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 .
Status of Claims
Claims 1-12 are pending and presented for examination on the merits.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
Two (2) information disclosure statement(s) (IDS) were submitted on 02/08/2024 and 02/04/2025. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS are being considered by the examiner.
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 4, 5, 9, and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4, 5, 9, and 10 of copending Application No. 18/681,864 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending claims disclose each limitation recited in the instant claims, including chemical composition and method parameters (temperature, time, and rates).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 1-3, 6-8, 11, and 12 are allowed. Claims 4, 5, 9, and 10 are free from prior art rejections, but are subject to the double patenting rejection as set forth above.
The following is a statement of reasons for the indication of allowable subject matter: The prior art documents reviewed do not disclose the steel sheet as recited in claim 1.
A document of note is US 2021/0017622 (A1) to Haga et al. (“Haga”), which discloses a hot dip galvanized steel sheet comprising C, Si, Mn, P, S, Al, N, Ti, Nb, and B in amounts that overlap or encompass the claimed ranges (para. [0039]-[0083]). The amount of C (carbon) in retained austenite is 0.85% by mass or more (para. [0101]-[0104]). The retained austenite and tempered martensite in the steel are each over 5.0% by volume (para. [0084]-[0100]).
The relative ratio of segregated C (in grain boundary of retained austenite) to segregated P (in grain boundary of retained austenite) is 4.0 or more (para. [0105]-[0108]). The relative ratio of segregated B (in grain boundary of retained austenite) to segregated P (in grain boundary of retained austenite) is 4.0 or more (para. [0111]-[0114]).
Because the retained austenite must exceed 5 vol.%, it follows that the sum of any remaining phase is at most less than 95%, falling outside the claimed range. Thus, a sum of martensitic and bainitic phase cannot be 95% or more. Additionally, there are no teachings regarding the ratio of C at dislocation to C at grain boundary (corresponding to Formula (2) in claim 1). Furthermore, the method of manufacture in Haga differs from the method of manufacture disclosed in the instant specification and in the claims in that Haga carries out a single annealing step (para. [0145]-[0155]), whereas the claimed method is recites a first and second heating at different temperatures with a hold in between. Therefore, Haga does not teach or suggest the steel sheet as claimed or the method of manufacture claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VANESSA T. LUK whose telephone number is (571)270-3587. The examiner can normally be reached Monday-Friday 9:30 AM - 4:30 PM ET.
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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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/VANESSA T. LUK/Primary Examiner, Art Unit 1733
June 26, 2026
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