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
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d).
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/18/2024, 10/15/2024, and 09/08/2026 are being considered by the examiner.
Election/Restrictions
Applicant’s election without traverse of Group I: claim 1-4 in the reply filed on 07/14/2026 is acknowledged.
Claims 11-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II drawn to a method of manufacturing a steel sheet from a steel slab having a chemical composition of claim 7, and Group III drawn to a method of manufacturing a member using a steel sheet of claim 7, there being no allowable generic or linking claim.
Claim 7 is directed to an allowable product. Pursuant to the procedures set forth in MPEP § 821.04(B), claim 13-14 directed to the process of making or using an allowable product, and previously restricted from consideration as a result of a restriction requirement, are hereby rejoined and fully examined for patentability under 37 CFR 1.104.
Therefore, claims 7-10 and 13-24 are currently under examination on the merits in this office action.
Claim Rejections - 35 USC § 112 (b)
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 9-10 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.
Claims 9 and 10 recite a member obtained using the steel sheet described in claim 7 and claim 8, respectively. However, claims 9 and 10 do not recite how the steel sheet is being processed to make the member using the steel sheet and it’s unclear how the method of making the member affects the microstructure of the steel sheet as recited in claims 7 and 8. For examination of claims 9 and 10, the structure limitations recited in claims 7 and 8 have not been given patentable weight.
Appropriate correction is required.
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 (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 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 9 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoshihiko Ono et.al. [US20200157647A1] (Ono hereafter).
Regarding claims 9 and 10, Ono teaches a steel sheet containing 0.228 wt.%. C, 1.38 wt.% Si, 2.72 wt. % Mn, 0.005 wt.% P, 0.0009 wt. % S, 0.0025 wt. % N, 0.035 wt. % Al, o.o12 wt.% Nb, 0.005 wt.% Ti, 0.0018 wt.% B, 0.0005 wt.% Ca (Abstract; Table 1, Steel No. D), which meets the composition limitation recited in claims 7 and 8. Ono discloses that the steel sheet is used to make a member by press-forming ([0002]), which meets the limitations recited in claim 9 and 10. Since claims 9 and 10 do not recite how the steel sheet is being processed to make the member and it’s unclear how the method of using changes the steel structure recited in claims 7 and 8, the structure limitations recited in claims 7 and 8 are not given patentable weight.
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 7-10 and 13-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7-10 and 13-14 of copending Application No. 18/692,925 [US20240384379].
Although the claims at issue are not identical, they are not patentably distinct from each other because over claims 7-10 and 13-14 of copending Application No. 18/692,925 recite a steel sheet having composition and phase ratio that overlap the recited composition and microstructure phase ratio in the instant claims. Claims 7-10 and 13-14 of copending Application No. 18/692,925 disclose that the ratio of the total number of fresh martensite grains and retained austenite grains having an equivalent circular diameter of less than 0.8 µm is 50% or more relative to the number of all fresh martensite grains and all retained austenite grains, and the ratio of fresh martensite grains and retained austenite grains having an aspect ratio of 2.5 or more and an equivalent circular diameter of 0.8 µm or more is 30% or more relative to the number of fresh martensite grains and retained austenite grains having an equivalent circular diameter of 0.8 µm or more, which are within the recited ratios in the instant claim 7. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05 I. Thus, claims 7-10 and 13-14 are obvious over claims 7-10 and 13-14 of copending Application No. 18/692,925.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 7-8 and 13-14 are allowed.
The following is an examiner’s statement of reasons for allowance:
Regarding claim 7, the closest prior art Yoshihiko Ono et.al. [US20200157647A1] (Ono hereafter) discloses a steel sheet having a chemical composition comprising, in mass% (a steel sheet having a particular component composition and a particular steel microstructure, see Ono’s [0052]) and claimed composition have been shown in following table, Table 1.
