DETAILED ACTION
Claims 1-13 are pending, and claims 4-10 and 12-13 are currently under review.
Claims 1-3 and 11 are withdrawn.
Claims 12-13 are newly added.
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 with traverse of group II in the reply filed on 7/31/2026 is acknowledged. The traversal is on the ground(s) that there is no search burden. This is not found persuasive because a search burden exists as already explained in the restriction requirement. The examiner cannot concur with applicant’s mere conclusory remarks.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-3 and 11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 7/31/2026.
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 4-10 and 12-13 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. Claims 4-5 and 10 recite the phrase “premium quality finishing mill”, which is indefinite because it is unclear as to what particular type of mill or mill structure, if any, is required by the term “premium quality”. This is not a commonly used term in the prior art and the specification and claims do not further provide any explanation or details regarding the aforementioned limitations. The examiner interprets the claim to be met by any finishing mill.
Claims 4-10 and 12-13 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 4 recites the phrase “a slight stretch reducing”, which is indefinite because “slight stretch reducing” is a relative term of degree which is not further defined by the claims or specification. It is unclear as to what particular amount of stretching/reduction, if any, is required by the term “slight”. The examiner interprets the claim to be met by any degree of deformation.
Claim 7 is 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 7 recites the phrase “gradual temperature rising mode”, which is indefinite because “gradual” is a relative term of degree which is not further defined by the claims or specification. It is unclear as to what particular rate of temperature increase, if any, is required by the term “gradual”. The examiner interprets the claim to be met by any degree/rate of temperature increase.
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.
Claim(s) 4, 6, and 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Eguchi et al. (EP4043591) in view of Tumanov et al. (SU380149, machine translation referred to herein), Kondo et al. (US 2012/0042992), and CCR Technologies (2016, Cooling bed systems); and alternatively over the aforementioned prior art and further in view of Deng (CN112176241, machine translation referred to herein) and Continuous Casting Consortium (2009, Introduction to continuous casting).
Regarding claim 4, Eguchi et al. discloses a method of manufacturing a steel pipe for oil wells having a composition as seen in table 1 below, which one of ordinary skill would recognize to also include casings [0016]. Although Eguchi et al. does not expressly teach the claimed Ni/Cu and (Ni+Cr+Mo)/B formulas, the examiner notes that these formulas merely further limit the claimed composition which still overlaps with the disclosed ranges of Eguchi et al. See MPEP 2144.05(I).
Eguchi et al. does not expressly teach inclusions of La and Ce as claimed. Tumanov et al. discloses that it is known to include up to 0.1 weight percent La and up to 0.2 weight percent Ce in stainless steels to improve mechanical properties, which overlaps with the claimed ranges [p.2]. See MPEP 2144.05(I). Therefore, it would have been obvious to one of ordinary skill to modify the method of Eguchi et al. by including La and Ce to improve mechanical properties as taught by Tumanov et al.
Eguchi et al. further discloses a microstructure of a main phase of tempered martensite of at least 45 percent, in addition to a remainder of retained austenite and ferrite [0052]. The examiner notes that the overlap between the microstructure of Eguchi et al. relative to that as claimed is prima facie obvious. See MPEP 2144.05(I).
Eguchi et al. further teaches manufacturing the steel pipe through smelting and continuous casting into a billet [0056], heating the billet and hot piercing the billet to form a pipe using known processes [0057], followed by heat treatment of quenching at 800 degrees C or more for 5 minutes or more, cooling to 100 degrees C or less at a cooling rate of air cooling or faster, tempering at 500 degrees C or higher to the Ac1 point for 10 minutes or more, and then air cooling [0058-0060]. The examiner notes that the overlap between the manufacturing parameters of Eguchi et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I).
