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 .
DETAILED ACTION
Claims 1-10 have been cancelled; Claim 29 has been amended; Claims 19-24 are withdrawn from consideration as non-elected claims, Claims 11-18 and 25-30 remain for examination, wherein claim 11 is an independent claim.
Previous Objections/Rejections
Previous rejection of Claim 29 under 35 U.S.C. 102 (a)(1) as being anticipated by Hasegawa et al (US-PG-pub 2015/0203947 A1, thereafter PG’947) has been withdrawn in view of the Applicant's “Argument/Remark with amendment” filed on 06/23/2026.
However, in view of the Applicant’s amendment, newly cited prior art(s), and reconsideration, a new ground rejection has been listed as following.
Claim Rejections - 35 USC § 102
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 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 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 –
(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.
Claims 11-18, 25-28, and 30 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Hayashi et al (US-PG-pub 2019/0330721 A1, thereafter PG’721).
PG’721 is applied to the instant claims 11-18, 25-28, and 30 for the same reason as stated in the previous office action dated 3/26/2026.
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.
Claim(s) 29 is rejected under 35 U.S.C. 103(a) as being unpatentable over PG’721.
Regarding the amended claim 29, the lower bainite amount in the working example #M-1 in table 6 of PG’721 is outside the claimed bainite range of 10-35 area%. However, PG’721 specify that “includes a steel structure represented by, in a volume fraction, tempered martensite and bainite: 70% or more and less than 92% in total, retained austenite: 8% or more and less than 30%, ferrite: less than 10%, fresh martensite: less than 10%, and pearlite: less than 10%. A number density of iron-base carbides in tempered martensite and lower bainite is 1.0×10.sup.6 (pieces/mm.sup.2) or more, and an effective crystal grain diameter of tempered martensite and bainite is 5 μm or less.” (Abstract and claims of PG’721), which overlaps the claimed bainite range. And PG’721 provides examples with lower bainite 11-19 vol% (table 6 of PG’721), which is within the claimed bainite range of 10-35 area%. Overlapping in the lower bainite creates a prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the bainite phase from the disclosure of PG’721 since PG’721 teaches the same steel sheet as claimed throughout whole disclosing range.
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 11-18 and 25-30 are rejected on the ground of nonstatutory obviousness type double patenting as being unpatentable over claims 12-26 of copending application No. 18/683839 (US-PG-pub 2025/0122602 A1) in view of PG’721.
Claims 12-26 of copending application No. 18/683839 (US-PG-pub 2025/0122602 A1) in view of PG’721 is applied to the instant claim claims 11-18 and 25-30 for the same reason as stated in the previous office action dated 3/26/2026.
Claims 11-18 and 25-30 are rejected on the ground of nonstatutory obviousness type double patenting as being unpatentable over claims 7-14 of copending application No. 18/692,925 (US-PG-pub 2024/0384379 A1).
claims 7-14 of copending application No. 18/692,925 (US-PG-pub 2024/0384379 A1) is applied to the instant claim claims 11-18 and 25-30 for the same reason as stated in the previous office action dated 3/26/2026.
This is a provisional obvious-type double patenting rejection since the conflict claims in the copending application have not in fact been patented.
Response to Arguments
Applicant’s arguments to the art rejection to Claims 11-18 and 25-30 have been considered but they are moot in view of the new ground rejection as stated above. Regarding the Applicant’s arguments related to the amended features in the instant claim, the Examiner’s position has been stated as above.
The Applicant’s arguments have been summarized as following:
1, PG’721 does not specify and cannot inherently teach the claimed ratio of Sc≥0.5/Sc≥0.3x100, which directly related to high ductility of the steel sheet.
2, the feature of related to the manufacturing process of the steel sheet. for example, cooling process, residence, cooling rate. PG’721 discloses substant different process annealing conditions as disclosed in the instant application.
3, regarding rejection of Claims 11-18 and 25-30 on the ground of nonstatutory obviousness type double patenting as being unpatentable over claims 12-26 of copending application No. 18/683839 (US-PG-pub 2025/0122602 A1) in view of PG’721, ‘839 does not specify 5-50 lower bainite as claimed in the instant claim 11.
4, Regarding the rejection of Claims 11-18 and 25-30 on the ground of nonstatutory obviousness type double patenting as being unpatentable over claims 7-14 of copending application No. 18/692,925 (US-PG-pub 2024/0384379 A1), ‘925 does not specify the claimed Sc≥0.5/Sc≥0.3x100 as claimed in the instant claims.
In response,
Regarding the argument 1, Firstly, as pointed out in the rejection for the instant Claim 11 in the previous office action dated 3/26/2026 and above, “the claimed Sc≥0.5/Sc≥0.3x100 is recognized as a material feature fully depend on the alloy composition and phase distribution. Since the working example of PG’721 teaches the same alloy composition and phase distribution, the claimed Sc≥0.5/Sc≥0.3x100 would be inherently exist in the alloy of PG’721. MPEP 2112 III&IV. Since PG’721 teaches all limitations as claimed in the instant claim.” Secondly, the “high ductility” is not included in the instant claims and there is no evidence to show the claimed “Sc≥0.5/Sc≥0.3x100”. Proper “132 Declaration” is suggested to indicates the criticality of the claimed Sc≥0.5/Sc≥0.3x100 in rem of ductility of the steel sheet.
Regarding the argument 2, the argued process and parameters are not included in the instant claims. There is no evidence to show the criticality of the argued process and parameters in term of the claimed feature of “Sc≥0.5/Sc≥0.3x100”.
Regarding the argument 3, although ‘839 does not specify 5-50 lower bainite as claimed in the instant claim 11. PG;721 is cited to show the bainite in ‘839 can be lower bainite as claimed. Detail discussion and motivation for combination the prior arts, can refer to the previous office action dated 3/26/2026.
Regarding the argument 4, carbon distribution in the steel is fully depended on the phase distribution in the steel. Claims of ‘925 teaches steel alloy with composition ranges and microstructure phases overlap the claimed limitations as claimed in the instant claims. MPEP 2144 05 I. therefore the claimed Sc≥0.5/Sc≥0.3x100 as claimed in the instant claims would be highly expected in the steel of ‘925. MPEP 2112 01 and 2145 II.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan J Johnson can be reached on 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIE YANG/Primary Examiner, Art Unit 1734
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