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
Applicant’s election of Group I, claims 1-2 in the reply filed on 12/31/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 3-5 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group II, there being no allowable generic or linking claim.
Status of Claims
Claims 1-5 are pending. Claims 1-2 are presented for this examination. Claims 3-5 are withdrawn.
Priority
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 07/16/2025, 03/28/2025, 08/13/2024 and 05/17/2023 and is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-2 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 pre-AIA the applicant regards as the invention.
The term “small compressive strength loss” in claim 1 is a relative term which renders the claim indefinite. The term “small” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 1 recites the limitation "the stretched and deformed material" in lines 13-14. There is insufficient antecedent basis for this limitation in the claim. It is unclear whether the stretched and deformed material refers to the claimed steel under 0.3% stretched condition or something else.
As a result of rejected claim 1, all dependent claims are also rejected under the same statue.
Claim Rejections - 35 USC § 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.
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.
Claim(s) 1-2 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kawasaki (US20140360634A1 from IDS 08/13/2024).
As for claims 1-2, instant claimed “after being process into a steel pipe” is intended use and preamble according to MPEP 2111.02 II.
Because the preamble merely states the purpose or intended use of the invention, rather than a claim limitation, no patentable weight would be given. See MPEP 2111.02 II
Kawasaki discloses a hot rolled steel sheet comprising Steel Grade J (Table 1) having C, Si, Mn, Al, N and B all within claimed ranges as illustrated in Table 1 below. Kawasaki’s Table 3 further discloses Steel No 31 using same Steel Grade J having same microstructure made of ferrite and pearlite and same ferrite grain size and TS as claimed.
Table 1
Element
Applicant
(weight %)
Kawasaki et al.
(weight %)
Steel No 31 using Steel Grade J
Within
(weight %)
C
<=0.15
0.073
0.073
Si
<=2.5
1.32
1.32
Mn
<=2
1.51
1.51
Al
<=0.05
0.03
0.03
N+B
0.002-0.008
0.0036
0.0036
450C+95Si+70Mn
>250
263.95
263.95
Microstructure
Ferrite+pearlite
Ferrite+pearlite
Ferrite+pearlite
Ferrite grain size
8-25 µm
13.8
13.8
TS (Claim 2)
>=385 MPa
614
614
Kawasaki does not expressly disclose instant claim 1 required small compressive strength loss, Relational Expression 1 being less than 20% and impact toughness as required by instant claim 2. They are inherent characteristic of claimed product according to MPEP 2112.01.
When the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the prior art products necessarily possess the characteristics of the claimed product. See MPEP 2112.01.
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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) In the instant case, examiner has presented Steel No 31 of Kawasaki having same elemental composition, same microstructure, same ferrite grain size, satisfied relationship between C, Si and Mn; and same TS as required by instant claimed invention. Instant claimed characteristic would be expected absent clear and convincing evidence of the contrary.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNY R WU whose telephone number is (571)270-5515. The examiner can normally be reached on 8:30 AM-5:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached on (571)272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JENNY R WU/Primary Examiner, Art Unit 1733