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 .
Priority
Receipt is acknowledged of a certified copy of DE 10 2021 108 448.2 filed April 1, 2021 as required by 37 CFR 1.55. Receipt is also acknowledged of WO 2022/207913, a copy of the WIPO publication of PCT/EP 2022/058767 filed April 1, 2022.
Response to Restriction Election
Applicant’s election of Group II, claims 9-17 and 20, in the reply filed on February 11, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1-8, 18, and 19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventive group, there being no allowable generic or linking claim.
Claim Status
This Office Action is in response to Applicant’s Restriction Election and Claims filed February 11, 2026.
Claims Filing Date
February 11, 2026
Pending
1-20
Withdrawn
1-8, 18, 19
Under Examination
9-17, 20
Abstract Objection
The abstract of the disclosure is objected to because
Line 2 “consists of” is legal phraseology.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The form and legal phraseology often used in patent claims should be avoided.
Claim Objections
Claims 11 and 15 are objected to because of the following informalities:
Claim 11 line 5 does not have end in a period.
Claim 15 line 5 does not have end in a period.
Each claim ends with a period. MPEP 608.01(m).
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 9-17 and 20 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.
Claim 9 line 2 “in particular a steel strip, as claimed in claim 1” renders the claim indefinite. It is unclear whether the claimed steel is limited to a steel strip, as claimed in claim 1 or not because the steel strip is “in particular”, which appears to be preferred, but not required. Claim 9 will be interpreted as requiring a high-strength multiphase steel, but not in particular requiring a steel strip, as claimed in claim 1.
Claim 9 line 3 “rolled strip sheet” renders the claim indefinite. It is unclear whether the stirp sheet is required to have undergone rolling or if the strip sheet is rolled into a coil. For the purpose of examination claim 9 will be interpreted as requiring either a strip sheet that has undergone rolling or is rolled into a coil.
Claim 9 lines 3-28 “a rolled strip sheet…is heat-treated as a whole” renders the claim indefinite. It is unclear whether the heat treatment is performed on all of a rolled strip sheet at the same time or if the entirety of the rolled strip sheet is required to be heat-treated, but it can be heat-treated in parts. For the purpose of examination claim 9 will be interpreted as requiring the entirety of the rolled strip sheet to be heat-treated without limiting how this is achieved.
Claim 9 line 21 “typical steel-associated, melting-induced impurities” renders the claim indefinite. It is unclear what denotes a typical steel-associated melting-induced impurity and what does not. It is unclear what impurities are atypical and outside the scope of the claim. It is also unclear what impurities are not steel-associated and/or melting-induced. For the purpose of examination claim 9 will be interpreted as the remainder being iron including inevitable impurities.
Claim 9 line 28 “-in particular rolled up into a coil-” renders the claim indefinite. It is unclear whether the claimed steel is limited to being rolled up into a coil or not because this limitation is “in particular”, which appears to be preferred, but not required. For the purpose of examination claim 9 will be interpreted as not requiring a rolled strip sheet heat treated rolled up into a coil.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
Claim 9 line 26 recites the broad recitation “the sum of the contents of Si and Al in wt.% is less than 2.3”, line 7 also recites “Si+Al ≥ 0.25 to ≤ 2” which is the narrower statement of the range/limitation.
Claim 9 line 22 recites the broad recitation “CEV which is greater than 0.49 and less than 0.9”, lines 22-23 also recite “preferably greater than 0.49 and less than 0.75” which is the narrower statement of the range/limitation.
Claim 12 lines 2-3 recites the broad recitation “a maximum temperature of at least 780°C and at most 900°C”, line 3 also recites “preferably of at least 790°C and at most 850°C” which is the narrower statement of the range/limitation.
Claim 16 lines 2-3 recites the broad recitation “a maximum temperature of at least 780°C and at most 900°C”, line 3 also recites “preferably of at least 790°C and at most 850°C” which is the narrower statement of the range/limitation.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 14 line 2 “specifically varies” renders the claim indefinite. It is unclear what the difference is between a thickness which specifically varies and a thickness which varies. If it specifically varies, then it is unclear what the metes and bounds are of the specific variation.
Claim 14 lines 2-3 “ratio between maximum thickness and minimum thickness is, in particular, between 1.16 and 3” renders the claim indefinite. It is unclear whether the claimed steel is limited to a ratio between maximum thickness and minimum thickness between 1.16 and 3 or not because it is “in particular”, which is preferred, but not required.
