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 03/03/2026 has been entered. Claims 1 – 2 and 5 – 6 remain pending. Claims 5 – 6 remain withdrawn. The amendments to claim 1 finds support in at least the original claim set.
Claim Rejections – U.S.C. §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 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.
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 1 – 2 are rejected under 35 U.S.C. 103 as being unpatentable over Eguchi (WO2017/010036, cited in the OA of 1/13/26, using US2019/0100821 as reference and henceforth referred to as US ‘821) alone, or alternatively, in further view of Kamo (WO2018155041, using US 11,306,369 as translation, previously cited in the OA on 6/10/25)
Regarding claim 1, US ‘821 teaches a stainless-steel seamless pipe [Title] with a composition of:
Element
Claimed Invention (mass%)
US ‘821 (mass%)
Reference
Relation
Carbon (C)
0.06% or less
0.05% or less
[0028]
Falls within
Silicon (Si)
1.0% or less
1.0% or less
[0029]
Falls within
Manganese (Mn)
0.01 – 0.9%
0.1 – 0.5%
[0030]
Falls within
Phosphorous (P)
0.05% or less
0.05% or less
[0031]
Falls within
Sulfur (S)
0.005% or less
0.005% or less
[0032]
Falls within
Chromium (Cr)
15.7 – 18%
16 – 18%
[0033]
Falls within
Molybdenum (Mo)
1.6 – 3.8%
2 – 3%
[0034]
Falls within
Copper (Cu)
1.1 – 4.0%
0.5 – 3.5%
[0035]
Overlaps
Nickel (Ni)
3.0 – 6.0%
3 – 5%
[0036]
Falls within
Aluminum (Al)
0.1% or less
0.001 – 0.1%
[0041]
Falls within
Nitrogen (N)
0.1% or less
0.07% or less
[0042]
Falls within
Oxygen (O)
0.01% or less
0.01% or less
[0043]
Falls within
Vanadium (V)
0.25 – 1.0%
0.5% or less
[0044]
Overlaps
Tungsten (W)
3.0% or less
0.01 – 3.0%
[0037]
Falls within
Niobium (Nb)
0.05% or less
0.01 – 0.5%
[0038]
Overlaps
Boron (B)
0.01% or less
0.005% or less
[0044]
Falls within
Tantalum (Ta)
0.3% or less
0.1% or less
[0044]
Falls within
Titanium (Ti)
0.3% or less
0.001 – 0.3%
[0039]
Falls within
Zirconium (Zr)
0.3% or less
0.2% or less
[0044]
Falls within
Calcium (Ca)
0.01% or less
0.0005 – 0.005%
[0044]
Falls within
Rare earth metals (REM)
0.3% or less
0.001 – 0.01%
[0045]
Falls with
Magnesium (Mg)
0.01% or less
Does not teach
-
Meets
Tin (Sn)
1.0% or less
Does not teach
-
Meets
Antimony (Sb)
1.0% or less
Does not teach
-
Meets
Iron (Fe)
Remainder
Remainder
[Abstract]
Meets
Formula (1)
13 – 50
Does not teach
*Shaded area indicates optional elements in US ‘821
US ‘821 does not teach the presence/requirement of any elements not included in the claims, meeting the claimed limitation of “consisting of”.
US ‘821 teaches that the stainless steel seamless pipe has a yield strength of 758 MPa or more [0026], which falls within the claimed range, 20 – 40% ferrite [0049], which falls within the claimed range, 25% or less residual austenite [0049], which falls within the claimed range, and 40% or more martensite [0049], which falls within the claimed range.
With regards to the overlapping ranges taught, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to have selected overlapping ranges as disclosed. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I). “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)”
US ‘821 does not explicitly teach the claimed formula. However, US ‘821 teaches a content of C, Si, Mn, Cr, Ni, Mo, Cu, and N that substantially overlaps with the claimed ranges and as such, the composition of US ‘821 would also overlap with the claimed formula. The claimed invention is not distinguished from the prior art solely because the prior art does not disclose the claimed formula/relationship, where the prior art teaches a composition that overlaps with or anticipates the claimed range and claimed relationship/formula. That is, the claimed invention is not distinguished from the prior art if the prior art discloses a composition range/values that satisfies/overlaps with the claimed formula, even if the prior art does not disclose the formula itself, absent evidence of criticality or unexpected results. “Patentability of the claims may not rest solely on the fact that the…contents…are calculated from the formula”. See In Re Cooper, 134 F.2d 630, 631–32 (CCPA 1943).
