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 & Status of Claims
Claims 1, 3-5 and 12-15 are examined of which claims 1, 3, 5 and 13-15 were amended in Applicant’s reply.
Claims 6, 9, 11 and 16 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 30 April 2025.
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3-5 and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0100212 A1 of Ono (US’212).
Regarding claims 1, 3-5 and 12-15, US 2018/0100212 A1 of Ono (US’212) teaches {abstract, [0001], [0016]-[0093], claims 1-2, 11-16} [0001] “This disclosure relates to a cold-rolled steel sheet, and in particular, to a high-strength cold-rolled steel sheet suitable for manufacturing parts formed by cold pressing, such as those used in automobiles and household appliances.” [0026] “A cold-rolled steel sheet comprising: a chemical composition that contains (consists of), in mass %, C: 0.15% or more and 0.40% or less, Si: 1.5% or less, Mn: 0.9% to 1.7%, P: 0.03% or less, S: less than 0.0020%, sol. Al: 0.2% or less, N: less than 0.0055%, O: 0.0025% or less, and the balance consisting of Fe and incidental impurities” “a microstructure in which tempered martensite and bainite are contained in a total area ratio of 95% or more and 100% or less with respect to a whole volume of the microstructure” [0028] “3. The cold-rolled steel sheet according to 1. or 2., wherein the chemical composition further contains, in mass %, B: 0.0002% or more and less than 0.0035%.” [0029] “4. The cold-rolled steel sheet according to any one of 1. to 3., wherein the chemical composition further contains, in mass %, either or both of Nb: 0.002% to 0.08% and Ti: 0.002% to 0.12%.” [0030] “5. The cold-rolled steel sheet according to any one of 1. to 4., wherein the chemical composition further contains, in mass %, either or both of Cu: 0.005% to 1% and Ni: 0.01% to 1%.” [0031] “6. The cold-rolled steel sheet according to any one of 1. to 5., wherein the chemical composition further contains, in mass %, one or more selected from the group consisting of Cr: 0.01% to 1.0%, Mo: 0.01% or more and less than 0.3%, V: 0.003% to 0.5%, Zr: 0.005% to 0.2%, and W: 0.005% to 0.2%.” [0032] “7. The cold-rolled steel sheet according to any one of 1. to 6., wherein the chemical composition further contains, in mass %, one or more selected from the group consisting of Ca: 0.0002% to 0.0030%, Ce: 0.0002% to 0.0030%, La: 0.0002% to 0.0030%, and Mg: 0.0002% to 0.0030%.” [0033] “8. The cold-rolled steel sheet according to any one of 1. to 7., wherein the chemical composition further contains, in mass %, either or both of Sb: 0.002% to 0.1% and Sn: 0.002% to 0.1%.” with a composition wherein the claimed ranges of the constituent elements of the instant alloy of the instant claims overlap or lie inside the ranges of various elements of the alloy of the prior art. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed composition over the prior art disclosure since the prior art teaches the similar property/utility throughout the disclosed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
With respect to the microstructure and tensile strength, the prior art teaches that its steel has [0026] “a microstructure in which tempered martensite and bainite are contained in a total area ratio of 95% or more and 100% or less with respect to a whole volume of the microstructure” [0091] “The Total Area Ratio of Tempered Martensite and Bainite with Respect to the Whole Volume of the Microstructure is 95% or More (Inclusive of 100%)” “[0120] Tensile Strength TS: 1,320 MPa or More [0121] The delayed fracture resistance at a sheared end face deteriorates particularly when the tensile strength of the steel sheet is 1,320 MPa or more. Therefore, steel sheets with tensile strength of 1,320 MPa or more are targeted here.” thereby reading on the instant recited limitations.