Claims 10, 11, 13, 15, 17, and 20 are rejected as depending from claim 9.
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claims 9, 10, 12, 13, 16, 17 and 20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Tosaka (JP 2003-313636 machine translation).
Regarding claim 9, Tosaka discloses a method for producing a steel strip ([0001], [0062], Table 2 No. 3) consisting of a high-strength multiphase steel (70% polygonal ferrite, 18% martensite, 10% retained austenite) ([0014], [0063], Table 3 No. 3), in particular a steel strip (sheet) ([0062]-[0063]), as claimed in claim 1 ([0062]-[0063], Tables 1, 3 No. 3) which has a tensile strength of at least 780 MPa in the longitudinal direction (835 MPa) (Table 3 No. 3), wherein a rolled strip sheet of steel consists of the claimed composition (Table 1 No. 3), and
Element
Claim 9
wt%
Tosaka Table 1 No. 3 mass%
C
0.08 to 0.23
0.120
Mn
1.5 to 3.5
2.50
Si + Al
0.25 to 2
0.815
N
0.0020 to 0.0160
0.0080
P
Less than 0.05
0.007
S
Less than 0.01
0.001
Cu
Less than 0.20
-
Optionally one or more of the following
Ca
0.0005 to 0.0060
-
Cr
0.05 to 1.0
-
Mo
0.05 to 1.0
-
Ni
0.05 to 0.50
-
Nb
0.005 to 0.15
-
Ti
0.005 to 0.15
-
V
0.001 to 0.30
-
B
0.0005 to 0.0050
-
Fe
Remainder
Balance
having a carbon equivalent CEV which is greater than 0.49 and less than 0.9, preferably greater than 0.49 and less than 0.75, wherein the carbon equivalent CEV is determined according to the formula CEV = C + Mn/6 + (Cu + Ni)/15 + (Cr + Mo + V)/5 from the contents of the corresponding elements in wt. % (0.54, 0.120 + 2.50/6) (Table 1 No. 3) and
wherein the ratio of the carbon equivalent CEV and the sum of the contents of Si and Al in wt.% is less than 2.3 (0.66, 0.54/0.815) (Table 1 No. 3),
is heat-treated as a whole - in particular rolled up into a coil (box annealed with standard box annealing equipment) - such that it assumes a temperature above 750°C (800°C) and after this heat treatment is cooled to a temperature below 200°C, wherein the cooling between 750°C and 200°C is effected at an average cooling rate greater than 1 K/h and less than 300 K/h (30°C/hr during annealing to prevent significant degradation at room temperature) ([0052]-[0053], [0062]-[0063], Table 2 No. 3).
Tosaka discloses a tensile strength of 835 MPa ([0063], Table 3 No. 3), annealing using standard box annealing equipment ([0052]-[0053], [0062]-[0063]), and the cooling rate after annealing ([0062], Table 2 No. 3). Where applicant claims a product or process in terms of a function, property of characteristic and the product or process of the prior art is the same as that of the claim by the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. “There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102.” MPEP 2112(III).
Regarding claim 10, Tosaka discloses the strip sheet is heated during the heat treatment from 100°C to a temperature of 750°C at an average heating rate between 1 K/h and 300 K/h (20°C/hr) ([0062], Table 2 No. 3).
Regarding claim 12, Tosaka discloses the strip sheet consisting of steel reaches, during the heat treatment, a maximum temperature of at least 780°C and at most 900°C, preferably of at least 790°C and at most 850°C (800°C) (Table 2 No. 3).
Regarding claim 13, Tosaka discloses the steel strip is provided with a surface coating in the form of a metallic coating (hot-dip galvanizing plating), organic coating or lacquer after cooling ([0062]-[0063]).
Regarding claim 16, Tosaka discloses the strip sheet consisting of steel reaches, during the heat treatment, a maximum temperature of at least 780°C and at most 900°C, preferably of at least 790°C and at most 850°C (800°C) (Table 2 No. 3).
Regarding claim 17, Tosaka discloses the steel strip is provided with a surface coating in the form of a metallic coating (hot-dip galvanizing plating), organic coating or lacquer after cooling ([0062]-[0063]).
Regarding claim 20, Tosaka discloses the content in wt.% of the element Mn is between 1.8 and 2.5 (2.50 mass%) and/or that the content in wt.% of the sum of the elements Si + Al is between 0.25 and 1 (0.815 mass%) (Table 1 No. 3).
