DETAILED ACTION
Claims 1 and 4-6 are pending, and claim 1 is currently under review.
Claims 2-3 and 7 are cancelled.
Claims 4-6 are withdrawn.
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 .
Response to Amendment
The amendment filed 12/23/2025 has been entered. Claims 1 and 4-6 remain(s) pending in the application.
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hong et al. (WO2017111290, US 2018/0371568 referred to as English translation) in view of Tsuchida et al. (JPH01319629, machine translation referred to herein).
Regarding claim 1, Hong et al. discloses a steel for pressure vessels [abstract]; wherein said steel has a composition as seen in table 1 below [abstract]. The examiner notes that the overlap between the steel composition of Hong et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I).
Hong et al. does not expressly teach inclusions of Cr, Mo, Al, Nb, or V as claimed. Tsuchida et al. discloses a steel for chemical reaction vessels which undergo pressure tests (ie. pressure vessel) having excellent toughness and good strength even after post weld heat treatment [p.1-3]; wherein said steel includes inclusions of Cr, Mo, Al, Nb, and V as shown in table 1 below for the purposes of improving strength and deoxidizing steel [p.2-3]. Therefore, it would have been obvious to modify the steel of Hong et al. by including the aforementioned alloying elements for the above benefits as taught by Tsuchida et al. The examiner notes that these ranges of Tsuchida et al. further overlap with the claimed ranges. See MPEP 2144.05(I).
Hong et al. further teaches that the steel microstructure includes tempered martensite and tempered bainite, with tempered martensite included in an amount of 20 to 75 percent as determined by the examiner [abstract]. Hong et al. also teaches a tensile strength of greater than 600 MPa and a charpy impact energy value of 200 J or more [0012-0013]. The examiner notes that these ranges overlap with that as claimed. See MPEP 2144.05(I).
Table 1.
Element (wt.%)
Claim 1
Hong et al.
C
0.1 – 0.16
0.07 – 0.17
Si
0.2 – 0.35
0.15 – 0.4
Mn
0.4 – 0.6
0.3 – 0.7
Cr
6.5 – 7.5
0.5 – 13 (Tsuchida et al.)
Mo
0.7 – 0.9
0 – 3 (Tsuchida et al.)
Al
0.005 – 0.05
0.003 – 0.0405 (Tsuchida et al.)
P
0 – 0.015
0 – 0.012
S
0 – 0.02
0 – 0.015
Nb
0.002 – 0.025
0.01 – 0.2 (Tsuchida et al.)
V
0.25 – 0.35
0.003 – 0.5 (Tsuchida et al.)
Fe & Impurities
Balance
Balance
Response to Arguments
The previous double patenting rejections are withdrawn in view of the terminal disclaimer filed 12/23/2025.
Applicant's arguments filed 12/23/2025 have been fully considered but they are not persuasive.
Applicant argues that the prior art heat treatment is different from the instant application and therefore the prior art does not meet the claimed tensile strength range in view of the examples of the prior art. The examiner cannot concur. Firstly, the patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP 2113. The examiner notes that the instant claim is directed to a steel product which merely requires a tensile strength range as claimed, which overlaps with the disclosure of Hong et al. as shown above, which is prima facie obvious. See MPEP 2144.05(I). Secondly, although applicant argues that Hong et al. is limited to tensile strengths of up to 615 MPa, the examiner cannot concur. These ranges merely pertain to the specific examples of Hong et al., which do not constitute a teaching away from the broader disclosed range of Hong et al. of 600 MPa or more. See MPEP 2123. Since Hong et al. broadly and expressly teaching an overlapping tensile strength range, and since Hong et al. does not expressly teach away or discredit an upper limit of tensile strength, the examiner cannot concur that Hong et al. limits tensile strength to 615 MPa. The examiner further notes that all of the examples of Hong et al. have low C amounts, wherein one of ordinary skill in the art of steel metallurgy would understand that increasing C to higher amounts within the range of Hong et al. would naturally result in higher strengths, for example.
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 NICHOLAS A WANG whose telephone number is (408)918-7576. The examiner can normally be reached usually M-Th: 7-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 5712721177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734