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). The certified copy has been filed in parent Application No. 18/027,201, filed on 20 March 2023.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 6 September 2024 and 29 October 2025 were considered by the examiner.
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 and 2 (referred to as the pending claims) are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12,104,218 (the claims therein referred to as the reference claims). Although the claims at issue are not identical, they are not patentably distinct from each other.
In regards to pending independent claim 1, pending claim 1 and reference claim 1 set forth a sheet metal component made of a hot-formed flat steel product. As shown below, the compositional ranges are identical in both the pending claim 1 and reference claim 1. The scope of the instant pending claim 1 therefore falls within that of the reference claim 1.
Pending Claim 1
Reference Claim 1
A sheet metal component comprising a hot-formed flat steel product comprising:
a steel substrate which, in mass. %, consists of:
A sheet metal component,
which is made of a hot-formed flat steel product comprising a steel substrate which, in mass. %, consists of:
C: 0.1-0.4%,
C: 0.1-0.4%,
Mn: 0.5-3.0%
Mn: 0.5-3.0%,
Si: 0.05-0.5%,
Si: 0.05-0.5%,
Cr: 0.005-1.0%,
Cr: 0.005-1.0%,
B: 0.0005-0.01%,
B: 0.0005-0.01%,
optionally one or more of alloy elements selected from the group consisting of V, Ti, Nb, Al, Ni, Cu, Mo, and W, wherein V: 0.001-0.2%, Ti: 0.001-0.1%, Nb: 0.001-0.1%, Al: 0.01-0.2%, Ni: 0.01-0.4%, Cu: 0.01-0.8%, Mo: 0.002-1.0%, and W: 0.001-1.0%,
optionally one or more of alloy elements selected from the group consisting of V, Ti, Nb, Al, Ni, Cu, Mo, and W, with the proviso that the contents of the respective optionally present alloy element are to be measured as follows: V: 0.001-0.2%, Ti: 0.001-0.1%, Nb: 0.001-0.1%, Al: 0.01-0.2%, Ni: 0.01-0.4%, Cu: 0.01-0.8%, Mo: 0.002-1.0%, W: 0.001-1.0%,
and a remainder of iron and unavoidable impurities
the remainder of iron and unavoidable impurities, wherein the unavoidable impurities include contents of less than 0.1% P, less than 0.05% S, and less than 0.01% N
a corrosion protection layer based on aluminum applied to the steel substrate
a corrosion protection layer based on aluminum applied to the steel substrate
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wherein the component is optionally hardened
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wherein an adhesive section is provided on an outer surface of the corrosion protection coating, which adhesive section is intended for applying an adhesive for adhering the sheet metal component to another component
wherein at least a portion of an outer surface of the corrosion protection coating has an SDR value of 3-30%, determined according to ISO 25178
wherein the outer surface of the corrosion protection coating has an SDR value of 3-30%, determined according to ISO 25178, at least in a region of the adhesive section
In regards to pending independent claim 2, pending claim 2 and reference claim 6 set forth a sheet metal component made of a hot-formed flat steel product. As shown below, the compositional ranges are identical in both the pending claim 2 and reference claim 6. The scope of pending claim 2 falls within the scope of reference claim 6.
Pending Claim 2
Reference Claim 6
A method for producing a sheet metal component, comprising the following work steps:
A method for producing a sheet metal component, comprising the following work steps:
a) providing a hot-rolled flat steel product comprising a steel substrate, which, in mass. %, consists of: C: 0.1-0.4%, Mn: 0.5-3.0%, Si: 0.05-0.5% Cr: 0.005-1.0%, B: 0.0005-0.01%, optionally one or more of alloy elements selected from the group consisting of V, Ti, Nb, Al, Ni, Cu, Mo, and W, wherein V: 0.001-0.2%, Ti: 0.001-0.1%, Nb: 0.001-0.1%, Al:
0. 01-0.2%, Ni: 0.01-0.4%, Cu: 0.01-0.8% Mo: 0.002-1.0%, W: 0.001-1.0%, and a remainder of iron and unavoidable impurities;
a) providing a hot-rolled flat steel product comprising a steel substrate, which, in mass. %, consists of C: 0.1-0.4%, Mn: 0.5-3.0%, Si: 0.05-0.5%, Cr: 0.005-1.0%, B: 0.0005-0.01%, and optionally one or more of alloy elements selected from the group consisting of V, Ti, Nb, Al, Ni, Cu, Mo, and W, with the proviso that the contents of the respective optionally present alloy element are to be measured as follows: V: 0.001-0.2%, Ti: 0.001-0.1%, Nb: 0.001-0.1%, Al: 0.01-0.2%, Ni: 0.01-0.4%, Cu: 0.01-0.8% Mo: 0.002-1.0%, W: 0.001-1.0%, and the remainder of iron and unavoidable impurities, wherein the unavoidable impurities include contents of less than 0.1% P, less than 0.05% S, and less than 0.01% N,
b) optional pickling of the hot rolled flat steel product;
b) optional pickling of the hot rolled flat steel product,
c) cold rolling the hot rolled flat steel product to form a cold strip, wherein the cold rolling is optionally performed in more than one rolling step, and wherein, optionally, the respective cold-rolled strip obtained after the previous cold rolling step is optionally annealed between the cold rolling steps;
c) cold rolling the hot rolled flat steel product to form a cold strip, wherein the cold rolling is optionally performed in more than one rolling step, and wherein, optionally, the respective cold-rolled strip obtained after the previous cold rolling step is optionally annealed between the cold rolling steps,
d) coating the cold strip with a corrosion protection coating based on aluminum;
d) coating the cold strip with a corrosion protection coating based on aluminum,
e) skin-pass rolling the cold strip provided with the corrosion protection layer,
e) skin-pass rolling the cold strip provided with the corrosion protection layer,
f) sectioning off a blank from the skin-pass rolled cold strip;
f) sectioning off a blank from the skin-pass rolled cold strip,
g) heating the blank to a hot forming temperature of 850-950° C.
g) heating the blank to a hot forming temperature of 850-950° C.
h) hot forming the heated blank to form the sheet metal component
h) hot forming the heated blank to form the sheet metal component
wherein, by means of the cold rolling (work step c)) and/or the skin-pass rolling (work step e)), at least a portion of an outer surface of the corrosion protection layer has a surface texture having a maximum wavelength of 0.1-1.0 mm.
wherein the corrosion protection layer at least in a surface portion which forms an adhesive section of the sheet metal component, has a surface texture which has a maximum wavelength from 0.1 mm to 1.0 mm
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wherein the adhesive section is provided for applying an adhesive for adhering the sheet metal component to a further component.
Accordingly, for both pending claims 1 and 2, the claims of the reference patent completely encompass the scope of the pending claims. The reference patent sets forth claims having each and every claimed limitation as set forth in the instant application.
Allowable Subject Matter
Claims 1 and 2 would be allowable if the double patenting rejections were overcome.
The following is a statement of reasons for the indication of allowable subject matter:
The instant claims set forth limitations that are completely encompassed by the parent application. A Notice of Allowability was issued in the parent application since each and every claimed limitation was not turned up in a search of the prior art. In particular, the composition of the instant claims and the claims in the parent application utilize the transitional phrase of “consists of”. A composition that falls within the scope of the compositional ranges as well as having the other claimed properties was not turned up in a search of the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Daniel Schleis whose telephone number is (571)270-5636. The examiner can normally be reached 10 AM to 4 PM Monday through Friday.
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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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Daniel J. Schleis
Primary Examiner
Art Unit 1784
/Daniel J. Schleis/Primary Examiner, Art Unit 1784