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 and 15) in the reply filed on 05/21/2026 is acknowledged. Claims 8-11 and 14-26 are withdrawn. Claims 1-3 and 15 are examined herein.
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 1-3 and 15 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 1 recites carbon equivalent Ceq in line 12. However, Ceq is not defined in the claim 1. It’s unclear how Ceq is determined. Appropriate correction is required.
Claim 1 recites “SMA1 is a total area ratio of island regions among island regions constituting the hard secondary phase that have a value of 1.0 µm or more for area divided by the maximum Feret diameter” in line 30-32. The meaning of a value of 1.0 µm or more for area divided by the maximum Feret diameter is unclear. The meaning of Feret diameter is not defined. Appropriate correction is defined.
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 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Yokoyama (WO2020/162556, US 2022/0090248 is used as translation; IDS dated 03/12/2025).
Regarding claims 1 and 2, 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] to [0057]), which 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%, fresh martensite: 0-10%, and a reminder being bainite (i.e. bainitic ferrite) ([0058] to [0062]), which overlaps with the instantly claimed phase area ratios. Yokoyama teaches wherein the base steel sheet has a tensile strength of 980 MPa or more ([0200]), which is close to the recited tensile strength in 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). 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). See MPEP §2144.05.
Yokoyama does not explicitly teach that the base steel sheet has a microstructure wherein SBF + STM + 2 x SMA is 10% or more and less than 65.0%, SBF+STM is 3% or more and 60% or less, SMA1/SMA is 0.40 or less, and IDR is 0.16% or more as recited in claim 1. 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. In view of the fact that 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 SBF + STM + 2 x SMA is 10% or more and less than 65.0%, SBF+STM is 3% or more and 60% or less, SMA1/SMA is 0.40 or less, and IDR is 0.16% or more as recited in claim 1. 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.
Regarding claims 3 and 15, Yokoyama discloses that the galvanized layer is a hot-dip galvanized layer ([0186]), which meets the limitation recited in claims 3 and 15.
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 and 15 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 (US 2025/0084501). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 claims 1, 3, and 12 of copending Application No. 18/727,874 teach a steel sheet having composition that meets the recited composition in instant claims 1-3 and 15 and a method of making the steel sheet that is substantially identical to the method of making the steel sheet disclosed in instant Specification, one of ordinary skill in the art would expect that the steel sheet disclosed by claims 1, 3, and 12 of copending Application No. 18/727,874 to meet the recited structure and property 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.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4 and 10-11 of copending Application No. 18/546,428 (US 2024/0124964). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 3-4 and 10-11 of copending Application No. 18/546,428 teach a steel sheet having composition that meets the recited composition in instant claims 1-3 and 15 and a method of making the steel sheet that is substantially identical to the method of making the steel sheet disclosed in instant Specification, one of ordinary skill in the art would expect that the steel sheet disclosed by claims 1, 3-4 and 10-11 of copending Application No. 18/546,428 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.
The Ceq and the tensile strength disclosed in claims 1, 3-4 and 10-11 of copending Application No. 18/546,428 are close to the recited Ceq and tensile strength in claim 1. 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). See MPEP §2144.05.
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
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