Table: 1
Element
Instant claim 7 (wt.%)
Ono’s composition (wt.%)
Within/Overlaps with claimed range
C
0.06 to 0.24
0.06 to 0.25 (see Ono’s [0054])
overlaps
Si
0.4 or more and less than 1.6
0.6 to 2.5 (see Ono’s [0056])
overlaps
Mn
1.5 to 3.2
2.3 to 3.5 (see Ono’s [0058])
overlaps
Si/Mn
<0.5
0.26 to 1.08 (calculated)
overlaps
P
0.02 or less
0.02 or less (see Ono’s [0060])
within
S
0.01 or less
0.01 or less (see Ono’s [0062])
within
Sol. Al
Less than 1.0
Less than 0.5 (see Ono’s [0064])
within
N
Less than 0.015
Less than 0.015 (see Ono’s [0066])
within
Fe and inevitable impurities
Balance
Balance (see Ono’s [0101])
overlaps
Microstructure of the steel sheet
polygonal ferrite
20% or more and 85% or less
6 to 80 % (see Ono’s [0103]-[0104]
overlaps
Upper bainite
9% or more and 45% or less
3 to 20 % (see Ono’s [0106])
overlaps
Retained austenite
3% or more and 15% or less
7 to 20 % (see Ono’s [0107])
overlaps
Fresh martensite
3% or more and 15% or less
3% or Less (Including 0%) (see Ono’s [0112])
overlaps
tempered martensite and lower bainite
50% or less (including 0%)
tempered martensite: 5 to 80 %,
lower bainite: 0 to 50 % (see Ono’s [0106])
overlaps
Remaining microstructure balance
5% or less
Balance (see Ono’s [0106])
overlaps
Ono’s disclosed composition including all elements as well as microstructure for all the phases of the steel sheet overlaps with the range as recited in the instant claims.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have selected and produced a composition from the teachings of Ono that falls within the instantly-claimed ranges, because “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)” [See MPEP § 2144.05.I].
Ono further discloses either fresh martensite having an equivalent circle diameter of 1.5 to 15 µm and an aspect ratio of 3 or less or retained austenite particles having an equivalent circle diameter of 1.5 to 15 µm and an aspect ratio 3 or less are contained, the area ratio of either one contained is regarded as the total area ratio (see Ono’s [0113]). The ratio (NMA/Np) of total number (NMA) of fresh martensite having an aspect ratio of 3 or less and equivalent circle diameter of 0.15 to 1.9 µm and/or retained austenite particles having an aspect ratio of 3 or less and equivalent circle diameter of 0.15 to 1.9 µm, where fresh martensite and retained austenite particles are distributed inside polygonal ferrite, to total number (Np) of polygonal ferrite grains: 0.3 or less (see Ono’s [0114]).
However, Ono does not disclose that “the ratio of the total number of fresh martensite grains and retained austenite grains having an equivalent circular diameter of less than 1.2 µm is 50% or more relative to the number of all fresh martensite grains and all retained austenite grains, and the ratio of fresh martensite grains and retained austenite grains having an aspect ratio of 2.5 or more and an equivalent circular diameter of 1.2 µm or more is 30% or more relative to the number of fresh martensite grains and retained austenite grains having an equivalent circular diameter of 1.2 µm or more”.
Another closest prior art, Hiroyuki Kawata, et.al. [US11035021B2] (Kawata hereafter) discloses a steel sheet having a chemical composition comprising, in mass% (a high-strength steel sheet including a chemical composition, see Kawata’s Col. 2, line 60-67) and claimed composition have been shown in the above table, Table 2.
