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 .
Upon amendment, applicant is cautioned against the introduction of new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention.
Applicant is encouraged to point to the passage in the instant Specification which identifies support for each claim amendment.
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 16-18, 25, and 28 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 18 recites “the gap” in Line 2 for which there is a literal lack of antecedent basis, rendering the claim indefinite. Claim 17 on which Claim 18 depends recites “any gaps between the protective can and the ceramic inner portion.” Therefore, it is unclear which singular “gap” is being referenced in Claim 18. Appropriate correction is required establish concrete claimed elements of the gas injected upper tundish nozzle of the instant claims.
Similarly, the recitation “any gaps” in Claim 16 Line 2 and Claim 17 Line 2 can refer to an absence of gaps. Appropriate correction is required to establish the presence of “any gaps” in the claimed apparatus.
Claim 25 recites “consisting of a ceramic oxide of one or more of aluminum, silicon, magnesium, chromium, or zirconium, or mixtures thereof” in Lines 2-4. It is unclear how “mixtures thereof” differs from “on or more of,” whether mixtures of one or more listed materials are required by the claim, or some other meaning entirely. Applicant is reminded not to introduce new matter by amendment. Appropriate correction is required.
Claim 28 recites “wherein the gas distribution channels having gas outlets” which appears to be a grammatical error rendering the claim indefinite. It is unclear what claim limitations are being claimed in addition to the gas distribution channels and appropriate correction is required.
Claim 28 recites “steel flowing within the upper tundish nozzle” in Lines 2-3 for which there is a literal lack of antecedent basis for “steel,” rendering the claim indefinite. The claim is drawn to an apparatus, not to a method. The nexus between the presence of flowing steel and the upper tundish nozzle is unclear. 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.
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 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Engel et al. EP 0509699 A1 in view of Masuda et al. US 20130139372 A1.
Regarding Claims 15 and 16, Engel et al. ‘699 teaches a gas permeable well nozzle (meeting the limitation for a gas injected upper tundish nozzle ) comprising a protective can, a ceramic inner portion disposed within the protective can, the ceramic inner portion having gas flow pathways therein (e.g. [0010-0016]). Engel et al. ‘699 teaches a gas injection port attached to said protective can, the gas injection port allowing for injection of gas through the protective can an into the gas flow pathways within the ceramic inner portion, and a gas flow seal formed between the protective can and the ceramic inner portion [0020], the gas flow seal blocking leakage from the gap between the protective can and the ceramic inner portion [0014-0016].
Engel et al. ‘699 does not expressly teach the gas flow seal being formed of nickel or an alloy of nickel. Engel et al. ‘699 teaches the advantages of utilizing a material that balances thermal expansion properties at [0021] but does not teach away from the use of a metal material as a sealant.
However, Masuda et al. ‘372 teaches thermally spraying (meeting the limitation of instant Claim 2 for sputtering) a nickel alloy layer on the inner surface of a ceramic pipe lined with outer steel for the transport of molten metal [0036-0040].
It would have been obvious to one having ordinary skill in the art at the time of filing the invention to apply a nickel alloy layer as the gas seal in the tundish nozzle of Engel et al. ‘699 in order to reduce melting loss of the steel protective can based on the teachings of Masuda et al. ‘372 at [0009-0010]. Engel et al. ‘699 modified with the nickel alloy material of Masuda et al. ‘372 as a gas seal material meets the limitations of the instant claims.
Claims 17-25 are rejected under 35 U.S.C. 103 as being unpatentable over Engel et al. EP 0509699 A1 in view of Masuda et al. US 20130139372 A1 as applied to Claims 15-16 above further in view of Wallbaum et al. US 3713808 A.
Regarding Claims 17-21, modified Engel et al. ‘699 teaches the limitations set forth above. Engel et al. ‘699 further teaches a castable ceramic refractory member (Abstract), meeting the limitation for a unitary piece. Engel et al. ‘699 and Masuda et al. ‘372 do not expressly teach electroplating the nickel alloy.
However, Wallbaum et al. ‘808 teaches at (Abstract) a method of preparing and using equipment for holding molten metal wherein a tubular refractory material is electroplated with nickel specifically “to establish a dense integral pore-free layer that is integral with the sealing of the pores.”
The transposition of method steps is prima facie obvious absent a showing of new or unexpected results. See MPEP 2144.04 IV. C. Notwithstanding the 112(b) rejections above, it would have been obvious to one having ordinary skill in the art at the time of filing the invention to electroplate a nickel or nickel alloy into gaps between the protective can and the inner portion, or the exterior of the protective can in order to establish a pore-free layer, avoid the entry of gas through microscopic gaps, and prevent corrosion and wear based on the teachings of Wallbaum et al. ‘808 at (Abstract), (Column 2 Lines 46-50), meeting the limitations of the instant Claim. See MPEP 2141.01(a) I. “[A] reference need not be from the same field of endeavor as the claimed invention in order to be analogous art.” Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212.
