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/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 1-7 and 11-14, drawn to a seamless steel tube.
Group II, claims 8-10 and 15, drawn to a manufacturing method for the seamless steel tube.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of a seamless steel tube, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of US 6217676 B1 of Takabe (US’676), and further in view of JP 2017-020086 A of Kobayashi and its English machine translation (JP’086).
US 6217676 B1 of Takabe (US’676) teaches “a steel having corrosion resistance to carbon dioxide and/or seawater environments. The steel is useful as an oil well pipe, especially a seamless pipe” “Another objective of the present invention is to provide a comparatively inexpensive seamless oil well pipe made of the above mentioned steel” “The present invention also provides a seamless oil well pipe, which is made of the above-mentioned steel and has excellent resistance to wet CO2 corrosion and seawater corrosion” “The microstructure is substantially single phase martensite in the as-quenched or as-normalized condition. The terminology “substantially single phase martensite” denotes a microstructure in which about 95% or more, in the cross-sectional area ratio, is martensite. In addition to martensite, less than about 5% in total of ferrite, bainite and/or pearlite can be allowed in the microstructure” “The yield strength is not lower than 552 MPa after heat treatment of “quenching-tempering” or “normalizing-tempering”” 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 below. {abstract, col 1:10-15, col 2:42- col 3:31, col 3:44-col 5:35}. Although US’676 does not teach the presence of Mo, Ca and “one or more selected from Ti, Nb, V, Ce, and La, wherein 0.003%≤Ti+Nb+V+Ce+La≤0.20%”, JP 2017-020086 A of Kobayashi and its English machine translation (JP’086) teaches “a martensitic steel material having excellent carbon dioxide corrosion resistance and excellent SSC resistance” and teaches these elements having ranges that reads on the claimed ranges as well as providing the reasons for including these elements. {abstract, claims 1-5, [0037]-[0066]}. Therefore, the prior art reads on the instant technical feature thereby making the instant technical feature not a special technical feature.
During a telephone conversation with ALEXANDER SMOLENSKI on 11 MARCH 2026 a provisional election was made WITHOUT traverse to prosecute the invention of Group I, claims 1-7 and 11-14, drawn to a seamless steel tube. Affirmation of this election must be made by applicant in replying to this Office action. Claims 8-10 and 15 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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 3-5 and 11-13 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 3-5 and 11-13, instant claims require specific ranges for specific elements but fail to indicate the units of the ranges thereby making it unclear what is being claimed as there exists various ranges for compositional constituents.
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
0.05 – 0.18
0.09 – 0.15 claim 3, 11
> 0.10 – 0.30
Si
0.15 – 0.40
0.10 – 1.0
Mn
0.25 – 0.50
0.1 – 3.0
Cr
4.0 – 6.0
2.0 – 9.0
Mo
0.08 – 0.35
See below
Al
0.020 – 0.055
0.01 – 0.10
Ca
0.001 – 0.004
See below
Ti + Nb + V + Ce + La
0.003 – 0.20
See below
Impurities
Claim 4, 12: P ≤ 0.015%, S ≤ 0.008%, N ≤ 0.006%, and O ≤ 0.0035%
Claim 5: P ≤ 0.012%, S ≤ 0.005%, N ≤ 0.0045%, and O ≤ 0.002%
P: not more than 0.03
S: not more than 0.01
N: -
O: -
Fe + impurities
Balance
Balance
Claims 1-7 and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over US 6217676 B1 of Takabe (US’676), and further in view of JP 2017-020086 A of Kobayashi and its English machine translation (JP’086).
