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 .
This is the first Office action in response to application 18277833 filed 8/18/2023. Claims 3 & 6-7 are canceled by Applicant. Claims 9-19 are newly presented. Claims 1-2, 4-5, & 8-19 are pending.
Claim Objections
Claims 1, 8, & 13-19 are objected to because of the following informalities:
The recitations “the welded joint” (claim 1: l. 5; claim 8: ll. 3, 5; claims 13-19: at ll. 3, 4 in each claim) are believed to be in error for - - the submerged arc welded joint - -.
Appropriate correction is required.
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.
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, 4-5, & 8-19 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamichi WO2020203335 (copy and English translation each provided by Applicant with IDS filed 8/18/2023) in view of Lee 20160271739.
Regarding Independent Claim 1, Nakamichi teaches a gas metal arc welded joint with high strength and excellent cryogenic impact toughness (English translation; paras. [0001], [0019] & [0058]) in a high-Mn content steel material (as follows), the high-Mn content steel material having a chemical composition comprising, by mass%, C: 0.10 to 0.80% (0.10 to 0.70%, within the claimed range; para. [0022]), Si: 0.05 to 1.00% (identical to claimed range; para. [0022]), Mn: 18.0 to 30.0% (identical to claimed range; para. [0022]), P: 0.030% or less (identical to claimed range; para. [0022]), S: 0.0070% or less (identical to claimed range; para. [0022]), Al: 0.010 to 0.070% (identical to claimed range; para. [0022]), Cr: 2.5 to 7.0% (identical to claimed range; para. [0022]), N: 0.0050 to 0.0500% (identical to claimed range; para. [0022]), O: 0.0050% or less (identical to claimed range; para. [0022]), and the balance being Fe and incidental impurities (para. [0022]), the welded joint comprising a weld metal (welded joint inherently comprises a weld metal; para. [0019])
Nakamichi fails to teach the welded joint is a submerged arc welded joint, the weld metal having a chemical composition comprising, by mass%: C: 0.10 to 0.80%; Si: 0.05 to 1.00%; Mn: 15.0 to 30.0%; P: 0.030% or less; S: 0.030% or less; Al: 0.100% or less; Cr: 6.0 to 14.0%, N: 0.100% or less, and the balance being Fe and incidental impurities.
Lee teaches a welded joint (para. [0007]) for a high-Mn steel (see Abstract), the welded joint being either a submerged arc welded joint or a gas metal arc welded joint (para. [0007]), the weld metal having a chemical composition comprising, by mass%: C: 0.10 to 0.80% (0.1% to 0.61%, within the claimed range; para. [0010]); Si: 0.05 to 1.00% (0.23% to 1.0%, within the claimed range; para. [0010]); Mn: 15.0 to 30.0% (14% to 35%, overlaps the claimed range; para. [0010]); P: 0.030% or less (0.02% or less, within the claimed range; para. [0010]); S: 0.030% or less (0.02% or less, within the claimed range; para. [0010]); Al: 0.100% or less (no aluminum, within the claimed range); Cr: 6.0 to 14.0% (6% or less, touches the claimed range; para. [0010]), N: 0.100% or less (0.001% to 0.3%, touches the claimed range; para. [0010]), and the balance being Fe and incidental impurities (para. [0010]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nakamichi’s welded joint to be a submerged arc welded joint wherein the weld metal has a chemical composition comprising, by mass%: C: 0.10 to 0.80%; Si: 0.05 to 1.00%; Mn: 15.0 to 30.0%; P: 0.030% or less; S: 0.030% or less; Al: 0.100% or less; Cr: 6.0 to 14.0%, N: 0.100% or less, and the balance being Fe and incidental impurities, as taught by Lee, because a) the prior art contained a welded joint which differed from the claimed welded joint by the substitution of some components with other components (Nakamichi’s gas metal arc welded joint with Nakamichi’s weld metal composition versus the claimed submerged arc welded joint with the claimed weld metal composition as taught by Lee), b) the substituted components and their functions were known in the art (gas metal arc welded joints, as taught by Nakamichi and Lee, and submerged arc welded joints, as taught by Lee were known for welding high-Mn content steel materials and Nakamichi’s weld metal composition and Lee’s weld metal composition were known for providing high-strength welding joints with a high degree of cryogenic toughness), and c) one of ordinary skill in the art could have substituted one known element for another and the results of the substitution would have been predictable (either Nakamichi’s gas metal arc welded joint or Lee’s submerged arc welded joint could have been used to predictably provide a welded joint in a high-Mn steel, as evidenced by Lee’s teaching of the use of both types of welds in such a high-Mn steel, as discussed above, and either Nakamichi’s weld metal composition or Lee’s weld metal composition could have been used to predictably provide a high-strength welded joint with high cryogenic toughness). It has been held that “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR International Co. v. Teleflex Inc., et al., 82 USPQ2d 1385, 1395 (2007) (citing United States v. Adams, 383 US 39, 50-51 (1966)). See MPEP 2143 I(B).
