/- 20⁰C of the coating bath temperature, for example, the coating math temperature may be 440-460⁰C, a second cooling to a second cooling stop temperature of Ms-50⁰C or less, reheating to 200-420⁰C and holding for 5-500 seconds ([0069]-[0080], [0186], Table 2). Note that this process is substantially similar to the process described in paragraph [0023] of the instant specification. Thus, as Yokoyama teaches a steel sheet with an overlapping composition and substantially similar process of making, one of ordinary skill in the art would expect the steel sheet of Yokoyama to have wherein an area ratio of bainitic ferrite is 5.0-40.0%, S BF + S TM + 2 x S MA : 65.0% or more, S MA1 /S MA : 0.80 or less, and S MA2 /S MA : 0.20 or more, as required by claim 1, and S MA3 /S MA is 0.05 or more, as required by claim 3. In the case 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.” See MPEP §2112.01. Yokoyama is silent as to the galvanized steel further comprising a metal coating or plating layer at least on one side between the base steel sheet and the galvanized layer. However, in the same field of endeavor, Hironaka teaches that subjecting a steel sheet to an Fe-based electroplating treatment before being subjected to a galvanizing treatment suppresses the occurrence of cracks in a welded portion of the steel sheet, even when spot welding is performed under conditions of a large current that would cause expulsion (Abstract, [0015], [0017]). Note that Yokoyama desires weldability ([0003], [0126]-[0129]). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was field to subject the steel sheet of Yokoyama to an Fe-based electroplating treatment before being subjected to a galvanizing treatment in order to suppress the occurrence of cracks when the steel sheet is welded, as taught by Hironaka. Doing so would yield an Fe-based plating player at least on one side between the base steel sheet and the galvanized layer. With respect to claims 4 and 16, Yokoyama modified by Hironaka teaches wherein the galvanized layer is a hot-dip galvanized layer or hot-dip galvannealed layer (Yokoyama: Abstract, [0153]). Regarding claims 23-26, Yokoyama modified by Hironaka teaches wherein the plating layer is an Fe-based plating layer (Hironaka: [0017]). Double Patenting 08-33 AIA 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, 3-4, 16, and 23-26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, and 12 of copending Application No. 18/727,874 (reference application) in view of in view of Hironaka (JP 2008-231493), wherein an English machine translation is used and cited herein. The claims of the reference application teach a galvanized steel sheet with an overlapping chemical composition, microstructure, and tensile strength. The claims of the reference application do not explicitly teach that the base steel sheet has a microstructure wherein S BF + S TM + 2 x S MA : 65.0% or more, S MA1 /S MA : 0.80 or less, and S MA2 /S MA : 0.20 or more, as required by the instant claim 1, and S MA3 /S MA is 0.05 or more, as required by instant claim 3. However, the claims of the reference application teach an overlapping chemical composition, an overlapping microstructure, and a process of producing the galvanized steel sheet which is substantially similar to the process described in the instant specification. Thus, one of ordinary skill in the art would expect the steel sheet of the claims of the reference application to have wherein the base steel sheet has a microstructure wherein S BF + S TM + 2 x S MA : 65.0% or more, S MA1 /S MA : 0.80 or less, and S MA2 /S MA : 0.20 or more, as required by the instant claim 1, and S MA3 /S MA is 0.05 or more, as required by instant claim 3. The claims of the reference application are silent as to the galvanized steel further comprising a metal coating or plating layer at least on one side between the base steel sheet and the galvanized layer. However, in the same field of endeavor, Hironaka teaches that subjecting a steel sheet to an Fe-based electroplating treatment before being subjected to a galvanizing treatment suppresses the occurrence of cracks in a welded portion of the steel sheet, even when spot welding is performed under conditions of a large current that would cause expulsion (Abstract, [0015], [0017]). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was field to subject the steel sheet of the claims of the reference application to an Fe-based electroplating treatment before being subjected to a galvanizing treatment in order to suppress the occurrence of cracks when the steel sheet is welded, as taught by Hironaka. Doing so would yield an Fe-based plating player at least on one side between the base steel sheet and the galvanized layer. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Claims 1, 3-4, 16, and 23-26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 9, 11, 15, 19, and 21-23 copending Application No. 18/579,575 (reference application) in view of in view of Hironaka (JP 2008-231493), wherein an English machine translation is used and cited herein. The claims of the reference application teach a galvanized steel sheet with an overlapping chemical composition and microstructure. The claims of the reference application teach an S BF + S TM + 2 x S MA and tensile strength that are just outside of the instantly claimed ranges. 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. The claims of the reference application do not explicitly teach that the base steel sheet has a microstructure wherein S MA1 /S MA : 0.80 or less and S MA2 /S MA : 0.20 or more, as required by the instant claim 1, and S MA3 /S MA is 0.05 or more, as required by instant claim 3. However, the claims of the reference application teach an overlapping chemical composition, an overlapping microstructure, and a process of producing the galvanized steel sheet which is substantially similar to the process described in the instant specification. Thus, one of ordinary skill in the art would expect the steel sheet of the claims of the reference application to have wherein the base steel sheet has a microstructure wherein S MA1 /S MA : 0.80 or less and S MA2 /S MA : 0.20 or more, as required by the instant claim 1, and S MA3 /S MA is 0.05 or more, as required by instant claim 3. The claims of the reference application are silent as to the galvanized steel further comprising a metal coating or plating layer at least on one side between the base steel sheet and the galvanized layer. However, in the same field of endeavor, Hironaka teaches that subjecting a steel sheet to an Fe-based electroplating treatment before being subjected to a galvanizing treatment suppresses the occurrence of cracks in a welded portion of the steel sheet, even when spot welding is performed under conditions of a large current that would cause expulsion (Abstract, [0015], [0017]). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was field to subject the steel sheet of the claims of the reference application to an Fe-based electroplating treatment before being subjected to a galvanizing treatment in order to suppress the occurrence of cracks when the steel sheet is welded, as taught by Hironaka. Doing so would yield an Fe-based plating player at least on one side between the base steel sheet and the galvanized layer. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Response to Arguments Applicant’s arguments, see pp. 12-14, filed 2/4/2026, with respect to the previous rejection of the claims under 35 USC 103 have been fully considered and are persuasive in view of the current amendments to the claims. Therefore, the previous rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of WO 2020/162556, wherein Yokoyama (US 2022/0090248), is used and cited herein as an English language equivalent, in view of Hironaka (JP 2008-231493), wherein an English machine translation is used and cited herein, as detailed above. Conclusion 07-40 AIA Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL . See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action. 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. 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, Jonathan Johnson can be reached at (571)272-1177. 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. /ANTHONY M LIANG/Primary Examiner, Art Unit 1734 Application/Control Number: 18/546,428 Page 2 Art Unit: 1734 Application/Control Number: 18/546,428 Page 3 Art Unit: 1734 Application/Control Number: 18/546,428 Page 4 Art Unit: 1734 Application/Control Number: 18/546,428 Page 5 Art Unit: 1734 Application/Control Number: 18/546,428 Page 6 Art Unit: 1734 Application/Control Number: 18/546,428 Page 7 Art Unit: 1734 Application/Control Number: 18/546,428 Page 8 Art Unit: 1734 Application/Control Number: 18/546,428 Page 9 Art Unit: 1734 Application/Control Number: 18/546,428 Page 10 Art Unit: 1734
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