DETAILED ACTION
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 12-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-15 of co-pending Application No. 18/868,518 (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. With regards to the claimed GDS profiles, the ranges of the co-pending claims fall within the ranges of the instant claims.
Claims 12-25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-15 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.
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. 18/873,503 (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 12-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-15 of co-pending Application No. 18/873,319 (reference application). The compositional proportions set forth in the co-pending claims are the same as the proportions of the instant claims, however the GDS profile requirement of the co-pending claims is not identical to of the instant claims the range established in the co-pending claims falls within the range of the instant claims.
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). 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 12-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-4, 6, and 17-19 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. 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.
Co-pending claims 17, 18, or 19 require all of the features required in the method of instant claim 16 including overlapping compositional proportions. 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.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Double Patenting (warning)
Co-pending application 18/039,175 is abandoned but includes a petition for withdraw of abandonment. Should the abandonment be withdrawn, the instant clams would be subject to double patenting as below.
Claims 12-15 would be 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. 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.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112(b)
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his 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 concentration 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.
Claim 12-17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Takeda et al. (PGPub US 2002/0160221) in view of Nozaki et al. (PGPub US 2014/0234658) and Kohler et al. (PGPub US 2022/0170164)
Regarding applicants’ claim 12-15, Takeda et al. disclose a steel sheet having an iron plating where the base steel is composed of (in weight %): 0.05 to 2.5% silicon, 0.2 to 3.0% manganese, and carbon at 0.05 to 0.20% (paragraph 0037), where composition may include elements such as aluminum (paragraph 0038). Takeda et al. do not appear to disclose a specific aluminum content, however Nozaki et al. disclose a plated steel sheet where the base steel may include aluminum from 0 to 2.0% in order to improve delayed fracture resistance (paragraphs 0105-0106). One of ordinary skill in the art would have found it obvious when including aluminum in the base steel of Takeda et al. to including amounts from 0 to 2.0% in order to improve delayed fracture resistance.
With regards to the overall composition, the prior art proportions do not appear to be identical ranges as those claimed, however 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 disclosed ranges, including values which fall within applicants’ claimed ranges.
Takeda 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, or an oxygen content of 5 to 50% wt.%. However it would have been within the ordinary level of skill in the art before the effective filing date of applicants’ claimed invention to treat the steel sheet of Takeda et al. in a manner substantially identical to that disclosed by applicants and therefore produce a GDS profile as claimed.
Takeda et al. disclose carrying out deposition of iron by electroplating followed by annealing, but do not appear to disclose a specific process parameters (paragraph 0036). Kohler et al. disclose a steel sheet including a process whereby an iron layer is electrolytically plated subjected to annealing, where without a precoating of pure iron, during the annealing treatment a solid deposition of oxides of the alloy elements takes place which can lead to adhesion failure (paragraph 0023). One of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to use the iron electroplating and annealing process of Kohler et al. as the electroplating process and annealing of Takeda et al. where Takeda et al. do not provide for specific parameters, and where Kohler et al. provide a known electroplating and annealing process demonstrated to be effective for iron plating of a steel substrate such that there would be a reasonable expectation of success in implementing the process of Kohler et al. to achieve a desirable iron plating.
While Takeda and 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).
Takeda et al. disclose a base steel sheet comprising Mn and Si with an Fe plating where Kohler et al. disclose an iron plating 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 Takeda et al. and 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, Takeda et al. disclose a steel sheet having an iron plating where the base steel is composed of (in weight %): 0.05 to 2.5% silicon, 0.2 to 3.0% manganese, and carbon at 0.05 to 0.20% (paragraph 0037), where composition may include elements such as aluminum (paragraph 0038). Takeda et al. do not appear to disclose a specific aluminum content, however Nozaki et al. disclose a plated steel sheet where the base steel may include aluminum from 0 to 2.0% in order to improve delayed fracture resistance (paragraphs 0105-0106). One of ordinary skill in the art would have found it obvious when including aluminum in the base steel of Takeda et al., to include amounts of 0 to 2.0% in order to improve delayed fracture resistance.
With regards to the overall composition the prior art proportions do not appear to be identical ranges as those claimed, however 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 disclosed ranges including values which fall within applicants’ claimed ranges.
Takeda et al. disclose carrying out deposition of iron by electroplating followed by annealing, but do not appear to disclose specific process parameters (paragraph 0036). Kohler et al. disclose a steel sheet including a process whereby an iron layer is electrolytically plated subjected to annealing, where without a precoating of pure iron, during the annealing treatment a solid deposition of oxides of the alloy elements takes place which can lead to adhesion failure (paragraph 0023). One of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to use the iron electroplating and annealing process of Kohler et al. as the electroplating process and annealing of Takeda et al. where Takeda et al. do not provide for specific parameters, and where Kohler et al. provide a known electroplating and annealing process demonstrated to be effective for iron plating of a steel substrate such that there would be a reasonable expectation of success in implementing the process of Kohler et al. to achieve a desirable iron plating.
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 Takeda et al. (PGPub US 2002/0160221), Nozaki et al. (PGPub US 2014/0234658), and 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, Takeda et al. and 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.
Conclusion
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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/Adam Krupicka/Primary Examiner, Art Unit 1784