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 .
Priority
Applicant’s claim to foreign priority in application no. JP2021-060667, filed March 31, 2021, is acknowledged.
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 5-12 are rejected under 35 U.S.C. 103 as being unpatentable over Nagayama (US 20130316193 A1) in view of Ueda (US 6129999 A), Arikawa (US 3731868 A) and Ivannikov (US 4902873 A).
Regarding Claim 5, Nagayama discloses a duplex stainless steel welded joint (Abstract), comprising a base metal and weld metal consisting of the compositions defined in the Table below.
Claim 5
Nagayama
Claim 5
Nagayama
Element
Base Metal
Base Metal
Para.
Weld Metal
Weld Metal
Para.
C
0.001-0.03
0-0.03
[0049]
0.001-0.03
0-0.03
[0103]
Si
0.05-0.8
0.2-1.0
[0051]
0.05-0.7
0.2-1
[0105]
Mn
0.05-1.2
0-8, pref. 0.05-5
[0053]-[0054]
0.05-0.85
0-8, pref. 0.25-6
[0107]-[0108]
P
0-0.03
0-0.04
[0055]
0-0.03
0-0.04
[0109]
S
0-0.003
0-0.01
[0057]
0-0.003
0-0.01
[0111]
Cr
21-28
20-30
[0063]
21-28
20-30
[0117]
Ni
4-8
4-8
[0061]
5-11
7-12
[0115]
Mo
2-4.5
0.5-2
[0065]
2-4.5
1-4
[0119]
Cu
0.01-4
2-4
[0059]
0.01-4
0-2
[0113]
Sol. Al
0.001-0.05
0-0.04
[0069]
0.001-0.05
0-0.04
[0123]
N
0.08-0.4
0.1-0.35
[0067]
0.08-0.4
0.1-0.35
[0121]
B
0.0001-0.01
0-0.02
[0092]
0.0001-0.01
Silent, 0%
W
0-4
Impurity, 0%
[0072]
0-4
0-4
[0138]
Nb
0-0.1
Silent, 0%
0-0.1
Silent, 0%
V
0-0.2
0-1.5
[0087]
0-0.2
Silent, 0%
Ta
0-0.3
Silent, 0%
0-0.3
Silent, 0%
Co
0-1
Silent, 0%
0-1
Silent, 0%
Sn
0-0.02
Silent, 0%
0-0.02
Silent, 0%
Mg
0-0.02
0-0.02
[0091]
0-0.02
Silent, 0%
Ca
0-0.01
0-0.02
[0090]
0-0.01
Silent, 0%
Balance
Fe + impurities
Fe + impurities
[0072]
Fe + impurities
Fe + impurities
[0130]
Nagayama discloses wherein both the base metal and weld metal satisfy the claimed formula (1), Si+3Mn ≤ 3.00 (para.[0051]; [0053]-[0054]; para. [0105]; [0107]-[0108]). For example, the invention of Nagayama includes a base metal and a weld metal comprising 0.5% Si and 0.5% Mn, which comprises a Si+3Mn value of 2% and reads on the claimed range of 0-3%.
Nagayama is silent towards Nb, Ta, Co and Sn in the base metal, and is silent towards B, Nb, V, Ta, Co, Sn, Mg and Ca in the weld metal, and one of ordinary skill in the art would appreciate these elements to be absent from the invention of Nagayama and 0%. An amount of 0% Nb, Ta, Co and Sn in the base metal, and 0% of Nb, V, Ta, Co, Sn, Mg and Ca in the weld metal, reads on the claimed ranges for these elements which are inclusive of 0%.
Nagayama fails to disclose B in the weld metal.
Ueda teaches an overlapping duplex stainless steel weld metal (Col. 3, lines 28-30 and 40-54), wherein 0.0005-0.01% B is added to a weld metal, and effects the suppression of precipitation of intermetallic compounds such as sigma phase in a weld metal, thereby improving corrosion resistance (Col. 132, lines 47-58).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have added 0.005-0.01% B, which reads on the claimed range 0.0001-0.01% B, for the weld metal of Nagayama, as taught by Ueda, in order to suppress precipitation of intermetallic compounds such as sigma phase in the weld metal, thereby improving corrosion resistance (see teaching above).
Nagayama discloses REM metal elements in the base metal, wherein the range is inclusive of the range 0% and wherein the REM elements are also optional (para. [0098]), and discloses O is an impurity and not an intentionally added element (para. [0128]). One of ordinary skill in the art would appreciate therefore that the invention of Nagayama and Ueda do not require additional elements from those listed in the table above, and the compositions read on the claim language ‘consisting of’ for both the base metal and the weld metal.
