DETAILED ACTION
Examiner’s Note
This office action is in response to applicants’ remarks filed April 9, 2026. Claims 12-20 remain pending.
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 12-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-20 of co-pending Application No. 18/873,319 (reference application). Although the claims at issue are not identical, the compositional proportions of the co-pending claims overlap the instantly claimed ranges. One of ordinary skill in the art would have found it obvious to select from the ranges of the co-pending claims including values which fall within the instantly claimed ranges.
Claims 12-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-20 of co-pending Application No. 18/873,318 (reference application). The compositional proportions of the co-pending claims are the same as the instantly claimed proportions, however the GDS profiles of the co-pending claims overlap applicants’ instantly claimed values. One of ordinary skill in the art would have found it obvious to from steel sheets exhibiting converted concertation differences within the claimed ranges, including values which fall within the instantly claimed ranges.
Claims 12-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-20 of co-pending Application No. 18/870,209 (reference application). Although the claims at issue are not identical, the compositional proportions of the co-pending claims overlap the instantly claimed ranges. One of ordinary skill in the art would have found it obvious to select from the ranges of the co-pending claims including values which fall within the instantly claimed ranges. Additionally, the converted concentration differences of the co-pending claims overlap those of the instant clams. One of ordinary skill in the art would have found it obvious to from steel sheets exhibiting converted concertation differences within the claimed ranges, including values which fall within the instantly claimed ranges.
Claims 12-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-4 and 6 of co-pending Application No. 18/038,914 (reference application). Although the claims at issue are not identical, the compositional proportions set forth in co-pending claim 6 overlap the instantly claimed ranges. One of ordinary skill in the art would have found it obvious to select from the ranges of the co-pending claims including values which fall within the instantly claimed ranges. Additionally, the converted concentration differences of the co-pending claims overlap those of the instant clams. One of ordinary skill in the art would have found it obvious to from steel sheets exhibiting converted concertation differences within the claimed ranges, including values which fall within the instantly claimed ranges. Further with respect to claims 13-15 one of ordinary skill in the art would have found it obvious to combine the features within the co-pending claims including the features of claims 2-4 with the compositional requirements of claim 6.
Claims 12-15 would be provisionally rejected, if revived, on the ground of nonstatutory double patenting as being unpatentable over claims 2-4 and 6 of co-pending Application No. 18/039,175 (reference application). Although the claims at issue are not identical, the compositional proportions set forth in co-pending claim 6 overlap the instantly claimed ranges. One of ordinary skill in the art would have found it obvious to select from the ranges of the co-pending claims including values which fall within the instantly claimed ranges. Additionally, the converted concentration differences of the co-pending claims overlap those of the instant clams. One of ordinary skill in the art would have found it obvious to from steel sheets exhibiting converted concertation differences within the claimed ranges, including values which fall within the instantly claimed ranges. Further with respect to claims 13-15 one of ordinary skill in the art would have found it obvious to combine the features within the co-pending claims including the features of claims 2-4 with the compositional requirements of claim 6.
Claims 12-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of co-pending Application No. 18/873,503 (reference application). Although the claims at issue are not identical, the compositional proportions of the co-pending claims overlap the instantly claimed ranges. One of ordinary skill in the art would have found it obvious to select from the ranges of the co-pending claims including values which fall within the instantly claimed ranges. Additionally, the converted concentration differences of the co-pending claims overlap those of the instant clams. One of ordinary skill in the art would have found it obvious to from steel sheets exhibiting converted concertation differences within the claimed ranges, including values which fall within the instantly claimed ranges.
Claims 12-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-20 of co-pending Application No. 18/873,508 (reference application). Although the claims at issue are not identical, the compositional proportions of the co-pending claims overlap the instantly claimed ranges. One of ordinary skill in the art would have found it obvious to select from the ranges of the co-pending claims including values which fall within the instantly claimed ranges. Additionally, the converted concentration differences of the co-pending claims overlap those of the instant clams. One of ordinary skill in the art would have found it obvious to from steel sheets exhibiting converted concertation differences within the claimed ranges, including values which fall within the instantly claimed ranges.
