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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
However, Applicant cannot rely upon the certified copy of the foreign priority application, nor the application filing date, to overcome any rejection herein because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
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.
1. Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2022149505 (rejection based on corresponding English document USPub20240058888).
Regarding claims 1-8: ‘888 teaches a welded joint comprising a plurality of overlaid steel sheets, a spot-welding part having a nugget joining the steel sheets (Figures) wherein the sheets are directly welded under pressure (i.e. pressure contact zones) (Figures, 0089). Note that the presence of a heat zone is inherent to a weld joint and in ‘888 there is a separation zone formed around a contact zone (see Figures)
The steel sheets are plated steel sheets comprising a base steel sheet and a plating layer containing Zn on the surface (see abstract, 0039).
The steel sheets have a tensile strength of 780MPa or more (abstract).
The chemical composition of the base steel sheet comprising by mass% have a composition comprising that below (0036) overlapping that claimed (MPEP 2144.05).
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While ‘888 may not explicitly teach that at a non-heated zone of the welded joint, their joint has a depth with C concentration as claimed, a roughness of the interface of the plating and base sheet as claimed or the layer thickness of a layer with an area ratio of a ferrite phase of 90% or more in a depth direction from the base sheet starting from the interface of the plating and the base sheet at a position of 500micron to the outside from an end part of the contact zone being that required by the claim, note the following.
Initially, as discussed above, ‘888 teaches a welded joint meeting the general structure claimed including the same plating layer, sheet tensile strength and sheet composition.
Further, ‘888 teaches their steel sheets being made by substantially the same process as that disclosed by Applicants (see 0076-0087 compared to Applicants’ 0077-0081 in specification as filed) including a pretreatment step and annealing step under conditions also substantially similar to Applicants’ (see 0081-0085 compared to Applicants’ 0082-0087 in specification as filed). ‘888’s plating layer is also deposited on each sheet substantially similar to Applicant (see 0088 and 0096 compared to Applicants’ 0090 in specification). ‘888’s plated sheets are then welded to each other under conditions also substantially similar to Applicants welding (see 0089 compared to Applicants 0091 in specification). Given the similarities, one skilled in the art would reasonably conclude the same resulting features to occur (MPEP 2112).
2. Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2022149511 (rejection based on corresponding English document USPub20240084833).
Regarding claims 1-8: ‘833 teaches a welded joint comprising a plurality of overlaid steel sheets, a spot-welding part having a nugget joining the steel sheets (Figures) wherein the sheets are directly welded under pressure (i.e. pressure contact zones) (Figures, 0080). Note that the presence of a heat zone is inherent to a weld joint and in ‘833 there is a separation zone formed around a contact zone (see Figures)
The steel sheets are plated steel sheets comprising a base steel sheet and a plating layer containing Zn on the surface (see abstract, 0035).
The steel sheets have a tensile strength of 780MPa or more (0032).
The chemical composition of the base steel sheet comprising by mass% have a composition comprising that below (0033) overlapping that claimed (MPEP 2144.05).
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While ‘833 may not explicitly teach that at a non-heated zone of the welded joint, their joint has a depth with C concentration as claimed, a roughness of the interface of the plating and base sheet as claimed or the layer thickness of a layer with an area ratio of a ferrite phase of 90% or more in a depth direction from the base sheet starting from the interface of the plating and the base sheet at a position of 500micron to the outside from an end part of the contact zone being that required by the claim, note the following.
Initially, as discussed above, ‘833 teaches a welded joint meeting the general structure claimed including the same plating layer, sheet tensile strength and sheet composition.
Further, ‘883 teaches their steel sheets being made by substantially the same process as that disclosed by Applicants (see 0066-0071 compared to Applicants’ 0077-0081 in specification as filed) including a pretreatment step and annealing step under conditions also substantially similar to Applicants’ (see 0072-0076 compared to Applicants’ 0082-0087 in specification as filed). ‘833’s plating layer is also deposited on each sheet substantially similar to Applicant (see 0079 and 0087 compared to Applicants’ 0090 in specification). ‘833’s plated sheets are then welded to each other under conditions also substantially similar to Applicants welding (see 0088 compared to Applicants 0091 in specification). Given the similarities, one skilled in the art would reasonably conclude the same resulting features to occur (MPEP 2112).
3. Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2022149507 (rejection based on corresponding English document USPub20240093708).
Regarding claims 1-8: ‘708 teaches a welded joint comprising a plurality of overlaid steel sheets, a spot-welding part having a nugget joining the steel sheets (Figures) wherein the sheets are directly welded under pressure (i.e. pressure contact zones) (Figures, 0080). Note that the presence of a heat zone is inherent to a weld joint and in ‘708 there is a separation zone formed around a contact zone (see Figures)
The steel sheets are plated steel sheets comprising a base steel sheet and a plating layer containing Zn on the surface (see abstract, 0030).
The steel sheets have a tensile strength of 780MPa or more (0027).
The chemical composition of the base steel sheet comprising by mass% have a composition comprising that below (0028) overlapping that claimed (MPEP 2144.05).
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While ‘708 may not explicitly teach that at a non-heated zone of the welded joint, their joint has a depth with C concentration as claimed, a roughness of the interface of the plating and base sheet as claimed or the layer thickness of a layer with an area ratio of a ferrite phase of 90% or more in a depth direction from the base sheet starting from the interface of the plating and the base sheet at a position of 500micron to the outside from an end part of the contact zone being that required by the claim, note the following.
Initially, as discussed above, ‘708 teaches a welded joint meeting the general structure claimed including the same plating layer, sheet tensile strength and sheet composition.
Further, ‘708 teaches their steel sheets being made by substantially the same process as that disclosed by Applicants (see 0057-0061 compared to Applicants’ 0077-0081 in specification as filed) including a pretreatment step and annealing step under conditions also substantially similar to Applicants’ (see 0062-0066 compared to Applicants’ 0082-0087 in specification as filed). ‘708’s plating layer is also deposited on each sheet substantially similar to Applicant (see 0069 and 0077 compared to Applicants’ 0090 in specification). ‘708’s plated sheets are then welded to each other under conditions also substantially similar to Applicants welding (see 0070 compared to Applicants 0091 in specification). Given the similarities, one skilled in the art would reasonably conclude the same resulting features to occur (MPEP 2112).
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 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 19/109014 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims encompass that of the copending claims and any additional limitations would have been rendered obvious in view of the prior art applied above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAUREN ROBINSON COLGAN whose telephone number is (571)270-3474. The examiner can normally be reached Monday thru Friday 9AM to 5PM.
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, 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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LAUREN ROBINSON COLGAN
Primary Examiner
Art Unit 1784
/LAUREN R COLGAN/Primary Examiner, Art Unit 1784
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