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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2 March 2026 has been entered.
Status of Claims
Responsive to the applicant’s submission filed 2 March 2026, claim 1 is amended. Claim 5 is cancelled. Claims 1-4 are currently under examination.
Status of Previous Rejections
Responsive to the applicant’s submission filed 2 March 2026, 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.
Claim 4 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 4 recites that the copper is present at 0.1 to 0.45%. Claim 1 requires instead that copper is present at 0.28 to 0.43%. Claim 4 is outside the scope of claim 1.
The point of infringement of claim 4 cannot be determined, and the claim is indefinite.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 4 recites that the copper is present at 0.1 to 0.45%. Claim 1 requires instead that copper is present at 0.28 to 0.43%. Claim 4 is outside the scope of claim 1. Because claim 4 is broader in scope than claim 1, the claim fails to further limit a parent claim as required by statute.
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 1-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12188104. Although the claims at issue are not identical, they are not patentably distinct from each other because applicant’s patented 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.
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) 1-4 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
0.5-0.9
1.2-1.4
0.28-0.43
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.
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.
Regarding wherein the steel has a relative corrosion rate that is less than 100%, when compared with a corrosion rate of Comparative Steel 1 of the specification having relative corrosion rate of 100%, Liimatainen does not describe this feature. However 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 1. 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.
Response to Arguments
Applicant’s arguments filed 2 March 2026 have been carefully considered, but are not persuasive.
Applicant argues that the claims as amended are defined by the specification. In response to the amendment and applicant’s argument, no rejection of claim 1 is made at this time under 35 USC 112,
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 Liimatainen 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.
Regarding the rejections for obviousness-type double patenting, applicant argues that the rejections are provisional and that the reference application was filed at a later date. These arguments are considered, but are no longer relevant in the event that the reference case is patented. The ODP rejections are not provisional. The new grounds of rejection is accordingly non-final.
Conclusion
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.
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, 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
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