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 .
Election/Restrictions
Applicant’s election of Group I, claims 1-2 in the reply filed on 12/05/2025 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Claims 3-4 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/05/2025.
The Examiner notes that claim 3 has a correct status identifier of (Withdrawn) while claim 4 uses a status identifier of (Original) instead of (Withdrawn). The current status of all of the claims in the application, including any previously canceled or withdrawn claims, must be given. Status is indicated in a parenthetical expression following the claim number by one of the following status identifiers: (original), (currently amended), (previously presented), (canceled), (withdrawn), (new), or (not entered). See MPEP 714 C (A).
As a courtesy, the Examiner has examined the improperly marked claim set, rather than returning it to Applicant for correction.
Priority
Copies of the certified copies of the priority documents have been received in this National Stage application from the International Bureau.
Information Disclosure Statement
Two (2) information disclosure statements (IDS) were submitted on 06/08/2023 and 07/09/2024. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS are being considered by the examiner.
Drawings
The drawings are objected to because there are multiple views in Figures 1, 2, 5, and 11. Partial views intended to form one complete view, on one or several sheets, must be identified by the same number followed by a capital letter. See 37 C.F.R. § 1.84(u)(1).
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “T” has been used to designate both “a thickness of the analytic model 40” ([0054]) and “thickness of the steel pipe 20” ([0059]).
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities: the instant specification uses reference character “T” to designate both “a thickness of the analytic model 40” ([0054]) and “thickness of the steel pipe 20” ([0059]).
Appropriate correction is required.
Claim Interpretation
Regarding the term “M15” in Figure 10, “M15” is interpreted as “M” indicates "metric screw thread" and "15" indicates "nominal outer diameter (major diameter of external thread)". Thus, "M15" means that the major diameter of external thread is 15 mm.
Regarding the limitation “for pressure piping” of claim 1, note that the limitation “for pressure piping” is an intended use limitation that does not impart any structural limitations to the claimed steel pipe. “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.” See MPEP §2111.02 (Il). In this case, a steel pipe meeting the claimed hardness, diameters and residual stress will be interpreted as suitable for use “for pressure piping”.
Regarding the limitation of “the steel pipe being subjected to autofrettage” of claim 1, this is a product-by-process limitation. MPEP § 2113 states that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”. In this instance, the claimed processing limitation of the steel pipe being subjected to autofrettage results in compressive residual stresses which could be achieved by other processes.
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.
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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, the terms “t” and “T” are not defined by the claim which renders the claim indefinite. The instant specifications recite T is the thickness of the steel pipe 20 and t is the distance in the steel pipe 20 after the autofrettage ([0059], Figure 3) where the distance is in the radial direction between the inner surface 40c and a point P1 at which the compressive stress becomes zero at the end portion 40b ([0054]). For the purposes of examination, “t” will be interpreted as the distance in the radial direction between the inner surface of the pipe and a point P1 at which the compressive stress is zero at the end portion 40b (“t”, Figure 3) and “T” will be interpreted as the overall thickness of the steel pipe (“T”, Figure 3).
Claim 2 depends on claim 1, does not resolve the aforementioned issues, and is thereby also indefinite.
Claim 1 recites the limitation "after the autofrettage and halving" in line 12. There is insufficient antecedent basis for the term “halving” in the claim since “halving” comes after “the autofrettage”, and “halving” has not been introduced prior to this instance.
Claim 2 depends on claim 1, does not resolve the aforementioned issues, and is thereby also indefinite.
Appropriate correction is required.
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.
Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2006274310 A of Ishizuka (as cited in prior Office action).
Regarding claims 1-2, Ishizuka teaches a method for manufacturing machine parts and structural steel pipes that are excellent in strength, workability, and induction hardenability (Abstract, structural steel pipe reads on the claimed steel pipe). Ishizuka teaches the steel pipe has an outer diameter of 120 mm and a wall thickness of 12 mm and another steel pipe has an outer diameter of 150 mm and wall thickness of 25 mm ([0043], outer diameter reads on claimed outer diameter D). One can calculate the inner diameter by subtracting the wall thickness from the outer diameter resulting in inner diameters of 108 mm and 125 mm (inner diameter reads on the claimed inner diameter d). Ishizuka therefore teaches an outer and inner diameter of 120 mm and 108 mm respectively, or 150 mm and 125 mm respectively ([0043]). While Ishizuka does not explicitly disclose D/d ratios, one can perform the calculation by diving the outer and inner diameters of the steel pipes of Ishizuka, which results in D/d ratios of 1.1 and 1.2. 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.
Since Ishizuka teaches a steel pipe with an outer and inner diameter, the pipe necessarily has an outer and inner surface. Given the limitation “for pressure piping” is interpreted as intended use and “the steel pipe being subjected to autofrettage” is interpreted as a product-by-process limitation (see Claim Interpretation in this Office action), the steel pipe of Ishizuka reads on both of these limitations.
Ishizuka therefore reads on the limitations a steel pipe for pressure piping, the steel pipe being subjected to autofrettage, the steel pipe comprising an outer surface and an inner surface, an outer diameter of the steel pipe is denoted by D (mm), and an inner diameter of the steel pipe is denoted by d (mm) of claim 1 and wherein D/d is 2.0 or less of claim 2.