Claim Rejections - 35 USC § 103
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Tosaka (JP 2003-313636 machine translation) as applied to claim 9 above, and further in view of Honda (US 2018/0291476).
Regarding claim 11, Tosaka discloses the strip sheet in the temperature range of 750°C to Ar3 + 70°C (800°C) (Table 2 No. 3), wherein the numerical value of the temperature Ar3 is calculated by means of the following formula from the contents of the corresponding elements in wt.%: Ar3 = 910 - 203√C – 30Mn + 44.7Si – 11Cr + 31.5Mo – 15.2Ni (800°C, 910-203√0.120-30*2.50+44.7*0.8) (Table 1 No. 3).
Tosaka is silent to the strip sheet remaining for at least 1 h.
Honda discloses a method for producing a steel strip ([0001]) including box annealing ([0091]) that remains for at least 1 h (1 hour or more and 60 hours or less) ([0099]).
It would have been obvious to one of ordinary skill in the art in the annealing process of Tosaka to remain for 1 hour or more and 60 hours or less to completely recrystallize ferrite while suppressing excessive coarsening of ferrite grains (Honda [0099]).
Claims 14 is rejected under 35 U.S.C. 103 as being unpatentable over Tosaka (JP 2003-313636 machine translation) as applied to claim 9 above, and further in view of Schulz (US 2019/0127821).
Regarding claim 14, Tosaka is silent to the steel strip having a thickness which specifically varies in the longitudinal extension, wherein the ratio between maximum thickness and minimum thickness is, in particular, between 1.16 and 3.
Schulz discloses a steel strip ([0001], [0048]-[0050]) that has a thickness which specifically varies in the longitudinal extension, wherein the ratio between maximum thickness and minimum thickness is, in particular, between 1.16 and 3 (end thickness of 0.50 to 3.00 mm has a maximum ratio between maximum thickness and minimum thickness of 6, 3.00/0.50) ([0050], [0212]).
It would have been obvious to one of ordinary skill in the art for the steel of Tosaka to have one or more end thicknesses of 0.50 mm to 3.00 mm to achieve uniform mechanical properties (Schulz [0050]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Tosaka (JP 2003-313636 machine translation) as applied to claim 12 above, and further in view of Honda (US 2018/0291476).
Regarding claim 15, Tosaka discloses the strip sheet remains in the temperature range of 750°C to Ar3 + 70°C (800°C) (Table 2 No. 3), wherein the numerical value of the temperature Ar3 is calculated by means of the following formula from the contents of the corresponding elements in wt. %: Ar3 = 910 -203√C-30Mn+ 44.7 Si -11Cr+ 31.5 Mo- 15.2Ni (800°C, 910-203√0.120-30*2.50+44.7*0.8) (Table 1 No. 3).
Tosaka is silent to the strip sheet remaining for at least 1 h.
Honda discloses a method for producing a steel strip ([0001]) including box annealing ([0091]) that remains for at least 1 h (1 hour or more and 60 hours or less) ([0099]).
It would have been obvious to one of ordinary skill in the art in the annealing process of Tosaka to remain for 1 hour or more and 60 hours or less to completely recrystallize ferrite while suppressing excessive coarsening of ferrite grains (Honda [0099]).
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 9-17 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 19/166,591 (App ‘591) (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because App ‘591 discloses an overlapping composition (claims 1, 6-7), tensile strength (claims 1, 7), and annealing conditions, including heating rate and cooling rate (claims 1-3).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Related Art
Gospodinova (US 2020/0270713)
Gospodinova discloses batch annealing is performed on a coiled sheet maintained for between 5 and 15 hours ([0039], [0128]-[0130]).
Wang (CN 114107789 with citations from related US 2023/0323500)
Wang discloses a 780 MPa grade steel ([0001], [0031]) composition ([0015]-[0029], [0033]-[0051]) with a microstructure of bainite and nano-scale carbides precipitates in bainitic ferrite ([0032], [0052]). Wang discloses bell type annealing of a coil with a heating rate greater than or equal to 20 °C/hr, annealing temperature of 500 to 650°C with holding for 12 to 48 hours, and a cooling rate of less than or equal to 50 °C/h ([0060]).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANI HILL whose telephone number is (571)272-2523. The examiner can normally be reached Monday, Wednesday-Friday 7am-12pm.
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/STEPHANI HILL/Examiner, Art Unit 1735
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