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 .
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 1, 3, and 5-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3, 6-7, 12, and 15 of copending Application No. 18/994758 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 recites a steel sheet for hot pressing with a 7-20 µm coating on both sides of the steel sheet composed of Ni or Ni-based alloy with a Zn content of 0-10% by mass and 50 mass% or less of one or more of Ti, V, Fe, and W. This is patentably indistinct of claim 3 of the ‘758 application which recites a steel sheet for hot pressing with a 0.5-6.0 µm coating on both sides of the steel sheet composed of Ni or Ni-based alloy with a Zn content of 0-30% by mass and 50 mass% or less of Al, Ti, V, Fe, W, etc. While the instant claims and those of the ‘758 application recite different thicknesses, the courts have held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. See MPEP 2144.04 (IV)(A). It is the examiner’s opinion that there is no distinction between the claimed lower limit of 7 µm and the upper limit of 6.0 µm recited in the ‘758 application.
Instant claim 3 recites a hot-pressed member overlapping claims 6-7 of the ‘758 application. Instant claim 5 recites overlapping claim 12 of the ‘758 application. Instant claim 6 recites a method overlapping claim 15 of the ’758 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3, and 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al. (JP2011-122207 – machine translation previously provided).
Considering claim 1, Nakamura teaches a steel sheet for hot pressing (abstract) where the steel sheet has a nickel plating on both sides (Paragraph 49) where the plating layer may be in a weight of 10-90,000 mg/m2 (Paragraph 14) corresponding to a thickness up to about 10 µm (from ~8.96 g/m2 corresponding to ~1 µm) and where the coating may be Ni only or may contain other metallic elements including Zn, Mn, Cr, etc. (Paragraph 18) in amounts of 10% by mass (Paragraph 48).
Nakamura also teaches where the Ni plating is formed by electroplating with a current density of 50 A/dm2, 300 g/L nickel sulfate hexahydrate, 10 g/L zinc sulfate heptahydrate, 50 g/L sodium sulfate, and 30 g/L boric acid (Paragraph 48) and applicant states in Paragraph 29 of the originally filed specification where Fe is incorporated into the Ni plated layer by electroplating and eluting Fe from the base steel sheet into the bath. As Nakamura teaches a substantially identical electroplated Ni coating and electroplating method as that which applicant discloses as incorporating the claimed Fe content one would reasonably expect the Ni coating of Nakamura to possess the claimed Fe and content as substantially identical materials treated in a substantially identical manner are expected to behave the same, absent an objective showing. See MPEP 2112.02.
While not expressly teaching a singular example of the instantly claimed steel sheet this would have been obvious to one of ordinary skill in the art before the effective filing date in view of the teachings of Nakamura as Nakamura teaches a steel sheet with coating material and composition overlapping that which is claimed and the courts have held that where claimed ranges overlap or lie inside of those disclosed in the prior art a prima facie case of obviousness exists. See MPEP 2144.05.
Considering claim 3, in addition to the disclosure of the steel with composition and thickness as outlined above, Nakamura teaches where the steel sheet is heated and hot pressed (Paragraph 49). Nakamura also teaches where the Ni-plating may be coated with an inorganic compound layer including zirconium oxide (Paragraph 21) exemplified in a mass/area of 100-4000 mg/m2 (Table 1) indicating a thickness less than 10 microns. See MPEP 2144.05.
Considering claim 5, Nakamura does not expressly teach the claimed Ni content in metal elements of the oxide layer. However, as outlined above, Nakamura teaches a substantially identical steel sheet with oxide layer thereon heated to 900 °C and pressed (Paragraph 49; Table 1). These conditions are substantially identical to those disclosed by applicant in the instant specification (Paragraphs 61, 65 and 68). As such, one would reasonably expect the hot pressed steel member of Nakamura to possess the claimed Ni content as substantially identical materials treated in a substantially identical manner are expected to behave the same, absent an objective showing.
