Detailed Office Action
Notice of Pre-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 Amendments
The amendment filed on 05/26/2026 has been entered. Claims 1 – 13 remain pending. Claims 3 – 6 remains withdrawn. Claims 1 – 2 and 7 – 13 are under examination. The amendment to claim 1 finds support in at least Table 3 of the instant invention.
Claim Rejections – U.S.C. §102
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 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 – 2, 7 – 9, 11, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang (CN109207838, using espacenet translation).
Regarding claims 1, 7 – 9, 11, and 13, Zhang teaches a steel for pipeline [0001]. Zhang teaches a composition that meets the claims [Table 1, Comparative Example 1; 0052]
Element
Claimed invention (wt%)
Zhang (mass%)
Relation
Carbon (C)
0.04 – 0.1%
0.06 – 0.1% (Claim 7)
0.075%
Falls within
Silicon (Si)
0.05 – 0.5%
0.2 – 0.5% (Claim 8)
0.25%
Falls within
Manganese (Mn)
1.0 – 2.0%
1.45%
Falls within
Aluminum (Al)
0.015 – 0.04%
0.02 – 0.03% (Claim 9)
0.026%
Falls within
Niobium (Nb)
0.003 – 0.03%
0.026%
Falls within
Titanium (Ti)
0.005 – 0.02%
0.008%
Falls within
Copper (Cu)
0.35% or less
0.25% or less (Claim 11)
0.2%
Falls within
Nickel (Ni)
0.05 – 0.8%
0.15%
Falls within
Nitrogen (N)
0.002 – 0.008%
0.003 – 0.006% (Claim 13)
0.006%
Falls within
Phosphorous (P)
0.01% or less
0.004%
Falls within
Sulfur (S)
0.003% or less
0.0002%
Falls within
Iron (Fe)
Balance
Balance
Balance
Zhang shows in Table 3 that the Impact toughness at -40°C is 285 J, which meets the claimed limitation.
Zhang does not explicitly teach the microstructure of Comparative Example 1. However, Zhang teaches a substantially identical composition and impact toughness at -40°C as the claimed steel.
Additionally, Zhang teaches that the steel is produced by a method of hot-rolling, finishing rolling, air-cooling, and normalizing [0060 – 0065]. In particular,
Reheating at 1150°C [Table 2, Col 2], substantially identical to the claim 3 (withdrawn)
Finishing rolling start temperature of 840°C and finish temperature of 820°C [Table 2, Col 3]
Which is substantially identical to the range described in [0097] of the specification.
Forming a sheet/plate with a thickness of 20 mm and normalizing at 900°C for 40 min [Table 2, Col 6], which is substantially identical to the claimed normalizing treatment of claim 3 (withdrawn).
Therefore, given the substantially identical composition and impact toughness as well as the substantially identical method, there is a reasonable expectation to an ordinarily skilled artisan that said example of Zhang would possess the claimed microstructure (i.e., ferrite grain size, ferrite area%, and spheroidal pearlite %). 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, in this case composition, method, and structure (i.e., property), a prima facie case of anticipation is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (MPEP 2112.01 I).
"[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962))
Regarding claim 2, Zhang teaches the invention as applied in claim 1. Zheng teaches that the steel sheet/plate achieves a yield strength of 398 MPa [Table 3], which meets the claimed range.
Zhang does not expressly disclose the impact toughness at -60°C. However, given the substantially identical composition and impact toughness at -40°C as well as the substantially identical method, there is a reasonable expectation to an ordinarily skilled artisan that said example of Zhang would possess the claimed impact toughness at -60°C.
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, in this case composition, method, and structure (i.e., property), a prima facie case of anticipation is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (MPEP 2112.01 I).
Claim Rejections – U.S.C. §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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang (CN109207838, using espacenet translation, Comp. Example 1), as applied to claim 1.
Regarding claim 10, Zhang teaches the invention as applied in claim 1. Zhang teaches that the example [Comp. Example 1] has a titanium content of 0.008 mass% [Table 1], which falls outside the claimed range of 0.01 – 0.015 wt%.
However, “[A] prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.").” (MPEP 2144.05 I).
In this case, the proportion between the titanium content in the example of Zhang and the claimed range is so close that prima facie an ordinarily skilled artisan would expect them to have the same properties, absent evidence to the contrary. Moreover, “Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992)” (MPEP 716.02 and 716.02(b) I)
Regarding claim 12, Zhang teaches the invention as applied in claim 1. Zhang teaches that the example [Comp. Example 1] has a nickel content of 0.15 mass% [Table 1], which falls outside the claimed range of 0.2 – 0.7 wt%.
However, “[A] prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.").” (MPEP 2144.05 I).
In this case, the proportion between the nickel content in the example of Zhang and the claimed range is so close that prima facie an ordinarily skilled artisan would expect them to have the same properties, absent evidence to the contrary. Moreover, “Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992)” (MPEP 716.02 and 716.02(b) I)
Claims 1 – 2 and 7 – 13 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang (CN109207838, using espacenet translation, Example 3).
