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
Applicant’s election without traverse of Group I, claims 21-34 and 41-42, in the reply filed on 6/23/2026 is acknowledged. Claims 35-38 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
As Applicant did not traverse the restriction requirement, it is hereby deemed proper and made FINAL.
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 21-22 and 24-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. 6,743,307. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claims 21-22 and 24-25, claims 1-2 of Patent ‘307 recite a steel having an overlapping composition with respect to the first group of elements.
Regarding instant claim 26, claim 8 of Patent ‘307 recites applying a galvanizing coating to the steel.
Claims 21-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. 6,743,307 in view of Tabata et al. (US 2021/0355560). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claims 21-25, claims 1-2 of Patent ‘307 recite an overlapping composition for the claimed “second group of elements”, except for the recited Ce+La content. Tabata teaches a steel sheet having a similar composition that includes 0-0.30%, preferably 0.01%-0.05%, of REMs such as La and Ce (¶¶ 105-106). It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to include La and Ce in the amounts taught by Tabata because doing so refines inclusions in the steel and improves the roughness of the steel (¶ 105).
Regarding instant claim 26, claim 8 of Patent ‘307 recites applying a galvanizing coating to the steel.
Claims 21-22, 24-25 and 32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,272,644. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claims 21-22 and 24-25, claims 1, 9 and 16 of Patent ‘644 recite a steel composition which overlaps the claimed “first group of elements”.
Regarding instant claim 32, claims 1, 9 and 16 of Patent ‘644 recite an overlapping tensile strength.
Claims 21-25 and 32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,272,644 in view of Tabata et al. (US 2021/0355560). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claims 21-25, claims 1, 9 and 16 of Patent ‘644 recite an overlapping composition for the claimed “second group of elements”, except for the recited Ce+La content. Tabata teaches a steel sheet having a similar composition that includes 0-0.30%, preferably 0.01%-0.05%, of REMs such as La and Ce (¶¶ 105-106). It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to include La and Ce in the amounts taught by Tabata because doing so refines inclusions in the steel and improves the roughness of the steel (¶ 105).
Regarding instant claim 32, claims 1, 9 and 16 of Patent ‘644 recite an overlapping tensile strength.
Claims 21-22, 24-28, 30 and 41-42 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,529,123. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claims 21-22, 24-28, 30 and 41-42, claim 1 of Patent ‘123 recites a stamped steel having an overlapping composition with respect to the claimed “first group of elements”, as well as a coating having an overlapping composition. The presence of an alloy layer and Al-base layer are considered inherent since the process of forming an Al coating intrinsically results in the claimed structure.
Claims 21-28, 30 and 41-42 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,529,123 in view of Tabata et al. (US 2021/0355560). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claims 21-28, 30 and 41-42, 1 of Patent ‘123 recites a stamped steel having an overlapping composition with respect to the claimed “second group of elements”, except for the recited Ce+La content. Tabata teaches a steel sheet having a similar composition that includes 0-0.30%, preferably 0.01%-0.05%, of REMs such as La and Ce (¶¶ 105-106). It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to include La and Ce in the amounts taught by Tabata because doing so refines inclusions in the steel and improves the roughness of the steel (¶ 105).
Claims 21-22, 24-33 and 41-42 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 19-40 of copending Application No. 18/684,721 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claims 21-22 and 24-25, claims 19-21 of copending ‘721 recite an overlapping composition for the claimed “first group of elements”.
Regarding instant claims 26-28, claims 22-24 of copending ‘721 recite a coating layer having the same composition.
Regarding instant claim 29, claim 25 of copending ‘721 recites an overlapping property.
Regarding instant claims 30 and 41-42, claim 28 of copending ‘721 recites the same subject matter.
Regarding instant claim 31, claim 30 of copending ‘721 recites similar subject matter.
Regarding instant claim 32, claim 31 of copending ‘721 recites overlapping subject matter.