It is noted that the prior art is silent regarding its alloy having the properties of the ratio LS/LB satisfying 0.11/[C %]0.8≤LS/LB≤0.16/[C %]0.8 as well as the Mn standard deviation as recited in the instant claims 1 and 3. 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP § 2112.01 I. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Therefore, it is expected that the alloy of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (see compositional analysis above), b) the claimed and prior art products are identical or substantially identical in structure (see microstructure analysis above) and c) the claimed and prior art products are produced by identical or substantially identical processes {instant alloy: instant specification [0066]-[0076] and highlights a three step cooling process; Prior art: {[0034]-[0035], [0126]-[0167], claims 13-16}; “[0034] 9. A method for manufacturing a cold-rolled steel sheet, comprising: hot rolling a steel slab having the chemical composition as recited in any one of 1. and 3. to 8. with a slab reheating temperature of higher than 1,200° C. to obtain a hot-rolled steel sheet; then cold rolling the hot-rolled steel sheet with a rolling reduction of 20% to 75% to obtain a cold-rolled steel sheet having a sheet thickness of 0.5 mm to 2.6 mm; then subjecting the cold-rolled steel sheet to continuous annealing, in which the cold-rolled steel sheet is: subjected to soaking with an annealing temperature of higher than 850° C. and no higher than 910° C. for a duration of more than 300 seconds and no more than 900 seconds; then cooled from 680° C. or higher to 260° C. or lower at a mean cooling rate of 70° C./s or higher; then optionally reheated; and then retained in a temperature range of 150° C. to 260° C. for 20 seconds to 1,500 seconds. [0035] 10. The method according to 9., wherein the hot rolling comprises: finish rolling the steel slab with a finisher delivery temperature of 840° C. to 950° C.; then cooling the hot-rolled steel sheet to 700° C. or lower at a cooling rate of 40° C./s or higher; then retaining the hot-rolled steel sheet at a temperature range of 600° C. to 700° C. for 4 seconds or more; then cooling the hot-rolled steel sheet to a temperature range of 500° C. to 630° C.; and then coiling hot-rolled the steel sheet.” Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
With respect to the galvanized layer and the members of the instant claims 4-5 and 12-15, it is noted that the prior art does not teach of a galvanized layer. However, one skilled in the art recognizes that galvanization is routinely used to inhibit rust on the steel. Therefore, it 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 to take the steel sheet of US’212and galvanize it to arrive at the claimed invention of the instant claims thereby resulting in a steel sheet with great rust resistance properties. Instant claims 5 and 13-15 are product-by-process claims. However, MPEP provides that product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP § 2113. As the prior art teaches “[0001] This disclosure relates to a cold-rolled steel sheet, and in particular, to a high-strength cold-rolled steel sheet suitable for manufacturing parts formed by cold pressing, such as those used in automobiles and household appliances. This disclosure also relates to a manufacturing method for the cold-rolled steel sheet. [0002] As the need for reducing the weight of automobile bodies continues to grow, high-strength steel sheets having a TS of 1,320 MPa to 1,470 MPa have been increasingly applied to body frame parts, such as center pillar R/F (reinforcement), bumpers, and impact beam parts (hereinafter also referred to as “parts”). From the viewpoint of further weight reduction of automobile bodies, various techniques have been examined for applying steel sheets having a TS of 1,800 MPa (1.8 GPa grade) or even higher strength.” “[0017] As used herein, the phrase “excellent in delayed fracture resistance at a shearing end face” more specifically means that a press formed part exhibits excellent delayed fracture resistance even when subjected to cold press forming after subjection to blanking by shearing or slitting or perforation by punching, and alternatively when subjected to cold press forming before subjection to cutting by shearing or perforation by punching.”, the prior art reads on the recited member.
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, 3-5 and 12-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-6, 9 and 11-16 of copending Application No. 18/550132 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the copending application reveals a steel sheet with substantially identical composition, tensile strength, microstructure and method of making the steel sheet. The claims of the copending application also teaches of a member as well as a steel sheet with a galvanized layer. It is noted that the composition of the steel sheet is slightly different in terms of Mn and all of the other constituents have identical compositional ranges. The Mn content is Mn: 1.7 or less in the claims of instant application whereas it is Mn: more than 1.7% and 3.5% or less in the claims of the copending application. The ratio LS/LB overlap between the claims of the applications: 0.11-0.16 in instant claims and 0.06-0.13 in the claims of the copending application. Therefore, as there is no distinct properties between Mn: 1.7 or less vs. Mn: more than 1.7% and 3.5% or less, the claimed ranges are also obvious. Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner,778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). See MPEP § 2144.05 I.
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 pages 8-10, filed 09/17/2025, with respect to the rejection(s) of record “Claims 1, 3-5 and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2010-215958 A of Yoshino and its English machine translation (JP’958)” have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of amendments to the instant claims.
Applicant's arguments filed 9/17/2025 have been fully considered but they are not persuasive as Applicant does not point out any errors associated with the rejection of record.
MPEP provides what constitutes a complete response to nonstatutory double patenting (NSDP) rejection as follows. See MPEP § 804 I B 1.
A complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims, or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional.
As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only compliance with objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated. Replies with an omission should be treated as provided in MPEP § 714.03. Therefore, an application must not be allowed unless the required compliant terminal disclaimer(s) is/are filed and/or the withdrawal of the nonstatutory double patenting rejection(s) is made of record by the examiner. See MPEP § 804.02, subsection VI, for filing terminal disclaimers required to overcome nonstatutory double patenting rejections in applications filed on or after June 8, 1995.
Although Applicant has not provided a “complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims, or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action”, examination of the response was conducted in the interest of compact prosecution.
Conclusion
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 JOPHY S. KOSHY whose telephone number is (571)272-0030. The examiner can normally be reached M-F 8:30 AM- 5:00 PM.
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/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733