Nakamichi in view of Lee’s weld metal includes manganese in a mass% which fully encompasses the claimed range with the bounds of the prior art range extending slightly beyond the bounds of the claimed range (i.e. the claimed range is contained fully within the prior art range with a 1% difference between the claimed and prior art lower bounds and a 5% difference between the claimed and prior art upper bounds) and chromium in a mass% that overlaps the claimed range (i.e. the lower bound of the claimed range and the upper bound of the prior art range are the same and thus overlap at these respective bounds). It has been held that 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). See MPEP 2144.05 I.
Regarding Dependent Claim 2, Nakamichi in view of Lee teaches the invention as claimed and as discussed above for claim 1, and Nakamichi further teaches the chemical composition of the high-Mn content steel material further comprises at least one group selected from the following groups: Group A: at least one selected from the group consisting of, by mass%, Mo: 2.00% or less, V: 2.0% or less, and W: 2.00% or less (ranges of Mo, V, and W are identical to the claimed ranges; para. [0032]), and Group B: at least one selected from the group consisting of, by mass%, REM: 0.0010 to 0.0200% and B: 0.0005 to 0.0020% (ranges of REM and B are identical to the claimed ranges; para. [0032]).
Regarding Dependent Claim 4, Nakamichi in view of Lee teaches the invention as claimed and as discussed above for claim 1, and Nakamichi further teaches the high-Mn content steel material has a yield strength of 400 MPa or more in a tensile test at room temperature and a Charpy impact absorbed energy vE-196 of 28 J or more at a test temperature of -196°C (para. [0011]).
Regarding Dependent Claim 5, Nakamichi in view of Lee teaches the invention as claimed and as discussed above for claim 1, and Lee further teaches the chemical composition of the weld metal further comprises at least one group selected from the following groups: Group C: at least one selected from the group consisting of, by mass%, Mo: 3.50% or less (1.45 - 3.5%, within the claimed range; para. [0010]), and Ni: 10.00% or less (range is identical to the claimed range; para. [0013]), Group D: at least one selected from the group consisting of, by mass%, V: 1.60% or less, Ti: 1.00% or less, Nb: 1.00% or less, and W: 1.00% or less, and Group E: at least one selected from the group consisting of, by mass%, Cu: 1.00% or less, Ca: 0.010% or less, B: 0.0100% or less, and REM: 0.020% or less (italicized limitations are recited in the alternative to Group C and thus are not required).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nakamichi in view of Lee’s welded joint such that the chemical composition of the weld metal further comprises at least one group selected from the following groups: Group C: at least one selected from the group consisting of, by mass%, Mo: 3.50% or less, and Ni: 10.00% or less, Group D: at least one selected from the group consisting of, by mass%, V: 1.60% or less, Ti: 1.00% or less, Nb: 1.00% or less, and W: 1.00% or less, and Group E: at least one selected from the group consisting of, by mass%, Cu: 1.00% or less, Ca: 0.010% or less, B: 0.0100% or less, and REM: 0.020% or less, as taught by Lee, for the reasons cited above for claim 1.
Regarding Dependent Claim 8, Nakamichi in view of Lee teaches the invention as claimed and as discussed above for claim 1. The limitations “the weld metal has a yield strength of 400 MPa or more and a tensile strength of 660 MPa or more in a tensile test at room temperature, the welded joint has a tensile strength of 660 MPa or more at room temperature, and the weld metal and a welded heat affected zone in the welded joint have a Charpy impact absorbed energy vE-196 of 28 J or more at a test temperature of -196°C” are recitations of the respective properties of the weld metal and the welded joint as formed in the high-Mn content steel material. Given that the prior art parent material (the high-Mn content steel material) is identical to the claimed high-Mn content steel material, the welded joint is formed by an identical process as discussed for claim 1 above, and given that the claimed weld metal composition was an obvious extension of prior art teachings, the claimed weld metal and welded joint properties would be inherent to the formation of the welded joint with the parent and weld metals using the claimed welding technique and thus would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the reasons cited for claim 1 above.
