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 and Status of Claims
Applicant’s election without traverse of Invention I, claims 1-4 and 9-12 in the reply filed on 4/13/26 is acknowledged.
Claims 5-8 and 13-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 in the reply filed on 4/13/26.
As such, claims 1-4 and 9-12 are examined in this office action below.
Claim Interpretation
Claims 1 and 9 both recite the term “REM” in the composition. In paragraph [0057] of the specification, applicant defined “REM” to refer to “a rare earth element(s), namely, at least one element selected from the group consisting of Sc, Y, La, Ce, Pr, Nd, Pm, Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm, Yb, and Lu” and “the ‘REM content’ refers to the total content of the rare earth element(s)”. As applicant has provided a definition of REM, this will be used to interpret the claims in this application.
Claim Objections
Claims 1 and 9 are objected to because of the following informalities: claims 1 and 9 both recite the term “REM” in the composition. While applicant provides the definition noted above for this term, the clarity of the claim would be improved by reciting "Rare Earth Element(s) REM" in the claims. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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 9-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
New claim 9 recites the composition for the base metal portion using the transitional phrase “comprising”, which is open language allowing for other unrecited elements, see MPEP 2111.03(I). However, original claim 1 as well as paragraph [0011] of the specification recites the composition of the base metal composition and uses the transitional phrase “consisting of” which is closed and excludes other unrecited elements, see MPEP 2111.03(II). At no other point does the specification use open language with respect to the composition of the base metal portion and applicant does not point to any support for where this composition is open to other elements. Therefore, the specification does not describe the claimed subject matter of a composition of the base metal portion in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor had possession of an open composition as claimed in claim 9. Claims 10-12 are also rejected as they depend from claim 9 and do not solve the above issue.
Claims 1-4 and 9-12 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.
Claim 1 recites the limitation “wherein, in a case in which a layer in which a concentration of C is 90% or less with respect to the concentration of C in the chemical composition of the base metal portion is defined as a de-C layer, and a layer in which a concentration of B is 90% or less with respect to the concentration of B in the chemical composition of the base metal portion is defined as a de-B layer, the de-C layer has a thickness of less than 0.20 mm and the de-B layer has a thickness of less than 0.10 mm, at each of an inner surface side and an outer surface side of the base metal portion”. An identical recitation exists in claim 9. It is not clear whether this recitation requires layers to exist with decreased amounts of C and B, or whether these are merely requirements if such a layer exists they must be in the required thicknesses.
Further, it is not clear where these layers exist in the structure. It is not clear whether the layers exist at both the inner surface side and outer surface side, whether they overlap or are distinct layers, whether one exists at the inner surface side and the other at the outer surface side, or some other meaning. Claims 2-4 and 10-12 are also rejected as they depend from claims 1 and 9 and do not solve the above issue.
Claim 2 recites the limitation “wherein the chemical composition of the base metal portion comprises one or more selected from the group consisting of” in lines 2-3. Claim 1, from which claim 2 depends sets forth a closed composition using the transitional phrase “consisting of”, see MPEP 2111.03(I and II). As claim 1 already uses closed language for the composition, it is not clear how claim 2 can use open language to describe the composition. It is not clear whether this allows for other unrecited elements or not.
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 1-4 and 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/131813 A1 with reference to its English equivalent US 2020/0332381 A1 of Kawabata.
As to claims 1-2 and 9-10, it is not clear what is meant by de-B layer and de-C layer, see 112(b) rejection above. For the purposes of applying prior art, this will be interpreted as requiring a de-B layer and de-C layer at either the inner or outer surface of the pipe. Further, it is not clear what is meant by claim 2 including open language, see 112(b) rejection above. For the purposes of applying prior art, this will be interpreted as requiring the presence of one or more of Cu, Ni, Cr, and Mo in the claimed amounts.
Kawabata discloses an electric resistance welded straight steel pipe or tube comprising a base metal being a steel sheet having a chemical composition in comparison to the claimed composition in Table A below (Kawabata, paragraph [0020] and claim 1), meeting the claim limitations of an electric resistance welded steel pipe for a mechanical structural part, the pipe comprising a straight pipe portion and wherein the straight pipe portion comprises a base metal portion and an electric resistance welded portion
Table A
Element
Claims 1-2 and 9-10 Limitations (mass %)
Kawabata claims 1 and 2 (mass %)
Kawabata Steel D (mass %) (Table 1)
C
0.30 to 0.38%
0.15% to 0.40%
0.34%
Si
0.05 to 0.40%
0.05% to 0.50%
0.20%
Mn
0.50 to 2.00%
0.30% to 2.00%
1.25%
Al
0.010 to 0.060%
0.01% to 0.10%
0.029%
Ti
0.005 to 0.050%
0.001% to 0.04%
0.032%
B
0.0003 to 0.0050%
0.0005% to 0.0050%
0.0021%
Ca
0.0005 to 0.0040%
0.0050% or less
0.0012%
N
0 to 0.0060%
0.0010% to 0.0100%
P
0 to 0.020%
0.020% or less (paragraph [0146])
0.015%
S
0 to 0.0200%
0.010% or less (paragraph [0148])
0.0019%
O
0 to 0.0050%
0.005% or less (paragraph [0150])
0.0021%
Cu
0 to 0.50%
Claims 2 and 10 (one or more of): 0.01 to 0.50%
1.0% or less
Ni
0 to 0.50%
Claims 2 and 10 (one or more of): 0.05 to 0.50%
1.0% or less
Cr
0 to 0.50%
Claims 2 and 10 (one or more of): 0.05 to 0.50%
1.0% or less
0.12%
V
0 to 0.20%
0.2% or less
Nb
0 to 0.10%
0.2% or less
Mo
0 to 0.50%
Claims 2 and 10 (one or more of): 0.01 to 0.50%
1.0% or less
Mg
0 to 0.05000%
REM
0 to 0.05000%
Fe and impurities
balance
balance
balance
Thus, Kawabata discloses Steel D which anticipates the claimed composition, meeting the claim limitations. Kawabata discloses where the pipe is quenched such that 100% martensite microstructure can be formed (Kawabata, paragraph [0265]) and Kawabata discloses where after the rapid and short-time heating quenching, tempering treatment to improve toughness (Kawabata, paragraph [0267]), meeting the limitation of a microstructure of a central portion in a wall thickness direction of the base metal portion is tempered martensite as if 100% of the microstructure is martensite, the area at a central portion of the wall must be martensite and as the pipe is tempered, this structure is tempered martensite.
