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 .
Response to Amendment and Status of Claims
Applicant’s amendments to the claims, filed April 15, 2026, is acknowledged. Claim 5 is amended. No new matter has been added.
Claims 5-12 are pending and currently considered in this office action.
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 Yamada (cited by Applicant in IDS filed February 11, 2025, JP 2016168616 A, English Machine Translation provided) in view of Ueda (previously cited, US 6129999 A) and Ivannikov (previously cited, US 4902873 A).
Regarding Claim 5, Yamada discloses a duplex stainless steel welded joint (Abstract; para. [0029]), comprising a base metal and weld metal consisting of the compositions defined in the Table below.
Claim 5
Yamada
Claim 5
Yamada
Element
Base Metal
Base Metal
Para.
Table 1, ex. Y
Weld Metal
Weld Metal
Para.
Table 3, ex. 2
C
0.001-0.03
0-0.03
[0029]
0.02
0.001-0.03
0-0.03
[0050]
0.012
Si
0.05-0.8
0.20-1
[0029]
0.26
0.05-0.7
0.25-1.00
[0050]
0.29
Mn
0.05-1.2
0-8
[0029]
0.50
0.05-0.85
0.30-3.00
[0050]
0.50
P
0-0.03
0-0.04
[0029]
0.023
0-0.03
0-0.02
[0050]
0.010
S
0-0.003
0-0.01
[0029]
0.0001
0-0.003
0-0.005
[0050]
0.002
Cr
21-28
20-30
[0029]
25.20
21-28
20-30
[0050]
25.50
Ni
4-8
4-8
[0029]
6.67
5-11
7-12
[0050]
8.70
Mo
2.2-4.5
0.50-4
[0029]
3.08
2-4.5
1-4
[0050]
3.24
Cu
0.01-4
0.20-4
[0029]
0.70
0.01-4
0-2
[0050]
0.50
Sol. Al
0.001-0.05
0-0.04
[0029]
0.014
0.001-0.05
0.001-0.04
[0050]
0.009
N
0.08-0.4
0.10-0.35
[0029]
0.280
0.08-0.4
0.10-0.35
[0050]
0.21
B
0.0001-0.01
0-0.020
[0030]
0.0023
0.0001-0.01
Silent, 0%
W
0-4
0.01-4
[0029]
2.03
0-4
1-4
[0050]
2.08
Nb
0-0.1
Silent, 0%
0-0.1
Silent, 0%
V
0-0.2
Silent, 0%
0-0.2
0.010-1.50
[0050]
0.04
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
[0030]
0-0.02
Silent, 0%
Ca
0-0.01
0-0.02
[0030]
0.0023
0-0.01
Silent, 0%
Bal.
Fe + imp.
Fe + imp.
Fe+ imp.
Fe + imp.
Fe + imp.
[0050]
Fe + imp.
The compositional ranges of both the base metal and weld material of Yamada further satisfy the claimed formula (1), Si+3Mn ≤ 3.00 (para. [0026]; [0029]; Table 1, ex. Y, Si+3Mn = 0.26+3*0.50 = 1.76; Table 3, ex. 2, Si+3Mn = 1.79).
Yamada is silent towards Nb, V, Ta, Co and Sn in the base metal, and is silent towards Nb, 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 Yamada and 0%, and therefore inclusive of the claimed ranges.
Yamada 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 Yamada, 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).
Yamada discloses REM metal elements as optional elements in the base metal (para. [0082]-[0085]), and therefore wherein the range includes 0%, and discloses wherein O in the weld metal is an impurity (para. [0053]), which reads on the claimed ranges wherein the balance is Fe and impurities. One of ordinary skill in the art would appreciate therefore that the invention of Yamada and Ueda reads 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.
Yamada discloses the welded joint for a sheet thickness of 10-30mm, and a cap width (BW) by example of 30mm (para. [0092]; Fig. 1; para. [0087]); however, Yamada fails to disclose a range of values for the cap width, and fails to disclose the height of the weld joint/bead. Therefore Yamada 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.
Ivannikov teaches wherein arc-welded 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 and 0.11 for sheet thicknesses which are 10mm or greater. 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 Ivannikov for base metal sheets with thicknesses 10mm or greater, and therefore comprised a BH/BW value of 0.109-0.11, which reads on the claimed range of greater than 0 and less than 0.15, for the invention disclosed by Yamada. One would be motivated to have these weld geometries in order to comprise favorable weld seam bead form factors with no 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, Yamada discloses a steel sheet thickness of preferably 10-30mm (para. [0087]), and the claim limitations are conditional for if the steel sheet thickness is 2.5mm or less. The claims do not positively recite wherein the sheet thickness must be 2.5mm or less, and therefore the claim limitations have been met.
Nonetheless, Yamada discloses wherein both the base metal and weld metal satisfy the claimed formula (3), Si+4Mn ≤ 3.75 (para. [0026]; [0029]; Table 1, ex. Y, Si+3Mn = 0.26+4*0.50 = 2.26; Table 3, ex. 2, Si+4Mn = 2.29), and Ivannikov disclose BH/BW values within the range of 0.109-0.11 (see Claim 5 teaching above) which satisfies formula (4), wherein 0<BH/BW≤[0.5/(6.0-0.85*WT)] wherein WT is the thickness of the base metal for a 2.5mm thick steel sheet (WT of 2.5mm gives a BH/BW range of 0 to [0.5/(6.0-0.85*2.5)], or 0-0.129, which 0.109-0.11 overlaps and reads on).
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, Yamada 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
Yamada
citation
Table 1, ex. Y
W
0.01-4
0.01-4
[0029]
2.03
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
0-0.02
[0030]
Ca
0.0001-0.01
0-0.02
[0030]
0.0023
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, Yamada 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
Yamada
citation
Table 3, no. 2
W
0.01-4
1-4
[0050]
2.08
Nb
0.01-0.1
Silent, 0%
V
0.01-0.2
0.010-1.50
[0050]
0.04
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.
Response to Arguments
Applicant’s arguments, filed April 15, 2026, with respect to Claims 5-12 rejected under 35 U.S.C. 103 over Nagayama in view of Ueda, Arikawa and Ivannikov, have been fully considered and are persuasive in view of Applicant’s amendments to the claims further limiting the composition of the base metal. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made over Yamada in view of Ueda and Ivannikov, as detailed above.
Applicant’s arguments are deemed moot in view of the new grounds of rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Nagayama (previously cited, US 20130316193 A1): teaches 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
2.2-4.5
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 up to 2wt% Mo, whereas the claims currently require at least 2.2wt% Mo, in the base steel sheet. Nagayama further discloses a sheet thickness (WT) of the base metal of 2mm (Fig. 5).
Arikawa (previously cited, US 3731868 A): 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.
Fairchild (US 20100159265 A1): teaches wherein a welded joint has a root bead width (BW) ranging from 7-30mm and a overfill (BH) ranging from 2-5mm, wall thicknesses of a pipe ranging from 3.2-38.1mm, in order to form a welded joint which minimizes root defects in light of common geometric misalignments and without the need of backing support (Abstract; para. [0007]-[0008]). Therefore, Fairchild teaches a BH/BW ranging from 0.067-0.71, which overlaps the claimed range of less than 0.15.
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 CATHERINE P SMITH whose telephone number is (303)297-4428. The examiner can normally be reached Monday - Friday 9:00-4:00 MT.
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CATHERINE P. SMITH
Patent Examiner
Art Unit 1735
/CATHERINE P SMITH/ Examiner, Art Unit 1735
/KEITH WALKER/ Supervisory Patent Examiner, Art Unit 1735
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