Regarding claims 1 and 7 – 13, Zhang teaches a steel for pipeline [0001]. Zhang teaches an example with a composition of [Table 1, Example 3; 0052]
Element
Claimed invention (wt%)
Zhang (mass%)
Relation
Carbon (C)
0.04 – 0.1%
0.06 – 0.1% (Claim 7)
0.07%
Falls within
Silicon (Si)
0.05 – 0.5%
0.2 – 0.5% (Claim 8)
0.25%
Falls within
Manganese (Mn)
1.0 – 2.0%
1.45%
Falls within
Aluminum (Al)
0.015 – 0.04%
0.02 – 0.03% (Claim 9)
0.026%
Falls within
Niobium (Nb)
0.003 – 0.03%
0.035%
Outside of
Titanium (Ti)
0.005 – 0.02%
0.01 – 0.015% (Claim 10)
0.008%
Falls within
Outside of
Copper (Cu)
0.35% or less
0.25% or less (Claim 11)
0.2%
Falls within
Nickel (Ni)
0.05 – 0.8%
0.2 – 0.7% (Claim 12)
0.2%
Falls within
Nitrogen (N)
0.002 – 0.008%
0.003 – 0.006% (Claim 13)
0.006%
Falls within
Phosphorous (P)
0.01% or less
0.004%
Falls within
Sulfur (S)
0.003% or less
0.0002%
Falls within
Iron (Fe)
Balance
Balance
Balance
Zhang shows in Table 3 that the Impact toughness at -40°C is 290 J, which meets the claimed limitation.
Zhang does not explicitly teach the microstructure of Example 3. However, Zhang teaches a substantially identical composition and impact toughness at -40°C as the claimed steel.
Additionally, Zhang teaches that the steel is produced by a method of hot-rolling, finishing rolling, air-cooling, and normalizing [0060 – 0065]. In particular,
Reheating at 1150°C [Table 2, Col 2], substantially identical to the claim 3 (withdrawn)
Finishing rolling start temperature of 860°C and finish temperature of 800°C [Table 2, Col 3]
Which is substantially identical to the range described in [0097] of the specification.
Forming a sheet/plate with a thickness of 10 mm and normalizing at 900°C for 30 min [Table 2, Col 6], which is substantially identical to the claimed normalizing treatment of claim 3 (withdrawn).
Therefore, given the substantially identical composition and impact toughness as well as the substantially identical method, there is a reasonable expectation to an ordinarily skilled artisan that said example of Zhang would possess the claimed microstructure (i.e., ferrite grain size, ferrite area%, and spheroidal pearlite %). 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, in this case composition, method, and structure (i.e., property), a prima facie case of obviousness is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (MPEP 2112.01 I).
Lastly, while Example 3 of Zhang teaches a niobium content of 0.035 mass% which falls outside the claimed range of 0.003 – 0.03 wt%, and a titanium content of 0.008 mass% which falls outside the claimed range of claim 10 of 0.01 – 0.015 wt% [Table 1, Ex 3].
“[A] prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.").” (MPEP 2144.05 I).
In this case, the proportion between the niobium and/or titanium content of Ex. 3 in Zhang and the claimed range is so close that prima facie an ordinarily skilled artisan would expect them to have the same properties, absent evidence to the contrary. Moreover, “Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992)” (MPEP 716.02 and 716.02(b) I)
Regarding claim 2, Zhang teaches the invention as applied above in claim 1. Zheng teaches that the steel sheet/plate achieves a yield strength of 394 MPa [Table 3, Ex. 3], which meets the claimed range.
Zhang does not expressly disclose the impact toughness at -60°C. However, given the substantially identical composition and impact toughness at -40°C as well as the substantially identical method, there is a reasonable expectation to an ordinarily skilled artisan that said example of Zhang would possess the claimed impact toughness at -60°C.
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, in this case composition, method, and structure (i.e., property), a prima facie case of obviousness is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (MPEP 2112.01 I).
Claims 1 – 2 and 7 – 13 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang (CN109207838, using espacenet translation, Example 4).
Regarding claims 1 and 7 – 13, Zhang teaches a steel for pipeline [0001]. Zhang teaches an example with a composition of [Table 1, Example 4; 0052]
Element
Claimed invention (wt%)
Zhang (mass%)
Relation
Carbon (C)
0.04 – 0.1%
0.06 – 0.1% (Claim 7)
0.075%
Falls within
Silicon (Si)
0.05 – 0.5%
0.2 – 0.5% (Claim 8)
0.3%
Falls within
Manganese (Mn)
1.0 – 2.0%
1.45%
Falls within
Aluminum (Al)
0.015 – 0.04%
0.02 – 0.03% (Claim 9)
0.026%
Falls within
Niobium (Nb)
0.003 – 0.03%
0.02%
Falls within
Titanium (Ti)
0.005 – 0.02%
0.01 – 0.015% (Claim 10)
0.02%
Falls within
Outside of
Copper (Cu)
0.35% or less
0.25% or less (Claim 11)
0.2%
Falls within
Nickel (Ni)
0.05 – 0.8%
0.2 – 0.7% (Claim 12)
0.15%
Falls within
Outside of
Nitrogen (N)
0.002 – 0.008%
0.003 – 0.006% (Claim 13)
0.01%
Outside of
Phosphorous (P)
0.01% or less
0.01%
Falls within
Sulfur (S)
0.003% or less
0.0002%
Falls within
Iron (Fe)
Balance
Balance
Balance
Zhang shows in Table 3 that the Impact toughness at -40°C is 287 J, which meets the claimed limitation.
