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 election without traverse of Group I (Claims 1, 3-4, 6, 14-18 and 21-23) in the reply filed on 01/07/2026 is acknowledged. Claims 7-9, 11-13 and 19-20 are withdrawn. Claims 1, 3-4, 6, 14-18 and 21-23 are examined herein.
Claim Rejections - 35 USC § 103
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.
Claims 1, 3-4, 6, 14-18 and 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over US’971 (US 2020/0061971), and further in view of JP’594 (JP4654594, IDS dated 02/19/2025).
Regarding claim 1, US’971 teaches ([0062] to [0064]) a clad steel plate having a base metal and a cladding metal on front and back surfaces of the base metal with composition ranges of the base metal and the cladding metal overlapping with the corresponding ranges of claim 1. 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). Thus, the recited composition of the base metal and the cladding metal is a prima facie case of obviousness over US’971. See MPEP 2144.05 I.
Base Metal Composition
(wt. %)
Cladding Metal Composition
(wt. %)
Claim 1
US’971
Claim 1
US’971
C
0.05-0.35
0.1-0.6
C
0-0.1
0.001-0.15
Si
0.02-2.0
0.05-1.5
Si
0-0.6
0.03-0.7
Mn
1.8-3.5
0.1-2.5
Mn
0.05-2.5
0.05-2.5
P
0.001-0.1
0.005-0.15
P
0.001-0.1
0.005-0.1
S
0-0.02
0-0.03
S
0-0.02
0-0.03
Al
0.01-2.0
0.01-2.0
Al
0.01-2.0
0.005-0.5
N
0-0.01
0.003-0.01
N
0-0.01
0.001-0.01
Balance
Fe
Fe
Balance
Fe
Fe
US’971 discloses that the base metal contains preferably at least 95% by area of martensite and tempered martensite ([0012]), which meets the limitation that a total area ratio of martensite and tempered martensite is 30 % or more, a volume fraction of retained austenite is 5 % or less and an area ratio of ferrite is 55 % or less as recited in claim 1. US’971 further discloses that the cladding metal is DC05 steel with essentially ferritic structure ([0070]). DC05 steel is known to consists of greater than 99% ferrite phase. Thus, the DC05 steel disclosed by US’971 meets the limitation that the area ratio of ferrite is 80 % or more in cladding metal as recited in claim 1.
US’971 discloses that the Brinell hardness of the base metal is preferably >500 ([0006]), which converts to Vicker’s hardness of >563. US’971 also discloses that the Brinell hardness of the cladding metal is preferably <250 ([0006]), which converts to Vicker’s hardness of <251 and meets the recited hardness of the cladding metal in claim 1. When the base metal has a Vicker’s hardness of 563 and the cladding metal has a hardness of 250, the average Vickers hardness (HVL) of the cladding metal divided by the average Vickers hardness (HVB) of the base metal is 0.44. Thus, the clad steel plate disclosed by US’971 meet the recited hardness limitation in claim 1.
US’971 does not teach that the boundary roughness between the base metal and the cladding metal is 50 µm or less and a number of voids at a boundary between the base metal and the cladding metal is 20 or fewer per 10 mm of boundary length. JP’594 teaches a clad steel plate and discloses that when the roughness of the bonding surface of the clad steel plate is 30 µm or less, microporosity is absent along the bonding interface and the bonding strength between base metal and cladding metal is improved (Page 5, 1st two paragraphs). Thus, it would be obvious to one of ordinary skill in the art to make a clad steel plate with boundary roughness of 30 µm or less as taught by JP’594 in the process of US’971 in order to make a clad steel plate without microporosity between the base metal and the cladding metal and with improved bonding strength as disclosed by JP’594.
Regarding claim 3, US’971 discloses that the cladding metal has a thickness of 1-12% of the total thickness of the clad steel plate ([0051]). Thus, the thickness of the base metal is 88-99% of the total thickness of the clad steel plate and the thickness of the base metal divided by the thickness of the cladding metal is greater than 7.33 (obtained by 88/12) and meets the recited limitation in claim 3.
Regarding claims 4 and 15, US’971 discloses that the clad steel plate has a galvanized layer on a surface ([0052]), which meets the limitation recited in claims 4 and 15.
Regarding claims 6 and 16-18, US’971 discloses a member made using the clad steel plate ([0001]), which meets the limitation recited in claims 6 and 16-18.
Regarding claims 14 and 21-23, US’971 discloses that the cladding metal and the base metal are joined by hot rolling ([0067]), which meets the limitation recited in claims 14 and 21-23.
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, 3-4, 6, 14-18 and 21-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of copending Application No. 18/550459 (US 2024/0158884). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-23 of copending Application No. 18/550459 teach the composition limitation, the hardness limitation, the boundary roughness limitation and the number of voids limitation recited in claim 1. Claims 1-23 of copending Application No. 18/550459 do not explicitly disclose the recited structure limitation in claim 1. However, the microstructure of a steel is determined by the steel composition and a method of making the steel. In view of the fact that claims 1-23 of copending Application No. 18/550459 teach a steel composition that meets the recited steel composition and a method of making the steel that is identical to the method recited in instant claims 7-9, 11-13 and 19-20, one of ordinary skill in the art would expect that the cladding steel disclosed by claims 1-23 of copending Application No. 18/550459 to meet the recited structure limitation in claim 1. “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. Claims 1-23 of copending Application No. 18/550459 also teach all the limitations recited in claims 3-4, 6, 14-18 and 21-23.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Xiaowei Su whose telephone number is (571)272-3239. The examiner can normally be reached 8:00-5:00.
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/XIAOWEI SU/Primary Examiner, Art Unit 1733