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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement filed 04/25/2026 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
The information disclosure statement filed 04/25/2026 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because it fails to provide in either the instant application or the parent application the foreign patent documents numbered 11-18, 23, 25, 27, and 28 and the non-patent literature documents numbered 2-6 and 8. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
Drawings
The drawings were received on 06/26/2024. These drawings are accepted.
Specification
The disclosure is objected to because of the following informalities: the status of application 17/787,174 needs to be updated.
Appropriate correction is required.
Status of Claims
Claims 1-19 are canceled and Claims 20-25 are new.
Claim Interpretation
Claims 20 and 22 recite “mpm” as a speed. For purposes of examination, “mpm” is being interpreted as “meters per minute.”
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 21-25 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 20 recites seven separate steps. However, the coiling (third), pickling (fourth), and cold-rolling (fifth) steps all refer to treating the hot-rolled steel sheet. It is not clear how those three steps can all apply to the hot-rolled steel sheet, and it is also unclear what the sequence of steps are intended to be.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition to put one reasonably skilled in the art on notice that the applicant intended to redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “mpm” in claim 20 is used by the claim to mean a speed or meters per minute. The term is indefinite because the specification does not clearly redefine the term.
Claims dependent on any of the rejected claims are likewise rejected under this statute.
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.
Claims 20, 21 and 23-25 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al (US 2018/0371570 A1) in view of EP 3 508 600 B1 and JP H05-170744, based on the machine translation.
Kim et al teaches a method for making a high-strength hot-dip galvanized steel sheet (abstract) by heating a steel slab to 1100-1300 °C [0075], hot rolling [0076], coiling at 400-700 °C [0079], pickling [0084], cold rolling may be 60% [0085], recrystallization annealing at 700-980 °C with a dew point of -20 °C to 5 °C [0098], and hot-dip galvanizing [0112]. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists because the prior art discloses the utility of the composition over the entire disclosed range. See MPEP § 2144.05. However, Kim et al does not teach the hot rolling temperature or pickling sheet-passing speed as claimed.
Regarding the hot rolling temperature, EP 3 508 600 B1 (EP ‘600) teaches producing a steel plate by heating at 1100-1300 °C, hot rolled at a finisher delivery temperature of 800-1000 °C, coiling at 300-700 °C, pickling, cold rolling at a reduction of 30% or more, annealing treatments [0064], and hot-dip galvanizing [0100]. Cold rolling is 30-80% [0083]. EP ‘600 teaches overlapping ranges for the start temperature and end temperature. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the hot rolling temperature to have the temperature range in Kim et al as taught by EP ‘600, since EP ‘600 teaches hot rolling with a finisher delivery temperature of 800-1000 °C decreases the generation of oxide scales, avoids grain size coarsening [0071] and avoids increase in rolling load and burden and abnormal texture [0072].
Regarding the pickling sheet-passing speed, JP H05-170774 (JP ‘774) teaches preventing the occurrence of pinhole flaws on the surface of a steel sheet in a scale removing operation by pickling the steel sheet (abstract) after hot rolling [0002]. The pickling solution was passed through the pickling solution at a temperature of 80 to 200 m/min for continuous pickling [0012]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the pass rate through the pickling solution in Kim et al would have the rate taught by JP ‘774, since JP ‘774 teaches it is possible to prevent the occurrence of pinhole flaws on the surface of the steel sheet in the continuous pickling treatment. It is not necessary to carry out treatment such as diversion, and the product yield is improved accordingly [0014].
Regarding Claim 21, Kim et al teaches recrystallization annealing is in a gas atmosphere with 7-70% H2 and N2 with a dew point [0099], which reads on a “wet nitrogen gas atmosphere.”
Regarding Claim 23, Kim et al teaches a cooling rate of 5-100 °C/s [0109] to a temperature range of 200-400 °C [0108].
