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 & Status of Claims
Claims 1-7 and 11-14, drawn to a seamless steel tube, are examined in the action of which claims 1-5 and 11-12 were amended in Applicant’s reply dated 06/25/2026.
Claims 8-10 and 15 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 on 3/11/2026 .
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
0.065 – 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 – 0.25
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 2019-116659 A of Sadasue and its English machine translation (JP’659).
In the alternative, 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 US 2018/0355451 A1 of Kondo (US’451).
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; tempered martensite is equivalent to sorbite}. 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 of seamless pipes, JP 2019-116659 A of Sadasue and its English machine translation (JP’659) teaches “a thick-walled large diameter ERW steel pipe suitable for oil well pipes and line pipes, and more particularly to a thick-walled large-diameter ERW steel pipe excellent in fatigue strength and suitable for use under cyclic load” and teaches that the pipe can include “Mo: 0.001 to 5.0% Mo is an element effectively contributing to the increase in the strength of the ERW steel pipe, and in order to obtain such an effect, the content of 0.001% or more is required. On the other hand, when the content exceeds 5.0%, the weldability and the toughness decrease. For this reason, when it contains, it is preferable to limit Mo to 0.001 to 5.0% of range. More preferably, it is 0.01 to 2.5%.” “Ca: 0.00001 to 0.1% Ca is an element which contributes to the improvement of ductility and the improvement of toughness of the ERW steel pipe through the control of the form of inclusions. In order to obtain such an effect, the content needs to be 0.00001% or more. On the other hand, the content exceeding 0.1% causes the decrease in toughness. For this reason, when it contains, it is preferable to limit Ca to the range of 0.00001-0.1%. More preferably, it is 0.0001 to 0.05%.” “Nb: 0.0001 to 0.5% Nb forms a solid solution or precipitates as carbides, nitrides, etc., and contributes to the increase in strength of the ERW steel pipe, suppresses recrystallization of austenite grains, and refines grains through hot rolling. Is an element that has the effect of In order to obtain such an effect, the content needs to be 0.0001% or more. On the other hand, a large content exceeding 0.5% causes a decrease in toughness. For this reason, when it contains, it is preferable to limit Nb to the range of 0.0001 to 0.5%. More preferably, it is 0.001 to 0.25%.” 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 Nb as suggested by JP’659 to improve the properties of the steel as JP’659 points out that “Mo is an element effectively contributing to the increase in the strength of the ERW steel pipe” “Ca is an element which contributes to the improvement of ductility and the improvement of toughness of the ERW steel pipe through the control of the form of inclusions.” and “Nb forms a solid solution or precipitates as carbides, nitrides, etc., and contributes to the increase in strength of the ERW steel pipe, suppresses recrystallization of austenite grains, and refines grains through hot rolling.” With respect to the N and O, JP’659 teaches “As unavoidable impurities, N: 0.006% or less and O: 0.006% or less are acceptable.” 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 reduce N and O in amounts at or below what is suggested by JP’659 since JP’659 points out that these are unavoidable impurities. {JP’659 abstract, claims 1-4, [0001]-[0002], [0034]-[0055]}.
In the alternative, in the same field of endeavor of seamless pipes, US 2018/0355451 A1 of Kondo (US’451) teaches “[0001] The present invention relates to a seamless steel pipe and a method of manufacturing the same, and, more particularly, to a seamless steel pipe suitable for line pipe and a method of manufacturing the same.” and teaches that the composition of the pipe can include “[0059] Mo: Not Less than 0.02% and Less than 0.5% [0060] Molybdenum (Mo) improves the strength of steel by transformation toughening and solute strengthening. This effect cannot be sufficiently achieved if the Mo content is lower than 0.02%. If the Mo content is higher than 0.5%, the toughness of the steel decreases. In view of this, the Mo content should be not lower than 0.02% and lower than 0.5%. The Mo content is preferably higher than 0.02%, and more preferably 0.05% or higher, and still more preferably 0.1% or higher. The Mo content is preferably 0.4% or lower, and more preferably 0.3% or lower.” “[0067] Ca: 0.0005 to 0.005% [0068] Calcium (Ca) bonds with S in steel to form CaS. As CaS is formed, the formation of MnS is suppressed. Thus, Ca increases the toughness and HIC resistance of the steel. These effects cannot be sufficiently achieved if the Ca content is lower than 0.0005%. If the Ca content is higher than 0.005%, the cleanliness of the steel decreases, decreasing the toughness and HIC resistance of the steel. Thus, the Ca content should be in the range of 0.0005 to 0.005%. The Ca content is preferably higher than 0.0005%, and more preferably 0.0008% or higher, and still more preferably 0.001% or higher. The Ca content is preferably lower than 0.005%, and more preferably 0.003% or lower, and still more preferably 0.002% or lower.” “[0053] Ti: 0.001 to 0.010% [0054] Titanium (Ti) bonds with N in a steel and forms TiN, suppressing the reduction in the toughness of the steel due to dissolved N. Further, the dispersed and precipitated fine TiN particles increase the toughness of the steel. These effects cannot be sufficiently achieved if the Ti content is lower than 0.001%. If the Ti content is higher than 0.010%, coarse TiN particles result or coarse TiC particles are produced, decreasing the toughness of the steel. In view of this, the Ti content should be in the range of 0.001 to 0.010%. The Ti content is preferably higher than 0.001% and more preferably 0.002% or higher. The Ti content is preferably lower than 0.010%, and more preferably 0.006% or lower, and still more preferably 0.005% or lower.” 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 US’451 to improve the properties of the steel as US’451 points out that “Molybdenum (Mo) improves the strength of steel by transformation toughening and solute strengthening.” “Ca increases the toughness and HIC resistance of the steel.” and “the dispersed and precipitated fine TiN particles increase the toughness of the steel”. With respect to the N and O, US’451 teaches “[0049] O: Up to 0.004% [0050] Oxygen (O) is an impurity. O forms coarse oxide particles or clusters of oxide particles, decreasing the toughness of the steel. Thus, lower O contents are preferable. In view of this, the O content should be 0.004% or lower. The O content is preferably 0.003% or lower, and more preferably 0.002% or lower.” “[0055] N: Up to 0.007% [0056] Nitrogen (N) bonds with Al and forms fine Al nitride particles, increasing the toughness of the steel. However, if the N content is higher than 0.007%, dissolved N decreases the toughness of the steel. Further, if the N content is too high, coarse carbonitride and/or nitride particles result, decreasing the toughness of the steel. In view of this, the N content should be 0.007% or lower. The N content is preferably lower than 0.007%, and more preferably 0.006% or lower, and still more preferably 0.005% or lower. The N content is preferably 0.002% or higher.” 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 reduce N and O in amounts at or below what is suggested by US’451 since US’451 points out that these are impurities that should be reduced as much as possible. {US’451 abstract, [0001]-[0003], [0015]-[0020], [0037]-[0072]}.
Response to Arguments
Applicant’s arguments in concert with amendments to the claims, see pages 6-10, filed 25 JUNE 2026, with respect to the rejection, “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)” 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 the amendments to 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
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