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 .
Election/Restrictions & Status of Claims
Claims 1 and 4-5 are examined of which claims 1 and 4 were amended.
Claims 6-9, drawn to a method for manufacturing a chromium-molybdenum steel plate, remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/01/2024.
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 and 4-5 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.
Regarding claims 1 and 4-5,
Claim 1 recites the limitation “the number of precipitates having a diameter of 200 nm or more” in the last three lines of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 4 recites the limitation “the number of precipitates having a diameter of 200 nm or less” in the last three lines of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claims 4-5 are dependents of claim 1, do not resolve the aforementioned issues and thereby also indefinite.
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.
List 1
Element
Instant Claims
(mass%)
Prior Art
(mass%)
C
0.11 to 0.15 of C
0.08 to 0.16
Si
0.10 or less exclusive of 0 of Si
0.19 or less
Mn
0.3 to 0.6 of Mn
0.40 to 1.50
S
0.010 or less exclusive of 0 of S
0.01 or less
P
0.015 or less exclusive of 0 of P
0.02 or less
Cr
2.0 to 2.5 of Cr
0.25 to 3.00
Mo
0.9 to 1.1 of Mo
0 to 1.0
V
0.65 to 1.0 of V
0 to 1.0
Ni
0.25 or less exclusive of 0 of Ni
0 to 2.0
Cu
0.20 or less exclusive of 0 of Cu
0 to 1.0
Nb
0.07 or less exclusive of 0 of Nb
0 to 0.50
Ti
0.03 or less exclusive of 0 of Ti
0.01 to 0.05
N
0.015 or less exclusive of 0 of N
0.01 or less
Al
0.025 or less exclusive of 0 of Al
0.01 to 1.0
B
0.002 or less exclusive of 0 of B
0.001 to 0.01
Fe +
impurities
Balance
Balance
Claims 1 and 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2015/174530 A1 via its US English equivalent US 2017/0073792 A1 of Hikida (US’792).
Regarding claim 1, WO 2015/174530 A1 (WO’530) via its US English equivalent US 2017/0073792 A1 of Hikida (US’792) teaches “a hot rolled sheet plate member” {WO’530 abstract, title} “slabs each having a width of 1000 mm and a thickness of 250 mm” “slabs were hot-rolled with a hot-rolling testing machine, to produce 3.0-mm-thick hot-rolled steel sheets” {US’792 [0114]-[0115]} with a composition wherein the claimed ranges of the constituent element of the instant alloy of the instant claims overlap or lie inside the ranges of various elements of the alloy of the prior art as shown in the List 1 above thereby reading on the steel plate of the instant claims {US’792 abstract, [0001], [0007]-[0066]}. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed composition over the prior art disclosure since the prior art teaches the similar property/utility throughout the disclosed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Regarding the limitation of the microstructure of claim 1, the prior art teaches that its steel has a microstructure [0069] “The metal structure mainly having a low-temperature transformation structure means a metal structure in which the total volume fraction of martensite, tempered martensite, and bainite is 50% or more. The tempered martensite herein means martensite transformed during quenching and tempered by automatic tempering, and martensite subjected to low temperature tempering such as a coating baking process after quenching. The volume fraction of the low-temperature transformed structure in the metal structure is preferably 80% or more, and more preferably 90% or more.” and points out that other microstructure phases are not required. Therefore, the prior art teaches that its microstructure does not require any other phases thereby reading on the claimed microstructure of the instant claim.
It is noted that the prior art is silent regarding the properties of precipitates as recited in the instant claims 1 and 4-5. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP § 2112.01 I. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Therefore, it is expected that the alloy of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (see compositional analysis of claim 1 above) and b) the claimed and prior art products are identical or substantially identical in structure (see microstructure analysis of claim 1 above). Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
Response to Arguments
Applicant's arguments filed 10/07/2025 have been fully considered but they are not persuasive.
Regarding the arguments that the prior art does not teach the claimed microstructure, Applicant's arguments have been fully considered but they are not persuasive. The prior art expressly teaches that its steel has a microstructure [0069] “The metal structure mainly having a low-temperature transformation structure means a metal structure in which the total volume fraction of martensite, tempered martensite, and bainite is 50% or more. The tempered martensite herein means martensite transformed during quenching and tempered by automatic tempering, and martensite subjected to low temperature tempering such as a coating baking process after quenching. The volume fraction of the low-temperature transformed structure in the metal structure is preferably 80% or more, and more preferably 90% or more.” and points out that other microstructure phases are not required. This means that the prior art teaches the steel can have tempered martensite of 50% or more, preferably 80% or more, and more preferably 90% or more, and even up to 100% since the prior art teaches that other microstructure phases are not required to be present.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., "improved creep strength") are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
With respect to the arguments that the embodiments provided by the prior art do not teach the claimed matter, the arguments have been fully considered but they are not persuasive. Patents are relevant as prior art for all they contain. "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).See MPEP § 2123.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP § 716.02(d). 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). See MPEP § 716.02(d) II. However, there is no data in the instant specification that clearly demonstrates the criticality of the claimed range and therefore the claimed range is deemed obvious over the prior art teachings.
As noted above, the prior art renders the instant claims obvious. If a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990). Rebuttal evidence and arguments can be presented in the specification, In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed. Cir. 1995), by counsel, In re Chu, 66 F.3d 292, 299, 36 USPQ2d 1089, 1094-95 (Fed. Cir. 1995), or by way of an affidavit or declaration under 37 CFR 1.132, e.g., Soni, 54 F.3d at 750, 34 USPQ2d at 1687; In re Piasecki, 745 F.2d 1468, 1474, 223 USPQ 785, 789-90 (Fed. Cir. 1984). However, arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). See MPEP § 2145. Attorney argument is not evidence unless it is an admission, in which case, an examiner may use the admission in making a rejection. See MPEP § 2129 and § 2144.03 for a discussion of admissions as prior art. The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) ("An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness."). See MPEP § 716.01(c) for examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration. See MPEP § 2145 I.
Conclusion
THIS ACTION IS MADE FINAL. 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 JOPHY S. KOSHY whose telephone number is (571)272-0030. The examiner can normally be reached M-F 8:30 AM- 5:00 PM.
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/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733