Regarding Dependent Claim 9, Nakamichi in view of Lee teaches the invention as claimed and as discussed above for claim 2, and Nakamichi further teaches the high-Mn content steel material has a yield strength of 400 MPa or more in a tensile test at room temperature and a Charpy impact absorbed energy vE-196 of 28 J or more at a test temperature of -196°C (para. [0011]).
Regarding Dependent Claim 10, Nakamichi in view of Lee teaches the invention as claimed and as discussed above for claim 2, and Lee further teaches the chemical composition of the weld metal further comprises at least one group selected from the following groups: Group C: at least one selected from the group consisting of, by mass%, Mo: 3.50% or less (1.45 - 3.5%, within the claimed range; para. [0010]), and Ni: 10.00% or less (range is identical to the claimed range; para. [0013]), Group D: at least one selected from the group consisting of, by mass%, V: 1.60% or less, Ti: 1.00% or less, Nb: 1.00% or less, and W: 1.00% or less, and Group E: at least one selected from the group consisting of, by mass%, Cu: 1.00% or less, Ca: 0.010% or less, B: 0.0100% or less, and REM: 0.020% or less (italicized limitations are recited in the alternative to Group C and thus are not required).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nakamichi in view of Lee’s welded joint such that the chemical composition of the weld metal further comprises at least one group selected from the following groups: Group C: at least one selected from the group consisting of, by mass%, Mo: 3.50% or less, and Ni: 10.00% or less, Group D: at least one selected from the group consisting of, by mass%, V: 1.60% or less, Ti: 1.00% or less, Nb: 1.00% or less, and W: 1.00% or less, and Group E: at least one selected from the group consisting of, by mass%, Cu: 1.00% or less, Ca: 0.010% or less, B: 0.0100% or less, and REM: 0.020% or less, as taught by Lee, for the reasons cited above for claim 1.
Regarding Dependent Claim 11, Nakamichi in view of Lee teaches the invention as claimed and as discussed above for claim 4, and Lee further teaches the chemical composition of the weld metal further comprises at least one group selected from the following groups: Group C: at least one selected from the group consisting of, by mass%, Mo: 3.50% or less (1.45 - 3.5%, within the claimed range; para. [0010]), and Ni: 10.00% or less (range is identical to the claimed range; para. [0013]), Group D: at least one selected from the group consisting of, by mass%, V: 1.60% or less, Ti: 1.00% or less, Nb: 1.00% or less, and W: 1.00% or less, and Group E: at least one selected from the group consisting of, by mass%, Cu: 1.00% or less, Ca: 0.010% or less, B: 0.0100% or less, and REM: 0.020% or less (italicized limitations are recited in the alternative to Group C and thus are not required).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nakamichi in view of Lee’s welded joint such that the chemical composition of the weld metal further comprises at least one group selected from the following groups: Group C: at least one selected from the group consisting of, by mass%, Mo: 3.50% or less, and Ni: 10.00% or less, Group D: at least one selected from the group consisting of, by mass%, V: 1.60% or less, Ti: 1.00% or less, Nb: 1.00% or less, and W: 1.00% or less, and Group E: at least one selected from the group consisting of, by mass%, Cu: 1.00% or less, Ca: 0.010% or less, B: 0.0100% or less, and REM: 0.020% or less, as taught by Lee, for the reasons cited above for claim 1.
Regarding Dependent Claim 12, Nakamichi in view of Lee teaches the invention as claimed and as discussed above for claim 9, and Lee further teaches the chemical composition of the weld metal further comprises at least one group selected from the following groups: Group C: at least one selected from the group consisting of, by mass%, Mo: 3.50% or less (1.45 - 3.5%, within the claimed range; para. [0010]), and Ni: 10.00% or less (range is identical to the claimed range; para. [0013]), Group D: at least one selected from the group consisting of, by mass%, V: 1.60% or less, Ti: 1.00% or less, Nb: 1.00% or less, and W: 1.00% or less, and Group E: at least one selected from the group consisting of, by mass%, Cu: 1.00% or less, Ca: 0.010% or less, B: 0.0100% or less, and REM: 0.020% or less (italicized limitations are recited in the alternative to Group C and thus are not required).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nakamichi in view of Lee’s welded joint such that the chemical composition of the weld metal further comprises at least one group selected from the following groups: Group C: at least one selected from the group consisting of, by mass%, Mo: 3.50% or less, and Ni: 10.00% or less, Group D: at least one selected from the group consisting of, by mass%, V: 1.60% or less, Ti: 1.00% or less, Nb: 1.00% or less, and W: 1.00% or less, and Group E: at least one selected from the group consisting of, by mass%, Cu: 1.00% or less, Ca: 0.010% or less, B: 0.0100% or less, and REM: 0.020% or less, as taught by Lee, for the reasons cited above for claim 1.