Regarding composition ranges and the range of formula (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). See MPEP § 2144.05.I.
Nagayama discloses the welded joint, but fails to disclose the dimensions of the weld joint/bead, and therefore fails to disclose wherein the welded joint satisfies formula (2), 0<BH/BW<0.15, wherein BH is the cap height (mm) of the weld metal and BW is the cap width of the weld metal.
Arikawa teaches wherein a weld bead line comprising a width of 12mm and a height of 1.5mm (BH/BW of 0.125) produces a smooth and uniform butt-weld portion of first grade quality according to JIS criteria with no slag or under cuts (Col. 8, lines 13-20). One of ordinary skill in the art would appreciate the bead line width equates to the claimed BW value and the bead line height equates to the claimed BH value.
Ivannikov teaches wherein butt joints with high quality weld seams comprise favorable weld seam bead form factors (weld width to height of its reinforcement), and therefore no surface or subsurface flaws, wherein favorable form factors include the height and widths disclosed in Table 1, and therefore BH/BW values of 0.109, 0.11, 0.125 and 0.16. One of ordinary skill in the art would appreciate the weld seam bead width equates to the claimed BW value and the height of reinforcement of the weld seam bead equates to the claimed BH value.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have comprised the weld bead heights and widths taught by Arikawa and Ivannikov, and therefore comprised a BH/BW value of 0.109-0.16, which reads on the claimed range of greater than 0 and less than 0.15, for the invention disclosed by Nagayama. One would be motivated to have these weld geometries in order to comprise a smooth and uniform butt-weld portion of first grade/high quality, and one without slag, under cuts, or surface or subsurface flaws (see teachings above).
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 Claim 6, Nagayama discloses wherein both the base metal and weld metal satisfy the claimed formula (3), Si+4Mn ≤ 3.75 (para.[0051]; [0053]-[0054]; para. [0105]; [0107]-[0108]). For example, the invention of Nagayama includes a base metal and a weld metal comprising 0.5% Si and 0.5% Mn, which comprises a Si+4Mn value of 2.5% and reads on the claimed range of 0-3.75%.
Arikawa and Ivannikov disclose BH/BW values within the range of 0.109-0.16 (see Claim 5 teaching above), and Nagayama further discloses a sheet thickness (WT) of the base metal of 2mm (Fig. 5), which reads on the claimed range of 2.5mm or less.
Thus, the invention of Nagayama, Arikawa and Ivannikov satisfies formula (4), wherein 0<BH/BW≤0.5/(6.0-0.85*WT) and WT is the thickness of the base metal (a WT of 2mm comprises a [0.5/(6.0-0.85*WT)] value of 0.116, and the BH/BW range 0.109-0.16 overlaps and reads on the 0-0.116 range).
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 Claim 7 and Claim 8, Nagayama discloses wherein the base metal contains one or more elements selected from the group consisting of, in mass%:
Elements, at least one:
Claims 7-8
Nagayama
citation
W
0.01-4
Impurity, 0%
[0072]
Nb
0.01-0.1
Silent, 0%
V
0.01-0.2
0-1.5
[0087]
Ta
0.01-0.3
Silent, 0%
Co
0.01-1
Silent, 0%
Sn
0.001-0.02
Silent, 0%
Mg
0.0001-0.02
0-0.02
[0091]
Ca
0.0001-0.01
0-0.02
[0090]
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 Claim 9, Claim 10, Claim 11 and Claim 12, Nagayama discloses wherein the weld metal contains one or more elements selected from the group consisting of, in mass%:
Elements, at least one:
Claims 9-12
Nagayama
citation
W
0.01-4
0-4
[0138]
Nb
0.01-0.1
Silent, 0%
V
0.01-0.2
Silent, 0%
Ta
0.01-0.3
Silent, 0%
Co
0.01-1
Silent, 0%
Sn
0.001-0.02
Silent, 0%
Mg
0.0001-0.02
Silent, 0%
Ca
0.0001-0.01
Silent, 0%
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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE P SMITH whose telephone number is (303)297-4428. The examiner can normally be reached Monday - Friday 9:00-4:00 MT.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at (571)-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
CATHERINE P. SMITH
Patent Examiner
Art Unit 1735
/CATHERINE P SMITH/ Examiner, Art Unit 1735
/KEITH WALKER/ Supervisory Patent Examiner, Art Unit 1735