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 05/27/26 has been entered. Claims 1 – 2 and 7 – 25 remain pending. Claims 11 – 25 remain withdrawn. Claims 1 – 2 and 7 – 10 remain under examination.
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 and 7 – 9 are rejected under 35 U.S.C. 103 as being unpatentable over Perez (US2010/0319814, cited with the OA on 08/11/25) as evidenced by Carbon Steel (AISI Definition, NPL, “Carbon Steel”, cited with OA on 06/23/25) in view of Hara (US2014/0190597, cited with the OA on 12/16/25)
Regarding claim 1, Perez teaches producing high strength line pipes [abstract] with a composition [0013 – 0024] within the definition of “carbon steel” as evidenced by AISI Definition of “Carbon Steel” (meeting the claimed limitation of “carbon steel”).
Perez teaches an example method of producing said steel including the steps of:
Preparing billets via casting [0085]
Heating the billet/rod to 1200 – 1300°C [0086], meeting the claimed limitation of heating a carbon steel composition to a reheating temperature of about 1175°C to about 1350°C.
Subjecting it to hot – rolling with a finishing temperature of 950 – 1000°C [0086, 0098], meeting the claimed limitation of deforming the compositon while at a temperature in the range of the reheating temperature and finishing temperature of 910 – 1000°C.
Accelerated cooling followed rolling at a rate of 5 – 50°C/s, which falls within the claimed range, to room temperature, which falls within the claimed quench stop temperature range [0091].
Perez further teaches that the austenite grain size following the deformation/hot-rolling process and prior to transformation is 20 – 50 µm, which falls within the claimed range of the prior austenite grain size [0088].
Perez does not explicitly teach that the hot-rolling is multiple stages or that an extended interpass between 10 s and 10 min is provided. Perez expressly discloses that the bainite and martensite are formed from the transformation processes following hot-rolling/deformation, but does not expressly describe the bainite as lath.
Hara teaches a method for making steel that includes heating the steel slab to 1200°C [0050, no. 4 Table 3], rough rolling between said reheat temperature and 950°C or more, in a recrystallization range [0088], and cooling [0058, 0059]. Hara teaches that during the hot-rolling, multiple passes are used including an extended stop between the passes that lasts 100 – 500 seconds [0038, 0053], meeting the claimed limitation of multiple passes with an extended interpass. Hara teaches that doing so achieves a steel that has small deviation in ordinary temperature strength and low temperature toughness [0038] by allowing austenite to recrystallize [0053].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the method of Perez and controlled the hot rolling to be multiple passes with an extended stop between 100 and 500 second, as taught by Hara. Perez and Hara are directed to steel material for making line pipes and as such, a person of ordinary skilled in the art would have considered the teachings/benefit disclosed by Hara to be pertinent to the method of Perez. In particular, an ordinarily skilled artisan would have been motivated to achieve smaller deviation in ordinary temperature strength and low temperature toughness by controlling the hot/rough rolling to be multiple passes with an extended stop between the passes, as taught by Hara. An ordinarily skilled artisan would have had a reasonable expectation of success in applying the teachings disclosed by Hara to the method of Perez because Hara and Perez are directed to casted steel material for line pipes which are subjected to hot-rolling steps.
Perez (in view of Hara) expressly discloses that the bainite and martensite are formed from the transformation processes following hot-rolling/deformation [0097], but does not expressly describe the bainite as lath.
However, given that Perez in view of Hara teaches a substantially identical method and composition (carbon steel) of claim 1, and explicitly describes attaining bainite [0097], there is a reasonable expectation to an ordinarily skilled artisan that at least some of the bainite formed in the method of Perez in view of Hara would be lath.
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 and process of making, a prima facie case of obviousness is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (See MPEP 2112.01)). Persion Pharms. LLC v. Alvogen Malta Operations LTD., 945 F.3d 1184, 1191, 2019 USPQ2d 494084 (Fed. Cir. 2019), where the court stated that a proper finding of inherency does not require that all limitations are taught in a single reference, and that inherency may meet a missing claim limitation when the limitation is "the natural result of the combination of prior art elements." (emphasis in original) (See MPEP 2112 IV).
