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 1 and 2 are examined in the office action.
Specification
The specification (including the abstract and claims), and any amendments for applications, except as provided for in 37 CFR 1.821 through 1.825, must have text written plainly and legibly either by a typewriter or machine printer in a nonscript type font (e.g., Arial, Times Roman, or Courier, preferably a font size of 12) lettering style having capital letters which should be at least 0.3175 cm. (0.125 inch) high, but may be no smaller than 0.21 cm. (0.08 inch) high (e.g., a font size of 6) in portrait orientation and presented in a form having sufficient clarity and contrast between the paper and the writing thereon to permit the direct reproduction of readily legible copies in any number by use of photographic, electrostatic, photo-offset, and microfilming processes and electronic capture by use of digital imaging and optical character recognition; and only a single column of text. See 37 CFR 1.52(a) and (b).
The application papers are objected to because all of .
A legible substitute specification in compliance with 37 CFR 1.52(a) and (b) and 1.125 is required.
Drawings
The drawings are objected to because the sole drawing is numbered and has abbreviation FIG. Please see MPEP § 608.02 V.
(u) Numbering of views.
(1) The different views must be numbered in consecutive Arabic numerals, starting with 1, independent of the numbering of the sheets and, if possible, in the order in which they appear on the drawing sheet(s). Partial views intended to form one complete view, on one or several sheets, must be identified by the same number followed by a capital letter. View numbers must be preceded by the abbreviation "FIG." Where only a single view is used in an application to illustrate the claimed invention, it must not be numbered and the abbreviation "FIG." must not appear.
(2) Numbers and letters identifying the views must be simple and clear and must not be used in association with brackets, circles, or inverted commas. The view numbers must be larger than the numbers used for reference characters.
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.
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 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of copending Application No. 18/834,189 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims of the reference application teaches hot-stamping formed body with substantially identical composition except Mn and have substantially identical properties.
Specifically, the claims of the reference identical or overlapping compositional range for all elements except for the range of Mn (manganese): Comparison is provided below.
Instant Application Claim 1. A hot-stamping formed body comprising, as a chemical composition, by mass %: C: more than 0.40% and 0.70% or less; Si: 0.010% to 3.00%; Mn: 0.60% to 3.00%; P: 0.100% or less; S: 0.0100% or less; N: 0.0200% or less; O: 0.0200% or less; Al: 0.0010% to 0.5000%; Nb: 0.0010% to 0.100%; Ti: 0.010% to 0.200%; Cr: 0.01% to 0.80%; Mo: 0.0010% to 1.000%; B: 0.0005% to 0.0200%; Co: 0% to 4.00%; Ni: 0% to 3.00%; Cu: 0% to 3.00%; V: 0% to 3.00%; W: 0% to 3.00%; Ca: 0% to 1.000%; Mg: 0% to 1.000%; REM: 0% to 1.000%; Sb: 0% to 1.000%; Sn: 0% to 1.000%; Zr: 0% to 1.000%; As: 0% to 0.100%; and a remainder: Fe and impurities Instant Application Claim 2. The hot-stamping formed body according to claim 1 comprising, as the chemical composition, by mass %, one or more of: Co: 0.01% to 4.00%; Ni: 0.01% to 3.00%; Cu: 0.01% to 3.00%; V: 0.01% to 3.00%; W: 0.01% to 3.00%; Ca: 0.001% to 1.000%; Mg: 0.001% to 1.000%; REM: 0.001% to 1.000%; Sb: 0.001% to 1.000%; Sn: 0.001% to 1.000%; Zr: 0.001% to 1.000%; and As: 0.001% to 0.100%.