Regarding Dependent Claim 13, Nakamichi in view of Lee teaches the invention as claimed and as discussed above for claim 2. The limitations “the weld metal has a yield strength of 400 MPa or more and a tensile strength of 660 MPa or more in a tensile test at room temperature, the welded joint has a tensile strength of 660 MPa or more at room temperature, and the weld metal and a welded heat affected zone in the welded joint have a Charpy impact absorbed energy vE-196 of 28 J or more at a test temperature of -196°C” are recitations of the respective properties of the weld metal and the welded joint as formed in the high-Mn content steel material. Given that the prior art parent material (the high-Mn content steel material) is identical to the claimed high-Mn content steel material, the welded joint is formed by an identical process as discussed for claim 1 above, and given that the claimed weld metal composition was an obvious extension of prior art teachings, the claimed weld metal and welded joint properties would be inherent to the formation of the welded joint with the parent and weld metals using the claimed welding technique and thus would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the reasons cited for claim 1 above.
Regarding Dependent Claim 14, Nakamichi in view of Lee teaches the invention as claimed and as discussed above for claim 4. The limitations “the weld metal has a yield strength of 400 MPa or more and a tensile strength of 660 MPa or more in a tensile test at room temperature, the welded joint has a tensile strength of 660 MPa or more at room temperature, and the weld metal and a welded heat affected zone in the welded joint have a Charpy impact absorbed energy vE-196 of 28 J or more at a test temperature of -196°C” are recitations of the respective properties of the weld metal and the welded joint as formed in the high-Mn content steel material. Given that the prior art parent material (the high-Mn content steel material) is identical to the claimed high-Mn content steel material, the welded joint is formed by an identical process as discussed for claim 1 above, and given that the claimed weld metal composition was an obvious extension of prior art teachings, the claimed weld metal and welded joint properties would be inherent to the formation of the welded joint with the parent and weld metals using the claimed welding technique and thus would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the reasons cited for claim 1 above.
Regarding Dependent Claim 15, Nakamichi in view of Lee teaches the invention as claimed and as discussed above for claim 9. The limitations “the weld metal has a yield strength of 400 MPa or more and a tensile strength of 660 MPa or more in a tensile test at room temperature, the welded joint has a tensile strength of 660 MPa or more at room temperature, and the weld metal and a welded heat affected zone in the welded joint have a Charpy impact absorbed energy vE-196 of 28 J or more at a test temperature of -196°C” are recitations of the respective properties of the weld metal and the welded joint as formed in the high-Mn content steel material. Given that the prior art parent material (the high-Mn content steel material) is identical to the claimed high-Mn content steel material, the welded joint is formed by an identical process as discussed for claim 1 above, and given that the claimed weld metal composition was an obvious extension of prior art teachings, the claimed weld metal and welded joint properties would be inherent to the formation of the welded joint with the parent and weld metals using the claimed welding technique and thus would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the reasons cited for claim 1 above.
Regarding Dependent Claim 16, Nakamichi in view of Lee teaches the invention as claimed and as discussed above for claim 5. The limitations “the weld metal has a yield strength of 400 MPa or more and a tensile strength of 660 MPa or more in a tensile test at room temperature, the welded joint has a tensile strength of 660 MPa or more at room temperature, and the weld metal and a welded heat affected zone in the welded joint have a Charpy impact absorbed energy vE-196 of 28 J or more at a test temperature of -196°C” are recitations of the respective properties of the weld metal and the welded joint as formed in the high-Mn content steel material. Given that the prior art parent material (the high-Mn content steel material) is identical to the claimed high-Mn content steel material, the welded joint is formed by an identical process as discussed for claim 1 above, and given that the claimed weld metal composition was an obvious extension of prior art teachings, the claimed weld metal and welded joint properties would be inherent to the formation of the welded joint with the parent and weld metals using the claimed welding technique and thus would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the reasons cited for claim 1 above.
