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 .
Election/Restrictions
Claims 8-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on March 30, 2026.
Applicant's election with traverse of Group I (claims 1-7 and 14-20) in the reply filed on 05/08/2026 is acknowledged. The traversal is on the ground(s) that there is no undue search burden. This is not found persuasive as the burden lies in the search and examination of patentably distinct inventions and/or because the groups have separate classifications which require a different field of search. The requirement is still deemed proper and is therefore made FINAL.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Korea on May 31, 2022. It is noted, however, that applicant has not filed a certified copy of the KR10-2022-0067233 application as required by 37 CFR 1.55.
Claim Objections
Claim 1 is objected to because of the following informalities: adjust capitalization and punctuation to make the claim a single sentence. Appropriate correction is required.
Claim 2 is objected to because of the following informalities: adjust capitalization and punctuation to make the claim a single sentence. Appropriate correction is required.
Claim 14 is objected to because of the following informalities: adjust capitalization and punctuation to make the claim a single sentence. Appropriate correction is required.
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 and 14-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 14-16 and 19 of copending Application No. 18965209 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they contain the following overlapping subject matter.
These are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Regarding instant claims 1-3, 5-7, they are identical to claims 1-3 and 5-7 of ‘219, except for: ‘219 uses “component” instead of “part”; and ‘219 recites a range of tensile strength (TS) of “about 1350 MPa to 1680 MPa”, while the instant application recites a range of 1680 MPa to 2000 MPa. With respect to the former, the terms are considered to be analogous. With respect to the latter, when the claimed ranges both include, at least, 1680 MPa; therefore, the claims contain overlapping subject matter. Similarly, with respect to claim 4, the range recited in ‘219 for the yield strength (YP) is about 900 to 1300 MPa, while the instant claim 4 recites about 1150 to 1500 MPa. Thus, the ranges overlap. Regarding claims 14-16, the instant claims are substantially identical to claims 14-16 and 19 of ‘209, with the difference being the ranges of TS and YP. However, the ranges overlap, thus the subject matter overlaps. With respect to claim 16, the instant claim is more specific than that of ‘209, but is encompassed by the generic recitation to a zinc based plating layer.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-4 and 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoo et al. (US 2021/0147955) in view of Otomo et al. (US 2018/0281348). Regarding claim 1, Yoo et al. disclose a “hot stamping part (paragraph 77) comprising: a base material (paragraph 77); a decarburization layer located on the base material (paragraph 77),wherein the hot stamping part has a tensile strength (TS) of about 1680 MPa to 2000 MPa (paragraph 77).”
Yoo et al. fail to disclose “and an inner oxide layer located on the decarburization layer”. However, Otomo et al. teach providing an internal oxide layer in a steel sheet beneath the plating layer in order to decrease the heating time for suppressing liquid metal embrittlement (LME), and/or to increase productivity in manufacturing (paragraphs 15, 25, and 29). Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to provide the hot stamping part of Yoo et al. with an internal oxide layer in order to suppress LME and/or to increase productivity. Yoo et al. also fail to teach “a hardness of the hot stamping part within a depth of about 50 µm from a surface of the hot stamping part in a plate thickness direction of the hot stamping part and an average hardness of the hot stamping part satisfy Relational Expression 1. <Relational Expression 1> (A / B) ≤ 0.7 (In Relational Expression 1, A denotes the hardness (Hv(≤50 µm)) within the depth of 50 µm in the plate thickness direction of the hot stamping part, and B denotes the average hardness (Hv(avg.)) of the hot stamping part.) However, it has been held that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by an identical or substantially identical process, a prima facie case of either anticipation or obviousness has been established, and recited properties are presumed inherent. See MPEP §2112.01. In this instance, the hot stamped part of Yoo et al., as modified, is substantially identical in composition as that of Applicant, and made in a substantially identical method. With respect to the claimed composition, as exemplified by instant claim 17, Yoo et al. disclose the base material comprises: 0.25 wt% to 0.5 wt% carbon (C) (paragraph 36), 0.1 wt% to 0.8 wt% silicon (Si) (paragraph 39), 0.3 wt% to 3.0 wt% manganese (Mn) (paragraph 42), 