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 .
This application is a DIV of 16/544,127 08/19/2019 PAT 11993823, 16/544,127 is a CIP of 16/459,757 07/02/2019 PAT 12404564, 16/459,757 is a CON of 15/591,344 05/10/2017 PAT 10385419, 16/544,127 is a CIP of 15/591,344 05/10/2017 PAT 10385419, 15/591,344 has PRO 62/396,602 09/19/2016, 15/591,344 has PRO 62/334,189 05/10/2016.
Detail Action
Applicant elected Species 1 (with traverse); Species 3 (without travers); Species 5 (without travers); and Species 7 (with traverse). Since the Applicant does not specific provide the reason for travers, therefore Claims 1-2, 4-8, 11-16, and 18-21 remain for examination, wherein claim 1 is an independent claim.
Claim Objections
Claims 1 and 13 are objected to because of the following informalities: since claim 1 indicates alloy composition for a steel sheet, a proper “Fe balance” should be added to the ally composition. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 12 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. In the instant case, claim 12 depends on claim 1. However, the claimed up to 2 wt% Si and up to 2 wt% Al is outside the claimed range of 0.8-3 wt% (Si +Al) in the corresponding claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. Since this claim need further amendment/clarification, Claim 12 is not included in the following examination.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1-2, 4-6, 11, 13-16, and 18-21 are rejected under 35 U.S.C. 103(a) as being unpatentable over Kashima et al (US 7090731, corresponding to EP 1365037 A, listed in IDS filed on 7/31/2024, thereafter US’731) in view of Kawasaki et al (WO2016067625 A1, corresponding to US-PG-pub 2017/0314091 A1, listed in IDS filed on 7/31/2024, thereafter PG’091).
Regarding claims 1, 4, 13, 15, and 18-20, US’731 teaches a manufacturing process for a high strength steel sheet having excellent formability (Abstract, examples, and claims of US’731) through a hot rolling process and a continuous annealing process (Examples, claims 10-29, and Col.4, lns.5-16 of US’731), which reads on the claimed manufacturing process with hot rolling and thermal cycle step for a high strength steel sheet as recited in the instant claim 1. The comparison between alloy composition (cl.1 and 13), the process parameters (cl.4); microstructures (cl.15,18), properties (cl.1, 19-20) and those disclosed by the steel #3 in table 4 of US’731 is listed in following table. All of the alloy composition ranges disclosed by the steel #3 in table 4 of US’731 are within the claimed alloy composition ranges of claim 1. US’731 teaches all of the essential annealing conditions as recited in the instant claims. US’731 does not specify the aspect ratio less than 3.0:1 (cl.1) or 2:1 (cl.15) of the retained austenite grain in the steel. PG’091 teaches a high strength rolled steel sheet (Title, abstract, and claims of PG’091) with all disclosed alloy composition ranges (par.[0043]-[0078), examples and claims of PG’091) overlap the claimed alloy composition ranges. MPEP 2144 05 I. PG’091 provide4s examples with TSxTE over 25,000 MPa% (table 4 of PG’091). PG’091 specify including the retained austenite each have a mean grain aspect ratio of 2.0 or less (Abstract, claims, examples, and par.[0024] of PG’091), which reads on the claimed aspect ratio as claimed in the instant claims 1 and 15. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the mean grain aspect ratio of the retained austenite as demonstrated by PG’091 for the steel sheet of US’731 since both of US’731 and PG’091 teach the same high strength rolled steel sheet throughout whole disclosing range and PG’091 specify proper aspect ratio leads to improvement of the steel’s ductility (par.[0166] of PG’091).
Element
From instant Claims 1, 4, 13, 15, and 18-20 (in mass%)
#3 in table 4 of US’731 (in mass%),
within range
(in mass%)
C
0.12-0.5 (cl.1)
0.15-0.4 (cl.13)
0.41
0.41 (cl.1)
Close to up limit of 0.4 (cl.13)
Mn
1-3 (cl.1)
1.3-2.5 (cl.13)
1.5
1.5
Si and Al
0.8-3 (cl.1)
Si: 0.2-1.8; Al up to 1.5
Si: 1.5
Al: 0.03
Si: 1.53 (cl.1)
Si: 1.5; Al: 0.03 (cl.13)
Ti
Up to 0.03
Not intended added
0-impurity level
Nb
Up to 0.03
Not intended added
0-impurity level
Fe
Balance
Balance
Balance
First annealing structure
Predominantly M
TM after the fist continuous annealing (Col.5, lns.62-67 of US’731)
Reads on
Second step of soaking T
720-850oC (cl.1, 4)
800oC (Table 7 of US’731)
800oC
Holding T
360-445oC (cl.1)
370-440oC (cl.4)
400oC (Table 7 of US’731)
400oC
Phases
Ferrite and retained austenite (cl.1)
F: 50% or more (cl.15)
5-25% (cl.15)
Fresh M 15% or less (cl.18)
F: 84
12
FM: 0
(table 6 of US’731)
F: 84
12
FM: 0
Aspect ratio of austenite size
3:1 or less
2:1 or less (PG’091)
2:1 or less
UTS.TE
25,000 MPa% (cl.1)
TS: 720-1100 MPa (cl.19)
EL: 20% or more (cl.19)
TS: 788 MPa
EL: 37%
29,156 MPa%
TS: 788 MPa
EL: 37%
Claim 20
Hole expansion ratio
20% or more (cl.16)
41%
41%
Regarding claim 2, US’731 teaches annealing at T1 temperature (preferably 1300oC or less) (Fig.9-10 and Col.31, lns.1-10 of US’731), which overlap the claimed first annealing temperature range od above 820oC as recited in the instant claim. overlapping in temperature range creates a prima facie case of obviousness. MPEP 2144 05 I. It would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the annealing temperature in the process manufacturing the alloy from the disclosure of US’731 since US’731 teaches the same utility throughout whole disclosing range.
