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
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02/19/2026 has been entered.
Status of claims
Claims 1-10 have been cancelled; Claims 29 and 30 are added as new claims; Claims 19-24 are withdrawn from consideration as non-elected claims, Claims 11-18 and 25-30 remain for examination, wherein claim 11 is an independent claim.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 Rejections/Objections
Previous rejection of Claims 11-18 and 25-28 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35 U.S.C. 102 (a)(1) as being anticipated by Hasegawa et al (US-PG-pub 2015/0203947 A1, thereafter PG’947) has been withdrawn in view of the Applicant's argument filed on 02/19/2026.
Previous rejection of Claims 11-18 and 25-28 under 35 U.S.C. 103(a) as being unpatentable over PG’947 in view of Kimata et al (US-PG-pub 2019/0040483 A1, listed in IDS filed on 02/15/2024, thereafter PG’483) has been withdrawn in view of the Applicant's argument filed on 02/19/2026.
Previous rejection of Claims 11-18 and 25-28 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as being unpatentable over claims 12-26 of copending application No. 18/683839 (US-PG-pub 2025/0122602 A1) has been withdrawn in view of the Applicant's argument filed on 02/19/2026.
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 and 25-30 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).
Regarding claims 11-14 and 29-30, PG’721 teaches a high-strength steel sheet suitable for an automobile, building materials, home electric appliances, and the like (Abstract, examples, and claims of PG’721) with galvanizing treatment (Par.[0145] and [0155]-[0157] of PG’721), which reads on the claimed steel sheet (cl.11-12, 29-30) and galvanized steel sheet (cl.13-14). The comparison between the claimed alloy composition ranges, microstructures, properties and those disclosed in the working example #M in table 1, #M-1 in table 6, and #M-1 in table 8 of PG’721 has been listed in following table. All of the alloy composition ranges, microstructure, and properties ranges disclosed in the working example #M in table 1, #M-1 in table 6, and #M-1 in table 8 of PG’721 are within the claimed alloy composition ranges. 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 claims, Claims 11-14 and 29-30 are anticipated by PG’721.
Element
From instant Claim 11 and 29 (mass %)
Example #M in table 1 of PG’721 (mass %)
Within range
(mass %)
C
0.06-0.25
0.211
0.211
Si
0.4-2.5
1.49
1.49
Mn
1.5-3.5
2.66
2.66
P
0.02 or less
0.0109
0.0109
S
0.01 or less
0.0025
0.0025
Sol.Al
< 1.0
0.022
0.022
N
< 0.015
0.0025
0.0025
Fe
Balance + impurities
Balance + impurities
Balance + impurities
Area fraction
Example #M-1 in table 6 of PG’721 (area %)
PF
10 or less
2
2
TM
30 or more
71
71
F-M
20 or less
3
3
Lower B
5-50 (cl.11)
5-35 (cl.29)
8
8
RA
5-20
12
12
Sc≥0.5/Sc≥0.3x100
15 or more
Inherently exist
MPEP 2112 III&IV
From instant Claim 12 (mass %)
One or more from Group A-C
Group A:
Ti: 0.1 or less;
B: 0.01 or less;
Group B:
Cu: 1 or less;
Ni: 1 or less;
Cr: 1.0 or less;
Mo: 0.5 or less;
V: 0.5 or less;
Nb: 0.1 or less;
Zr: 0.2 or less;
W: 0.2 or less;
Group C:
Ca: 0.0040 or less;
Ce: 0.0040 or less;
La: 0.0040 or less;
Mg: 0.0030 or less;
Sb: 0.1 or less;
Sn: 0.1 or less;
Nb: 0.031
Nb: 0.031
From claim 30
Example #M-1 in table 8 of PG’721 (area %)
Hole expansion (%)
42
56
56
Regarding claims 15-18 and 25-28, PG’721 teaches that steel sheets for an automobile member with rapidly expanding (par.[0002] of PG’721), which reads on the claimed member (cl.15-18) and method for the members (cl.25-28) as claimed in the instant claims.
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.
Regarding claims 11-18 and 25-30, although the conflicting claims are not identical, they are not patentable distinct from each other because claims 12-26 of copending application No. 18/683839 (US-PG-pub 2025/0122602 A1) teaches a steel sheet with all of the alloy composition ranges, microstructure phases, and carbon distributions overlap the claimed limitations as claimed in the instant claims. 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 alloy composition ranges, microstructure phases, and carbon distributions from the disclosure of claims 12-26 of copending application No. 18/683839 (US-PG-pub 2025/0122602 A1) since copending application No. 18/683839 (US-PG-pub 2025/0122602 A1) teaches the same steel sheet as claimed throughout whole disclosing range. Regarding the lower bainite in the instant claim, PG’721 teaches a high-strength steel sheet suitable for an automobile, building materials, home electric appliances, and the like (Abstract, examples, and claims of PG’721). PG’721 teaches tempered martensite and lower bainite is 1.0×106 (pieces/mm2) or more (Abstract of PG’721) and provides examples with lower bainite amount with ion the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize amount of lower bainite as dem0onstarted by PG’721 for the alloy of claims 12-26 of copending application No. 18/683839 (US-PG-pub 2025/0122602 A1) since both PG’721 and copending application No. 18/683839 (US-PG-pub 2025/0122602 A1) teach the same high strength steel sheet as claimed throughout whole disclosing range.
This is a provisional obvious-type double patenting rejection since the conflict claims in the copending application have not in fact been patented.
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).
Regarding claims 11-18 and 25-30, although the conflicting claims are not identical, they are not patentable distinct from each other because claims 7-14 of copending application No. 18/692,925 (US-PG-pub 2024/0384379 A1) teaches a steel sheet with all of the alloy composition ranges and microstructure phases, overlap the claimed limitations as claimed in the instant claims. 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 alloy composition ranges, and microstructure phases from the disclosure of claims 7-14 of copending application No. 18/692,925 (US-PG-pub 2024/0384379 A1) since claims 7-14 of copending application No. 18/692,925 (US-PG-pub 2024/0384379 A1) teaches the same steel sheet as claimed throughout whole disclosing range. the claimed Sc≥0.5/Sc≥0.3x100 is recognized as a material feature fully depend on the alloy composition and phase distribution, since claims 7-14 of copending application No. 18/692,925 (US-PG-pub 2024/0384379 A1) teaches the similar alloy and microstructures as claimed in the instant claim, the claimed Sc≥0.5/Sc≥0.3x100 would be highly expected in the steel sheet of claims 7-14 of copending application No. 18/692,925 (US-PG-pub 2024/0384379 A1).
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 arguments related to the amended features and ODP rejections, the Examiner’s position has been discussed as above.
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