Regarding instant claim 33, claim 26 of copending ‘721 recites the same subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 21-33 and 41-42 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 19-40 of copending Application No. 18/684,721 (reference application) in view of Tabata et al. (US 2021/0355560). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claims 21-25, claims 19-21 of copending ‘721 recite an overlapping composition for the claimed “second group of elements”, except for the recited Ce+La content. Tabata teaches a steel sheet having a similar composition that includes 0-0.30%, preferably 0.01%-0.05%, of REMs such as La and Ce (¶¶ 105-106). It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to include La and Ce in the amounts taught by Tabata because doing so refines inclusions in the steel and improves the roughness of the steel (¶ 105).
Regarding instant claims 26-28, claims 22-24 of copending ‘721 recite a coating layer having the same composition.
Regarding instant claim 29, claim 25 of copending ‘721 recites an overlapping property.
Regarding instant claims 30 and 41-42, claim 28 of copending ‘721 recites the same subject matter.
Regarding instant claim 31, claim 30 of copending ‘721 recites similar subject matter.
Regarding instant claim 32, claim 31 of copending ‘721 recites overlapping subject matter.
Regarding instant claim 33, claim 26 of copending ‘721 recites the same subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 21-22, 24-33 and 41-42 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18-39 of copending Application No. 18/684,765 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claims 21-22 and 24-25, claims 18-20 of copending ‘765 recite an overlapping composition for the claimed “first group of elements”.
Regarding instant claims 26-28, claims 22-24 of copending ‘765 recite a coating layer having the same composition.
Regarding instant claim 29, claim 25 of copending ‘765 recites an overlapping property.
Regarding instant claims 30 and 41-42, claims 26-27 of copending ‘765 recite the same subject matter.
Regarding instant claim 31, claim 28 of copending ‘765 recites similar subject matter.
Regarding instant claim 32, claim 30 of copending ‘765 recites overlapping subject matter.
Regarding instant claim 33, claim 29 of copending ‘765 recites the same subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 21-33 and 41-42 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18-39 of copending Application No. 18/684,765 (reference application) in view of Tabata et al. (US 2021/0355560). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claims 21-25, claims 19-21 of copending ‘765 recite an overlapping composition for the claimed “second group of elements”, except for the recited Ce+La content. Tabata teaches a steel sheet having a similar composition that includes 0-0.30%, preferably 0.01%-0.05%, of REMs such as La and Ce (¶¶ 105-106). It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to include La and Ce in the amounts taught by Tabata because doing so refines inclusions in the steel and improves the roughness of the steel (¶ 105).
Regarding instant claims 26-28, claims 22-24 of copending ‘765 recite a coating layer having the same composition.
Regarding instant claim 29, claim 25 of copending ‘765 recites an overlapping property.
Regarding instant claims 30 and 41-42, claim 28 of copending ‘765 recites the same subject matter.
Regarding instant claim 31, claim 30 of copending ‘765 recites similar subject matter.
Regarding instant claim 32, claim 31 of copending ‘765 recites overlapping subject matter.
Regarding instant claim 33, claim 29 of copending ‘765 recites the same subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 21-22, 24-27, 29-33 and 41-42 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 30-35 of copending Application No. 18/867,678 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claims 21-22, 24-25, 30, 32 and 41-42, claims 30-31 and 33 of copending ‘678 recite an overlapping composition for the claimed “first group of elements”.
Regarding instant claims 26-27, claim 35 of copending ‘678 recite a coating layer having an overlapping composition.
Regarding instant claim 29, claim 25 of copending ‘678 recites an overlapping property.
Regarding instant claim 31, claim 32 of copending ‘678 recites similar subject matter.