Zhang does not explicitly teach the microstructure of Example 4. However, Zhang teaches a substantially identical composition and impact toughness at -40°C as the claimed steel.
Additionally, Zhang teaches that the steel is produced by a method of hot-rolling, finishing rolling, air-cooling, and normalizing [0060 – 0065]. In particular,
Reheating at 1150°C [Table 2, Col 2], substantially identical to the claim 3 (withdrawn)
Finishing rolling start temperature of 840°C and finish temperature of 820°C [Table 2, Col 3]
Which is substantially identical to the range described in [0097] of the specification.
Forming a sheet/plate with a thickness of 30 mm and normalizing at 800°C for 40 min [Table 2, Col 6], which is substantially identical to the claimed normalizing treatment of claim 3 (withdrawn).
Moreover, Zhang expressly discloses that Example 4 has granular pearlite (i.e., spheroidal pearlite) and fine ferrite [0029, 0078].
Therefore, given the substantially identical composition and impact toughness as well as the substantially identical method and the disclosure that the microstructure consists of fine ferrite and granular pearlite, there is a reasonable expectation to an ordinarily skilled artisan that said example of Zhang would possess the claimed microstructure (i.e., ferrite grain size, ferrite area%, and spheroidal pearlite %).
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, in this case composition, method, and structure (i.e., property), a prima facie case of obviousness is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (MPEP 2112.01 I).
Lastly, while Example 4 of Zhang teaches a nitrogen content of 0.01 mass% which falls outside the claimed range of 0.002 – 0.008 wt%, a titanium content of 0.02 mass% which falls outside the claimed range of claim 10 of 0.01 – 0.015 wt%, and a nickel content of 0.15 mass% which falls outside the claimed range of claim 12 of 0.2 – 0.7 wt% [Table 1, Ex 4].
“[A] prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.").” (MPEP 2144.05 I).
In this case, the proportion between the nitrogen, titanium, and/or nickel content of Ex. 4 in Zhang and the claimed range is so close that prima facie an ordinarily skilled artisan would expect them to have the same properties, absent evidence to the contrary. Moreover, “Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992)” (MPEP 716.02 and 716.02(b) I)
Regarding claim 2, Zhang teaches the invention as applied above in claim 1. Zheng teaches that the steel sheet/plate achieves a yield strength of 386 MPa [Table 3, Ex 4], which meets the claimed range.
Zhang does not expressly disclose the impact toughness at -60°C. However, given the substantially identical composition and impact toughness at -40°C as well as the substantially identical method, there is a reasonable expectation to an ordinarily skilled artisan that said example of Zhang would possess the claimed impact toughness at -60°C.
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, in this case composition, method, and structure (i.e., property), a prima facie case of obviousness is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (MPEP 2112.01 I).
Response to Arguments
Applicant's amendments and arguments thereto have overcome the previous rejection. The examiner agrees that Zheng alone, or in view of Wang, would not teach anticipate, reasonably suggest, or otherwise inherently possess the claimed limitation of the impact toughness at -40°C being 246 J or more.
However, upon further consideration a new rejection is made of:
Claims 1 – 2, 7 – 9, 11, and 13 under 35 U.S.C. 102(a)(1) as being anticipated by Zhang (CN109207838, using espacenet translation, Comp. Example 1).
Claims 10 and 12 under 35 U.S.C. 103 as being unpatentable over Zhang (CN109207838, using espacenet translation, Comp. Example 1), as applied to claim 1.
Claims 1 – 2 and 7 – 13 under 35 U.S.C. 103 as being unpatentable over Zhang (CN109207838, using espacenet translation, Example 3).
Claims 1 – 2 and 7 – 13 under 35 U.S.C. 103 as being unpatentable over Zhang (CN109207838, using espacenet translation, Example 4).
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
CN104775073 – Similar steel plate for wind powder with properties that meet the claims but a higher carbon content than claimed
CN106435369 – Similar compositon steel plate with overlapping yield strength and impact toughness of 300 J or more at -50°C
CN104775072 – Similar compositon steel plate with overlapping yield strength, impact toughness at -40°C, and impact toughness at -60°C. Not subjected to normalization .
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 Austin M Pollock whose telephone number is (571)272-5602. The examiner can normally be reached M - F (11 - 8 ET).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738
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