Table: 2
Element
Instant claim 7 (wt.%)
Kawata's composition (wt.%)
Within/Overlaps with claimed range
C
0.06 to 0.24
0.075 to 0.4 (see Kawata’s Col. 2, line 60-67)
overlaps
Si
0.4 or more and less than 1.6
0.01 to 2.5 (see Kawata’s Col. 2, line 60-67)
overlaps
Mn
1.5 to 3.2
0.5 to 3.5 (see Kawata’s Col. 2, line 60-67)
overlaps
Si/Mn
<0.5
0.02 to 5 (calculated)
overlaps
P
0.02 or less
0.1 or less (see Kawata’s Col. 2, line 60-67)
overlaps
S
0.01 or less
0.01 or less (see Kawata’s Col. 2, line 60-67)
within
Sol. Al
Less than 1.0
2.0 or less (see Kawata’s Col. 2, line 60-67)
overlaps
N
Less than 0.015
0.01 or less(see Kawata’s Col. 3, line 1)
within
Fe and inevitable impurities
Balance
Balance (see Kawata’s Col. 3, line 15-16)
overlaps
Microstructure of the steel sheet
polygonal ferrite
20% or more and 85% or less
Soft ferrite: 85 % or less (see Kawata’s Col. 3, line 21-27)
overlaps
Upper bainite
9% or more and 45% or less
Bainite: 3% or more and 95% or less (see Kawata’s Col. 3, line 21-27)
overlaps
Retained austenite
3% or more and 15% or less
1 % or more and 25% or less, (see Kawata’s Col. 3, line 21-27)
overlaps
Fresh martensite
3% or more and 15% or less
5% or less (see Kawata’s Col. 3, line 21-27)
overlaps
tempered martensite and lower bainite
50% or less (including 0%)
1 % or more and 80% or less (see Kawata’s Col. 3, line 21-27)
overlaps
Remaining microstructure balance
5% or less
pearlite and coarse cementite: 5% or less (see Kawata’s Col. 3, line 21-27)
overlaps
Kawata’s disclosed composition including all elements as well as microstructure of the steel sheet except the fresh martensite overlaps with the range as recited in the instant claims.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have selected and produced a composition from the teachings of Kawata that falls within the instantly-claimed ranges, because “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)” [See MPEP § 2144.05.I].
Kawata teaches the retained austenite is bound by the hard tempered martensite or the fresh martensite, and on the retained austenite side, a high strain is caused with deformation, and the retained austenite is transformed into martensite easily. When to all grain boundaries of the retained austenite grains having an aspect ratio of 2.50 or less and a circle-equivalent diameter of 0.80 μm or more, the proportion of interfaces with the tempered martensite or the fresh martensite, namely the proportion of portions in contact with the tempered martensite or the fresh martensite is greater than 75%, the destruction caused by destruction of the interface is prominent. Thus, this proportion is 75% or less, to suppress the destruction starting from the above-described retained austenite grains and increase the impact resistance and to obtain more excellent impact resistance, this proportion is preferably 60% or less, more preferably 40% or less. From this view, the density of the retained austenite grains having an aspect ratio of 2.50 or less and a circle-equivalent diameter of 0.80 µm or more is preferably 5.0 x 1010 piece/m2 or less and more preferably 3.0x 1010 piece/m2 or less. (see Kawata’s Col. 10, line 27-60). But Kawata does not teach
But Kawata does not disclose that “the ratio of the total number of fresh martensite grains and retained austenite grains having an equivalent circular diameter of less than 1.2 µm is 50% or more relative to the number of all fresh martensite grains and all retained austenite grains, and the ratio of fresh martensite grains and retained austenite grains having an aspect ratio of 2.5 or more and an equivalent circular diameter of 1.2 µm or more is 30% or more relative to the number of fresh martensite grains and retained austenite grains having an equivalent circular diameter of 1.2 µm or more”.
Yet another closest prior art, Yoshiyasu Kawasaki, et.al. [US10662495B2] (Kawasaki hereafter) discloses a steel sheet having a chemical composition comprising, in mass% (a high-strength steel sheet which is excellent in workability and composition, see Kawasaki’s col. 3, line 30-35) and claimed composition have been shown in the above table, Table 3.
Table: 3
Element
Instant claim 7 (wt.%)
Kawasaki's composition (wt.%)
Within/Overlaps with claimed range
C
0.06 to 0.24
0.08 to 0.35 (see Kawasaki’s col. 6)
overlaps
Si
0.4 or more and less than 1.6
0.5 to 2.5 (see Kawasaki’s col. 6)
overlaps
Mn
1.5 to 3.2
1.5 to 3.0 (see Kawasaki’s col. 6)
overlaps
Si/Mn
<0.5
0.33 to 1.67 (calculated)
overlaps
P
0.02 or less
0.001 to 0.05 (see Kawasaki’s col. 7)
overlaps
S
0.01 or less
0.0001 to 0.005 (see Kawasaki’s col. 7)
within
Sol. Al
Less than 1.0
0.01 to 1.0 (see Kawasaki’s col. 7)
within
N
Less than 0.015
0.0005 to 0.01 (see Kawasaki’s col. 7)
within
Fe and inevitable impurities
Balance
Balance
overlaps
Microstructure of the steel sheet
polygonal ferrite
20% or more and 85% or less
ferrite: 20% or more and 50% or less (see Kawasaki’s col. 8)
overlaps
Upper bainite
9% or more and 45% or less
bainitic ferrite: 5% or more and 25% or less (see Kawasaki’s col. 7)
overlaps
Retained austenite
3% or more and 15% or less
10% or more (see Kawasaki’s col. 10)
overlaps
Fresh martensite
3% or more and 15% or less
martensite: 1 % or More and 10% or Less (see Kawasaki’s col. 9)
overlaps
tempered martensite and lower bainite
50% or less (including 0%)
tempered martensite : 5% or More and 15% or Less (see Kawasaki’s col. 10)
overlaps
Remaining microstructure balance
5% or less
balance
overlaps
Kawasaki’s disclosed composition including all elements as well as microstructure of the steel overlaps with the range as recited in the instant claims.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have selected and produced a composition from the teachings of Kawasaki that falls within the instantly-claimed ranges, because “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)” [See MPEP § 2144.05.I].