Reference Application Claim 1. A hot-stamping formed body comprising, as a chemical composition, by mass %: C: more than 0.40% and 0.70% or less; Si: 0.010% to 3.000%; Mn: 0.10% or more and less than 0.60%; P: 0.100% or less; S: 0.0100% or less; N: 0.0200% or less; 0: 0.0200% or less; Al: 0.0010% to 0.5000%; Nb: 0.0010% to 0.1000%; Ti: 0.010% to 0.200%; Cr: 0.010% to 0.800%; Mo: 0.0010% to 1.0000%; B: 0.0005% to 0.0200%; Co: 0% to 4.00%; Ni: 0% to 3.00%; Cu: 0% to 30.00%; V: 0% to 3.00%; W: 0% to 3.00%; Ca: 0% to 1.0000%; Mg: 0% to 1.0000%; REM: 0% to 1.0000%; Sb: 0% to 1.000%; Sn: 0% to 1.000%; Zr: 0% to 1.000%; As: 0% to 0.100%; and a remainder: Fe and impurities Reference Application Claim 2. The hot-stamping formed body according to claim 1 comprising, as the chemical composition, by mass %, one or more of: Co: 0.01% to 4.00%; Ni: 0.01% to 3.00%; Cu: 0.01% to 3.00%; V: 0.01% to 3.00%; W: 0.01% to 3.00%; Ca: 0.0001% to 1.0000%; Mg: 0.0001% to 1.0000%; REM: 0.0001% to 1.0000%; Sb: 0.001% to 1.000%; Sn: 0.001% to 1.000%; Zr: 0.001% to 1.000%; and As: 0.001% to 0.100%.
Regarding the Mn ranges, instant claims require “Mn: 0.60% to 3.00%” while the claims of the reference application recite “Mn: 0.10% or more and less than 0.60%”. The value of “0.60” of the instant claim is extremely close to “less than 0.60”. For example, a value of 0.5999 which would be “less than 0.60” would be extremely close to instant claimed lower limit of 0.60. MPEP § 2144.05 I provides the guidance that Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner,778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). It is also noted that the instant specification provides no distinguishable properties between 0.60 Mn and less than 0.60 such as 0.59, 0.595, 0.599 and therefore does not provide any criticality of the claimed narrow range. Therefore, the claimed range of the instant claim is obvious over that of the prior art since the claimed value is so close to the value provided by the prior art and there is no evidence on the record that the difference of 0.60 vs less than 0.60 for Mn would provide different distinguishable properties. The claims of the reference application recites “in a surface layer region, which is a region from a surface of the hot-stamping formed body to 1/25 depth of a sheet thickness from the surface, an area ratio of bainite is more than 10%, a maximum value of pole density of a texture is 4.0 or less, and a deboronization index is 0.05 or more” which is identical to the limitations and ranges of the bainite, pole density and deboronization index, thereby further providing that difference of 0.60 vs less than 0.60 for Mn would not result in different distinguishable properties.
Regarding the recited limitations “in a surface layer region, which is a region between the surface and 1/25 depth of the sheet thickness from the surface, an area ratio of bainite is more than 10%, a maximum value of pole density of a texture is 4.0 or less, and a deboronization index is 0.05 or more” of the instant claims, the claims of the reference application teach “in a surface layer region, which is a region from a surface of the hot-stamping formed body to 1/25 depth of a sheet thickness from the surface, an area ratio of bainite is more than 10%, a maximum value of pole density of a texture is 4.0 or less, and a deboronization index is 0.05 or more” or in other words, identical limitations.