Regarding instant claim 33, claim 34 of copending ‘678 recites the same subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 21-33 and 41-42 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 30-35 of copending Application No. 18/867,678 (reference application) in view of Tabata et al. (US 2021/0355560). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claims 21-25, 30, 32 and 41-42, claims 19-21 of copending ‘678 recite an overlapping composition for the claimed “second group of elements”, except for the recited Ce+La content. Tabata teaches a steel sheet having a similar composition that includes 0-0.30%, preferably 0.01%-0.05%, of REMs such as La and Ce (¶¶ 105-106). It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to include La and Ce in the amounts taught by Tabata because doing so refines inclusions in the steel and improves the roughness of the steel (¶ 105).
Regarding instant claims 26-27, claim 35 of copending ‘678 recite a coating layer having an overlapping composition.
Regarding instant claim 28, copending ‘678 does not recite the composition of the Al layer. Tabata discloses an Al layer composition which overlaps the claimed composition (¶ 131). It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to use a known aluminizing coating composition for the Al layer of copending ‘678 because there is an expectation of success in using known aluminum compositions to coat a steel sheet for stamping.
Regarding instant claim 29, claim 25 of copending ‘678 recites an overlapping property.
Regarding instant claim 31, claim 32 of copending ‘678 recites similar subject matter.
Regarding instant claim 33, claim 34 of copending ‘678 recites the same subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 21-22, 24-28, 30-31 and 41-42 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15-22 of copending Application No. 18/873,947 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claims 21-22, 24-25, 30 and 41-42, claims 15 and 22 of copending ‘947 recite an overlapping composition for the claimed “first group of elements”.
Regarding instant claims 26-28, claim 15 of copending ‘947 recites a coating layer having the same composition.
Regarding instant claim 31, claim 21 of copending ‘947 recites similar subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 21-28, 30-31 and 41-42 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15-22 of copending Application No. 18/873,947 (reference application) in view of Tabata et al. (US 2021/0355560). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claims 21-25, 30 and 41-42, claims 15 and 22 of copending ‘947 recite an overlapping composition for the claimed “second group of elements”, except for the recited Ce+La content. Tabata teaches a steel sheet having a similar composition that includes 0-0.30%, preferably 0.01%-0.05%, of REMs such as La and Ce (¶¶ 105-106). It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to include La and Ce in the amounts taught by Tabata because doing so refines inclusions in the steel and improves the roughness of the steel (¶ 105).
Regarding instant claims 26-28, claim 15 of copending ‘947 recites a coating layer having an overlapping composition.
Regarding instant claim 31, claim 21 of copending ‘947 recites similar subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 21-22 and 24-28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 19/052,688 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claims 21-22 and 24-25, claims 1 and 14-15 of copending ‘688 recite an overlapping composition for the claimed “first group of elements”.
Regarding instant claims 26-28, claim 1 of copending ‘688 recites a coating layer having an overlapping composition.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 21-28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 19-40 of copending Application No. 19/052,688 (reference application) in view of Tabata et al. (US 2021/0355560). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claims 21-25, claims 1 and 14-15 of copending ‘688 recite an overlapping composition for the claimed “second group of elements”, except for the recited Ce+La content. Tabata teaches a steel sheet having a similar composition that includes 0-0.30%, preferably 0.01%-0.05%, of REMs such as La and Ce (¶¶ 105-106). It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to include La and Ce in the amounts taught by Tabata because doing so refines inclusions in the steel and improves the roughness of the steel (¶ 105).
Regarding instant claims 26-28, claim 1 of copending ‘688 recites a coating layer having an overlapping composition.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 21-22, 24-28, 30 and 41-42 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 25-32 of copending Application No. 19/133,013 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claims 21-22, 24-25, 30 and 41-42, claims 25-28 of copending ‘013 recite an overlapping composition for the claimed “first group of elements”.
