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 7-10 and 13-14) in the reply filed on 07/02/2026 is acknowledged. Claims 11-12 are withdrawn. Claims 7-10 and 13-14 are examined herein.
Claim Rejections - 35 USC § 112
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 and 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. Appropriate correction is required. For examination of claims 9 and 10, the structure limitations recited in claims 7 and 8 have not been given patentable weight.
Claim Rejections - 35 USC § 102
(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 Ono (US 2020/0157647).
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. 18/692,920 (US 2024/0425943). 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. 18/692,920 teach a steel sheet having composition and phase ratio that overlap the recited composition and phase ratio in the instant claims. Claims 7-10 and 13-14 of copending Application No. 18/692,920 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, which overlap the recited ratios in 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. 18/692,920.
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:
US 2021/0017620 teaches a steel sheet having composition that meets the recited amount of C, Si, Mn, P, S, N and Al in claim 7 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 US 2021/0017620 to make a steel that meets the recited composition in claim 7. See MPEP 2144.05 I. US 2021/0017620 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. However, US 2021/0017620 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 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.
US 2024/0229184 teaches a steel sheet having composition that meets the recited amount of C, Si, Mn, P, S, N and Al in claim 7 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 US 2024/0229184 to make a steel that meets the recited composition in claim 7. See MPEP 2144.05 I. US 2024/0229184 discloses that the steel contains 10-35 vol % polygonal ferrite, 2-20 vol.% retained austenite, 10-30 vol.% fresh martensite, 40 vol.% or more tempered martensite and bainite. However, US 2024/0229184 does not disclose the recited amount of upper bainite and US 2024/0229184 does not teach 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.
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 Xiaowei Su whose telephone number is (571)272-3239. The examiner can normally be reached 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached at 5712721401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/XIAOWEI SU/Primary Examiner, Art Unit 1733
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