It is noted that the claims of the reference application is silent regarding the recited limitation “in an interior region, which is a region between 4/16 depth of a sheet thickness from a surface of the hot-stamping formed body and 5/16 depth of the sheet thickness from the surface, a standard deviation of grain sizes of prior austenite grains is 5.0 μm or less” of instant claim 1. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP § 2112.01 I. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Therefore, it is expected that the alloy of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (see compositional analysis above), and b) the claimed and prior art products are identical or substantially identical in structure (see microstructure analysis above). In addition, the claims of the instant application reveal that the hot-stamping body has identical properties to those of the reference application (“in a surface layer region, which is a region between the surface and 1/25 depth of the sheet thickness from the surface, an area ratio of bainite is more than 10%, a maximum value of pole density of a texture is 4.0 or less, and a deboronization index is 0.05 or more”). Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
WO 2020/079925 A1 via its US English equivalent US 20210381085 A1 of Hirashima (US’085) cited in the IDS teaches [0002] “a high-yield-ratio high-strength electrogalvanized steel sheet which is used for automobile parts and the like and a method for manufacturing the steel sheet, and, in particular, to a high-yield-ratio high-strength electrogalvanized steel sheet having excellent bendability and a method for manufacturing the steel sheet” [0021] “in which the base steel sheet has a chemical composition containing, by mass %, C: 0.14% or more and 0.40% or less, Si: 0.001% or more and 2.0% or less, Mn: 0.10% or more and 1.70% or less, P: 0.05% or less, S: 0.0050% or less, Al: 0.01% or more and 0.20% or less, N: 0.010% or less, and a balance of Fe and inevitable impurities, a steel microstructure, in which a total area fraction of one or both of bainite containing carbides having an average grain diameter of 50 nm or less and tempered martensite containing carbides having an average grain diameter of 50 nm or less is 90% or more in the whole of the steel microstructure, and in which a total area fraction of one or both of bainite containing carbides having an average grain diameter of 50 nm or less and tempered martensite containing carbides having an average grain diameter of 50 nm or less is 80% or more in a region from the surface of the base steel sheet to a position located at ⅛ of a thickness of the base steel sheet, and diffusible hydrogen in steel in an amount of 0.20 mass ppm or less.” [0084] “The method for manufacturing the high-yield-ratio high-strength electrogalvanized steel sheet according to the embodiment of the present invention includes at least a hot rolling process, an annealing process, and an electroplating process. In addition, a cold rolling process may be included between the hot rolling process and the annealing process. In addition, a tempering process may be included after the electroplating process.” The prior art also teaches [0041] “Si also contributes to inhibiting decarburization and deboronization due to oxidation of the surface layer of a steel sheet when continuous annealing is performed.” However, the prior art does not teach that its steel possesses the properties of “(A) in an interior region, a standard deviation of grain sizes of prior austenite grains is 5.0 μm or less; (B) in a surface layer region, an area ratio of bainite is more than 10%, a maximum value of pole density of a texture is 4.0 or less, and a deboronization index is 0.05 or more; wherein the interior region is defined as a region between 4/16 depth of a sheet thickness from a surface of the hot-stamping formed body and 5/16 depth of the sheet thickness from the surface; and the surface layer region is defined as a region between the surface and 1/25 depth of the sheet thickness from the surface” as required by the instant claims.
WO 2020/136988 A1 via its US English equivalent US 2022/0074013 A1 of Hasegawa (US’013) teaches [0002] “a high-strength galvanized steel sheet suitable for automotive components and a method for producing the high-strength galvanized steel sheet” [0030]-[0033] “The steel microstructure of the steel sheet contains, on an area percentage basis, 0% to 15% of ferrite and upper bainite in total, 80% to 100% of lower bainite and martensite in total, and 0% to 10% of retained austenite, and contains precipitates having a particle size of 100 to 2,000 nm in terms of equivalent circular diameter in an amount of 109 to 1012 particles/m2 in a region extending from the surface layer of the steel sheet to a position 100 to 300 μm from the surface layer of the steel sheet in the thickness direction”. However, the prior art teaches [0014]-[0015] “C is an element effective in forming martensite and carbide-containing bainite to increase TS. A C content of less than 0.12% does not result in an effect of increasing TS, an increase in the strength of the steel sheet, or the steel microstructure of the steel sheet according to the embodiment. Accordingly, the C content needs to be 0.12% or more. The C content is preferably 0.13% or more. A C content of more than 0.35% results in harder martensite to deteriorate the delayed fracture resistance. Accordingly, the C content needs to be 0.35% or less. The C content is preferably 0.32% or less, more preferably 0.30% or less.” whereas instant claims require “C: more than 0.40% and 0.70% or less”.
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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