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 .
Status of Claims
Claims 8-16 are examined in the office action.
Specification
The disclosure is objected to because of the following informalities:
Paragraph [0027] contains illegible equations.
Paragraph [0037] misstates the known value of Avogadro’s number.
The use of the terms COMSOL and X-CAP (see paragraph 18 of the specification), which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Appropriate correction is required.
Drawings
The drawings are objected to because a) Fig 1 and 3-8 cut off the label of the x-axis (450 is not fully seen) and Fig 3-8 employs Ctotal, CL and CT whereas instant specification recites Ctotal, CL and CT. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 9-12 are objected to because of the following informalities:
Claim 9 and 10 should recite the equation numbers in line 2 and term equation in square bracket preceding each equation.
Claim 11 does not end with a period.
The equations in Claim 12 are not legible.
Appropriate correction is required.
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 8-16 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.
Regarding claim 8,
instant claim recites the limitation "the temperature" in line 2. There is insufficient antecedent basis for this limitation in the claim.
instant claim recites the limitation "the steel sheet" in line 3. There is insufficient antecedent basis for this limitation in the claim.
instant claim recites the limitation "the steel" in line 5. There is insufficient antecedent basis for this limitation in the claim.
instant claim recites the limitation " the microstructure of the steel sheet" in line 13. There is insufficient antecedent basis for this limitation in the claim.
instant claim recites the limitation "the temperature Tn" in line 15 (also line 17). There is insufficient antecedent basis for this limitation in the claim. The claim previously recites “defining at least two temperature curves Tn of the annealing process as a function of time t, n being the number of curves”. Therefore, it is unclear whether "the temperature Tn" refers to a specific single temperature or if it refers to two or more temperatures.
instant claim recites the limitations "the volume concentration of trapped hydrogen in dislocations CT" and "the volume concentration of hydrogen in interstitial sites CL" in lines16-17. There is insufficient antecedent basis for this limitation in the claim.
instant claim recites the limitation "computing the volume concentration of trapped hydrogen in dislocations CT and the volume concentration of hydrogen in interstitial sites CL, as a function of the temperature Tn, of trapping rate of hydrogen k and of detrapping rate of hydrogen p, of CH, and of the microstructure" in lines 16-19. However, the units are missing for the various variables thereby making unclear of the various relationship establishments. In addition, it is unclear whether the claim is requiring CT and CL as a function of the temperature Tn, as well as functions of the k, p, CH, and microstructure or whether it is requiring k, p, CH, and microstructure as a function of the temperature Tn, as well. Moreover, it is also unclear if it is requiring CT and CL as a function of the microstructure and if it is whether it refers to the entirety of the microstructure from beginning to end of the annealing process or if it refers to a specific point of the annealing process. In addition, it is unclear whether the CT and CL are to be calculated at a specific point of the steel sheet such as the surface or whether it refers to the entirety of the steel sheet.
instant claim recites the limitation "selecting the temperature curves Tn and the composition atmosphere leading to Ctotal as close as possible to Ctotal-targeted". The term “as close as possible” is a relative term which renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. As it is unclear what would be encompassed by the scope of the term such as 1%, 5%, 10%, 50%, 100% or other values, it is unclear what values of discrepancy/difference between the two variables would meet the claim and thereby making it unclear to determine of “the temperature curves Tn and the composition atmosphere”
instant claim recites the limitation "the composition atmosphere" in line 21. There is insufficient antecedent basis for this limitation in the claim. In addition, it is unclear whether the term refers to the composition of the steel in the annealing atmosphere, the composition of the annealing atmosphere, the amount of hydrogen in the atmosphere during the annealing (whether it is at one step or during the entirety of the process or if it refers to something else.
instant claim recites the limitation "providing the steel sheet with the chemical composition”. However, lines 1-2 already recite “A method for manufacturing an annealed steel sheet having a chemical composition” thereby making unclear whether the latter chemical composition is different from the previously recited and if not why the instant limitation is recited.
