DETAILED ACTION
Claims 13-15 and 19-20 were rejected in the Office Action mailed 5/18/2026.
Applicants filed a response, amended claims 13-14, and 20, and added new claims 21-22 on 7/29/2026.
Claims 1-22 are pending.
Claims 13-15 and 19-20 are allowed, claims 21-22 are rejected, and claims 1-12 and 16-18 are withdrawn.
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
This application is in condition for allowance except for the presence of claims 1-12 and 16-18 directed to an invention non-elected with traverse in the reply filed on 4/24/2026. Applicant is given TWO (2) MONTHS from the date of this letter to cancel the noted claims or take other appropriate action (37 CFR 1.144). Failure to take action during this period will be treated as authorization to cancel the noted claims by Examiner’s Amendment and pass the case to issue. Extensions of time under 37 CFR 1.136(a) will not be permitted since this application will be passed to issue.
The prosecution of this case is closed except for consideration of the above matter.
It is noted that claims 1-12 and 16-18 are directed to the product claims and cannot be rejoined to the examined method claims.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 21 and 22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 21 introduces the limitation of “C: at least 0.140 wt.%,” however, there is not support in the specification for this range. Specifically, pg. 4, lines 27-37 of the as filed specification describes the appropriate amount of carbon that can be added to the steel strip and states “a maximum level of 0.140 wt.%” of carbon can be included with a lower limit of 0.090 wt.%. The use of “at least” in claim 21, implies that 0.140 wt.% or greater of carbon would be included, however, there is no support for anything above 0.140 wt.%. Additionally, there is not support for including less than 0.090 wt.% carbon, so even if applicants meant to write claim 21 as “C: at most 0.140 wt.%” there wouldn’t be support for this broad of a range.
Applicants can either cancel claim 21 and its depending claim 22 or amend claim 21 to include a narrower range than that disclosed in claim 13. There would be a double patenting issue between claims 13 and 21, if the amount of carbon is amended to 0.090-0.140 wt.% as the two independent claims would be substantially identical. Claim 22 is similarly rejected as it is dependent on claim 21.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 22 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 22 states, the amount of carbon is “at least 0.110 wt.%,” however, this amount is outside the currently claimed range of “at least 0.140 wt.%” of independent claim 21. Claim 22 improperly broadens the range of claim 21. Moreover, if Applicant meant that claim 21 is at most 0.140 wt.% carbon, there would be the additional issue of not including the upper limitation in the range of claim 22, i.e., at least 0.110 wt.% and at most 0.140 wt.% C present. Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
Allowable Subject Matter
Claims 13-15 and 19-20 are allowed.
Upon review of the reference, Chen, and the arguments presented by Applicants in the remarks filed 7/29/2026, the Examiner agrees that Chen teaches away from the recrystallization during the continuous annealing after cold-rolling and that Chen specifically teaches suppressing recrystallization during the heating steps. Therefore, claims 13-15 and 19-20 are allowable over Chen.
Examiner’s Note
The Examiner attempted several times to call the number listed in the remarks (202-467-8848), however, kept getting a message that the line was always busy and the phone would automatically hang up. This action is in response to not being able to get in contact with the attorney to make the amendments via Examiner’s amendment.
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 DANIELLE CARDA whose telephone number is (571)270-1240. The examiner can normally be reached Monday-Friday 8:30-4:00 EST.
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.
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.
/DANIELLE M. CARDA/Primary Examiner, Art Unit 1738
Prosecution Insights