0.01 wt% to 0.1 wt% of at least one of titanium (Ti) (paragraph 54), niobium (Nb), and vanadium (V), 0.01 wt% to 1.0 wt% chromium (Cr) (paragraph 48), and the remainder being iron (Fe) and unavoidable impurities (paragraph 31) With respect to the manufacturing method, Yoo et al. disclose a substantially identical process (see Figure 1) as that of Applicant (see paragraph 117 and Figure 2 of Applicant’s disclosure), with the disclosed ranges of each process parameter being either identical or overlapping (see the associated paragraphs of Yoo et al. which correspond to each step from Figure 1). Therefore, since the hot stamping part of Yoo et al., as modified, is at least substantially identical to that claimed, the properties recited in the remainder of claim 1 and in claims 2 and 3 are presumed inherent. Regarding claim 4, Yoo et al. further disclose “wherein the hot stamping part has a yield strength (YP) of about 1150 MPa to 1500 MPa and an elongation (EL) of about 4% to 10% (paragraph 77).” Regarding claim 6, Yoo et al. further disclose “further comprising a plating layer located on the inner oxide layer (paragraph 72).” Regarding claim 7, Yoo et al., as modified, disclose all that is claimed, as in claim 6 above, but fail to disclose the thickness of the plating layer, leaving the choice up to one having ordinary skill in the art. Examiner asserts that one having ordinary skill in the art would know that the thickness of the plating layer effects the anti-corrosive effects of the layer, with too small a layer not having enough anti-corrosive effects. It has been held that when the general conditions are disclosed in the art, it is not inventive to discover the optimum or workable ranges through routine experimentation. See MPEP §2144.05. Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art, through routine experimentation, to set the thickness of the plating layer to between 10 and 30 µm in order to achieve the desired, workable, or optimal anti-corrosive effects.
Claim(s) 5, 14, 14, and 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoo et al. and Otomo et al., further in view of No et al. (KR102250333B1). The US-equivalent of No et al. (US2022/0205059) will be used for citations. Regarding claim 5, Yoo et al., as modified, disclose all that is claimed, as in claim 1 above, except “wherein the hot stamping part has a microstructure with a martensite fraction of about 90% or more.” However, No et al. teach having a steel sheet which has 95% by area martensite, and that a larger martensite fraction results in steel having both excellent strength and formability (paragraphs 54 and 55). Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art, through routine experimentation, to set the amount of martensite to greater than 90% in order to achieve a steel with excellent strength and formability. See MPEP §2144.05.
Regarding claims 14-17, and 19, Yoo et al. disclose “a hot stamping part comprising: a base material (paragraph 77); a decarburization layer located on a surface of the base material (paragraph 77); and a plating layer located on the inner oxide layer (paragraph 72), wherein the hot stamping part has: a tensile strength (TS) of 1680 MPa to 2000 MPa (paragraph 77), a yield strength (YP) of 1150 MPa to 1500 MPa (paragraph 77), an elongation (EL) of 4% to 10% (paragraph 77).”
Yoo et al. fail to disclose “and an inner oxide layer located on the decarburization layer”. However, Otomo et al. teach providing an internal oxide layer in a steel sheet beneath the plating layer in order to decrease the heating time for suppressing liquid metal embrittlement (LME), and/or to increase productivity in manufacturing (paragraphs 15, 25, and 29). Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to provide the hot stamping part of Yoo et al. with an internal oxide layer in order to suppress LME and/or to increase productivity. Yoo et al. also fail to disclose “wherein the base material comprises a microstructure with a martensite fraction of 90% or more.” However, No et al. teach having a steel sheet which has 95% by area martensite, and that a larger martensite fraction results in steel having both excellent strength and formability (paragraphs 54 and 55). Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art, through routine experimentation, to set the amount of martensite to greater than 90% in order to achieve a steel with excellent strength and formability. See MPEP §2144.05. With respect to the remaining claim elements, it has been held that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by an identical or substantially identical process, a prima facie case of either anticipation or obviousness has been established, and recited properties are presumed inherent. See MPEP §2112.01. In this instance, However, it has been held that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by an identical or substantially identical process, a prima facie case of either anticipation or obviousness has been established, and recited properties are presumed inherent. See MPEP §2112.01.