Instant claim recites “defining a hydrogen content Ctotal-targeted targeted in the steel sheet at any step of the annealing process”. The term “Ctotal-targeted” recites a difference between total and targeted, follows with only targeted, does not define or recite how the total is attained thereby making it unclear what is meant by “a hydrogen content Ctotal-targeted targeted in the steel sheet” or how to calculate it.
Instant claim recites “defining an amount of hydrogen in the atmosphere of the furnace during the annealing process”. It is unclear whether the amount refers to any specific step or if it refers to all of the steps as the instant recitation refers to “during the annealing process”.
Instant claim recites “annealing the steel sheet according to the selected temperature curve T=Tn, as a function of time t, in the selected composition atmosphere”. It is unclear whether it is requiring multiple annealing steps as the claim previously defines Tn as “defining at least two temperature curves Tn of the annealing process as a function of time t, n being the number of curves”. the amount refers to any specific step or if it refers to all of the steps as the instant recitation refers to “during the annealing process” or whether it is requiring a single annealing step along one of the curves of Tn.
It is noted that the instant claim recites “an annealed steel sheet”, “the steel sheet”, “the steel”. They should all have the same names if they all refer to the same state of the steel; otherwise, they should have distinct names that identifies their states.
Regarding claim 9, the various variables are missing the units thereby making unclear how to carry out the calculations.
Equation 3 recites t as a variable but fails to define it and its units.
Line 6 of the claim defines “x” but neither of the equations utilize the variable.
Regarding claim 10, Tn referred to in Equations 1 and 2 as well as the partial pressure of hydrogen is missing the units thereby making unclear how the calculation is to be carried out.
Regarding claim 11, instant claim recites the limitation "the lattice diffusion coefficient of hydrogen DL" in lines2-3. There is insufficient antecedent basis for this limitation in the claim.
It is unclear if all of the equations are to be completed if multiple phases exist in the microstructure such as ferrite and austenite. It is unclear how these equations limit the instant claim as it does not require any ranges for the diffusion coefficient.
Although RTn is recited in the latter two lines, it is noted that it is not defined making it unclear whether it refers to a single variable or multiple variables, the units these variable(s) require and thereby making it unclear how to carry out the calculations. If the Tn refers to the “at least two temperature curves”, it is unclear whether one or all of them are involved in the calculations.
Instant claim recites “The method as recited in claim 8 wherein in the microstructure of the steel sheet includes at least one phase among ferrite, austenite, martensite and bainite and wherein the lattice diffusion coefficient of hydrogen DL is calculated through the following equations”. The claim it depends on recites “determining the microstructure of the steel sheet as a function of the thermal path”. It is unclear at what point of the process the microstructure is referring to – at the beginning, at the end or at a specific point – of the annealing process.
Regarding claim 12, instant claim recites the limitation "the trapping energy" and “the detrapping energy" in lines 5-6. There is insufficient antecedent basis for this limitation in the claim. In addition, the various variables are missing the units thereby making unclear how to carry out the calculations.
Regarding claim 13, instant claim recites the limitations "the surface density of dislocation", "the number of dislocations per Burger's vector" and "the lattice parameter " in lines 4-5. There is insufficient antecedent basis for this limitation in the claim. In addition, the various variables are missing the units thereby making unclear how to carry out the calculations.
Claims 11 and 13 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Instant claims require the calculations of DL (claim 11) and NT (claim 13) through specific equations. However, claim 8 does not explicitly require of DL and NT, instant claims do not require specific ranges and therefore fail to further limit the subject matter of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Prior Art Rejections
No prior art rejection is applied in view of the various indefiniteness issues posed by 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 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 8-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7-13 of copending Application No. 18/716,687 (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 teaches a substantially identical method of calculation and annealing.
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 JOPHY S. KOSHY whose telephone number is (571)272-0030. The examiner can normally be reached M-F 8:30 AM- 5:00 PM.
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/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
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