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
Request for Continued Examination
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02/05/2026 has been entered.
Response to Amendments
The amendment filed on 02/05/2026 has been entered. Claims 5 – 6 have been canceled. Claims 1 – 2 and 7 – 25 remain pending. The amendment to claim 1 finds support in at least [0023, 0028, and 0031].
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 amendments and arguments thereto have overcome the previous rejections of:
Claims 1 and 5 – 8 under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Hara (US2014/0190597) as evidenced by Carbon Steel (AISI Definition, NPL, “Carbon Steel”)
Claim 2 under 35 U.S.C. 103 as being unpatentable over Hara (US2014/0190597), as applied to claim 1 above, in further view of Takeda (JP2016/216810)
Claims 1 – 2 and 5 – 9 under 35 U.S.C. 103 as being unpatentable over Arai (US 10,480,043) in view of Hara (US2014/0190597)
Claims 1 and 6 – 10 under 35 U.S.C. 103 as being unpatentable over Kondo (US2012/0042992) as evidenced by Carbon Steel (AISI Definition, NPL, “Carbon Steel”) in view of Hara (US2014/0190597)
Claim 2 under 35 U.S.C. 103 as being unpatentable over Kondo (US2012/0042992) in view of Hara (US2014/0190597) as applied to claim 1 above, in further view of Takeda (JP2016/216810)
However, upon further consideration, a new rejection is made of:
Claims 1 and 7 – 9 under 35 U.S.C. 103 as being unpatentable over Perez (US2010/0319814) as evidenced by Carbon Steel (AISI Definition, NPL, “Carbon Steel”) in view of Hara (US2014/0190597)
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Perez (US2010/0319814) in view of Hara (US2014/0190597) as applied to claim 1 above, in further view of Takeda (JP2016/216810)
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Perez (US2010/0319814) as evidenced by Carbon Steel (AISI Definition, NPL, “Carbon Steel”) in view of Hara (US2014/0190597), as applied to claim 9, in further view of Uchida (JP2012/193404)
The arguments directed to the prior art of Hara (US2014/0190597) and Takeda (JP2016/216810) have been fully considered but are not persuasive. Applicant argues that Hara’s teaching of including an interpass would teach away from the claimed invention because the interpass is used for recrystallization and Hara warns against the grain size exceeding 10 µm. This is not persuasive.
Hara teaches that including the interpass limitation achieves a steel that has small deviation in ordinary temperature strength and low temperature toughness [0038] by allowing austenite to recrystallize [0053]. This is a benefit an ordinarily skilled artisan would readily appreciate in applying to prior art such as Perez (US2010/0319814). Additionally, the instant invention also describes performing the extended interpass for recrystallization/recovery following rolling. Lastly, the crystal grain size described by Hara is to the grain size following cooling and coiling and refers to the microstructure after it has been converted/transformed. As such, this is different from the prior austenitic grain size claimed prior to heat treatment.
Likewise, applicant argues that Takeda is directly contrary to the claimed invention because it seeks to avoid abnormal grain growth. This is not found persuasive. Takeda’s teaching of avoiding abnormal grain growth does not constitute a teaching away from specifically controlling prior austenite grain size being 20 to 50 µm as claimed. Takeda also teaches that the soaking time avoids decarburization which is an additional benefit a person of ordinary skill in the art would appreciate in its application to the prior art. As such, this argument is not found persuasive.
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US2021/0017635 – steel material for sour environment with similar production method of rolling, quenching, tempering, and overlapping KISSC
US2015/0083282 – Producing seamless pipe with overlapping grain size by controlling reheating temperature
US2012/0199255 – Teaches forming line pipe including austenization, quenching, and tempering and controlling the prior austenite grain size to be 20 – 100 µm.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUSTIN POLLOCK whose telephone number is (571)272-5602. The examiner can normally be reached M - F (8 - 5).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached on (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