Eguchi et al. does not expressly teach that smelting occurs in an electric furnace with ladle refining and vacuum degassing as claimed. However, the examiner submits that these are all commonly well-known and conventional steps in steel smelting that would have been obvious to one of ordinary skill. Alternatively, Deng discloses that it is known to smelt steel in an electric arc furnace, followed by ladle refinement and vacuum degassing for preparing oil casing materials [0011-0012, 0043-0044, 0055-0056, 0067-0068]. Therefore, it would have been obvious to one of ordinary skill to modify the method of the aforementioned prior art by including the steps of Deng as well-known and conventional steps for preparing oil casing materials. Alternatively, the examiner notes that all of the claimed features are disclosed in the prior art, although not necessarily in a single reference, wherein it would have been obvious to combine the prior art features of a known steel oil pipe manufacturing method with the known smelting steps of Deng to arrive at the predictable result of controlling smelting of steel for preparing steel for oil pipes. See MPEP 2143(I)(A).
The aforementioned prior art does not expressly teach that the continuous casting is curved continuous casting as claimed. However, the examiner submits that curved continuous casting is a commonly well-known and conventional means of casting steel that would have been obvious to one of ordinary skill. Alternatively, Continuous Casting Consortium expressly teaches that curved continuous casting is known to be used for a majority of steel continuous casting (ie. common and conventional) [p.1]. Therefore, it would have been obvious to one of ordinary skill to modify the method of the aforementioned prior art by utilizing curved continuous casting as a well-known and conventional casting means for a majority of steels. Alternatively, the examiner notes that all of the claimed features are disclosed in the prior art, although not necessarily in a single reference, wherein it would have been obvious to combine the prior art features of a known steel oil pipe manufacturing method with conventional curved continuous casting to arrive at the predictable result a conventional casting method for use during manufacture of steels for oil pipes. See MPEP 2143(I)(A).
The aforementioned prior art does not expressly teach pipe-making parameters of an initial hollow shell outer diameter and finish rolling and slight stretch reducing to obtain a final pipe diameter as claimed. However, the examiner submits that these parameters would have been an obvious engineering design choice to one of ordinary skill depending on the desired pipe size. See MPEP 2144.04(IV)(A). Furthermore, Kondo et al. discloses piercing and rolling seamless steel pipes for oil applications to obtain an intermediate billet outer diameter of 310 mm, which is then pierced (which one of ordinary skill would understand to result in a pierced hollow shell), followed by subsequent finish rolling to an outer diameter of 273.05 mm [abstract, 0001-0002, 0081]. The examiner notes that these parameters are substantially close to the claimed range such that prima facie obvious exists. See MPEP 2144.05(I). Alternatively, one of ordinary skill would have recognized that any pipe outer diameter can be selected as desired depending upon the specific application, wherein it would have been obvious to arrive at the claimed outer diameter ranges through routine optimization of the disclosed parameters of the prior art. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See MPEP 2144.05(II).
The aforementioned prior art does not expressly teach a step of cooling in a walking beam cooler as claimed. CCR Technologies discloses that it is known to cool steel using a walking beam cooling bed to allow for fast and uniform cooling [p.1]. Therefore, it would have been obvious to one of ordinary skill to modify the method of the aforementioned prior art by utilizing a walking bed cooler for cooling after hot rolling of Eguchi et al. to allow for fast and uniform cooling as taught by CCR Technologies.
Table 1.
