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 .
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 3-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4-5 of copending Application No. 18/257,178 in view of Lee et al. (KR20210000027 – machine translation). Instant claim 3 recites a high-strength hot-dip galvanized steel composition set forth below with a coating weight of 20-120 g/m2, and oxygen content of 0.030-0.40 g/m2, a maximum length of oxides of 6.0 µm or less and a number of oxides with a length of 1.0 µm or more is 20 or less. This is patentably indistinct of claim 4 of the ‘178 application which recites a hot-dip galvanized steel sheet with composition set forth below, a microstructure of ferrite, martensite, and bainite, and oxygen present as oxides on a surface in an amount of 0.05-0.50 g/m2, and where the hot dip layer is Fe, Al, and Zn with a coating weight of 20 g/m2 or more. The difference between the instant claims and the ‘178 application is the recited oxide size and number.
Element (wt.%)
Claim 3 (wt.%)
‘178 Application (wt.%)
C
0.08-0.25
0.09-0.17
Si
0.1-2.0
0.3-0.9
Mn
1.5-3.5
1.9-2.7
P
0.02≥
0.1≥
S
0.01≥
0.050≥
Al
0.10≥
0.01-0.20
N
0.006≥
0.10≥
Fe
Balance
Balance
In a related field of endeavor, Lee teaches a hot-dip galvanized high-strength steel sheet (Paragraph 1) with a tensile strength of 490 MPa or higher (Paragraph 32) for use in automotive materials (Paragraph 2). The steel comprises by wt.% the composition set forth below (Paragraphs 11 and 13). The steel has internal oxides formed within a depth of 3 µm composed of grains of oxides of one or more of Mn, Si, Al, Cr, and B with a spherical shape and a diameter of 0.5 µm or less (Paragraph 64) and this prevents plating-interfering elements from diffusing to the surface of the steel sheet (Paragraph 65). This is considered to teach where the length of the oxides is less than 1 µm and therefore the number of oxides having a length of 1.0 µm or more is ~zero.
As the instant claims, the ‘178 application, and Lee are directed toward galvanized steel, they are considered analogous. The instant claims would have been obvious to one of ordinary skill in the art before the effective filing date in view of the teachings of Lee as the surface oxide particles and size are taught to prevent plating interfering elements from diffusion and one would have had a reasonable expectation of success. Further, the claimed composition, coating weight, oxygen content, oxide particle size and number thereof overlap those of the ‘178 application and the courts have held that this establishes a prima facie case of obviousness. See MPEP 2144.05.
Instant claim 4 recites materials overlapping claim 5 of the ‘178 application.
This is a provisional nonstatutory double patenting rejection.
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.
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (KR20210000027 – machine translation) in view of Yoshida et al. (US 2013/0295411).
Considering claim 3, Lee teaches a hot-dip galvanized high-strength steel sheet (Paragraph 1) with a tensile strength of 490 MPa or higher (Paragraph 32) for use in automotive materials (Paragraph 2). The steel comprises by wt.% the composition set forth below (Paragraphs 11 and 13). The steel has internal oxides formed within a depth of 3 µm composed of grains of oxides of one or more of Mn, Si, Al, Cr, and B with a spherical shape and a diameter of 0.5 µm or less (Paragraph 64). This is considered to teach where the length of the oxides is less than 1 µm and therefore the number of oxides having a length of 1.0 µm or more is ~zero. However, Lee does not teach the claimed coating weight or oxygen content.
Element (wt.%)
Claim 3 (wt.%)
Lee (wt.%)
C
0.08-0.25
0.05-0.3
Si
0.1-2.0
0.1-2.0
Mn
1.5-3.5
1.5-8.0
P
0.02≥
0.04≥
S
0.01≥
0.015≥
Al
0.10≥
0.005-1.5
N
0.006≥
0.02≥
Fe
Balance
Balance
In a related field of endeavor, Yoshida teaches a hot-dip Al-Zn coated steel sheet (abstract) for use in automobile bodies (Paragraph 6). The steel comprises by mass C: 0.01-0.18% (Paragraph 54), Si: 0.001-2.0% (Paragraph 55), Mn: 0.1-3.0% (Paragraph 56), P: 0.005-0.060% (Paragraph 58), S: 0.01% (Paragraph 59), Al: 0.001-1.0% (Paragraph 57), etc., balance Fe (Paragraph 68). The hot dip coating is formed in an amount of 20-120 g/m2 to ensure corrosion resistance and afford peel resistance (Paragraph 93). The surface steel sheet is oxidized and reduced prior to hot dip galvanizing to form surface oxides with a weight of 0.06-1.0 g/m2 per surface to decrease uncoated portions and afford high corrosion resistance (Paragraph 16).
As both Lee and Yoshida teach galvanized steel sheets for automotive applications they are considered analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the teachings of Lee with the coating amount and oxygen amount as taught by Yoshida as this is known to ensure corrosion resistance and afford peel resistance and one would have had a reasonable expectation of success. Further, the composition, coating weight, oxygen content, oxide particle size and number thereof overlap those which are claimed and the courts have held that where claimed ranges overlap or lie inside of those disclosed in the prior art a prima facie case of obviousness exists. See MPEP 2144.05.
Considering claim 4, Lee teaches where the steel may include Ti: 0.2% or less, Mo: 0.2% or less, B: 0.005% or less, Sb: 0.05% or less, etc. (Paragraphs 11 and 13). See MPEP 2144.05.
Allowable Subject Matter
Claims 1-2 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art to the instant claims is that of Lee and Yoshida as outlined above. Lee and Yoshida do not teach or suggest the use of the claimed atmosphere of SO2 and/or HCl combined with the other features of the claims. Attention is also directed to the International Search Report dated 21 November 2023 listing only “A” references of record.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Tanaka et al. (US 7,695,826) teaches a galvanized steel containing oxide particles. Fushiwaki et al. (US 2011/0253263) teaches galvanize steel sheet with oxygen content.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SETH DUMBRIS whose telephone number is (571)272-5105. The examiner can normally be reached M-F 6:00 AM - 3:30 PM.
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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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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784
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