But Kawasaki also does not disclose that “the ratio of the total number of fresh martensite grains and retained austenite grains having an equivalent circular diameter of less than 1.2 µm is 50% or more relative to the number of all fresh martensite grains and all retained austenite grains, and the ratio of fresh martensite grains and retained austenite grains having an aspect ratio of 2.5 or more and an equivalent circular diameter of 1.2 µm or more is 30% or more relative to the number of fresh martensite grains and retained austenite grains having an equivalent circular diameter of 1.2 µm or more”.
Few more prior arts teaches overlapping composition and microstructures.
Takafumi YOKOYAMA et.al. [US20210017620A1] (Yokohama hereafter) teaches a steel sheet having composition that meets the recited amount of C, Si, Mn, P, S, N and Al (see Yokohama’s claim 10) and it would be obvious to one of ordinary skill in the art to elect the amount of each element based on the ranges disclosed in Yokohama, to make a steel that meets the recited composition (see Yokohama’s claim 10). [See MPEP 2144.05 I]. Yokohama discloses that the steel contains 0-30 vol % soft ferrite, 3-40 vol.% retained austenite, 0-30 vol.% fresh martensite, 50 vol.% or less tempered martensite (see Yokohama’s claim 10).
Takafumi YOKOYAMA et.al. [US11905570B2] (Yokohama hereafter) teaches a steel sheet having composition that meets the recited amount of C, Si, Mn, P, S, N and Al (see Yokohama’s claim 1) and it would be obvious to one of ordinary skill in the art to elect the amount of each element based on the ranges disclosed in Yokohama, to make a steel that meets the recited composition (see Yokohama’s claim 1). [See MPEP 2144.05 I]. Yokohama discloses that the steel contains ferrite: 0% to 50%, retained austenite: 6% to 30%, tempered martensite: 5% or more, fresh martensite: 0% to 10%, and pearlite and cementite in total: 0% to 5%, when there are remaining structures, the remaining structures comprise bainite, (see Yokohama’s claim 1).
But none of these prior art discloses that “the ratio of the total number of fresh martensite grains and retained austenite grains having an equivalent circular diameter of less than 0.8 µm is 50% or more relative to the number of all fresh martensite grains and all retained austenite grains, and the ratio of fresh martensite grains and retained austenite grains having an aspect ratio of 2.0 or more and an equivalent circular diameter of 0.8 µm or more is 30% or more relative to the number of fresh martensite grains and retained austenite grains having an equivalent circular diameter of 0.8 µm or more”.
Therefore, claim 7 is allowable over the cited prior art, and claims 8, and 13-14 depend on the claim 7 and would be allowable for the same reasons.
With respect to the withdrawn claim 11-12, claim as recited requires only the composition of the claim 7 and 8 respectively, Applicant may think to amend the claim such that claim requires all the limitation of claim 7 and 8 for a potential rejoinder.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NAZMUN NAHAR SHAMS whose telephone number is (571)272-5421. The examiner can normally be reached M-F 11:00 AM - 7:00PM (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Merkling Sally can be reached on (571)2726297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NAZMUN NAHAR SHAMS/Examiner, Art Unit 1738 /SALLY A MERKLING/SPE, Art Unit 1738
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