In this instance, the hot stamped part of Yoo et al., as modified, is substantially identical in composition as that of Applicant, and made in a substantially identical method. With respect to the claimed composition, as exemplified by instant claim 17, Yoo et al. disclose the base material comprises: 0.25 wt% to 0.5 wt% carbon (C) (paragraph 36), 0.1 wt% to 0.8 wt% silicon (Si) (paragraph 39), 0.3 wt% to 3.0 wt% manganese (Mn) (paragraph 42), 0.01 wt% to 0.1 wt% of at least one of titanium (Ti) (paragraph 54), niobium (Nb), and vanadium (V), 0.01 wt% to 1.0 wt% chromium (Cr) (paragraph 48), and the remainder being iron (Fe) and unavoidable impurities (paragraph 31) With respect to the manufacturing method, Yoo et al. disclose a substantially identical process (see Figure 1) as that of Applicant (see paragraph 117 and Figure 2 of Applicant’s disclosure), with the disclosed ranges of each process parameter being either identical or overlapping (see the associated paragraphs of Yoo et al. which correspond to each step from Figure 1). Therefore, since the hot stamping part of Yoo et al., as modified, is at least substantially identical to that claimed, the properties recited in the remainder of claim 14, and in claims 15 and 19, are presumed inherent.
Regarding claim 16, Yoo et al., as modified, discloses all that is claimed, as in claim 14 above, except “wherein the plating layer is a zinc (Zn)-based plating layer comprising zinc (Zn), iron (Fe), aluminum (Al), manganese (Mn), silicon (Si), and unavoidable impurities, and has a thickness of 10 µm to 30 µm.” However, Yoo et al. disclose using a plating bath at a temperature of 650°C to 660°C (paragraph 72) and Otomo et al. disclose a zinc plating bath with Al and controlling the amount of plating mass (paragraph 88). Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to use a zinc plating bath because it has been shown in the art to be suitable for the intended purpose of providing a plating layer. See MPEP §2144.07. Furthermore, since the composition of the plating bath and the base steel plate is substantially identical to that used by Applicant (see the discussion of claim 17 supra), and the temperature is the same, examiner contends that the plating layer would have the same composition as is recited. Regarding the thickness of the plating layer, Yoo et al. are silent as to the thickness, leaving the choice up to one having ordinary skill in the art. Examiner asserts that one having ordinary skill in the art would know that the thickness of the plating layer effects the anti-corrosive effects of the layer, with too small a layer not having enough anti-corrosive effects. Furthermore, Otomo et al. disclose controlling the amount of mass on the coating layer, which determines the thickness. Therefore, the thickness of the plating layer is a results-effective variable. It has been held that when the general conditions are disclosed in the art, it is not inventive to discover the optimum or workable ranges through routine experimentation. See MPEP §2144.05. Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art, through routine experimentation, to set the thickness of the plating layer to between 10 and 30 µm in order to achieve the desired, workable, or optimal anti-corrosive effects. Regarding claim 18, Otomo et al. further disclose “wherein the inner oxide layer comprises silicon (Si), manganese (Mn), and chromium (Cr) (paragraph 30) and has a depth of 5 µm or less (claim 2).” Regarding claim 20, Yoo et al. further disclose “wherein the decarburization layer and the inner oxide layer are formed by annealing the base material at a temperature of 750°C to 900°C in an annealing furnace with a dew point of -15°C to +15°C (paragraph 70).”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA D ZIMMERMAN whose telephone number is (571)272-2749. The examiner can normally be reached Monday-Thursday, 9:30AM-6:30PM, First Fridays: 9:30AM-5:30PM.
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, Stephen Meier can be reached at (571) 272-2149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOSHUA D ZIMMERMAN/Primary Examiner, Art Unit 2853
Prosecution Insights