Regarding instant claims 26-28, claims 28-31 of copending ‘013 recite a coating layer having an overlapping composition.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 21-28, 30 and 41-42 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 25-32 of copending Application No. 19/133,013 (reference application) in view of Tabata et al. (US 2021/0355560). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claims 21-22, 24-25, 30 and 41-42, claims 25-28 of copending ‘013 recite an overlapping composition for the claimed “second group of elements”, except for the recited Ce+La content. Tabata teaches a steel sheet having a similar composition that includes 0-0.30%, preferably 0.01%-0.05%, of REMs such as La and Ce (¶¶ 105-106). It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to include La and Ce in the amounts taught by Tabata because doing so refines inclusions in the steel and improves the roughness of the steel (¶ 105).
Regarding instant claims 26-28, claims 28-31 of copending ‘013 recite a coating layer having the same composition.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 21-28, 30, and 41-42 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 19-38 of copending Application No. 19/150,439 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claims 21-25, claims 19-20 of copending ‘439 recite overlapping compositions for the claimed first and second groups of elements.
Regarding instant claims 26-28, claims 23-25 of copending ‘439 recite a coating layer having the same composition.
Regarding instant claims 30 and 41-42, claim 33 of copending ‘439 recites the same subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
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 32 and 34 is 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 32 recites: “at least partly has one or more characteristics”. This limitation is indefinite because it does not define how something can have ‘at least partly’ one or more characteristics. It either has it or it does not. It cannot ‘partly’ have a characteristic. For purposes of examination, ‘partly’ is ignored.
Claim 34 recites: “a modified slow strain rate test of greater than 610 MPa”. This limitation is indefinite because the word “modified” is not qualified and as such, a person having ordinary skill in the art would not know in what way the slow strain rate test has been modified for the purpose of the claim. For purposes of examination, the description in the specification has been adopted.
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 21-25, 30 and 41 are rejected under 35 U.S.C. 103 as being unpatentable over Becker et al. (US 2016/0311197), or, in the alternative, over Becker et al. (US 2016/0311197) in view of Tabata (US 2021/0355560).
Regarding claim 21, Becker discloses a composition for a steel sheet, as compared to the claimed invention:
Claim 1 (1st group)
Claim 1 (2nd group)
Becker, ¶¶ 46-62
C
0.06%-0.5%
0.06%-0.5%
≤0.09%
Si
0.05%-0.6%
0.05%-0.6%
≤0.7%
Mn
0.4%-3.0%
0.4%-3.0%
0.1%-1.9%
Al
0.06%-0.35%
-
≤0.06%
B
0.0005%-0.01%
0.0005%-0.01%
≤0.001%
V
0.010%-0.50%
0.010%-0.50%
≤0.02%
P
≤0.03%
≤0.03%
≤0.025%
S
≤0.02%
≤0.02%
≤0.015%
N
≤0.02%
≤0.02%
≤0.006%
Sn
≤0.03%
≤0.03%
≤0.04%
As
≤0.01%
≤0.01%
-
Ce+La
-
0.01%-0.03%
-
Fe
Balance
Balance
Balance
Regarding claims 22-23, the steel of Becker also includes the following additional elements, as compared to the claimed composition:
Claim 22
Claim 23
Becker, ¶¶ 46-62
Ce+La
0.01%-0.03%
-
-
Al
-
≤1.0%
≤0.06%
Ti
0.0005%-0.10%
0.0005%-0.10%
≤0.13%
Nb
0.001%-0.2%
0.001%-0.2%
≤0.025%
Cr
0.01%-1.0%
0.01%-1.0%
≤0.4%
Cu
0.01%-0.2%
0.01%-0.2%
≤0.15%
Mo
0.002%-0.3%
0.002%-0.3%
≤0.05%
Ni
0.01%-0.5%
0.01%-0.5%
≤0.15%
Ca
0.0005%-0.005%
0.0005%-0.005%
≤0.003%
W
0.001%-1.0%
0.001%-1.0%
-
Becker does not expressly teach a Ce+La content. For the compositions that do not require Ce+La, Becker discloses a composition which overlaps the claimed composition, creating a prima facie case of obviousness.
