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 .
Status of Claims
Responsive to the applicant’s submission filed 21 August 2025, claim 1 is amended. Claims 1-5 are currently under examination.
Status of Previous Rejections
Responsive to the applicant’s submission filed 21 August 2025, new grounds of rejection are made.
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 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.
Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention. MPEP 2173.01 and MPEP 2111.
Claim 1 requires that the corrosion rate of the steel is lower than 100, relative to Comparative Steel 1 having relative corrosion rate of 100. It is not clear what is being claimed. In the specification it is described that there is a Comparative Steel 1 having relative corrosion rate of 100. It is not appropriate to import the limitations of the Comparative Steel 1 from the specification into the claim in this way and as such the claim is indefinite as bearing reference to an undefined steel.
Applicant’s claim 1 recites that the corrosion is measured by using a cleaning procedure with acid and hexamethyl tetramine solution. This is disclosed in the specification as a cleaning procedure rather than a corrosion test. It is not clear from the claim as expressed why the cleaning procedure would be pertinent in measuring the corrosion rather than the corrosion portion of the test.
Further, even if the limitations of Comparative Steel 1 were imported to the claim, the claim still be indefinite. Is the 100 representative of a percentage? Is this a ranking of corrosion rates? Is this some other basis of corrosion rates relative? Would the relative corrosion rate be different if other types of corrosion testing were to be employed? The metes and bounds of the corrosion rate of the steel cannot be determined.
The point of infringement of claim 1 cannot be determined, and the claim is indefinite. Each of claims 2-5 depends from claim 1 and is also indefinite.
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 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 17/782,913 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because applicant’s copending claims include overlapping composition and microstructure, and include an additional limitation relating to the variance in strength. The Cr amount has been narrowed in the instant application to be in the range of 1.2-1.5%, whereas the reference application has 0.5-1.5% of Cr. For instant claims 2-4, the composition of the copending application overlap the claims. For claim 5, although the copending claims do not recite a strength value, or a result of a corrosion test, the same steel composition having the same microstructure would be reasonably expected by the skilled artisan to have had the same properties.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20160333440 A1 (hereinafter “Liimatainen”).
Regarding claim 1, the limitation of “for a structure” is considered to be a statement of intended use, and does not further limit the claim beyond what is already literally required elsewhere in the claim.
Liimatainen teaches high strength steel strip (see title, Short Description, claims). Liimatainen teaches that the steel strip has a broad composition, overlapping the claimed composition (see [0013]-[0026]). Liimatainen teaches the purpose of adding each of the alloying elements for the steel (see [0043]-[0059]). The composition of the steel of Liimatainen is compared with the claimed composition in the chart below (values in mass%).
Element
Claim 1
Liimatainen
C
Si
Mn
Cr
Cu
Al
Ti
Ni
Nb
P
S
Fe/impurity
0.03-0.1
0.1-0.8
0.3-1.5
1.2-1.5
0.1-0.5
0.01-0.08
0.01-0.1
0.05-0.1
0.002-0.07
0.03 or less
0.02 or less
balance
0.03-0.08
0.01-0.8
0.8-2.5
0.01-2.0
Less than 0.5*
0.01-0.15
0.005-0.12
Less than 0.5*
0.005-0.07
<0.02
<0.004
balance
Note: * indicates optional element
The composition of the steel of Liimatainen overlaps the claimed compositional ranges. It would have been obvious to one of ordinary skill in the art at time of invention to have made the steel of Liimatainen, and to have selected a composition within the claimed ranges, because Liimatainen teaches the same utility over overlapping ranges. Additionally, Liimatainen teaches the purpose of adding each of the alloying elements for the steel (see [0043]-[0059]). The adjustment of the alloying elements in order to achieve desired effects explained clearly in the art would have required no more than a routine investigation of the disclosure of Liimatainen.
Liimatainen teaches that the steel has a yield strength of at least 840 MPa and excellent bendability (see [0007]-[0012]). Liimatainen teaches several examples of steels having such strengths in Table 2. The measured strength value of Liimatainen and the disclosure of it being “ultrahigh strength” meets the claim limitation therein.
Liimatainen teaches that the steel has a structure of upper bainite ([0010]-[0013]). Liimatainen teaches that the bainite is preferably more than 50% (see [0026]). Liimatainen teaches that the composition includes less than 20% of martensite, M-A, ferrite, and pearlite ([0089] and claims 1-4). The microstructural ranges taught by Liimatainen overlap the claimed ranges and establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art at time of invention to have made the steel of Liimatainen, and to have selected a microstructure within the claimed ranges, because Liimatainen teaches the same utility over overlapping ranges.
