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 .
Election/Restrictions
Applicant’s election without traverse of Group I: claims 19-27 in the reply filed on 7/2/2026 is acknowledged.
Claims 28-40 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/2/2026.
Claim Objections
Claim 24 is objected to because of the following informalities:
In line 3, “balanced aluminum” should read –a balance of aluminum–.
In the last line, “balanced aluminum” should read –a balance of aluminum–.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
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.
Claim(s) 19-22 and 25-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takashima et al. (US 2020/0131597), hereinafter “Takashima.”
Regarding claims 19-21, Takashima teaches steel sheet for hot pressing (i.e., a flat steel product for hot forming), the steel sheet, which reads on a steel substrate, comprising, by mass%, C: 0.28-0.42%, Si: 1.5% or less, Mn: 1.0-2.4%, Al: 0.01-0.50%, Nb: 0.005-0.15%, Ti: 0.005-0.15%, B: 0.0005-0.0050%, P: 0.05% or less, S: 0.005% or less, N: 0.005% or less, Sn: 0.50% or less, Cr: 0.50% or less, Cu: 0.50% or less, Mo: 0.50% or less, Ni: 0.50% or less, V: 0.15% or less, Ca: 0.005% or less, W: 0.10% or less, and a balance of Fe and inevitable impurities ([0021]-[0022]), which overlaps with the instantly claimed chemical composition ranges. In the case where the claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP §2144.05.
Note that the limitation “for hot forming” is an intended use limitation. “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.” See MPEP §2111.02 (II). Nonetheless, Takashima teaches a steel sheet for hot pressing ([0021]), which reads on hot forming.
As to claim 22, Takashima teaches wherein the steel sheet comprises on a surface thereof an Al or Al alloy coating to prevent oxidation and improve corrosion resistance ([0023], [0097]).
With respect to claim 25, Takashima teaches does not explicitly teach wherein its steel sheet comprises one or more of the following properties: a yield point with a continuous progression (Rp0.2) or a yield point with a difference (ΔRe) between an upper yield point limit (ReH) and a lower yield point limit (ReL) of not more than 45 MPa, a uniform elongation Ag of at least 10%, and an elongation at break A80 of at least 15% or at least 20%. However, Takashima teaches a steel sheet having a substantially similar composition, as discussed above regarding claims 19-21. Thus, one of ordinary skill in the art would expect the steel sheet of Takashima to have one or more of the claimed properties. In the case where “the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” See MPEP §2112.01.
Regarding claim 26, Takashima teaches wherein the steel sheet further comprises fine Nb-based and Ti-based precipitates, wherein the Nb-based and Ti-based precipitates may be Nb carbonitrides and Ti carbonitrides ([0034]-[0035]).
Regarding claim 27, Takashima teaches wherein the fine precipitates may be round and have a diameter of <0.10µm (<100nm) ([0163], Table 4), which overlaps with the instantly claimed diameter. In the case where the claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP §2144.05.
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takashima (US 2020/0131597) as applied to claims 19 and 22 above, and further in view of Allely et al. (Allely, Christian, et al. "Anticorrosion mechanisms of aluminized steel for hot stamping." Surface and Coatings Technology 238 (2014): 188-196.), hereinafter “Allely.”
Regarding claim 23, Takashima discloses an anticorrosion coating of aluminum or aluminum-based alloy ([0023], [0097]), as detailed above regarding claim 22, but fails to teach wherein the anticorrosion coating is an aluminum-based anticorrosion coating and comprises an alloy layer and an Al base layer.
However, Allely teaches coating steel material with Usibor® AlSi such that a multilayer structure would be formed on the steel with a diffusion zone with 8% Al and 3% Si, an Fe rich zone with 26% Al and 10% Si on top of the diffusion zone and an Al rich zone on top of that with 52% Al and 2% Si in order to provide corrosion protection such that there is a combination of sacrificial protection by an active metal and a barrier protection by a suitable corrosion product (page 188 right column to page 189, left column and Figure 2).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the aluminum or aluminum alloy anticorrosion coating of Takashima by coating the steel material with Usibor® AlSi such that a multilayer structure would be formed on the steel with a diffusion zone with 8% Al and 3% Si, an Fe rich zone with 26% Al and 10% Si on top of the diffusion zone and an Al rich zone on top of that with 52% Al and 2% Si, as disclosed by Allely, in order to provide corrosion protection such that there is a combination of sacrificial protection by an active metal and a barrier protection by a suitable corrosion product, as disclosed by Allely (p. 188 right column to p. 189, left column, Fig. 2).
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 19-26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18-29 of copending Application No. 18/684,765 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application disclose a flat steel product with the same or overlapping chemical composition, microstructure, and properties.
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 ANTHONY M LIANG whose telephone number is (571)272-0483. The examiner can normally be reached M-F: 9:00am-5:00pm.
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/ANTHONY M LIANG/Primary Examiner, Art Unit 1734
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