In the alternative, where Ce+La is required, Tabata teaches a steel sheet having a similar composition that includes 0-0.30%, preferably 0.01%-0.05%, of REMs such as La and Ce (¶¶ 105-106). It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to include La and Ce in the amounts taught by Tabata because doing so refines inclusions in the steel and improves the roughness of the steel (¶ 105). The prior art compositions for claims 21-23 overlap the claimed compositions, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Regarding claim 24, based on the disclosed composition in Becker, the ratio of Al/(Nb+V) overlaps the claimed range, creating a prima facie case of obviousness. See MPEP 2144.05 I. In addition, Becker discloses examples where Al/(Nb+V)≤30.0 (see e.g., Table 1; Ex. A1, A2).
Regarding claim 25, based on the disclosed composition in Becker, the sum of Mn+Cr overlaps the claimed range, creating a prima facie case of obviousness. See MPEP 2144.05 I. In addition, Becker discloses examples where Mn+Cr is between 0.7% and 3.5% (see, e.g., Table 1; Ex. A3, A4, K1).
Regarding claims 30 and 41, Becker teaches the steel is hot pressed (¶ 64) and thus has been shaped.
Claims 21-34 and 41-42 are rejected under 35 U.S.C. 103 as being unpatentable over Tabata et al. (US 2021/0355560).
Regarding claim 21, Tabata discloses the following steel sheet, as compared to the claimed invention:
Claim 1 (1st group)
Claim 1 (2nd group)
Tabata, ¶¶ 64-107
C
0.06%-0.5%
0.06%-0.5%
0.25%-0.6%, pref. 0.31%-0.44%
Si
0.05%-0.6%
0.05%-0.6%
0.25%-2.0%, pref. 0.35%-0.60%
Mn
0.4%-3.0%
0.4%-3.0%
0.30%-3.0%
Al
0.06%-0.35%
-
≤1.0%
B
0.0005%-0.01%
0.0005%-0.01%
0.0005%-0.01%
V
0.010%-0.50%
0.010%-0.50%
≤1.0%, pref. 0.01%-0.10%
P
≤0.03%
≤0.03%
≤0.050%, pref. ≤0.02%
S
≤0.02%
≤0.02%
≤0.010%
N
≤0.02%
≤0.02%
≤0.010%
Sn
≤0.03%
≤0.03%
≤1.0%, pref. ≤0.01%
As
≤0.01%
≤0.01%
-
Ce+La
-
0.01%-0.03%
≤0.30% REMs incl. La and Ce, pref. ≤0.30%
Fe
Balance
Balance
Balance
The prior art composition overlaps the claimed composition, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Regarding claims 22-23, the steel of Tabata also includes the following additional elements, as compared to the claimed composition:
Claim 22
Claim 23
Tabata, ¶¶ 64-107
Ce+La
0.01%-0.03%
-
≤0.30% REMs incl. La and Ce, pref. ≤0.30%
Al
-
≤1.0%
≤1.0%
Ti
0.0005%-0.10%
0.0005%-0.10%
0.01%-0.10%
Nb
0.001%-0.2%
0.001%-0.2%
0-0.10%
Cr
0.01%-1.0%
0.01%-1.0%
≤1.0%
Cu
0.01%-0.2%
0.01%-0.2%
0.01%-1.0%, pref. 0.15%-0.35%
Mo
0.002%-0.3%
0.002%-0.3%
0.10%-1.0%, pref. 0.15%-0.30%
Ni
0.01%-0.5%
0.01%-0.5%
≤1.0%, pref. ≤0.5%
Ca
0.0005%-0.005%
0.0005%-0.005%
≤0.010%
W
0.001%-1.0%
0.001%-1.0%
≤1.0%
The prior art composition overlaps the claimed composition, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Regarding claim 24, based on the disclosed composition in Tabata, the ratio of Al/(Nb+V) overlaps the claimed range, creating a prima facie case of obviousness. See MPEP 2144.05 I. In addition, Tabata discloses examples where Al/(Nb+V)≤30.0 (see Table 2; Ex. a1&a17).