Element (wt.%)
Claim 4 (wt.%)
Eguchi et al. (wt.%)
C
0.01 – 0.04
0.002 – 0.05
Si
0.1 – 0.8
0.05 – 0.5
Mn
0.05 – 0.25
0.04 – 1.8
Cr
11 – 14
11 – 14
Mo
1.5 – 2.8
0.5 – 3
Cu
0.5 – 1.8
0.05 – 3
Ni
3.7 – 5
3 – 6.5
N
0.03 – 0.05
0.002 – 0.15
Al
0.001 – 0.05
0.005 – 0.1
B
0.001 – 0.005
0.0005 – 0.01
Ti
0.03 – 0.08
0.01 – 0.2
La
0.07 – 0.35
0.01 – 0.1 (Tumanov)
Ce
0.12 – 0.4
0.02 – 0.2 (Tumanov)
P
0 – 0.013
0 – 0.03
S
0 – 0.001
0 – 0.002
Fe & Impurities
Balance
Balance
Regarding claim 6, the aforementioned prior art discloses the method of claim 4 (see previous). Eguchi et al. further teaches that air cooling is 0.01 degrees C per second or higher, which overlaps with the claimed air cooling [0059]. See MPEP 2144.05(I). Although Eguchi et al. does not expressly require water cooling, Eguchi et al. further teaches that quenching can be faster than air cooling (which one of ordinary skill would recognize to include water cooling) and therefore faster than 0.01 degrees C per second. In other words, Eguchi et al. suggests water cooling at a rate of greater than 0.01 degrees C per second, which also overlaps with the claimed range. See MPEP 2144.05(I).
Regarding claim 12, the aforementioned prior art discloses the method of claim 4 (see previous). Eguchi et al. further including W in an amount of 0.05 to 3 weight percent and V in an amount of 0.005 to 0.2 weight percent, which overlaps with the claimed ranges [0016]. See MPEP 2144.05(I).
Regarding claim 13, the aforementioned prior art discloses the method of claim 4 (see previous). Eguchi et al. further including Ca in an amount of 0.0005 to 0.0025 weight percent, which overlaps with the claimed ranges [0016]. See MPEP 2144.05(I).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Eguchi et al. (EP4043591) and others as applied to claim 4 above, and further in view of Dvorak (GB2135336).
Regarding claim 5, the aforementioned prior art discloses the method of claim 4 (see previous). The aforementioned prior art does not expressly teach spraying of borax and nitrogen using parameters as claimed. Dvorak discloses a deoxidization process during hot processing and piercing of steel blanks [abstract]; wherein borax is introduced into said pierced blank (ie. hollow shell) for 1 to 10 seconds for deoxidation, in addition to spraying of nitrogen at a pressure of 3 to 3.5 bars as a vehicle for said borax [abstract, p.1 ln.75-90]. Therefore, it would have been obvious to one of ordinary skill to modify the method of the aforementioned prior art by including the aforementioned borax and nitrogen spraying steps as taught by Dvorak for deoxidization. The examiner notes that the overlap between the parameters of Dvorak and that as claimed is prima facie obvious. See MPEP 2144.05(I).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Eguchi et al. (EP4043591) and others as applied to claim 4 above, and further in view of Zhu et al. (CN107868900, machine translation referred to herein).
Regarding claim 7, the aforementioned prior art discloses the method of claim 4 (see previous). The aforementioned prior art does not expressly teach ladle refining parameters as claimed. Zhu et al. discloses that it is known to perform smelting of low impurity steels wherein lime, fluorite, and calcium carbide are added during ladle refining for slag formation, said refining occurring with a temperature increase (which meets “gradual temperature rising mode” as interpreted above) for more than 30 minutes [0008, 0024-0030]. Therefore, it would have been obvious to one of ordinary skill to modify the method of the aforementioned prior art by specifying ladle refining parameters as explained above for the purpose of slag formation and forming low-impurity steels as taught by Zhu et al. The examiner notes that the overlap between the parameters of Zhu et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Eguchi et al. (EP4043591) and others as applied to claim 4 above, and further in view of Wang et al. (CN115106497, machine translation referred to herein) alone or further in view of Nara et al. (US 5,632,324).
Regarding claim 8, the aforementioned prior art discloses the method of claim 4 (see previous). The aforementioned prior art does not expressly teach continuous casting parameters as claimed. Wang et al. discloses that a method for controlling continuous casting of steel [0001]; wherein vibrational casting is utilized to enable stable and smooth continuous casting which includes controlling parameters of vibrational frequency of 110 to 180 per minute, vibrational amplitude of 4 to 12 mm, and a negative slip rate of 30 to 40 percent [0005]. Therefore, it would have been obvious to one of ordinary skill to modify the method of the aforementioned prior art by utilizing vibrational casting parameters of Wang et al. for the aforementioned benefit. The examiner notes that the overlap between the parameters of Wang et al. and those as claimed is prima facie obvious. See MPEP 2144.05(I).
