CTNF 18/637,062 CTNF 89168 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claims 1-20 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. 07-34-03 AIA The term “ suitable ” in claim 1 (line 1) is a relative term which renders the claim indefinite. The term “ suitable ” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Appropriate correction is required . 07-34-03 AIA The term “ substantially uniform ” in claim s 7, 10 and 11 is a relative term which renders the claim indefinite. The term “ substantially uniform ” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Appropriate correction is required . Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15 AIA Claim s 1-2, 4, 6-8, 10-11, and 13-16 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Xu (CN116657054) . Regarding claims 1-2, 4 and 6, Xu teaches a steel for hot stamping, comprising 0.2 wt% carbon; 1.3 wt% manganese; 2.5 wt% chromium; 1.5 wt% silicon, 0.25 wt% yttrium, and the balance being iron and impurities (Example 1 and Example 3), which meet the recited composition in claims 1 and 2. [Cr]+[Si]=4.0 wt%, which meets the limitation recited in claim 4. [Cr]/[Si]=1.67, which meets the limitation recited in claim 6. Regarding claims 7-8, 10-11, and 13-15, Xu teaches a steel for hot stamping, comprising 0.2 wt% carbon; 1.3 wt% manganese; 2.5 wt% chromium; 1.5 wt% silicon, 0.25 wt% yttrium, and the balance being iron and impurities (Example 1 and Example 3), which meet the recited composition in claims 7 and 8. [Cr]+[Si]=4.0 wt%, which meets the limitation recited in claim 13. [Cr]/[Si]=1.67, which meets the limitation recited in claims 14-15. Xu discloses that the steel is for making automotive body ([0002]) and the hot-stamped steel has a uniform oxidation thickness of 0.077-0.127 µm ([0059]), which meets the automotive structural part limitation recited in claim 7 and the oxidation thickness limitation recited in claims 7, 10 and 11. Regarding claim 16, Xu does not explicitly disclose that the hot stamped part does not whisker upon spot welding. In view of the fact that Xu teaches a hot stamped part that meets the recited composition and having the recited oxidation thickness in claim 7, one of ordinary skill in the art would expect that the hot-stamped part disclosed by Xu meets the limitation that the part does not whisker upon spot welding as recited in claim 16. “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 . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-23-aia AIA 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. 07-21-aia AIA Claim s 3, 5, 9, 12 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Xu (CN116657054) . Regarding claims 3, 9, 12 and 20, Xu discloses that the steel contains 0.1-0.3 wt. % Y (Claim 1), which overlaps the recited amount of Y in instant claims. 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). See MPEP 2144.05 I. Thus, claims 3, 9, 12 and 20 are obvious over Xu. Regarding 5, Xu teaches a steel for hot stamping, comprising 0.2 wt% carbon; 1.3 wt% manganese; 2.5 wt% chromium; 1.5 wt% silicon, 0.25 wt% yttrium, and the balance being iron and impurities (Example 1 and Example 3). [Cr]/[Si]=1.67, which meets the limitation recited in claim 5. Regarding claim 17, Xu discloses that the steel is for making automotive body by hot stamping ([0002]). It’s well-known to one of ordinary skill in the art that an automotive body comprises pillar, door beam and bumper beam and hot stamping steel is used to make pillar, door beam and bumper beam. Since Xu discloses that the hot stamping steel has excellent strength, ductility and oxidation resistance ([0061] to [0064]), it would be obvious to one of ordinary skill in the art to use the steel disclosed by Xu in making a pillar, door beam or bumper beam by hot stamping in order to make a part having excellent strength, ductility and oxidation resistance as recited in claim 17. Regarding claim 18, Xu does not explicitly disclose that the hot stamped part does not whisker upon spot welding. In view of the fact that Xu teaches a hot stamped part that meets the recited composition and having the recited oxidation thickness in claim 7, one of ordinary skill in the art would expect that the hot-stamped part disclosed by Xu meets the limitation that the part does not whisker upon spot welding as recited in claim 18. “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. Regarding 19, Xu teaches a steel for hot stamping, comprising 0.2 wt% carbon; 1.3 wt% manganese; 2.5 wt% chromium; 1.5 wt% silicon, 0.25 wt% yttrium, and the balance being iron and impurities (Example 1 and Example 3), which meets the limitation recited in claim 19 . Double Patenting 08-33 AIA 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. 08-35 AIA Claim s 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-12 of copending Application No. 18/662339 (US 2025/0346981) . Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-12 of copending Application No. 18/662339 teach the composition limitation recited in the instant claims. In view of the fact that claims 1-12 of copending Application No. 18/662339 teach a steel that meets the recited composition, one of ordinary skill in the art would expect that the hot-stamped part disclosed by claims 1-12 of copending Application No. 18/662339 to meet the recited oxidation thickness that the part does not whisker upon spot welding 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 . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 18/436610 (US 2025/0207233) in view of Xu (CN116657054). Although the claims at issue are not identical, they are not patentably distinct from each other claims 1-16 of copending Application No. 18/436610 teach the composition limitation recited in the instant claims. Claims 1-16 of copending Application No. 18/436610 disclose that the rare earth is Ce not Y as recited in the instant claims. Xu discloses that both Y and Ce have the same effect of suppressing oxidation ([0017]). It would be obvious to one of ordinary skill in the art that replacing the Ce with Y in the steel disclosed by claims 1-16 of copending Application No. 18/436610 would be able to produce a steel having similar oxidation resistance as disclosed by Xu. In view of the fact that claims 1-12 of copending Application No. 18/662339 in view of Xu teach a steel that meets the recited composition and the recited oxidation thickness, one of ordinary skill in the art would expect that the hot-stamped part disclosed by claims 1-16 of copending Application No. 18/436610 to meet the limitation that the part does not whisker upon spot welding as recited in the instant claim 16. “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. 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. 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, Keith Hendricks can be reached at 5712721401. 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. /XIAOWEI SU/Primary Examiner, Art Unit 1733 Application/Control Number: 18/637,062 Page 2 Art Unit: 1733
