DETAILED ACTION
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 .
Status of Claims
Claims 1-4, 6, 8-9, 11-18, 20-23, 25 and 27-29 are examined in the office action of which all of the claims except claims 4 and 17 have been amended.
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 1-4, 6, 8-9, 11-18, 20-23, 25 and 27-29 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 1-4, 6, 8-9, 11-18, 20-23, 25 and 27-29, instant claims 1 and 15 were amended to recite “nickel in an amount in the range of 0.15% to 0.75 by weight of the carbon steel composition”. It is unclear whether the claim is requiring an upper limit 0.75% by weight or whether it is requiring an upper limit of an absolute amount of 0.78 thereby making the instant claims and their dependents indefinite.
Regarding claims 4, 6, 8-9, 11-14, 17-18, 20-23, 25 and 27-29, instant claim 4 recites “The carbon steel composition of claim 1, further comprising one or more elements selected from the group consisting of carbon, phosphorous, sulfur, silicon, aluminum, chromium, molybdenum, niobium, titanium, nitrogen, calcium, nickel, vanadium, boron, and any combination thereof” and instant claim 17 recites “The carbon steel composition of claim 15, further comprising one or more elements selected from the group consisting of manganese, phosphorous, sulfur, silicon, aluminum, chromium, molybdenum, niobium, titanium, nitrogen, calcium, nickel, vanadium, boron, and any combination thereof.” However, instant claims 1 and 15 already require nickel in a specific range thereby making it unclear whether instant claims 4 and 17 are requiring additional amounts of Ni and what range of Ni would satisfy these claims and their dependents.
Regarding claims 8-9, 11-14, 18, 21-23, 25 and 27-29, instant claims recite the term “at least” followed by chemical element and a range for it: for example, claim 8 recites “at least niobium in an amount of 0.02% to 0.10% by weight”. It is unclear what is required by the term and how it modifies the range and the composition of the steel.
Claim Rejections - 35 USC § 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 (i.e., changing from AIA to pre-AIA ) 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.
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.
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.
List 1
Element
Instant Claims
(mass%)
Prior Art
(mass%)
C
Claim 6: C: 0.01% to 0.15%
Claim 15: C: ≤ 0.025%
Claim 16: C: 0.01% to 0.025%
0.01 – 0.35
Mn
Claim 1, 18: Mn: ≤1.6%
Claim 2: 0.6% to 1.3%
Claim 3, 20: 0.6% to 1.6%
1 – 4
Claim 4: further comprising one or more elements selected from the group consisting of carbon, phosphorous, sulfur, silicon, aluminum, chromium, molybdenum, niobium, titanium, nitrogen, calcium, nickel, vanadium, boron, and any combination thereof
Claim 17: further comprising one or more elements selected from the group consisting of manganese, phosphorous, sulfur, silicon, aluminum, chromium, molybdenum, niobium, titanium, nitrogen, calcium, nickel, vanadium, boron, and any combination thereof.
Claim 23: comprises at least niobium and vanadium, and the combined amount of niobium and vanadium is in an amount of about 0.02% to about 0.15%
C, Mn:
See above
Nb, V:
See below
Ni
Claim 1, 15: Ni: 0.15% to 0.78
up to 2
Nb, V
Claim 8, 21: Nb: 0.02% to 0.10%
Claim 9, 22: V: 0.02% to 0.10%
Nb: up to 0.2
V: up to 0.2
Cr
Claim 11, 27: Cr: 0.1% to 0.75%
Cr: up to 0.2
B
Claim 12, 25: B: 0.0005% to 0.003%
B: up to 0.2
Mo
Claim 13, 28: Mo: 0.1% to 0.5%
Mo: up to 1
Ti
Claim 14, 29: Ti: 0.005% to 0.1%
Ti: up to 0.2
Fe +
impurities
Balance
Balance
Claims 1-4, 6, 8-9, 11-18, 20-23, 25 and 27-29 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/121793 A1 via its US English equivalent US 2020/0325552 A1 of Mraczek (US’552).
Regarding claims 1-4, 6, 8-9, 11-18, 20-23, 25 and 27-29, WO 2019/121793 A1 via its US English equivalent US 2020/0325552 A1 of Mraczek (US’552) teaches [0001] “cold-rolled, finally annealed flat steel product coated with a metallic anticorrosion layer” with a composition wherein the claimed ranges of the constituent elements of the instant alloy of the instant claims overlap or lie inside the ranges of various elements of the alloy of the prior art as shown in the List 1 above. {US’552 abstract, claims 1-18, [0001]-[0004], [0008]-[0010], [0020]-[0033]}. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed composition over the prior art disclosure since the prior art teaches the similar property/utility throughout the disclosed ranges. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4, 6, 8-9, 11-18, 20-23, 25 and 27-29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4-14 of copending Application No. 18/030112 (reference application). (US 2023/0374635 A1 is used for comparison of the claims). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application discloses a steel that would meet the claimed composition of the instant claims.
For example, claim 1 of the reference application recites the compositional requirement as follows:
“less than 15 wt % chromium (Cr) equivalent and more than 7 wt % nickel (Ni) equivalent, wherein
Ni equivalent is: Nieq=Ni+Co+0.5·Mn+0.3·Cu+25·N+30·C;
Cr equivalent is: Creq=Cr+2·Si+1.5·Mo+5·V+15.5·Al+1.75·Nb+1.5·Ti+0.75·W; and
wherein the Ni equivalent and Cr equivalent satisfies 6·Nieq+Creq≥15, and Nieq+15≥1.5Creq;”
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-4, 6, 8-9, 11-18, 20-23, 25 and 27-29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4-14 of copending Application No. 18/030198 (reference application). (US 2023/0374636 A1 is used for comparison of the claims). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application discloses a steel that would meet the claimed composition of the instant claims.
For example, claim 1 of the reference application recites the compositional requirement as follows:
“less than 30 wt % chromium (Cr) equivalent and more than 7 wt % nickel (Ni) equivalent, wherein
Ni equivalent is: Nieq=Ni+Co+0.5·Mn+0.3·Cu+25·N+30·C;
Cr equivalent is: Creq=Cr+2·Si+1.5·Mo+5·V+15.5·Al+1.75·Nb+1.5·Ti+0.75·W; and
wherein the Ni equivalent and Cr equivalent satisfies 6·Nieq+Creq≥15, and Nieq+15≥1.5Creq;”
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Amendments to the instant claims along with Applicant’s arguments, see pages 9-10, filed 03/16/2026, with respect to the rejection(s) a) “Claims 1-6, 8-9, 11-18, 20-25 and 27-29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 111809121 A of SHI and its English machine translation (CN’121)” and “Claims 1-6, 8-9, 11-18, 20-25 and 27-29 are rejected under 35 U.S.C. 103 as being unpatentable over CN 111809121 A of SHI and its English machine translation (CN’121)” have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of amendments to the instant claims.
The rejection “ Claims 1-4, 6, 8-9, 11-18, 20-23, 25 and 27-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. US 9,821,401 B2” has been withdrawn in view of the amendments to the claims.
The rejection “Claims 15-17, 21-25 and 27-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. US 11,883,906 B2” has been withdrawn in view of the amendments to the claims.
Regarding the double patenting rejections of instant claims over copending Application No. 18/030112 (reference application) and copending Application No. 18/030198 (reference application), it is noted that the Applicant has not pointed out any errors associated with it. As shown above, the claims of these copending application do read on the instant claims.
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 JOPHY S. KOSHY whose telephone number is (571)272-0030. The examiner can normally be reached M-F 8:30 AM- 5:00 PM.
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/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733