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 without traverse of group I, claims 11-18 in the reply filed on 02 March 2026 is acknowledged.
Claims 19-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Objections
Claim 12 is objected to because of the following informalities:
Claim 12 recites the phrase “the steel pipe” in lines 2-3 which should instead recite “the duplex stainless steel pipe” for consistency with claim 11.
Appropriate correction is required.
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 15-18 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.
Claims 15-18 are indefinite as the recitation of possible elements is not properly claimed in the alternative. Treatment of claims reciting alternatives is not governed by the particular format used (e.g., alternatives may be set forth as "a material selected from the group consisting of A, B, and C" or "wherein the material is A, B, or C"). See, e.g., the Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications ("Supplementary Guidelines"), 76 Fed. Reg. 7162, 7166 (February 9, 2011). Alternative expressions are permitted if they present no uncertainty or ambiguity with respect to the question of scope or clarity of the claims. A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group "comprising" or "consisting essentially of" the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. If a claim is intended to encompass combinations or mixtures of the alternatives set forth in the Markush grouping, the claim may include qualifying language preceding the recited alternatives (such as "at least one member" selected from the group), or within the list of alternatives (such as "or mixtures thereof"). Id. at 1281. See MPEP 2173.05(h). It is further unclear if claims 15-18 require at least one element from A, one element from B, and one element from C, or if claims 15-18 require at least one element from A, B, or C. For the purposes of examination claims 15-18 will be interpreted as reciting “wherein the composition further comprises, in mass%, one each of the following groups A to C: group A: one the group consisting of: W: 6.0% or less, Cu: 4.0% or less, V: 1.0% or less, and Nb: 1.0% or less, group B: one or more selected from the group consisting of: Ti: 0.30% or less and Al: 0.30% or less, group C: one the group consisting of: B: 0.010% or less, Zr: 0.010% or less, Ca: 0.010% or less, Ta: 0.30% or less, Sb: 0.30% or less, Sn 0.30% or less, and REM: 0.010% or less” as supported by the instant specification Par. 0019. 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 11-18 are rejected under 35 U.S.C. 103 as being unpatentable over Sasaki et al. (WO-2020044988-A1; herein English machine translation used for all citations) (previously cited) in view of Hidaka et al. (US-6210806-B1) (previously cited).
Regarding claim 11, Sasaki teaches a duplex stainless steel pipe having a composition that comprises, in mass%, C: 0.005 to 0.08%, Si: 0.01 to 1.0%, Mn: 0.01 to 10.0%, Cr: 20 to 35%, Ni: 1 to 15%, Mo: 0.5 to 6.0%, N: 0.005 to 0.150%, and the balance being Fe and incidental impurities, and having a microstructure with a ferritic phase and an austenitic phase (Sasaki, Par. 0018 and Claim 1). Sasaki’s content ranges lie within the claimed ranges of 0.005 to 0.150%, 1.0% or less, 10.0% or less, 11.5 to 35%, 0.5 to 15%, 0.5 to 6.0%, and less than 0.400% respectively and therefore satisfies the claimed ranges, see MPEP 2131.03. Sasaki teaches the duplex stainless steel pipe has an axial tensile yield strength of 689 MPa or more (Sasaki, Par. 0018, 0057, and Claim 1), which is the same as the claimed range and therefore satisfies the claimed range, see MPEP 2131.03.
Sasaki is silent regarding the pipe having an outer surface and inner surface each having an oxide layer having an average thickness of 1.0 µm or more.
Hidaka teaches a stainless steel pipe having an outer surface and inner surface each having an oxide layer having an average thickness of 15 µm or less and 35 µm or less respectively (Hidaka, Abstract, Col. 3 Line 35 – Col. 4 Line 11, and Col. 9 Lines 50-64), which overlaps the claimed range of 1.0 µm or more and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I.
Sasaki and Hidaka are analogous art as they both teach stainless steel pipes. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the oxide layers of Hidaka on the inner and outer surface of Sasaki. This would allow for high corrosion resistance (Hidaka, Abstract and Col. 3 Lines 35-46).
Regarding claim 12, modified Sasaki teaches the oxide layers are formed over the entire inner and outer surfaces of the pipe and therefore satisfies the limitation of the oxide layer covering at least 50% of the outer and inner surfaces of the pipe, see MPEP 2123 (Hidaka, Abstract and Col. 3 Line 35 – Col. 4 Line 11).
Regarding claims 13-14, modified Sasaki teaches an axial compressive yield strength-to-axial tensile yield strength ratio of 0.85 to 1.15 (Sasaki, Par. 0058 and Claim 1), which is the same as the claimed range and therefore satisfies the claimed range, see MPEP 2123.
Regarding claims 15-18, modified Sasaki teaches the composition may further comprise 0.1 to 6 W by mass (Sasaki, Claim 3), which lies within the claimed range of 6.0 % or less and therefore satisfies the claimed range, see MPEP 2131.03. Modified Sasaki further teaches the composition may comprise 0.0001 to 0.51% Ti by mass (Sasaki, Claim 4), which overlaps the claimed range of 0.30% or less and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I. Modified Sasaki further teaches the composition may comprise 0.0001 to 0.010 % B by mass (Sasaki, Claim 5), which lies within the claimed range of 0.010 % or less and therefore satisfies the claimed range, see MPEP 2131.03.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS J KESSLER JR whose telephone number is (571)272-3075. The examiner can normally be reached 7:30-5:30 M-Th.
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/THOMAS J KESSLER/Examiner, Art Unit 1782
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