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.
Claims 12-15 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.
Claim 12 defines, with respect to both Mn and Si, a difference between a value obtained by dividing a concentration at the maximum point by a concentration of “a base material”. It is unclear what constitutes a base material. Do applicants intend the concentration of “a base material” be the average concertation within the steel sheet, or does “a base material” include a sub-region or layer within the steel sheet. An undefined base material does not provide a clear basis by which to establish a difference in converted concentration. For purposes of examination applicants’ claimed differences in converted concentration will be considered to be satisfied where the prior art is demonstrated to form a steel sheet by a substantially identical process.
Claims 13-15 are rejected as depending from claim 12 as rejected hereabove.
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.
Claims 12-17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Kohler et al. (PGPub US 2022/0170164).
Regarding applicants’ claims 12-15, Kohler et al. disclose a steel strip with improved bonding having a metallic coating (paragraph 0016).
Kohler et al. disclose a steel sheet comprising (in weight percent) elements which include: Mn: 8.1 to 25.0%, Si: 0.01 to 3.0%, C: 0.1-1.0%, Al: 1.0 to 8.0%, P: ≤ 0.10%, S: ≤ 0.010%, Cr: 0.01- 0.7%, B: 0.001 to 0.08%, the remainder being iron and unavoidable impurities (paragraphs 0038-0052). Kohler et al. do not disclose the presence of nitrogen. Nitrogen is therefore considered to be negligible and at a minimum not present at greater than impurity levels which at least overlaps applicants’ claimed range.
While Kohler et al. do not appear to disclose the exact ranges claimed by applicants, one of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to select from the values disclosed by Kohlar et al. including those which fall within applicants’ claimed ranges, or come so close to applicants’ claimed ranges as to establish a prima facie case of obviousness (MPEP 2144.05 I).
With regards to the manganese content, applicants’ disclose that “The upper limit of the concentration of Mn in the base iron is not particularly limited, but considering the commonly used composition, the upper limit may be limited to 8% by weight” (present specification paragraph 0044). Given that applicants disclose that the upper content of manganese is not particularly limited, the amounts disclosed by Kohlar et al. (8.1 to 25.0 wt.%) would be so close to applicants’ claimed range, that the steel sheets of applicants’ Kohlar et al. would be expected to exhibit the same properties.
Kohler et al. do not appear to explicitly disclose a GDS profile for Mn and Si, and more specifically GDS profiles resulting in converted concertation differences and a minimum point within the claimed ranges.
While Kohler et al. do not appear to disclose GDS profiles, one of ordinary skill in the art would expect substantially identical materials treated in a substantially identical manner to have substantially identical structure and properties.
Applicants disclose plating of a steel sheet (comprising Mn and Si) with an Fe plating layer containing 5 to 50 wt.% oxygen, and subjecting the plated steel to an annealing process at an annealing temperature of 600 to 900ºC in an atmosphere with a dew point of -15 to +30ºC and a hydrogen concentration of 1% or more and 70% or less with a holding time of 5 to 120 seconds (present specification, paragraphs 0055-0059).
Kohler et al. disclose a steel sheet comprising silicon and manganese with a plating of iron comprising 5 to 50 wt.% oxygen (paragraphs 0021 and 0035). The plated steel sheet is heated to 550 to 880ºC in an atmosphere with a dew point of -70 to +15ºC and a hydrogen concentration of 2 to 40%, and a holding time of 30 to 650 seconds (paragraph 0053). While Kohler et al. do not appear to disclose the exact ranges disclosed by applicants, one of ordinary skill in the art before the effective filing date the claimed invention, would have found it obvious to select from within the parameters disclosed by Kohler et al. including those which fall within applicants’ disclosed ranges.