Regarding Claims 22-23, modified Engel et al. ‘699 teaches the limitations set forth above. Engel et al. ‘699 further teaches a steel protective can [0012], meeting the limitations of the instant claims.
Regarding Claim 24, modified Engel et al. ‘699 teaches the limitations set forth above. Engel et al. ‘699 further teaches a gas permeable ceramic inner portion formed from a ceramic material [0005], meeting the limitations of the instant Claim.
Regarding Claim 25, modified Engel et al. ‘699 teaches the limitations set forth above. Engel et al. ‘699 further teaches the ceramic inner portion is formed from a gas permeable refractory material selected from the group consisting of alumina, zirconia, and magnesia, meeting the limitations of the instant Claim.
Claims 26-28 are rejected under 35 U.S.C. 103 as being unpatentable over Engel et al. EP 0509699 A1 in view of Masuda et al. US 20130139372 A1 as applied to Claims 15-16 above further in view of Cahoon et al. US 4487251 A.
Regarding Claim 26, modified Engel et al. ‘699 teaches the limitations set forth above. As set forth above, Engel et al. ‘699 further teaches an axial bore (Abstract), meeting the limitations of the instant Claim for the gas flow pathways being formed directly into the body of the ceramic inner portion.
Engel et al. ‘699 does not expressly teach the ceramic inner portion is not porous.
However, Cahoon et al. ‘251 teaches a tundish nozzle formed of either a porous or non-porous material provided that fluid retardation is provided elsewhere via channels within the tube (Column 5, Lines 47-54).
It would have been obvious to one having ordinary skill in the art at the time of filing the invention to form the nozzle of Engel et al. ‘699 from a non-porous material based on the teachings of ‘251 at (Column 5, Lines 47-54) in order to prolong the lifetime of the nozzle, meeting the limitations of the instant Claim.
Regarding Claim 27, modified Engel et al. ‘699 teaches the limitations set forth above. Engel et al. ‘699 further teaches an axial bore (Abstract), open gas annulus, and transverse channels [0005, 0014-0015], meeting the limitations of the instant Claim for a gas distribution manifold and gas distribution channels.
Regarding Claim 28, modified Engel et al. ‘699 teaches the limitations set forth above. Engel et al. ‘699 further teaches dispersion of gas through the axial bore into the molten stream passing through the nozzle [0014], meeting the limitations of the instant Claim.
Double Patenting
Claims 15-16, 22-23, 25, and 27-28 are provisionally rejected/ under 35 U.S.C. 101 as claiming the same invention as that of claims 11-12, 14, 16-17, and 19 of U.S. Patent Application No. 18/692,805 U.S. PG Pub 20250135531 A1.
Comparing instant claim 15 with claim 11 of the co-pending ‘805 patent application, the addition of “the gas flow pathways having been formed using a sacrificial mold when producing said ceramic inner portion” does not change the scope of the gas injected upper tundish nozzle of both applications. This product-by-process limitation recites the same exact product as the upper tundish nozzle instantly claimed. Even if formed by a different process, the upper tundish nozzle instantly claimed would encompass the nozzle claimed in the co-pending application
The actual scope of the independent claims is identical, despite the formation of gas flow pathways by a sacrificial mold. The presence of gas flow pathways is identical between the cited claims. That which would infringe one would infringe the other and vice versa.
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 19-21 are provisionally rejected, (along with Claims 15-16, 22-23, 25, and 27-28 being additionally provisionally rejected) under the judicially created doctrine of double patenting as being directed to the same invention as set forth in claims 11-12, 14-17, and 19-20 of copending Application No. 18/692,805 U.S. PG Pub 20250135531 A1. See In re Thorington, 418 F.2d 528,163 USPQ 644 (CCPA 1969). Although the claims at issue are not identical, they are not patentably distinct from each other because the nozzle of the co-pending ‘805 patent application overlaps and encompass the nozzle of the instant claims. The claims of the co-pending ‘805 patent application read on depositing a nickel or nickel alloy between the same recited spaces of the instantly claimed tundish nozzle, after formation of a unitary piece, which is what remains after the removal of a sacrificial mold.
This is a provisional double patenting rejection because the claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 20210170479 A1 teaches a tundish nozzle with a metal flange that seals and prevents molten metal leaks within the nozzle.
EP 0059805 A1 teaches a casting nozzle with a refractory sealing member and integrally formed flange.
JP H11104814 A teaches a gas-sealed gas injected upper tundish nozzle.
US 20130233899 A1 teaches a gas injected upper tundish nozzle sealed with insulating cement.
KR 100737123 B1 teaches a nickel and nickel alloy-plated continuous casting mold.
US 20060166053 A1 teaches nickel coating a refractory fuel stack.
US 4836508 A teaches a non-porous ladle shroud with a co-pressed permeable ring and gas-tight seal.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MORIAH S. SMOOT whose telephone number is (571)272-2634. The examiner can normally be reached M-F 8:30am - 5pm EDT.
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 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.
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.
/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/M.S.S./Examiner, Art Unit 1733
Prosecution Insights