Regarding claim 25, based on the disclosed composition in Tabata, the sum of Mn+Cr overlaps the claimed range, creating a prima facie case of obviousness. See MPEP 2144.05 I. In addition, Tabata discloses examples where Mn+Cr is between 0.7% and 3.5% (see, e.g., Table 2; Ex. a1, a2, a4, a7, a8).
Regarding claims 26-27, Tabata teaches forming an Al based coating on the steel sheet (¶ 55), which provides corrosion resistance (¶ 56). The coating is formed on the steel, followed by heat treatment (¶ 174), which would inherently result in the formation of an alloy layer underneath an Al based layer.
Regarding claim 28, Tabata teaches the Al based coating contains 5%-90% Al, about 0-20% Si, and small amounts of other elements (¶ 131). This overlaps the claimed range, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Regarding claims 30 and 41-42, Tabata teaches the steel sheet is stamped (¶ 47).
Regarding claim 31, Tabata teaches the steel sheet is 90% or more martensite (¶ 110).
Regarding claims 29 and 32-34, Tabata teaches the steel has a tensile strength over 1500 MPa (¶ 205), but does not expressly teach the other properties. However, the process of making the steel sheet of Tabata is substantially similar to the process for making the claimed steel sheet:
Heating slab to 1100°C -1400°C
Heating slab to 1100°C-1350°C (¶ 151)
Optional pre-rolling at an intermediate temperature of 1000°C -1200°C
Rough rolling, the temperature is necessarily below the slab heating temperature and the final rolling temperature (¶ 151)
Hot rolling with a final rolling temperature of 750°C-1000°C
Hot rolling with finish temperature of Ar3 - 1000°C (¶ 157)
Optional coiling at <700°C
Coiling at ≤700°C (¶ 160)
Descaling
Descaling (¶ 162)
Optional cold rolling at least 30% rate
Cold rolling at 30%-80% rate (¶ 162)
Annealing at 650°C-900°C
Anneal at 550°C -950°C (¶ 165)
The instant specification does not ascribe any importance in the coating process to obtaining the claimed properties of claims 29 and 32-34. Accordingly, one of ordinary skill in the art would expect the prior art steel sheet to also exhibit the claimed properties, absent objective evidence to the contrary. See MPEP 2112.
Claims 21-25, 30-33 and 41 are rejected under 35 U.S.C. 103 as being unpatentable over Yi et al. (CN 112226691).
Regarding claim 21, Yi discloses the following steel sheet, as compared to the claimed invention:
Claim 1 (1st group)
Claim 1 (2nd group)
Yi (p. 1, ¶ 7)
C
0.06%-0.5%
0.06%-0.5%
0.34%-0.36%
Si
0.05%-0.6%
0.05%-0.6%
0.01%-0.10%
Mn
0.4%-3.0%
0.4%-3.0%
1.20%-1.55%
Al
0.06%-0.35%
-
0.015%-0.055%
B
0.0005%-0.01%
0.0005%-0.01%
0.002%-0.004%
V
0.010%-0.50%
0.010%-0.50%
0.031%-0.050%
P
≤0.03%
≤0.03%
≤0.010%
S
≤0.02%
≤0.02%
≤0.004%
N
≤0.02%
≤0.02%
≤0.003%
Sn
≤0.03%
≤0.03%
-
As
≤0.01%
≤0.01%
-
Ce+La
-
0.01%-0.03%
0.020%-0.034%
Fe
Balance
Balance
Balance
The prior art composition overlaps the claimed composition, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Regarding claims 22-23, the steel of Tabata also includes the following additional elements, as compared to the claimed composition:
Claim 22
Claim 23
Yi (p. 1, ¶ 7)
Ce+La
0.01%-0.03%
-
0.020%-0.034%
Al
-
≤1.0%
0.015%-0.055%
Ti
0.0005%-0.10%
0.0005%-0.10%
-
Nb
0.001%-0.2%
0.001%-0.2%
0.03%-0.045%
Cr
0.01%-1.0%
0.01%-1.0%
-
Cu
0.01%-0.2%
0.01%-0.2%
-
Mo
0.002%-0.3%
0.002%-0.3%
0.26%-0.35%
Ni
0.01%-0.5%
0.01%-0.5%
≤1.0%, pref. ≤0.5%
Ca
0.0005%-0.005%
0.0005%-0.005%
-
W
0.001%-1.0%
0.001%-1.0%
-
The prior art composition overlaps the claimed composition, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Regarding claim 24, based on the disclosed composition in Yi, the ratio of Al/(Nb+V) overlaps the claimed range, creating a prima facie case of obviousness. See MPEP 2144.05 I. In addition, Yi discloses examples where Al/(Nb+V)≤30.0 (see Table 1; Ex. 1&3).