Alternatively, Kamo teaches a seamless steel pipe with a similar composition, microstructure and yield strength [Col 6, line 4 – 18]. In particular, Kamo teaches that the martensite phase is 45% or more [Col 11, line 43 – 46], the ferrite phase 20 – 40 vol% [Col 11, line 59 – 61] and the retained austenite is 5 – 30 vol% [Col 12, line 1 – 2], which is highly overlapping with US ‘821. Kamo teaches that the claimed Formula (1) should be 13.0 or greater [Col 9, 60 – 67], which falls within the claimed range, in order to ensure that the appropriate amount of martensite, ferrite and retained austenite is attained [Col 10, line 1 – 10].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the steel of US ‘821 and applied Formula (1) disclosed by Kamo in order to ensure that the appropriate amount of martensite, ferrite, and retained austenite was achieved. US ‘821 and Kamo are in the same field of endeavor and contain similar composition, microstructure, and yield strength of a seamless steel pipe. As such, an ordinarily skilled artisan would have had a reasonable expectation of success in applying the teachings of Kamo to US ‘821 and would be motivated to do so in order to ensure the appropriate amount of martensite, ferrite, and retained austenite (which US ‘821 and Kamo share) is achieved.
Regarding claim 2, US ‘821 alone, or alternatively in view of Kamo teaches the invention as applied in claim 1. US ‘821 teaches that the microstructure is 25% or less residual austenite [0049], which falls within the claimed range, and 40% or more martensite [0049], which falls within the claimed range. US ‘821 shows that the stainless steel seamless pipe can attain a yield strength of at least up to 896 MPa [Table 3], which overlaps the claimed range.
Claims 1 – 2 are rejected under 35 U.S.C. 103 as being unpatentable over Eguchi (WO2016/079920, cited in the OA of 1/13/26, henceforth referred to as WO ‘920) alone, or alternatively, in further view of Kamo (WO2018155041, using US 11,306,369 as translation, previously cited in the OA on 6/10/25)
Regarding claim 1, WO ‘920 teaches a stainless-steel seamless pipe [Title] with a composition of:
Element
Claimed Invention (mass%)
WO ‘920 (mass%)
Reference
Relation
Carbon (C)
0.06% or less
0.012 – 0.05%
Page 11 of translation
Falls within
Silicon (Si)
1.0% or less
1.0% or less
Page 11 of translation
Falls within
Manganese (Mn)
0.01 – 0.9%
0.1 – 0.5%
Page 11 of translation
Falls within
Phosphorous (P)
0.05% or less
0.05% or less
Page 11 of translation
Falls within
Sulfur (S)
0.005% or less
Less than 0.005%
Page 11 of translation
Falls within
Chromium (Cr)
15.7 – 18%
16 – 18%
Page 12 of translation
Falls within
Molybdenum (Mo)
1.6 – 3.8%
2.0 – 4.0%
Page 12 of translation
Overlaps
Copper (Cu)
1.1 – 4.0%
0.5 – 2.0%
Page 13 of translation
Overlaps
Nickel (Ni)
3.0 – 6.0%
3.0 – 5.0%
Page 12 of translation
Falls within
Aluminum (Al)
0.1% or less
0.001 – 0.1%
Page 14 of translation
Falls within
Nitrogen (N)
0.1% or less
0.012 – 0.07%
Page 14 of translation
Falls within
Oxygen (O)
0.01% or less
0.01% or less
Page 14 of translation
Falls within
Vanadium (V)
0.25 – 1.0%
0.5% or less
Page 15 of translation
Overlaps
Tungsten (W)
3.0% or less
0.01 – 3.0%
Page 13 of translation
Falls within
Niobium (Nb)
0.05% or less
0.02 – 0.5%
Page 13 of translation
Overlaps
Boron (B)
0.01% or less
0.0001 – 0.005%
Page 15 of translation
Falls within
Tantalum (Ta)
0.3% or less
0.01 – 0.1%
Page 15 of translation
Falls within
Titanium (Ti)
0.3% or less
0.3% or less
Page 15 of translation
Falls within
Zirconium (Zr)
0.3% or less
0.2% or less
Page 15 of translation
Falls within
Calcium (Ca)
0.01% or less
0.005% or less
Page 15 of translation
Falls within
Rare earth metals (REM)
0.3% or less
0.01% or less
Page 15 of translation
Falls within
Magnesium (Mg)
0.01% or less
0.0002 – 0.01%
Page 15 of translation
Falls within
Tin (Sn)
1.0% or less
0.2% or less
Page 15 of translation
Falls within
Antimony (Sb)
1.0% or less
Does not teach
-
Meets
Iron (Fe)
Remainder
Remainder
[Abstract]
Meets
Formula (1)
13 – 50
Does not teach
*Shaded area indicates optional elements in WO ‘920
WO ‘920 does not teach the presence/requirement of any elements not included in the claims, meeting the claimed limitation of “consisting of”.