Given the treatment of substantially identical materials in a substantially identical manner, the plated steel sheets of Kohler et al. would be expected to have concertation profiles substantially identical to those of applicants’ plated steel sheets, and thus have GDS profiles substantially identical to those disclosed by applicants, including GDS profiles that conform to applicants’ claimed requirements.
Regarding applicants’ claim 16, Kohler et al. disclose a steel sheet comprising (in weight percent) elements which include: Mn: 8.1 to 25.0%, Si: 0.01 to 3.0%, C: 0.1-1.0%, Al: 1.0 to 8.0%, P: ≤ 0.10%, S: ≤ 0.010%, Cr: 0.01- 0.7%, B: 0.001 to 0.08%, the remainder being iron and unavoidable impurities (paragraphs 0038-0052). Kohler et al. do not disclose the presence of nitrogen. Nitrogen is therefore considered to be negligible and at a minimum not present at greater than impurity levels which at least overlaps applicants’ claimed range.
While Kohler et al. do not appear to disclose the exact ranges claimed by applicants one of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to select from the values disclosed by Kohlar et al. including those which fall within applicants’ claimed ranges, or come so close to applicants’ claimed ranges as to establish a prima facie case of obviousness (MPEP 2144.05 I).
With regards to the manganese content, applicants’ disclose that “The upper limit of the concentration of Mn in the base iron is not particularly limited, but considering the commonly used composition, the upper limit may be limited to 8% by weight” (present specification paragraph 0044). Given that applicants’ disclose that the upper content of manganese is not particularly limited, the amounts disclosed by Kohlar et al. (8.1 to 25.0 wt.%) would be so close to applicants’ claimed range, that the steel sheets of applicants’ Kohlar et al. would be expected to exhibit the same properties.
Kohler et al. disclose a plating of iron comprising 5 to 50 wt.% oxygen (paragraphs 0021 and 0035). The plated steel sheet is heated to 550 to 880ºC in an atmosphere with a dew point of -70 to +15ºC and a hydrogen concentration of 2 to 40%, (paragraph 0053). While Kohler et al. do not appear to disclose the exact ranges disclosed by applicants, one of ordinary skill in the art before the effective filing date the claimed invention, would have found it obvious to select from within the parameters disclosed by Kohler et al. including those which fall within applicants’ disclosed ranges.
Regarding applicants’ claim 17, Kohlar et al. disclose an average thickness for the iron plating to be 0.1 to 0.4 µm (paragraph 0034). Assuming a density of iron at 7.87 g/cm3 the coating weight range would be 0.31 to 1.5 g/m2 which falls within applicants’ claimed range.
Regarding applicants’ claim 20, Kohlar disclose a current density of 1 to 150 A/dm2 which overlaps applicants’ claimed range. One of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to select a current density from with the disclosed range including values which fall within applicants’ claimed range.
Claims 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Kohler et al. (PGPub US 2022/0170164), as applied to claim 16 above, further in view of Jung et al. (KR 10-2020-0142748, references herein made to the English translation form EPO espacenet dated January 4, 2026).
Regarding applicants’ claim 18, Kohler et al. disclose a steel sheet and process of manufacture as discussed above with respect to claim 16 where the electroplating solution includes a complexing agent (paragraph 0029), but do not appear to explicitly disclose the complexing agent to be one of the claimed amino acids. Jung et al. disclose an iron plating solution including a complexing agent, where the complexing agent may be one or more selected from alanine, glycine, serine, threonine, arginine, glutamine, glutamic acid, and glycylglycine (page 10 lines 12-14). One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to use at least one of the complexing agents of Jung et al. as the complexing agent of Kohlar et al. where the complexing agents of Jung et al. are demonstrated in the art to be effective complexing agents in iron plating solutions and where the use of a demonstrated complexing agent would yield predictable results.
