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 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 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. This is patentably indistinct of claim 1 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. 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 2 recites further metals and masses overlapping claim 3 of the ‘758 application. Instant claim 3 recites a hot-pressed member overlapping claim 4 of the ‘758 application. Instant claim 4 recites an oxide layer overlapping claims 11-13 of the ‘758 application. Instant claim 5 recites overlapping claims 11-13 of the ‘758 application. Instant claims 6-7 recite methods overlapping claims 14-15, respectively, 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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al. (JP2011-122207 – machine translation).
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).
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 2, Nakamura teaches where the plating may contain other metallic elements including Mn, Cr, etc. (Paragraph 18) in amounts of 10% by mass (Paragraph 48). 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).
Considering claim 4, Nakamura 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 claims 6-7, Nakamura teaches a method of producing the Ni-coated hot-pressed member (Paragraph 49; Table 1).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Ohmura et al. (US 6,551,721), Tsuchida et al. (US 2009/0197164), Tomomori et al. (US 2012/0234428), Nakada et al. (US 2015/0197857), and Goto et al. (US 2022/0403542) teach Ni-coated steel with composition and thickness overlapping that which is claimed.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784
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