Regarding claims 7 – 8, Perez in view of Hara teaches the invention as applied in claim 1. Perez as-modified by Hara does not expressly state what the KISSC is, however, given that Perez in view of Hara teaches a substantially identical method, composition (carbon steel), and prior austenite grain size as claim 1, there is a reasonable expectation to an ordinarily skilled artisan that the KISSC of the product of Perez in view of Hara would naturally result in meeting the limitations of claims 7 and 8.
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 and process of making, a prima facie case of obviousness is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (See MPEP 2112.01)). Persion Pharms. LLC v. Alvogen Malta Operations LTD., 945 F.3d 1184, 1191, 2019 USPQ2d 494084 (Fed. Cir. 2019), where the court stated that a proper finding of inherency does not require that all limitations are taught in a single reference, and that inherency may meet a missing claim limitation when the limitation is "the natural result of the combination of prior art elements." (emphasis in original) (See MPEP 2112 IV).
Regarding claim 9, Perez in view of Hara teaches the invention as applied in claim 1. Perez teaches that the process can including a step of tempering the steel (tempering in steel making being the heating of up to at most the austenite (ac1) temperature) [0094], meeting the claimed limitation of performing a second reheating from Ac1-300 to Ac1.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Perez (US2010/0319814, cited with the OA on 08/11/25) in view of Hara (US2014/0190597) as applied to claim 1 above, in further view of Takeda (JP2016/216810, using espacenet translation)
Regarding claim 2, Perez in view of Hara teaches the invention as applied in claim 1. Perez in view of Hara teaches heating the billet up to a particular temperature prior to hot rolling [0086], but does not explicitly teach the time it remains at said temperature.
Takeda teaches a low-carbon steel material [0022] which is subjected to heating of the casted material and hot working (including hot rolling) [0097]. Takeda teaches that the casted material (slab) is heated to 1300°C or less and for a time of 7 hour or less, which overlaps with the claimed range [0098]. Takeda discloses that controlling the time to 7 hours or less ensures that decarburization does not become significant and that the austenite grains do not grow abnormally during the heating before quenching [0098].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the method of Perez as-modified by Hara and controlled the casted material heating time prior to hot working to a time of 7 hours or less, as taught by Takeda. Perez and Takeda are directed to casted steel material with low-carbon/overlapping carbon contents which are subjected to hot-working and as such, a person of ordinary skilled in the art would have had a reasonable expectation of success in applying the time disclosed by Takeda to the method of Perez. An ordinarily skilled artisan would have been motivated to do so because as disclosed in Takeda, controlling the time to 7 hours or less ensures that decarburization does not become significant and that the austenite grains do not grow abnormally during the heating before quenching.
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)”
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Perez (US2010/0319814, cited with the OA on 08/11/25) as evidenced by Carbon Steel (AISI Definition, NPL, “Carbon Steel”, cited with OA on 06/23/25) in view of Hara (US2014/0190597, cited with the OA on 12/16/25), as applied to claim 9, in further view of Uchida (JP2012/193404, using espacenet translation)
Regarding claim 10, Perez in view of Hara teaches the invention as applied in claim 9. Perez does not teach performing a quenching step after the second reheating step or performing a third reheating step.
Uchida teaches a method of producing a steel pipe [0001] with including hot-rolling, quenching and tempering [0020]. Uchida teaches that the method can be used to achieve high toughness and strength [0038] and the method can be achieved by performing quenching and tempering two or more times [0064 – 0065]. Uchida states that repeating the steps multiple times makes it easier to attain the toughness desired [0067]. Wherein repeating quenching and tempering in the method of Perez would meet the claimed limitation of quenching after the second reheating and performing a third reheating.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the method of Perez as-modified by Hara and modified it to perform quenching and tempering multiple times in order to ensure that the desired excellent toughness was achieved, as described by Uchida. Perez, Hara, and Uchida are directed to cast steel material produced by hot-rolling to form steel pipe material and as such, a person of ordinary skill in the art would have considered the teachings of Uchida to be pertinent to the method of Perez. Moreover, Perez expressly appreciates attaining excellent toughness in the steel material [abstract] and therefore an ordinarily skilled artisan would have been motivated by the teachings of Uchida. Lastly, an ordinarily skilled artisan would have had a reasonable expectation of success in applying the teachings of Uchida (of repeating quenching and tempering) to Perez because Perez already teaches performing quenching and tempering.
