DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/23/2026 has been entered.
Status of Claims
Claims 1-29 are pending. Of the pending claims, claims 1-10 are presented for examination on the merits, and claims 11-29 are withdrawn from examination.
Claims 1 and 2 are currently amended.
Status of Previous Objection to the Drawings
The objection to the drawings made in the Office action dated 08/21/2024 is maintained. Although the amendment to the specification submitted on 02/21/2025 attempts to address the lack of FIG. 2 reference characters in the specification, the drawing objection still stands because the amendment to the specification has not been entered for containing new matter.
Status of Previous Objection to the Specification
The objection to the specification made in the Office action dated 08/21/2024 is maintained. Although the amendment to paragraph [00018] of the specification submitted on 02/21/2025 attempts to address the lack of discussion of the subcomponents of Fig. 3 in the specification, the amendment could not be entered because it also contains an amendment to paragraph [00025] that contains new matter.
Status of Previous Claim Rejections Under 35 USC § 112
The previous rejection of claims 1-10 under 35 U.S.C. 112(a) for containing new matter is withdrawn in view of the amendments to claims 1 and 2.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3, and 5-10 are rejected under 35 U.S.C. 103 as being unpatentable over US 2013/0133789 (A1) to Okonogi et al. (“Okonogi”) in view of US 2002/0179207 (A1) to Koike et al. (“Koike”).
Regarding claim 1, Okonogi discloses a steel wire and wire rod. Title; abstract; para. [0002]. The steel includes the following elements in percent by mass (para. [0019]-[0026], [0030]-[0038], [0042]-[0059], [0116]-[0130]):
Element
Claim 1
US 2013/0133789 A1
Carbon
0.30 - 0.70
0.35 - 0.85
Silicon
0.25 - 0.45
0.05 - 2.0
Manganese
0.20 - 0.70
0.20 - 1.0
Titanium
0.008 - 0.020
0.002 - 0.050
Zirconium
0.001 - 0.004
0.001 - 0.010
Cobalt
further comprises up to 0.15
--------------
The steel contains pearlite (at least a portion of the microstructure of the steel wire comprises structures that are sufficiently small to be unresolvable at magnification of 300X when viewed through an optical or digital laboratory microscope). Para. [0026], [0141].
The overlap between the ranges taught in the prior art and recited in the claims creates a prima facie case of obviousness. MPEP § 2144.05(I). It would have been obvious for one of ordinary skill in the art to select from among the prior art ranges because there is utility over an entire range disclosed in the prior art.
Okonogi does not teach cobalt (Co) in the steel.
Koike is directed to a high-strength bolt produced by drawing steel material to obtain a steel wire. Abstract. The steel contains pearlite. Para. [0008]. Co is optionally added to the steel in an amount of up to 0.50% in order to suppress the precipitation of pro-eutectoid cementite, which interferes with strength. Para. [0033]-[0035].
Okonogi is concerned with strength and minimizes the amount of non-pearlitic structure (para. [0104], [0112]). Therefore, it would have been obvious to have added cobalt in the amount taught by Koike to Okonogi’s steel because the cobalt would further enhance the strength of the steel and lessen the amount of pro-eutectoid cementite, which is not a phase in the steels of Okonogi.
Regarding claim 3, Okonogi discloses limiting S (sulphur) to 0.015% by mass or lower (para. [0120]), which encompasses the claimed range.
Regarding claim 5, Okonogi discloses limiting N (nitrogen) to 0.005% by mass or lower. Para. [0121].
Regarding claims 6 and 7, Okonogi discloses adding Ni in an amount of 0.02-0.50% by mass and Cr in an amount of 0.02-1.0% by mass (para. [0122]-[0124]), each of which overlaps the claimed ranges.
Regarding claim 8, Okonogi lists Mo in Table 1. Page 7. Comparative Example Steel Type N contains 0.30% Mo (molybdenum), which appears outside Okonogi’s range. Table 1; para. [0168]. This suggests that Mo should be below 0.30% by mass if added to the steel.