Considering claim 6, Nakamura teaches a method of producing the Ni-coated hot-pressed member (Paragraph 49; Table 1).
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Goto et al. (EP 3904566).
Considering claim 1, Goto teaches a Ni-plated steel sheet (abstract) being able to be press formed (Paragraph 26) (i.e. a steel sheet for hot pressing). The Ni-plating may be formed on both sides of the steel sheet having have an Fe content of less than 5 mass% and 90 mass% or more Ni (Paragraph 22) and the thickness may be 1.0 µm or more (Paragraph 33).
While not expressly teaching a singular example of the claimed steel sheet this would have been obvious to one of ordinary skill in the art before the effective filing date in view of the teachings of Goto as Goto teaches a Ni-plated steel sheet with overlapping Ni-alloy composition and thickness as that which is claimed and the courts have held that where claimed ranges overlap or lie inside of those disclosed in the prior art a prima facie case of obviousness exists. See MPEP 2144.05.
Response to Arguments
Applicant's arguments filed 26 August 2026 have been fully considered but they are not persuasive. Applicant’s arguments are addressed as follows:
Applicant argues that the Double Patenting rejection over copending 18/994758 is improper as the difference in thickness results in a different performance between the two products as they solve different technical problems (remarks p.5, 1st – 2nd full paragraphs). This is not persuasive as first, the portions of the specification to which applicant points to are directed to differences in methods of hot-pressing and a resulting Fe oxide formation which is an unclaimed feature and is therefore not commensurate in scope with that which is claimed (see MPEP 2145 (IV)) and second, no objective evidence of a criticality has been presented demonstrating a patentable distinction between the instant claims and those of the ‘758 application. Applicant’s attention is directed toward MPEP 716.01 for a submission of objective evidence.
Applicant argues that the prior art rejection of Nakamura does not teach the amended content of at least one of Ti, V, Fe, and W in 50 mass% or less (remarks p.6, section I). This is not persuasive as outlined above, applicant discloses where Fe is incorporated due to elution of the base steel sheet during electroplating and Nakamura teaches a substantially identical Ni-plated steel sheet and electroplating process as that which is disclosed by applicant and therefore the claimed Fe content is expected to be present in the Ni coating of Nakamura, absent an objective showing. See MPEP 2112.02.
Applicant argues that the oxide coating of Nakamura is not that which is claimed as Nakamura teaches inorganic compounds of sodium tetraborate decahydrate (remarks p.7, 1st full paragraph). This is not persuasive as Nakamura is not limited to sodium tetraborate decahydrate alone, but rather also teaches antimony(III) oxide, etc. (Paragraph 30). The teaching of sodium tetraborate decahydrate, which is an oxide of boron, and antimony oxide sufficiently meet the claimed oxide layer as no particular oxide is claimed. See MPEP 2111.01.
Applicant argues that an oxide layer of 10 microns or less is advantageous as it is formed from reaction with oxygen/water vapor during hot pressing and the composition varies (remarks p.7, last paragraph). This is not persuasive as no particular composition of the oxide layer is recited nor is any process conditions or atmosphere which would result in any particular composition and therefore applicant’s arguments are not commensurate with that which is claimed. See MPEP 2145 (VI). Further, while applicant argues the oxide thickness is advantageous, no objective evidence of criticality has been presented distinguishing over Nakamura.
Applicant argues that the instantly claimed oxide differs over Nakamura as there is no reasonable expectation of success (remarks p.7 last paragraph – p.8). This is not persuasive as Nakamura positively teaches the use of the inorganic compound layer to improve sliding (Paragraphs 29-30) and applicant is reminded that the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, MPEP 2144.04(IV) citing In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). As such, one of ordinary skill would have a reasonable expectation of success to use the materials disclosed by Nakamura.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SETH DUMBRIS whose telephone number is (571)272-5105. The examiner can normally be reached M-F 6:00 AM - 3:30 PM.
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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784
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