Regarding Claim 24, Kim et al teaches the cooling process may be performed step by step through primary and secondary cooling processes, and the cooling rate in the secondary cooling process may be greater than the cooling rate in the primary cooling process [0109], which reads on the claimed range.
Regarding Claim 25, EP ‘600 teaches an alloying treatment in a temperature range of 470-600 °C [0100].
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Kim et al in view of EP ‘600 in view of JP ‘774 as applied to claim 20 above, and further in view of CA 3033685 A1.
Kim et al in view of EP ‘600 in view of JP ‘774 discloses the invention substantially as claimed. However, Kim et al in view of EP ‘600 in view of JP ‘774 does not teach the sheet-passing speed as recited in Claim 22.
CA 3033685 A1 (CA ‘685) teaches forming flat steel products by hot rolling a steel slab, coiling, pickling, cold-rolling, and recrystallization (page 6). Recrystallization annealing can take place in a through-feed process at an annealing temperature of 650-870 °C with a throughput speed of 70-180 m/min with a dew point of the annealing atmosphere of -50 °C to 15 °C (page 30). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the sheet-passing speed during recrystallization annealing in Kim et al in view of EP ‘600 in view of JP ‘774 to have the range taught by CA ‘685, since CA ‘685 teaches preventing the increase in the long waviness of unpainted components or sheets, as the height differences in waves that are visible to the naked eye value, during forming (pages 1 and 29)
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 20-22 and 25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12,630,896 B2 in view of EP ‘600. US ‘896 does not claim the heating or hot rolling temperatures as recited in instant Claim 1. EP ‘600 is applied as discussed above. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to heat the slab to 1100-1300 °C, since EP ‘600 teaches that melting precipitates avoids an increased risk of trouble during hot rolling resulting from an increased rolling load and decreased ductility and stretch flangeability. It is also necessary to scale-off defects in the surface layer of the slag to achieve a smooth steel sheet surface [0069]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to hot roll with a finisher delivery temperature of 800-1000 °C, since EP ‘600 teaches decreasing the generation of oxide scales, avoiding grain size coarsening [0071] and avoiding increase in rolling load and burden and abnormal texture [0072].
Claims 20-22 and 25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12,486,553 B2 in view of EP ‘600. US ‘553 does not claim the hot rolling degree as in instant Claim 1. EP ‘600 is applied as discussed above. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to heat the slab to 1100-1300 °C, since EP ‘600 teaches that melting precipitates avoids an increased risk of trouble during hot rolling resulting from an increased rolling load and decreased ductility and stretch flangeability. It is also necessary to scale-off defects in the surface layer of the slag to achieve a smooth steel sheet surface [0069].
Claims 20 and 25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7-10 of U.S. Patent No. 12,344,923 B2 in view of EP ‘600. EP ‘600 is applied as discussed above. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to achieve the cold rolling degree in the instant invention as taught by EP ‘600, since EP ‘600 teaches if the rolling reduction in the cold rolling is less than 30%, the number of grain boundaries that act as nuclei for reverse transformation to austenite and the total number of dislocations per unit area decrease during the subsequent annealing, making it difficult to obtain the above-described resulting microstructure. In addition, if the microstructure becomes non-uniform, the ductility and in-plane anisotropy of the steel sheet decrease [0083].
Claims 20-22 and 25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 19/261,872 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claims an overlapping temperature for heating the slab. However, one carrying out the method in accord with the claims in Application ‘872 claims would in fact carry out the method fully within the scope of the instant claims. Thus, no patentable distinction is seen between the method as presently claimed and the method as defined in the claims of Application ‘872.
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 Tima M. McGuthry-Banks whose telephone number is (571)272-2744. The examiner can normally be reached Monday through Friday, 7:30 am to 4:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith D. Hendricks can be reached at (571) 272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Tima M. McGuthry-Banks
Primary Examiner
Art Unit 1733
/Tima M. McGuthry-Banks/Primary Examiner, Art Unit 1733
Prosecution Insights