Regarding applicants’ claim 19, Kohlar et al. exemplify an electrolyte composition including 60 g/L iron ions (paragraph 0026). One of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to use a concentration of iron ions of approximately 60 g/L where it is demonstrated as a suitable concertation.
Kohlar et al. do not appear to particularly limit the content of the ferrous and ferric ions relative to the total weight of iron ions. However Jung et al. disclose an iron plating solution where the content of ferric ions among the iron ions is preferably 5 to 60% by weight, where if it is less than 5%, the rate at which ferric iron is reduced to ferrous iron at the cathode is lower than the rate at which ferrous iron is oxidized to ferric iron at the anode, and the concentration of ferric iron increases rapidly, and the plating efficiency decreases sharply as the pH decreases. Jung et al. further disclose that if the concentration of ferric ions exceeds 60%, the amount of reaction by which ferric iron is reduced to ferrous iron at the cathode increases more than the amount of reaction that precipitates as metallic iron due to reduction of ferrous iron, so plating efficiency decreases (page 7 lines 19-31). One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to implement the iron ion ratio of Jung et al. in the electroplating solution of Kohlar et al. in order to provide desirable plating efficiency with predictable results.
Response to Arguments
Applicants’ remarks filed April 9, 2026 have been considered but have not been found persuasive.
Applicants argue that a base material is adequately defined within the technical context of the specification. However this statement alone is insufficient to demonstrate that the claims as written are clear. Applicants’ statements with regards to the specification supporting clarity of the claimed base material do not cite specific passages or definitions within the specification that define what is considered a base material. Claim 12 does not define a base material although it is noted that claim 13 defines a base steel sheet. Even if the steel sheet of claim 12 is a base steel sheet it is not clear what constitutes a base material. If the steel sheet is a base steel sheet, and the base steel sheet is formed of a base material, then it is unclear how the claimed concentrations can be defined with respect to themselves. Do applicants intend to define a difference between the elemental concentration at a maximum point with respect to the average concertation of that element within a base material of a base steel sheet of a steel sheet? Further it is unclear where the steel sheet of claim 12 may include additional layers based on dependent claim 13 with the steel sheet further defined as including a base steel sheet and an Fe plating layer. Applicants’ arguments are not found sufficient to clarify what is intended by “a Mn concentration of a base material” and “a Si concentration of a base material”.
Applicants argue that Kohler would direct one of ordinary skill in the art away from the claimed embodiment and that applicants’ present embodiment deliberately induces and controls internal oxidation. Regardless of whether the effect is deliberate the process steps and materials as discussed in the rejection above are substantially identical to those disclosed by applicants’. Once a reference teaching a product appearing to be substantially identical is made the basis of a rejection and the examiner presents evidence or reasoning to show inherency the burden of production shifts to the applicant. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same" MPEP 2112 V.
Applicants further argue that the examiner’s conclusion of inherency is based on a partial overlap of process parameters. However when a disclosure overlaps it is within the ordinary level of skill in the art to select from within the range of materials or parameters disclosed, in this case, values which fall within the range disclosed by applicants’. Because it is obvious to select values identical or substantially identical to those disclosed by applicants, the products resulting from those parameters would be expected to be substantially identical. Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." MPEP 2144.05 III A. To rebut a rejection based on overlapping parameters leading to products inherently possessing applicants’ claimed features, applicants may present evidence that the claimed features cannot be obtained by the prior art process and/or by presenting evidence that the claimed range (concentration difference range) is critical, such as by demonstrating unexpected results (See MPEP 716.02(a)).
For these reasons, and for those reasons as discussed in the rejections above, the present claims are not found to distinguish over the prior art, and the rejections of record are maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 ADAM C KRUPICKA whose telephone number is (571)270-7086. The examiner can normally be reached Monday-Friday 8-5pm EST.
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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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/Adam Krupicka/Primary Examiner, Art Unit 1784
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