Kawabata discloses where the hardness value of the base metal portion is 498 Hv at a depth of 1mm from the outer and inner surface and where the depth of a decarburized layer is 15-16 microns at the outer surface and 15 microns at the inner surface (Kawabata, Table 6, sample numbers 12-14 which use Steel D and paragraph [0294]). However, Kawabata does not explicitly disclose wherein, in a case in which a layer in which a concentration of C is 90% or less with respect to the concentration of C in the chemical composition of the base metal portion is defined as a de-C layer, and a layer in which a concentration of B is 90% or less with respect to the concentration of B in the chemical composition of the base metal portion is defined as a de-B layer, the de-C layer has a thickness of less than 0.20 mm and the de-B layer has a thickness of less than 0.10 mm, at each of an inner surface side and an outer surface side of the base metal portion, and wherein each of a Vickers hardness at a position at a depth of 0.5 mm from an inner surface of the base metal portion and a Vickers hardness at a position at a depth of 0.5 mm from an outer surface of the base metal portion is 420 Hv or more and less than 510 Hv.
However, as noted above in Table A, Kawabata discloses an anticipatory composition and discloses a substantially identical method of manufacture of electric resistance welding a steel sheet to form an electric resistance welded steel pipe or tube that includes an electric resistance weld portion (Kawabata, claim 5) followed by normalizing in an atmosphere that contains, in mole fraction, H2: 0% to 10% and O2: 80 ppm or less with the balance consisting of H2O and N2 and has a dew point of 0° C. or less (Kawabata, paragraph [0253]) and quenching where 100% martensite microstructure can be formed at an average cooling rate of 30° C./s or more (Kawabata, paragraph [0265]) followed by tempering where the heating temperature (tempering temperature) in the tempering treatment is preferably 150° C. to 450° C (Kawabata, paragraph [0267]), substantially matching the disclosed method in instant claim 5 and paragraph [0086] of the specification of a quenching step of subjecting the as-rolled electric resistance welded steel pipe to quenching; and a tempering step of subjecting the as-rolled electric resistance welded steel pipe that has been subjected to quenching to tempering, to obtain the electric resistance welded steel pipe for a mechanical structural part; wherein, in the quenching step, an oxygen content in an atmosphere in which the quenching is performed is 1,000 volume ppm or less, and a cooling rate in the quenching is 10° C./sec or more. As Kawabata discloses applying the same method to the same starting material, a person of ordinary skill would expect this to produce identical properties of a layer in which a concentration of C is 90% or less with respect to the concentration of C in the chemical composition of the base metal portion is defined as a de-C layer, and a layer in which a concentration of B is 90% or less with respect to the concentration of B in the chemical composition of the base metal portion is defined as a de-B layer, the de-C layer has a thickness of less than 0.20 mm and the de-B layer has a thickness of less than 0.10 mm, at each of an inner surface side and an outer surface side of the base metal portion, and wherein each of a Vickers hardness at a position at a depth of 0.5 mm from an inner surface of the base metal portion and a Vickers hardness at a position at a depth of 0.5 mm from an outer surface of the base metal portion is 420 Hv or more and less than 510 Hv. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (emphasis added), see MPEP § 2112.01(I).
As to claims 3 and 11, Kawabata discloses where the obtained electric resistance welded steel pipe or tube had an outer diameter of 25.4 mm and a thickness of 4.5 mm (Kawabata, paragraph [0269]), meaning that the thickness divided by the outer diameter would be 0.177 meeting the claim limitations of wherein the straight pipe portion has an outer diameter of from 10 to 50 mm, and wherein a value obtained by dividing a wall thickness of the base metal portion by the outer diameter of the straight pipe portion is from 0.04 to 0.25
As to claims 4 and 12, the F1 value for Steel D calculated using the composition of Ca, O, and S in Kawabata would be 0.37 which is merely close to the claimed range of 0.50 or more. However, as F1 value is merely a function of the composition of Ca, O, and S and Kawabata discloses overlapping ranges for these elements, see Table A above, 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 amounts of Ca, O, and S over the prior art disclosure since the prior art teaches the welded steel pipe has excellent fatigue durability (Kawabata, paragraph [0016]) 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) . See MPEP § 2144.05 I.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Joshua S Carpenter whose telephone number is (571)272-2724. The examiner can normally be reached Monday - Friday 8:00 am - 5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached at (571) 272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSHUA S CARPENTER/Examiner, Art Unit 1733
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
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