Regarding Dependent Claim 17, Nakamichi in view of Lee teaches the invention as claimed and as discussed above for claim 10. The limitations “the weld metal has a yield strength of 400 MPa or more and a tensile strength of 660 MPa or more in a tensile test at room temperature, the welded joint has a tensile strength of 660 MPa or more at room temperature, and the weld metal and a welded heat affected zone in the welded joint have a Charpy impact absorbed energy vE-196 of 28 J or more at a test temperature of -196°C” are recitations of the respective properties of the weld metal and the welded joint as formed in the high-Mn content steel material. Given that the prior art parent material (the high-Mn content steel material) is identical to the claimed high-Mn content steel material, the welded joint is formed by an identical process as discussed for claim 1 above, and given that the claimed weld metal composition was an obvious extension of prior art teachings, the claimed weld metal and welded joint properties would be inherent to the formation of the welded joint with the parent and weld metals using the claimed welding technique and thus would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the reasons cited for claim 1 above.
Regarding Dependent Claim 18, Nakamichi in view of Lee teaches the invention as claimed and as discussed above for claim 11. The limitations “the weld metal has a yield strength of 400 MPa or more and a tensile strength of 660 MPa or more in a tensile test at room temperature, the welded joint has a tensile strength of 660 MPa or more at room temperature, and the weld metal and a welded heat affected zone in the welded joint have a Charpy impact absorbed energy vE-196 of 28 J or more at a test temperature of -196°C” are recitations of the respective properties of the weld metal and the welded joint as formed in the high-Mn content steel material. Given that the prior art parent material (the high-Mn content steel material) is identical to the claimed high-Mn content steel material, the welded joint is formed by an identical process as discussed for claim 1 above, and given that the claimed weld metal composition was an obvious extension of prior art teachings, the claimed weld metal and welded joint properties would be inherent to the formation of the welded joint with the parent and weld metals using the claimed welding technique and thus would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the reasons cited for claim 1 above.
Regarding Dependent Claim 19, Nakamichi in view of Lee teaches the invention as claimed and as discussed above for claim 12. The limitations “the weld metal has a yield strength of 400 MPa or more and a tensile strength of 660 MPa or more in a tensile test at room temperature, the welded joint has a tensile strength of 660 MPa or more at room temperature, and the weld metal and a welded heat affected zone in the welded joint have a Charpy impact absorbed energy vE-196 of 28 J or more at a test temperature of -196°C” are recitations of the respective properties of the weld metal and the welded joint as formed in the high-Mn content steel material. Given that the prior art parent material (the high-Mn content steel material) is identical to the claimed high-Mn content steel material, the welded joint is formed by an identical process as discussed for claim 1 above, and given that the claimed weld metal composition was an obvious extension of prior art teachings, the claimed weld metal and welded joint properties would be inherent to the formation of the welded joint with the parent and weld metals using the claimed welding technique and thus would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the reasons cited for claim 1 above.
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 1-2, 4-5, & 8-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-5, & 8-19 of copending Application No. 18277837 in view of Hirata 20200239986.
The claims of the instant application are identical to the corresponding claims of the copending application except that the instant application recites a submerged arc welded joint whereas the copending application recites a TIG welded joint.
Hirata teaches a stainless steel weld metal and welded structure (see Title) wherein the weld is formed using TIG welding or submerged arc welding (para. [0116]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the copending application’s TIG welded joint such that the welded joint is a submerged arc welded joint, as taught by Hirata, because a) the copending application contained a welded joint which differed from the claimed welded joint by the substitution of some components with other components (the copending application’s TIG weld vs the claimed submerged arc weld, as taught by Hirata), b) the substituted components and their functions were known in the art (both the copending application’s TIG weld and the claimed submerged arc weld, as taught by Hirata, were known in the art for obtaining weld metal), and c) one of ordinary skill in the art could have substituted one known element for another and the results of the substitution would have been predictable (either the copending application’s TIG weld or Hirata’s submerged arc weld could have been used to predictably form a weld metal in a welded joint, as evidenced by Hirata’s teaching of both welding techniques in the alternative). It has been held that “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR International Co. v. Teleflex Inc., et al., 82 USPQ2d 1385, 1395 (2007) (citing United States v. Adams, 383 US 39, 50-51 (1966)). See MPEP 2143 I(B).
This is a provisional nonstatutory double patenting rejection.
Conclusion
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/SCOTT J WALTHOUR/Primary Examiner, Art Unit 3741