WO ‘920 teaches that the stainless steel seamless pipe has a yield strength of 862 MPa or more [page 24, translation], which falls within the claimed range, 20 – 40% ferrite [page 17, translation], which falls within the claimed range, 10% or less residual austenite [page 17, translation], which falls within the claimed range, and 50% or more tempered martensite [page 17, translation], which falls within the claimed range.
With regards to the overlapping ranges taught, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to have selected overlapping ranges as disclosed. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I). “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)”
WO ‘920 does not explicitly teach the claimed formula. However, WO ‘920 teaches a content of C, Si, Mn, Cr, Ni, Mo, Cu, and N that substantially overlaps with the claimed ranges and as such, the composition of WO ‘920 would also overlap with the claimed formula. The claimed invention is not distinguished from the prior art solely because the prior art does not disclose the claimed formula/relationship, where the prior art teaches a composition that overlaps with or anticipates the claimed range and claimed relationship/formula. That is, the claimed invention is not distinguished from the prior art if the prior art discloses a composition range/values that satisfies/overlaps with the claimed formula, even if the prior art does not disclose the formula itself, absent evidence of criticality or unexpected results. “Patentability of the claims may not rest solely on the fact that the…contents…are calculated from the formula”. See In Re Cooper, 134 F.2d 630, 631–32 (CCPA 1943).
Alternatively, Kamo teaches a seamless steel pipe with a similar composition, microstructure and yield strength [Col 6, line 4 – 18]. In particular, Kamo teaches that the martensite phase is 45% or more [Col 11, line 43 – 46], the ferrite phase 20 – 40 vol% [Col 11, line 59 – 61] and the retained austenite is 5 – 30 vol% [Col 12, line 1 – 2], which is highly overlapping with WO ‘920. Kamo teaches that the claimed Formula (1) should be 13.0 or greater [Col 9, 60 – 67], which falls within the claimed range, in order to ensure that the appropriate amount of martensite, ferrite and retained austenite is attained [Col 10, line 1 – 10].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the steel of WO ‘920 and applied Formula (1) disclosed by Kamo in order to ensure that the appropriate amount of martensite, ferrite, and retained austenite was achieved. WO ‘920 and Kamo are in the same field of endeavor and contain similar composition, microstructure, and yield strength of a seamless steel pipe. As such, an ordinarily skilled artisan would have a reasonable expectation of success in applying the teachings of Kamo to WO ‘920 and would be motivated to do so in order to ensure the appropriate amount of martensite, ferrite, and retained austenite (which WO ‘920 and Kamo share) is achieved.
Regarding claim 2, WO ‘920 alone, or alternatively in view of Kamo teaches the invention as applied in claim 1. WO ‘920 teaches that the microstructure is 10% or less residual austenite [page 17, translation], which falls within the claimed range, and 50% or more tempered martensite [page 17, translation], which falls within the claimed range. WO ‘920 teaches that the stainless steel seamless pipe has a yield strength of 862 MPa or more [page 24, translation], which falls within the claimed range.
Response to Arguments
Applicant's amendments and arguments thereto have overcome the previous rejection of claims 1 – 2 are rejected under 35 U.S.C. 103 as being unpatentable over Kamo (WO2019035329) alone, or alternatively, in further view of US ‘369 (WO2018155041, using US 11,306,369 as translation). Kamo teaches the Nb should be at least 0.07% in order to secure yield strength. As such, the rejection is withdrawn.
However, upon further consideration a new rejection is made of:
Claims 1 – 2 under 35 U.S.C. 103 as being unpatentable over Eguchi (WO2017/010036, using US2019/0100821 as reference and referred to as US ‘821) alone, or alternatively, in further view of Kamo (WO2018155041, using US 11,306,369 as translation)
Claims 1 – 2 under 35 U.S.C. 103 as being unpatentable over Eguchi (WO2016/079920, referred to as WO ‘920) alone, or alternatively, in further view of Kamo (WO2018155041, using US 11,306,369 as translation)
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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