Koike teaches that Mo is optionally added to the steel in an amount of up to 0.3% in order to improve the delayed fracture resistance of the bolt and to refine the grains. Para. [0036], [0037]. Given that delayed fracture is a concern in Okonogi (para. [0004]-[0006], [0113], [0172]), it would have been obvious to have added Mo in the amounts taught by Koike to the steels of Okonogi to enhance the delayed fracture resistance of the steel.
Regarding claims 9 and 10, Okonogi is silent regarding how the wire performs in the NACE TM0284 and NACE TM0177 tests as claimed. However, it is well established that when a material is produced by a process that is identical or substantially identical to that of the claims and/or possesses a structure or composition that is identical or substantially identical to that of the claims, any claimed properties or functions are presumed to be inherent. Such a finding establishes a prima facie case of anticipation or obviousness. See MPEP § 2112.01.
In the present instance, Okonogi teaches a steel comprising a chemical composition, structure (microstructure), and shape (wire) that meets the claim limitations. Therefore, any claimed properties, such as performance level under NACE TM0284 and NACE TM0177, would be expected to also occur in Okonogi’s steels due to the composition, structure, and shape being the same as the claimed composition, structure, and shape.
Claims 1 and 3-10 are rejected under 35 U.S.C. 103 as being unpatentable over US 2007/0277913 (A1) to Kochi et al. (“Kochi”) in view of Koike.
Regarding claim 1, Kochi teaches a steel wire rod. Abstract; para. [0001], [0012], [0017]. The steel contains the following elements in percent by mass (para. [0017]-[0038]):
Element
Claim 1
US 2007/0277913 A1
Carbon
0.30 - 0.70
0.6 - 1.1
Silicon
0.25 - 0.45
0.1 - 2.0
Manganese
0.20 - 0.70
0.1 - 1
Titanium
0.008 - 0.020
not more than 0.1
Zirconium
0.001 - 0.004
not more than 0.1
Cobalt
further comprises up to 0.15
--------------
The steel contains pearlite (at least a portion of the microstructure of the steel wire comprises structures that are sufficiently small to be unresolvable at magnification of 300X when viewed through an optical or digital laboratory microscope). Para. [0039]-[0041]; FIG. 1; Table 3 – caption at bottom.
The ranges of Kochi’s elements and microstructure fall within or overlap the claimed ranges. This overlap creates a prima facie case of obviousness. MPEP § 2144.05(I). It would have been obvious for one of ordinary skill in the art to select from among the prior art ranges because there is utility over an entire range disclosed in the prior art.
Kochi does not teach cobalt (Co) in the steel.
Koike is directed to a high-strength bolt produced by drawing steel material to obtain a steel wire. Abstract. The steel contains pearlite. Para. [0008]. Co is optionally added to the steel in an amount of up to 0.50% in order to suppress the precipitation of pro-eutectoid cementite, which interferes with strength. Para. [0033]-[0035].
Kochi is concerned with strength and minimizes the amount of non-pearlitic structure (para. [0018], [0019], [0041]-[0043]). Therefore, it would have been obvious to have added cobalt in the amount taught by Koike to Kochi’s steel because the cobalt would further enhance the strength of the steel and lessen the amount of pro-eutectoid cementite, which is not a phase in the steels of Kochi.
Regarding claim 3, Kochi teaches a S (sulfur) content of not more than 0.020% by mass (excludes 0%) (para. [0022]), which encompasses the claimed range.
Regarding claim 4, Kochi teaches an Al (aluminium) content of not more than 0.03% by mass (excludes 0%) (para. [0024]), which encompasses the claimed range.
Regarding claim 5, Kochi teaches a N (nitrogen) content of not more than 0.006% by mass (excludes 0%) (para. [0023]), which encompasses the claimed range.
Regarding claim 6, Kochi teaches that at least one or more of Cr (chromium), Ni (nickel), Cu (copper), and Mo (molybdenum), among other elements, may be included in the steel. Para. [0026]. Cr (chromium) may be included in an amount of not more than 1.5% by mass. Para. [0027]. Ni (nickel) may be included in an amount of not more than 1% by mass. Para. [0029]. Cu (copper) may be included in an amount of not more than 1% by mass. Para. [0028]. Mo (molybdenum) may be included in an amount of not more than 0.5% by mass. Para. [0033]. The amounts of these elements, either alone or in combination, encompass the claimed range.