Regarding wherein the steel has a relative corrosion rate that is less than 100, when compared with a corrosion rate of Comparative Steel 1 having relative corrosion rate of 100, it is noted that this feature is indefinite (See discussion above). In this case, Liimatainen teaches a steel having a composition and microstructure which overlaps the claimed steel composition and microstructure, and the strength values also match instant claim 5. It is reasonable to assume that the steel having the same composition as claimed, and having the same microstructure as claimed, and having the same strength value as claimed, would have had similar corrosion properties as well. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Regarding claim 2, the broad composition of 0.03-0.08% overlaps what is claimed.
Regarding claim 3, the broad composition of 0.01-0.80% of Si overlaps the claimed range.
Regarding claim 4, the broad composition of less than 0.5% of Cu overlaps the claimed range.
Regarding claim 5, Liimatainen teaches that the steel has a yield strength of at least 840 MPa and excellent bendability (see [0007]-[0012]). Additionally, Liimatainen teaches several examples of steels having yield and tensile strength values in the range as claimed (see Table 2). Although the compositions of the examples of Liimatainen differ from what is claimed, the manufacture of steel having this strength is considered obvious by the disclosure of the overlapping broad ranges and several examples having the claimed strengths.
Response to Arguments
Applicant’s arguments filed 21 August 2025 have been carefully considered, but are not persuasive.
Applicant argues that the claims as amended are supported by the specification. No rejection is made at this time under 35 USC 112, first paragraph.
Applicant argues that the claims as amended are not indefinite. The examiner disagrees. A new grounds of rejection for indefiniteness is presented herein.
Applicant argues that the cited prior art Liimatainen does not render the claims obvious because Liimatainen is directed to a different purpose, technical field, and intended use of the steel. This argument is carefully considered but is not persuasive because it is not commensurate in scope with what is claimed. During examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim. See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963). In this case the steel of Limatainen could be used for any vehicle or structure. If applicant intends the invention to be limited to marine vehicles, ballast tanks, and similar structure, applicant has to this point chosen not to claim the invention to be limited in such a way.
Applicant argues that there are processing differences in the steel as claiemd and the steel of Liimatainen. Specifically applicant recites a cooling stop at 400-700 after hot rolling, while Liimatainen teaches 400 C to room temperature. This argument is carefully considered, but it is not persuasive because it is not commensurate in scope with the prior art. It is true that Liimatainen describes that a preferred cooling is done in a range of 400 to room temperature, but every single inventive example has a quench to <550 C (see [0084]-[0085] and TABLE 2). The preferred temperature is considered one option, while the examples all have a higher temperature range, and that higher range is commensurate with the applicant’s own range. For these reasons, applciant’s arguments are not persuasive.
Applicant further argues that there is no teaching of the controls over the elements of Mn, Cr, and Cu with regard to corrosion property of the steel. The examiner agrees that Liimatainen does not teach corrosion resistance in the control over said elements. However, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). It is known that corrosion resistance is a desirable feature of steel whether in marine applications or in general. Applicant’s evidence thereof are not sufficient to demonstrate an unexpectedly better steel than the steel in the broad disclosure of Liimatainen.
Regarding comparative examples specifically, applicant rebuts the examiner’s position that the steels of applicant’s specification are not commensurate in scope with the prior art. Specifically, Applicant argues that the sulfur content is an impurity and is therefore commensurate with Liimatainen’s broad disclosure. Further, regarding strength, applicant argues that the steels of Liimatainen would have higher strength due to the amounts of Nb + V would tend to generate a steel with higher strength. Applciant further argues that the fact that Liimatainen includes overlapping amounts of the elements does not render the claims obvious (Remarks, page 8).
The arguments have been carefully considered, but are not persuasive ebecause they are not commensurate in scope with what is claimed. It is acknowledged that the Sulfur content of applicant’s comparative examples is within the broad range of Liimatainen , but outside the preferred, claimed amount. While there would have been some differences in the steels, the instant question is whether or not the steel as claimed would have been obvious over the prior art or not. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). It is well settled that the overlapping ranges establish a prima facie case of obviousness. See MPPE 2144.05. Applicant’s comparative examples have not shown criticality of the ranges of Cr, Cu, and Mn that applicant alleges. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). In this case three examples are presented all with varied amounts of Cr, Cu, and Mn, and no explanation of how the claimed ranges are the critical ranges. Applicant is directed to MPEP 716.02(d).
When all of the evidence is considered as a whole, evidence of obviousness outweighs evidence against obviousness.
Regarding the rejections for obviousness-type double patenting, the rejections are not the only rejections of record, and thus are not waived.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER S KESSLER whose telephone number is (571)272-6510. The examiner can normally be reached 9-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curt Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CHRISTOPHER S. KESSLER
Primary Examiner
Art Unit 1734
/CHRISTOPHER S KESSLER/Examiner, Art Unit 1759