Ishizuka teaches hardness values in the outer region and inner region (Table 2, Examples 1-8, 10, 12, 17-19, and 21). Ishizuka teaches measuring the Vickers hardness at positions 1 mm inward from the outer and inner surfaces of the test tube ([0045]). Since the wall thickness of the steel pipes of Ishizuka are 12 mm or 25 mm, 1/4 wall-thickness for the pipes of Ishizuka would be 3 mm or 6.25 mm. Therefore, measuring the hardness at a position 1 mm inward overlaps with the claimed from the outer surface to a 1/4 wall-thickness depth position and from the inner surface to a 1/4 wall- thickness depth position. Calculating the hardness ratio by dividing the hardness in the outer region with the hardness in the inner region results in values from 1.02 to 1.3, which overlap with the claimed average hardness in outer layer region is 1.20 times or more an average hardness in an inner layer region. 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.
Ishizuka therefore reads on the limitation wherein an average hardness of the steel pipe in an outer layer region from the outer surface to a 1/4 wall-thickness depth position is 1.20 times or more an average hardness of the steel pipe in an inner layer region from the inner surface to a 1/4 wall- thickness depth position of claim 1.
Ishizuka teaches the main focus is to keep the absolute value of the residual stress at 150 MPa or less ([0021], [0042]), which overlaps with the claimed estimated value σi1 of a residual stress. Ishizuka further teaches inventive examples with residual stress values of 28 MPa to 145 MPa (Table 3), which lie within the claimed ranges. While Ishizuka teaches the residual stress is in the circumferential direction of the outer surface rather than inner surface as claimed and therefore reads on the claimed σo1, one of ordinary skill in the art understands the residual stress of the inner surface must be in equilibrium with the residual stress of the outer surface and therefore -150 MPa or less. The residual stress of Ishizuka therefore also reads on the claimed σi1 value. 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. Given the limitation “the steel pipe being subjected to autofrettage” is interpreted as a product-by-process limitation (see Claim Interpretation in this Office action), the steel pipe of Ishizuka reads on the “after the autofrettage” limitations since Ishizuka teaches residual stress overlapping with the instant invention.
Ishizuka therefore reads on the limitation a measured value of a residual stress at an outer surface of the steel pipe after the autofrettage is denoted by σo1 (MPa) of claim 1 and an estimated value σi1 (MPa) of a residual stress at the inner surface of the steel pipe after the autofrettage is -150 MPa or less of claim 1.
However, Ishizuka does not explicitly disclose a measured value of a residual stress at an outer surface of the steel pipe after the autofrettage and halving is denoted by σo2 (MPa), and a measured value of a residual stress at an inner surface of the steel pipe after the autofrettage and the halving is denoted by σi2 (MPa) and to the estimated value σi1 being determined by Formula (i) to Formula (iv) of claim 1.
While Ishizuka does not explicitly disclose the claimed formulas (i)-(iv), one of ordinary skill in the art would reasonably expect the machine parts and structural steel pipes of Ishizuka to possess the claimed properties of the instant invention given the overlapping outer and inner diameters, hardness ratios, and residual stress between Ishizuka and the instant invention.
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). See MPEP § 2112.01 I. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Therefore, it is expected that the steel pipe of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (both pipes are steel), b) the claimed and prior art products are identical or substantially identical in structure (both pipes have overlapping outer and inner diameters and hardness ratios), and c) the claimed and prior art products are produced by identical or substantially identical processes (both pipes adjust their processing to obtain a residual stress of -150 MPa or less). Since the Office does not have a laboratory to test the reference pipe, it is applicant’s burden to show that the reference pipe does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
Although Ishizuka teaches an absolute value of a residual stress, Ishizuka does not explicitly disclose any residual stresses “after autofrettage” or any residual stresses “after autofrettage and halving” the steel pipe. While Ishizuka does not explicitly disclose these properties nor the distance “t”, one of ordinary skill in the art would reasonably expect the values to be present even if they are not explicitly measured or disclosed given the overlap in composition (steel), structure (D/d ratio of 2.0 or less), and an estimated value σi1 (MPa) of a residual stress at an inner surface of the steel pipe, as described above. Absent any clear and convincing evidence and/or arguments to the contrary, one of ordinary skill in the art would expect the pipe of Ishizuka to possess the claimed properties. A prima facie case of obviousness has been properly established herein. As the Patent Office does not possess the laboratory facilities to test any differences in the claimed invention versus that of the reference, the burden shifts to applicant to demonstrate otherwise.
Ishizuka therefore reads on all the limitations of claims 1-2.
Citation of Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2015/0183015 A1 of Fonte (as cited in IDS mailed on 06/08/2023) is considered relevant to the instant invention since Fonte teaches a steel tube with a hardness near the outer diameter of Rockwell C 39-42 and a hardness near the inner diameter of Rockwell C 26-29 ([0044]), which results in an outer hardness which is 1.5-1.6 times the inner hardness value and is relevant to at least claim 1 of the instant invention.
Conclusion
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/M.A./Examiner, Art Unit 1733
/REBECCA JANSSEN/Primary Examiner, Art Unit 1733