Response to Arguments
Applicant's arguments filed have been fully considered but they are not persuasive.
Applicant argues that it would not be obvious to apply the interpass time of Hara to Perez because Perez already achieves the desired prior austenite grain size and because Hara’s interpass is fundamentally different and would result in a finer grain size of 10 µm or less. This is not persuasive.
The interpass of Hara is specifically directed to recrystallization in order to minimize deviation of the properties throughout the steel, a benefit that would be readily appreciated in the teachings of Perez. Hara expressly teaches that the time disclosed (100 – 500 sec) and temperature of the interpass step between rough rolling steps is important for steel having a thickness of 7 mm or more and 25 mm or less to achieve sufficient recrystallization (which in turn produces steel material that has lower deviation in properties throughout) [0053]. Notably, Perez teaches that the thickness of steel is 6 – 25 mm [0087].
Moreover, applicant argues that performing the interpass at said time would result in finer grain size of 10 µm or less but Hara makes clear that the finer grain size is due to the rolling. “by performing the remaining passes of the rough rolling after stopping and then performing the finish rolling, the amount of draft in the non-recrystallization range can also be sufficiently secured. As a result, it is possible to make the effective crystal grain size of the steel plate after coiling, that is, the effective crystal grain size of the hot coil for line pipe use, 10 μm or less.” [0053]. Hara further highlights this in [0062] which describes that performing the rolling in a non-recrystallization temperature range reduces the grain size to below 10 µm.
Therefore, Hara teaches performing an interpass heating for 100 – 500 seconds between hot rolling steps to allow for sufficient recrystallization of steel products/works that have thickness of 7 mm or more (which is the thickness range of Perez) and that this recrystallization step is beneficial for minimizing deviation in properties throughout the steel product/work. As such, this would be a clear benefit in the steel making of Perez which seeks to produce steel material with a thickness of 6 – 25 mm.
Moreover, Hara does not state or suggest that performing the interpass would cause the grain size to be below 10 µm and therefore, an ordinarily skilled artisan would have had a reasonable expectation of success in implementing the additional interpass step. Therefore, applicant’s arguments are not persuasive.
Applicant argues that lath bainite is not inherent and that a reasonable expectation falls below the standard of inherency. This is not persuasive. Applicant’s interpretation of the Office’s position is incorrect. Applicant states that there is no evidence that the combination will yield a microstructure of lathe bainite, however, the claim only requires that the microstructure comprises lath bainite, not that the microstructure is only lath bainite or that all bainite present is lath structure. Therefore, Applicant’s arguments are not commensurate with the scope of the claim.
The Office’s position is that the combination of Perez in view of Hara, which teaches a substantially identical method, would inherently result in at least one grain of lathe bainite being present throughout the entirety of the linepipe steel, thus meeting the broadest reasonable interpretation of the claimed limitation. To this, the combination is substantially identical in method to claim 1 in particular to the cooling treatment following hot deformation, which would highly influence microstructural composition. Additionally, Perez teaches that the microstructure can be substantially all bainite [0025]. Therefore, the Office has provided a sound basis for believing that lath bainite would be present in the steel of Perez in view of Hara. "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." (MPEP 2112.02 I).
Applicant argues that while Perez in view of Hara may disclose overlapping ranges of the parameters, they do not suggest selecting the exact amounts to achieve increased SCC resistance. This is unpersuasive. “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)” (MPEP 2144.05 I). Perez in view of Hara teaches parameters that fall within and/or overlap and as such, a prima facie case of obviousness has been established.
"The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05 III A). However, the Applicant has not established with data that the particular ranges are critical for achieving unexpected results over the prior art.
“Burden on Applicant to establish results are unexpected and significant” (MPEP 716.02(b)). “To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).” (MPEP 716.02(d) II)
Lastly, the examples provided in the specification are directed to particular compositions whereas the claimed steel does not have a composition (except that it is “carbon steel”). As such, the scope of the claims is not commensurate with the data in specification.
“Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980)” (MPEP 716.02(d))
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 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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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738
Prosecution Insights