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
Applicant’s election without traverse of Group I, in the reply filed on 02 JUNE 2026 is acknowledged.
Claims 7-10 and 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 02 JUNE 2026.
Specification
The disclosure is objected to because of the following informalities: The specification recites kp as mechanical stability as well as “indication for retained austenite stability” based on the references that were used for calculation. The term needs to be clarified and to have a single designation throughout the specification and the claims.
Appropriate correction is required.
Drawings
The drawings are objected to because a) Fig 1 to 4 are missing the labels and units for the axes, and b) Fig 2 to 4 are missing the legends for the . Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 1-2 and 14 are objected to because of the following informalities:
Claim 1: The units for composition (line 2) should not be in parentheses.
Instant claim recites kp as mechanical stability whereas instant specification recites it as both “mechanical stability “ and as “indication for retained austenite stability” based on the references that were used for calculation. The term needs to be clarified and to have a single designation throughout the specification and the claims.
Claims 2, 14: The units for microstructure (line 2) should not be in parentheses.
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 1, 3-6 and 11-14 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.
Regarding claim 1, instant claim is missing the units for retained austenite thereby making it unclear what is needed to satisfy the claim. Claims 3-6 and 11-14 are dependents of claim 1, do not resolve the aforementioned issue and thereby also indefinite.
Regarding claim 3, instant claim is missing the units for the various microstructure phases thereby making it unclear what is needed to satisfy the claim.
Regarding claims 5-6, instant claims are missing the units for the elemental ranges thereby making it unclear what is needed to satisfy the claim. In addition, claim 6 recites a one-sided range of ≥ 0.1 making it unclear whether it includes values beyond the upper limit recited in claim 1.
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.
List 1
Element
Instant Claims
(mass%)
Prior Art US’575
(mass%)
C
0.15 – 0.25
0.15 – 0.25
Si
0.3 – 0.5
0.5 – 1.6
Mn
2.0 – 3.0
2.2 – 3.2
Al
0.5 – 1.0
0.03 – 1.0
Cr
0.005 – 0.5
≥ 0.1
≤ 0.8
Nb
≤ 0.1
≤ 0.01 claim 5
≤ 0.04
Ti
≤ 0.1
0.01 – 0.04
N
≤ 0.05
≤ 0.15
Mo
≤ 0.5
≤ 0.2
B
≤ 0.01
0.001 – 0.010
V
≤ 0.2
≤ 0.04
P
≤ 0.05
≤ 0.05
Ca
≤ 0.05
≤ 0.15
Cu
≤ 0.1
≤ 0.15
Ni
≤ 0.2
≤ 0.15
O
≤ 0.0003
-
H
≤ 0.0020
-
Fe +
impurities
Balance
Balance
Claims 1-3, 5-6 and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/151856 A1 via its US English equivalent US 2022/0112575 A1 of Rehrl (US’575).
Regarding claims 1-3, 5-6 and 11-14, WO 2020/151856 A1 via its US English equivalent US 2022/0112575 A1 of Rehrl (US’575) teaches “[0002] The present invention relates to high strength steel strips and sheets suitable for applications in automobiles. In particular, the invention relates to high ductility high strength complex phase cold rolled steel having a tensile strength of at least 1380 MPa and an excellent formability” 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 shown in the List 1 above. 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.
Regarding the recited microstructural limitations of instant claims 1-3 and 14, the prior art teaches “[0033] The cold rolled steel sheets of the present invention have a microstructure mainly consisting of retained austenite embedded in a matrix of tempered martensite (TM), i.e. the amount of tempered martensite is at least ≥40%, generally ≥50%. The lower limit of TM may be set to 55, 60, 65, 70 or 75%. [0034] The microstructure may also contain up to 40% bainitic ferrite (BF) and up to 20% fresh martensite (FM). The latter may be present in the final microstructure because, depending on its stability, some austenite may transform to martensite during cooling at the end of the overaging step. The amount of FM may be limited to 15, 12, 10, 8 or 5%. [0035] Retained austenite (RA) is a prerequisite for obtaining the desired TRIP effect. The amount of retained austenite should therefore be in the range of 2-20%. The lower limit of retained austenite may be set to 3, 4, 5, 6, 7 or 8%. A preferred range is 5-15%. The amount of retained austenite was measured by means of the saturation magnetization method described in detail in Proc. Int. Conf. on TRIP-aided high strength ferrous alloys (2002), Ghent, Belgium, p. 61-64. [0036] Polygonal ferrite (PF) is not a desired microstructural constituent and is therefore limited to ≤10%, preferably ≤9%, ≤8%, ≤7%, ≤6%, ≤5%, ≤4%, ≤3% or ≤1%. Most preferably, the steel is free from PF.” thereby meeting the instant recited limitations. 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.