Regarding claim 7, Kochi teaches that Cr (chromium) may be included in an amount of not more than 1.5% by mass (para. [0027]) and that Ni (nickel) may be included in an amount of not more than 1% by mass (para. [0029]). The quantities of these elements encompass the claimed range.
Regarding claim 8, Kochi teaches that Mo (molybdenum) may be included in an amount of not more than 0.5% by mass (para. [0033]), which encompasses the claimed range.
Regarding claims 9 and 10, Kochi is silent regarding how the wire performs in the NACE TM0284 and NACE TM0177 tests as claimed. However, it is well established that when a material is produced by a process that is identical or substantially identical to that of the claims and/or possesses a structure or composition that is identical or substantially identical to that of the claims, any claimed properties or functions are presumed to be inherent. Such a finding establishes a prima facie case of anticipation or obviousness. See MPEP § 2112.01.
In the present instance, Kochi teaches a steel comprising a chemical composition, structure (microstructure), and shape (wire) that meets the claim limitations. Therefore, any claimed properties, such as performance level under NACE TM0284 and NACE TM0177, would be expected to also occur in the Kochi’s steels due to the composition, structure, and shape being the same as the claimed composition, structure, and shape.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over US 2006/0048864 (A1) to Nagao et al. (“Nagao”) in view of Koike.
Regarding claim 2, Nagao discloses a wire rod and steel wires. Abstract; para. [0001]. The steel contains the following elements in percent by mass (para. [0009]-[0013], [0047]-[0059]):
Element
Claim 2
US 2006/0048864 A1
Carbon
0.30 - 0.70
0.6 - 1.0
Silicon
0.25 - 0.45
0.1 - 1.5
Manganese
0.20 - 0.70
0.3 - 1.0
Titanium
0.008 - 0.020
0.1 or less
Zirconium
0.001 - 0.004
0.1 or less
Cobalt
further comprises up to 0.15
--------------
The steel contains not less than 90% pearlite structure. Para. [0030]. Structures other than pearlite, such as intergranular ferrite (steel comprises allotriomorphic ferrite), can be present as the remainder provided that pearlite is not less than 90%. Para. [0030].
The ranges of Nagao’s elements and microstructure fall within or overlap the claimed ranges. This overlap creates a prima facie case of obviousness. MPEP § 2144.05(I). It would have been obvious for one of ordinary skill in the art to select from among the prior art ranges because there is utility over an entire range disclosed in the prior art.
Nagao does not teach cobalt (Co) in the steel.
Koike is directed to a high-strength bolt produced by drawing steel material to obtain a steel wire. Abstract. The steel contains pearlite. Para. [0008]. Co is optionally added to the steel in an amount of up to 0.50% in order to suppress the precipitation of pro-eutectoid cementite, which interferes with strength. Para. [0033]-[0035].
Nagao is concerned with strength and minimizes the amount of non-pearlitic structure (para. [0001], [0027], [0030], [0037]-[0042]). Therefore, it would have been obvious to have added cobalt in the amount taught by Koike to Nagao’s steel because the cobalt would further enhance the strength of the steel and lessen the amount of pro-eutectoid cementite, which is not a phase in the steels of Nagao.
Response to Arguments
Applicant's arguments filed 02/23/2026 have been fully considered.
With respect to the specification objection, Applicant argues that each of the terms “riser assembly,” “floating assembly,” “ship,” and “sea floor installation” in the amendment to the specification are not new matter because they are clearly depicted in Figure 2.
In response, this is not persuasive because Figure 2 illustrates generic shapes, such as curved lines and rectangles, and do not indicate with any specificity the particular identity of the various shapes and lines drawn. Additionally, the specification does not utilize the terms at issue. Thus, the amendments to the specification have not been entered due to the new matter because they have no basis in the figures or the specification.
Applicant’s arguments with respect to Yamasaki (US 2014/0000767 (A1)) and Hirakami (US 2017/0166992 (A1)) have been considered but are moot because the new ground of rejection does not rely on these references to reject the claims in this Office action.
Conclusion
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/VANESSA T. LUK/Primary Examiner, Art Unit 1733
March 31, 2026