Wang et al. further teaches a casting speed of up to 1.8 meters per minute [0007]. However, one of ordinary skill would readily recognize that casting speed directly affects cast slab thickness and it would have been obvious to increase casting speed through routine optimization to achieve thinner slabs. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See MPEP 2144.05(II). Alternatively, Nara et al. further discloses continuous casting of steels wherein a high-speed casting rate can be about 2.9 m/min for a desired throughput of steel [col.8 ln.35-48]. Therefore, it would have been obvious to one of ordinary skill to modify the method of the aforementioned prior art by achieving high speed by casting at about 2.9 m/min as taught by Nara et al., which meets the claimed range. Alternatively, the examiner notes that all of the claimed features are disclosed in the prior art, although not necessarily in a single reference, wherein it would have been obvious to combine the prior art features of a known steel oil pipe manufacturing method with known casting rate as taught by Nara et al. to arrive at the predictable result a conventional casting method for molten steel wherein a high-speed casting rate is achieved. See MPEP 2143(I)(A).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Eguchi et al. (EP4043591) and others as applied to claim 4 above, and further in view of Buck (US 2004/0154707).
Regarding claim 9, the aforementioned prior art discloses the method of claim 4 (see previous). The aforementioned prior art does not expressly teach hot processing parameters as claimed. Buck discloses that it is known to achieve a fine-grained microstructure by heating steel slabs at 1230 degrees C for 2 hours to achieve austenitization, followed by hot working at 1150 to 1230 degrees C [0049]. Therefore, it would have been obvious to modify the method of the aforementioned prior art by performing the above hot processing steps to achieve a fine grain microstructure as disclosed by Buck. The examiner notes that the overlap and closeness between the processing of Buck and that as claimed is prima facie obvious. See MPEP 2144.05(I). Specifically regarding closeness, the examiner considers the duration of 2 hours to be substantially close to the claimed range of 90 to 110 minutes such that similar properties of austenitization and subsequent martensite formation are achieved. The examiner further submits that one of ordinary skill would understand heat treatment duration to directly affect a degree of austenitization while balancing process speed/efficiency, such that arriving at the claimed duration range would have been obvious through routine optimization. See MPEP 2144.05(II).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Eguchi et al. (EP4043591) and others as applied to claim 4 above, and further in view of Huang et al. (CN108660377, machine translation referred to herein).
Regarding claim 10, the aforementioned prior art discloses the method of claim 4 (see previous). The aforementioned prior art does not expressly teach rolling parameters as claimed. Huang et al. discloses a method for forming seamless steel pipes [0002]; wherein rolling is controlled such that a feed rate is 30 to 100 mm, a roll speed ranges from 22 to 52 rpm, and an air pressure is 4.5 to 6 bar to improve surface quality [0017, 0045]. Therefore, it would have been obvious to one of ordinary skill to modify the method of the aforementioned prior art by utilizing the rolling parameters of Huang et al. to desirably control rolling and improve surface quality. The examiner notes that the overlap between the parameters of Huang et al. and those as claimed is prima facie obvious. See MPEP 2144.05(I). Alternatively, the examiner notes that all of the claimed features are disclosed in the prior art, although not necessarily in a single reference, wherein it would have been obvious to combine the prior art features of a known steel oil pipe manufacturing method with known rolling parameters as taught by Huang et al. to arrive at the predictable result the pipe forming method of Eguchi et al. wherein rolling parameters are desirably controlled. See MPEP 2143(I)(A).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS A WANG whose telephone number is (408)918-7576. The examiner can normally be reached usually M-Th: 7-5.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734
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