It is noted that the prior art does not explicitly teach that its steel has of “a thermal stability θ>0, where θ=68−500×C+4×Mn+60×Al−22×Si, the content of C, Mn, Si, Al in weight %” of instant claim 1. However, as the prior art discloses a composition wherein the claimed ranges of the various elements of the instant alloy overlap or lie inside the ranges of various elements of the alloy of the prior art (see compositional analysis above), the ranges of the formulaic expression of the instant claims would also overlap or lie inside the values of the prior art resulting from the instant formulaic expressions. In addition, it is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art, In re Cooper and Foley 1943 C.D. 357, 553 O.G. 177; 57 USPQ 117, Saklatwalla v. Marburg, 620 O.G. 685, 1949 C.D. 77, and In re Pilling, 403 O.G. 513, 44 F(2) 878, 1931 C.D. 75.
The prior art teaches “[0002] The present invention relates to high strength steel strips and sheets suitable for applications in automobiles. In particular, the invention relates to high ductility high strength complex phase cold rolled steel having a tensile strength of at least 1380 MPa and an excellent formability” thereby meeting the mechanical properties requirements of claim 1.
It is noted that the prior art is silent regarding its alloy having the properties of a) a mechanical stability (kp) 5-35 [claim 1], as recited in the instant claims. 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 [0053]-[0066]; Prior art: [0051]-[0054], examples of hot rolling conditions in [0070]-[0077]}. 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).
Regarding claim 11, the prior art teaches “[0002] The present invention relates to high strength steel strips and sheets suitable for applications in automobiles.” “[0079] The material of the present invention can be widely applied to high strength structural parts in automobiles. The high ductility high strength cold rolled steel strips and sheets of the present invention are particularly well suited for the production of parts having high demands on the local elongation.” Regarding claim 12, it is noted that the prior art is silent regarding the limitation “the structural part is at least one of a front pillar, a center pillar, or a vehicle door frame reinforcement of an automobile”. As the prior art teaches that “[0079] The material of the present invention can be widely applied to high strength structural parts in automobiles. The high ductility high strength cold rolled steel strips and sheets of the present invention are particularly well suited for the production of parts having high demands on the local elongation.”, 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 and make “one of a front pillar, a center pillar, or a vehicle door frame reinforcement of an automobile” as the prior art teaches that its steel can be used in applications in automobiles as well as its applicability to high strength structural parts in automobiles.
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 1-6 and 11-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/269,262 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application teaches a zinc or zinc-alloy coated cold rolled steel strip or sheet with substantially identical composition, microstructure and properties. For those properties that the claims of the reference application is silent of, it is expected that the alloy of the claims of the reference application possesses the properties as claimed in the instant claims since a) the claimed and prior art (claims of the reference application) products are identical or substantially identical in composition and b) the claimed and prior art (claims of the reference application) products are identical or substantially identical in structure.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-6 and 11-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of copending Application No. 18/269,282 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application teaches a zinc or zinc-alloy coated cold rolled steel strip or sheet with substantially identical composition, microstructure and properties. For those properties that the claims of the reference application is silent of, it is expected that the alloy of the claims of the reference application possesses the properties as claimed in the instant claims since a) the claimed and prior art (claims of the reference application) products are identical or substantially identical in composition and b) the claimed and prior art (claims of the reference application) products are identical or substantially identical in structure.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-6 and 11-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 18/269,266 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application teaches a cold rolled steel strip or sheet with substantially identical composition, microstructure and properties. For those properties that the claims of the reference application is silent of, it is expected that the alloy of the claims of the reference application possesses the properties as claimed in the instant claims since a) the claimed and prior art (claims of the reference application) products are identical or substantially identical in composition and b) the claimed and prior art (claims of the reference application) products are identical or substantially identical in structure.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-6 and 11-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/283,961 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application teaches a high strength cold rolled steel sheet with substantially identical composition, microstructure and properties. For those properties that the claims of the reference application is silent of, it is expected that the alloy of the claims of the reference application possesses the properties as claimed in the instant claims since a) the claimed and prior art (claims of the reference application) products are identical or substantially identical in composition and b) the claimed and prior art (claims of the reference application) products are identical or substantially identical in structure.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-2, 4-6 and 11-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18/269,279 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application teaches a high strength cold rolled steel sheet with substantially identical composition, microstructure and properties. For those properties that the claims of the reference application is silent of, it is expected that the alloy of the claims of the reference application possesses the properties as claimed in the instant claims since a) the claimed and prior art (claims of the reference application) products are identical or substantially identical in composition and b) the claimed and prior art (claims of the reference application) products are identical or substantially identical in structure.
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 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
Prosecution Insights