Regarding claim 25, based on the disclosed composition in Yi, the sum of Mn+Cr necessarily lies within the claimed range.
Regarding claims 30 and 41, Yi teaches the steel sheet is stamped (p. 1, ¶ 1).
Regarding claim 31, Yi teaches the steel sheet fully martensite (p. 2, ¶ 1).
Regarding claim 32, Tabata teaches the steel has a tensile strength over 1800 MPa, a yield strength of over 1400 MPa, and an elongation of at least 8% (p. 2, ¶ 1).
Regarding claim 33, Yi teaches the presence of niobium carbonitrides (p. 3, ¶ 1).
Claims 26-28 and 42 are rejected under 35 U.S.C. 103 as being unpatentable over Yi et al. (CN 112226691) as applied to claim 21, further in view of Tabata et al. (US 2021/0355560).
Regarding claims 26-28, the limitations of claim 21 have been addressed above. Yi does not teach forming a corrosion resistant layer on the steel. Tabata teaches forming an Al based coating on the steel sheet (¶ 55), which provides corrosion resistance (¶ 56). The coating is formed on the steel, followed by heat treatment (¶ 174), which would inherently result in the formation of an alloy layer underneath an Al based layer. Tabata teaches the Al based coating contains 5%-90% Al, about 0-20% Si, and small amounts of other elements (¶ 131). This overlaps the claimed range, creating a prima facie case of obviousness. See MPEP 2144.05 I. It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to apply an aluminum alloy layer, as taught by Tabata, to the steel of Yi because doing so provides corrosion resistance, and is conventional in the art for hot stamping steel.
Regarding claim 42, Yi teaches the steel sheet is stamped (p. 1, ¶ 1).
Claims 21-34 and 41-42 are rejected under 35 U.S.C. 103 as being unpatentable over Fechte et al. (WO 2020/0239905).
