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
Claim Objections
Claim 3 has a typo in line 1 “rage” instead of --range--
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The application is a child of US application 17/297,920 now US Patent 11,529,795. The new ranges for Mg content are changed from 1-20 wt% to 7.6-34.8 wt%. Narrowing of the low end of the range is supported and the high end of the range is measured in Table 3, inventive example 6.
However, although the Mg content is supported in the examples and specification, the claim is broadening the scope beyond what is described in Table 3. Specifically, the measured examples in Table 3 are measuring a plated steel sheet of aluminum-iron. Applicant therefore has support for a specific plated layers (inventive example 6) but does not have support for all plated layers with the magnesium content of 7.6-34.8 wt%. For example, the claim scope includes plated layers not related to aluminum plating. Therefore, the claims do not have support for their full scope and are introducing new matter.
In addition to the new matter, there is a written description issue. The examples measured in Table 2 use a very brief alloying heat treatment condition when compared to the thermal treatment performed to make the diffusion layer in the specification which takes minutes. Table 3 then indicates that the hot press formed member is further heat treated at 930°C for 6 minutes. However, the pressing step is not further described in the examples or specification. Accordingly, the written description identifies a time and temperature but does not describe the pressure used to obtain the formation of diffusion and alloy layers with the claimed magnesium content. One of ordinary skill could likely work out a suitable pressure to use in the hot press forming step. However, enablement can be satisfied without fully meeting the written description requirement.
The claim and specification also refer to “a phosphate treatment” and “a painting process” without further describing them.
Depending claims incorporate the same issues of parent claim 1 and are rejected as including new matter and lacking written description.
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 1-5 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 1 refers to “52 CCT” cycles which is understood in this art to refer to a simulated year’s worth of corrosion. However, there are different ways to perform CCT and the test standard is not identified.
Claim 1 also refers to phosphate treatment and painting of “the above absence”. It is not clear what is being referred to.
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 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,529,795, alternatively in view of Kim et al. (US 2017/0002450). Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims fall within the scope of the pending claims. The examiner notes that the patented claims are direct to a steel sheet for hot press forming. In contrast the present claims are directed to a sheet that has been hot pressed. However, the product limitations are not particularly limited by the intended use or method of manufacture. Both claim sets are directed to the same plated steel sheet with properties that overlap. Each plated layer will have an interfacing layer (diffusion layer) with the substrate and an alloying layer with aluminum. The claimed properties of magnesium and corrosion resistance overlap.
Alternatively, KIM teaches that a plated steel sheet can further be hot pressed to change the magnesium content near the surface of the plating layer while also forming layers within the plating layer (diffusion layer and alloying layer). At the time of filing the invention it would have been prima facie obvious to perform the hot pressing step to form a hot pressed sheet with different layers and magnesium concentrated at the surface to improve corrosion resistance.
The examiner notes that this application is a divisional and is therefore precluded from double patenting with US 17/983,759 (now US 12,330,391).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KIM et al. (US 2017/0002450).
Regarding claim 1,
KIM teaches a hot press formed steel sheet [0010]. The base steel is plated with an aluminum magnesium alloy with silicon [0022]-[0023]. This bath can have the same composition as the compositions used in applicant’s Table 2 and Table 3. The plating time and temperature are also the same [0032]. The hot pressing step allows Mg to diffuse towards the surface of the plating layer [0016]. The hot pressing step is result effective as shown in table 3. Applicant does not describe their hot pressing step, and it is presumed that known hot pressing steps such as the ones described in KIM can be used. Accordingly, the same plating step is performed using the same bath at the same time and temperature, with a subsequent hot pressing step that is the same. The resulting plated steel sheet is expected to have the same measurements of magnesium and corrosion, however applicant chooses to make those measurements.
Regarding claim 3,
As noted above, the same process is performed to deposit the same material, therefore the same spot welding current is expected.
Regarding claims 2, 4 and 5,
The same plating process and hot pressing steps are performed. Therefore, the same diffusion layer and alloying layer is expected to be formed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUSTIN MURATA whose telephone number is (571)270-5596. The examiner can normally be reached M-F 8:30-5.
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, MICHAEL CLEVELAND can be reached at 571272-1418. 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.
/AUSTIN MURATA/Primary Examiner, Art Unit 1712
Prosecution Insights