Regarding claim 5, US’371 specify colling after first annealing to T2 (Fig.9-10 and the examples in table 8 of US’731), which is within the claimed cooling temperature range as claimed in the instant claim.
Regarding claim 6, US’731 specify a step of cooling the steel sheet to a temperature of not lower than 300oC and not higher than 480oC (cl.25 of US’731), which reads on the claimed limitation.
Regarding claims 11 and 21, US’371 specify applying Zn plating including electrolysis plating in the process (Col.19, lns.20-50 of US’731), which reads on the claimed limitation as claimed in the instant claims.
Regarding claim 16, PG’091 specify the retained austenite have a mean grain size of 6 μm or less, 3 μm or less, and 3 μm or less (Abstract and claims of PG’091), which is within the claimed grain size as claimed in the instant claim
Claims 7-8 are rejected under 35 U.S.C. 103(a) as being unpatentable over US’731 in view of PG’091 and further in view of Ando Yutaka et al (JP 2003-201595 A, with on-line translation, thereafter JP’595).
Regarding alims 7-8, US’371 specify applying first and second continuous annealing process during the process (Col.21, lns.26-67 of US’731). US’371 does not specify the continuous annealing line as claimed in the instant claims. However, applying a continuous annealing line to perform the annealing is a well-known technique as demonstrated by JP’595. JP’595 teaches a manufacturing process for steel sheet (Figs, Abstract and claims of JP’595). JP’595 indicates performing continuous annealing steps on continuous annealing line (Figs.1-2 of JP’595). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to apply the well-known technique, that is applying an annealing line, as demonstrated by JP’595 in the process of US’731 in view of PG’091 in order to obtain the desired continuous annealing. (Figs, Abstract and claims of JP’595).
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-2, 4-8, 11, 13-16, and 18-21 are rejected on the ground of nonstatutory obviousness type double patenting as being unpatentable over claims 1-26 of copending application No. 15/591,344 (US 10.385,419 B2, listed in IDS filed on 7/31/2024).
Regarding claims 1-2, 4-8, 11, 13-16, and 18-21, although the conflicting claims are not identical, they are not patentable distinct from each other because claims 1-26 of copending application No. 15/591,344 (US 10.385,419 B2) teaches all of the essential manufacturing process steps as recited in the instant claims. The 27,000 UTSxTE value, predominantly martensite microstructure, ferrite + austenite phases, and zinc-based coating disclosed by claims 1-26 of copending application No. 15/591,344 (US 10.385,419 B2) reads on the claimed limitations as recited in the instant claims. Thus, no patentable distinction was found in the instant claims compared with claims 1-26 of co-pending application No. 15/591,344 (US 10.385,419 B2).
Claims 1-2, 4-8, 11, 13-16, and 18-21 are rejected on the ground of nonstatutory obviousness type double patenting as being unpatentable over claims 1-17 of copending application No. 16/868286 (US 11,560,606 B2, which is listed in IDS filed on 7/31/2024).
Regarding claims 1-2, 4-8, 11, 13-16, and 18-21, although the conflicting claims are not identical, they are not patentable distinct from each other because claims 1-17 of co-pending application No. 16/868286 (US 11,560,606 B2) teaches all of the similar essential manufacturing process steps. The 25,000 UTSxTE value, predominantly martensite microstructure, ferrite + austenite phases, and zinc-based coating disclosed by claims 1-17 of co-pending application No. 16/868286 (US 11,560,606 B2) reads on the claimed limitations as recited in the instant claims. Thus, no patentable distinction was found in the instant claims compared with claims 1-17 of co-pending application No. 16/868286 (US 11,560,606 B2).
Claims 1-2, 4-8, 11, 13-16, and 18-21 are rejected on the ground of nonstatutory obviousness type double patenting as being unpatentable over claims 1-24 of copending application No. 16/459,757 (US 12,404,564 B2).
Regarding claims 1-2, 4-8, 11, 13-16, and 18-21, although the conflicting claims are not identical, they are not patentable distinct from each other because claims 1-24 of co-pending application No. 16/459,757 (US 12,404,564 B2) teaches all of the similar manufacturing process steps. The 27,000 UTSxTE value, predominantly martensite microstructure, ferrite + austenite phases, and zinc-based coating disclosed claims 1-24 of co-pending application No. 16/459,757 (US 12,404,564 B2) reads on the claimed limitations as recited in the instant claims. Thus, no patentable distinction was found in the instant claims compared with claims 1-24 of co-pending application No. 16/459,757 (US 12,404,564 B2).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIE YANG whose telephone number is (571)270-1884. The examiner can normally be reached on IFP.
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/JIE YANG/Primary Examiner, Art Unit 1734