Regarding claim 21, Fechte discloses the following steel sheet, as compared to the claimed invention:
Claim 1 (1st group)
Claim 1 (2nd group)
Fechte, ¶¶ 32-118
C
0.06%-0.5%
0.06%-0.5%
0.1%-0.6%
Si
0.05%-0.6%
0.05%-0.6%
≤0.8%
Mn
0.4%-3.0%
0.4%-3.0%
0.1%-2.0%
Al
0.06%-0.35%
-
0.05%-0.20%
B
0.0005%-0.01%
0.0005%-0.01%
0.0005%-0.005%
V
0.010%-0.50%
0.010%-0.50%
≤0.2%
P
≤0.03%
≤0.03%
≤0.03%
S
≤0.02%
≤0.02%
≤0.03%
N
≤0.02%
≤0.02%
≤0.01%
Sn
≤0.03%
≤0.03%
-
As
≤0.01%
≤0.01%
-
Ce+La
-
0.01%-0.03%
0.02%-0.05%
Fe
Balance
Balance
Balance
The prior art composition overlaps the claimed composition, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Regarding claims 22-23, the steel of Tabata also includes the following additional elements, as compared to the claimed composition:
Claim 22
Claim 23
Fechte, ¶¶ 32-118
Ce+La
0.01%-0.03%
-
0.02%-0.05%
Al
-
≤1.0%
0.05%-0.20%
Ti
0.0005%-0.10%
0.0005%-0.10%
≤0.02%
Nb
0.001%-0.2%
0.001%-0.2%
0.01%-0.06%
Cr
0.01%-1.0%
0.01%-1.0%
0.05%-0.8%
Cu
0.01%-0.2%
0.01%-0.2%
≤0.5%
Mo
0.002%-0.3%
0.002%-0.3%
≤1.5%
Ni
0.01%-0.5%
0.01%-0.5%
≤1.5%
Ca
0.0005%-0.005%
0.0005%-0.005%
≤0.005%
W
0.001%-1.0%
0.001%-1.0%
≤1.0%
The prior art composition overlaps the claimed composition, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Regarding claim 24, based on the disclosed composition in Fechte, the ratio of Al/(Nb+V) overlaps the claimed range, creating a prima facie case of obviousness. See MPEP 2144.05 I. In addition, Fechte discloses examples where Al/(Nb+V)≤30.0 (see, e.g., Table 1; Ex. 1&2).
Regarding claim 25, based on the disclosed composition in Fechte, the sum of Mn+Cr overlaps the claimed range, creating a prima facie case of obviousness. See MPEP 2144.05 I. In addition, Fechte discloses examples where Mn+Cr is between 0.7% and 3.5% (see, e.g., Table 1; Ex. 1&2).
Regarding claims 26-28, Fechte teaches forming an AlSi coating on the steel sheet which provides corrosion resistance (¶ 174-175). The coating is formed on the steel by hot-dipping (¶ 175), which would inherently result in the formation of an alloy layer underneath an AlSi layer as iron in the steel reacts with aluminum in the bath. The claimed coating composition is presumed to overlap any AlSi coating used to aluminize a steel sheet.
Regarding claims 30 and 41-42, Fechte teaches the steel sheet is hot formed (¶ 286), which includes hot stamping.
Regarding claim 31, Fechte teaches the steel sheet is 95% or more martensite (¶ 138).
Regarding claims 29 and 32-34, Tabata teaches the steel has a tensile strength of at least 1000 MPa (¶ 153), yield strengths of over 930 MPa and elongation at break of over 5.3% (see Table 4), but does not expressly teach the other properties. However, the process of making the steel sheet of Tabata is substantially similar to the process for making the claimed steel sheet:
Heating slab to 1100°C -1400°C
Heating slab to 1100°C-1350°C (¶ 224)
Optional pre-rolling at an intermediate temperature of 1000°C -1200°C
Pre-rolling (¶ 230), which necessarily takes place below the slab heating temperature and above the hot rolling finish temperature
Hot rolling with a final rolling temperature of 750°C-1000°C
Hot rolling with finish temperature of Ar3+50°C to Ar3+150°C (¶ 235)
Optional coiling at <700°C
Coiling at 450°C-720°C (¶ 257)
Descaling
Pickling to descale (¶ 265)
Optional cold rolling at least 30% rate
Cold rolling to a thickness of 0.5mm-3.5mm (¶ 205) from a thickness of 1mm-16 mm (¶ 198)
Annealing at 650°C-900°C
Anneal at 500°C -750°C (¶ 204)
The instant specification does not ascribe any importance in the coating process to obtaining the claimed properties of claims 29 and 32-34. Accordingly, one of ordinary skill in the art would expect the prior art steel sheet to also exhibit the claimed properties, absent objective evidence to the contrary. See MPEP 2112.
Conclusion
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/XIAOBEI WANG/Primary Examiner, Art Unit 1784
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