Regarding claims 1-7 and 11-14, US 6217676 B1 of Takabe (US’676) teaches “a steel having corrosion resistance to carbon dioxide and/or seawater environments. The steel is useful as an oil well pipe, especially a seamless pipe” “Another objective of the present invention is to provide a comparatively inexpensive seamless oil well pipe made of the above mentioned steel” “The present invention also provides a seamless oil well pipe, which is made of the above-mentioned steel and has excellent resistance to wet CO2 corrosion and seawater corrosion” “The microstructure is substantially single phase martensite in the as-quenched or as-normalized condition. The terminology “substantially single phase martensite” denotes a microstructure in which about 95% or more, in the cross-sectional area ratio, is martensite. In addition to martensite, less than about 5% in total of ferrite, bainite and/or pearlite can be allowed in the microstructure” “The yield strength is not lower than 552 MPa after heat treatment of “quenching-tempering” or “normalizing-tempering”” 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. {abstract, col 1:10-15, col 2:42- col 3:31, col 3:44-col 5:35}. 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.
It is noted that US’676 does not teach the presence of Mo, Ca and “one or more selected from Ti, Nb, V, Ce, and La, wherein 0.003%≤Ti+Nb+V+Ce+La≤0.20%” as recited in instant claims.
In the same field of endeavor, JP 2017-020086 A of Kobayashi and its English machine translation (JP’086) teaches “a martensitic steel material having excellent carbon dioxide corrosion resistance and excellent SSC resistance” “In the martensitic steel described above, tempered martensite is the main component of the microstructure. Specifically, the microstructure contains ferrite having a volume ratio of 0 to 5% and austenite having a volume ratio of 0 to 5%, and the balance is tempered martensite. The volume fraction of ferrite and the volume fraction of austenite are preferably as low as possible. Preferably, the microstructure is a tempered martensite single phase.” It further teaches “Molybdenum (Mo) suppresses grain boundary cracking (grain boundary HIC) of steel in a wet H2S environment. If the Mo content is too low, this effect cannot be obtained, and on the contrary, grain boundary cracks are likely to occur. On the other hand, since Mo is a ferrite-forming element, if the Mo content is too high, austenite is difficult to stabilize, and a martensite structure is hardly obtained stably. Therefore, the Mo content is 0.3 to 2.0%. The minimum with preferable Mo content is 0.4%, More preferably, it is 0.5%. The upper limit with preferable Mo content is 1.5%, More preferably, it is 1.2%.” “Titanium (Ti) and zirconium (Zr) are both optional elements and may not be contained. When contained, all of these elements combine with C and N to form carbonitrides. These carbonitrides refine crystal grains and suppress the formation of Cr carbides. Therefore, the SSC resistance and HIC resistance of the steel are increased. However, if the content of these elements is too high, the above effect is saturated, and further, the formation of ferrite is promoted. Therefore, the Ti content is 0 to 0.1%, and the Zr content is 0 to 0.1%. The minimum with preferable Ti content is 0.005%, More preferably, it is 0.007%. The upper limit with preferable Ti content is 0.07%, More preferably, it is 0.03%. The minimum with preferable Zr content is 0.005%, More preferably, it is 0.007%. The upper limit with preferable Zr content is 0.07%, More preferably, it is 0.03%.” “Calcium (Ca), magnesium (Mg) and rare earth element (REM) are all optional elements and may not be contained. When contained, these elements combine with S in the steel to form sulfides. Thereby, the shape of sulfide is improved and the SSC resistance of steel is enhanced. REM further combines with P in the steel to suppress P segregation at the grain boundaries. For this reason, a decrease in the SSC resistance of the steel due to P segregation is suppressed. However, if the content of these elements is too high, this effect is saturated. Therefore, the Ca content is 0 to 0.0050%, the Mg content is 0 to 0.0050%, and the REM content is 0 to 0.0050%.” {abstract, claims 1-5, [0037]-[0066]}.
Therefore, 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 take the steel of US’676 and add Mo, Ca and Ti as suggested by JP’086 as JP’086 points out that “Molybdenum (Mo) suppresses grain boundary cracking (grain boundary HIC) of steel in a wet H2S environment”, Ca combines “with S in the steel to form sulfides. Thereby, the shape of sulfide is improved and the SSC resistance of steel is enhanced” and Titanium (Ti) combines “with C and N to form carbonitrides. These carbonitrides refine crystal grains and suppress the formation of Cr carbides. Therefore, the SSC resistance and HIC resistance of the steel are increased.”
Conclusion
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