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 1-8 and 11-20) in the reply filed on 06/08/2026 is acknowledged. Claims 9-10 are withdrawn. Claims 1-8 and 11-20 are examined herein.
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 1-8 and 11-20 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.
The terms “micro-alloyed” “high-strength” “ultra-low temperature” in claims 1-8 and 11-20 are relative terms which renders the claim indefinite. The terms “micro-alloyed” “high-strength” “ultra-low temperature” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. 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.
Claims 1-4 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over JP’548 (JP5432548), and further in view of JP’640 (JP5576640).
Regarding claims 1-3, JP’548 teaches (Abstract; Pages 3-6 and 9) a Ni-free high-strength high toughness steel with a composition that overlaps with the instant claimed composition and therefore it would have been obvious to one of ordinary skill in the art to have selected amounts of each element from the ranges disclosed in JP’548 to produce a steel that meets the recited composition in claims 1-3. See MPEP 2144.05 I.
Element
Claim 1
(mass %)
JP’548
(mass %)
Overlap
(mass %)
C
0.011-0.099
0.03-0.1
0.03-0.099
Si
0.051-0.24
0-0.5
0.051-0.24
Mn
1.21-1.49
1-2
1.21-1.49
Nb
0.03-0.059
0.02-0.06
0.03-0.059
Ti
0.009-0.016
0.008-0.03
0.009-0.016
Zr
0.001-0.018
≤0.1
0.001-0.018
Rare Earth
0.001-0.018
≤0.01
0.001–0.01
Fe + Impurities
Balance
Balance
Balance
JP’548 discloses an example containing 0.067 wt% C, 0.15 wt% Si, 1.52 wt% Mn, 0.035 wt% Nb and 0.013 wt% Ti (Table 1, Example 4), which meets the recited amount of C, Si, Nb and Ti, and close to the recited amount of Mn. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). See MPEP 2144.05 I. Thus, the recited amount of C, Si, Nb, Ti and Mn are obvious over JP’548. See MPEP 2144.05 I.
Based on the composition of Example 4 in Table 1, C+Si=0.217, Si/C=2.23; Nb+Ti=0.048, Nb/Ti=2.69. Example 4 does not contain Zr and REM.
JP’640 teaches a steel having major composition overlapping the composition disclosed in JP’548. JP’640 discloses that adding 0.0003-0.05 wt.% Zr and 0.0003-0.015 wt.% REM improves HAZ toughness (Page 6; Tables 3-5). Thus, it would be obvious to one of ordinary skill in the art to add 0.0003-0.05 wt.% Zr and 0.0003-0.015 wt.% REM as taught by JP’640 in the Example 4 of JP’548 in order to improve HAZ toughness as disclosed by JP’640. JP’640 discloses an example containing 0.005 wt% Zr and 0.005 wt% REM (Table 4, Sample No. 28). Zr+REM=0.01, Zr/REM=1.
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). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). See MPEP 2144.05 I. Thus, the recited composition in claims 1-3 is a prima facie case of obviousness over JP’548 in view of JP’640.
Regarding claims 4 and 11-12, JP’548 discloses that the steel contains 0.03 wt.% or less P, 0.02 wt.% or less S, 0.01 wt.% or less N, 0.01 wt.% or less O (Page 4), which overlaps the recited amount of P, S, N and O in claims 4 and 11. 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. It’s well-known to one of ordinary skill in the art to keep hydrogen content in steel as low as possible in order to avoid steel embrittlement. Thus, claims 4 and 11-12 are obvious over JP’548 in view of JP’640.
Allowable Subject Matter
Claims 5-8 and 13-20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Xiaowei Su whose telephone number is (571)272-3239. The examiner can normally be reached 8:00-5:00.
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/XIAOWEI SU/Primary Examiner, Art Unit 1733
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