DETAILED ACTION
Claims 1-2 are pending and currently under review.
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 .
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 1-2 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 1-2 recite the term “round bar”, which is indefinite because this is a relative term which relates to a shape of the steel. It is unclear as to what specific shape, if any, is required by the term “round bar”. It is unclear whether this requires a circular shape, or merely any shape having a non-straight profile, or whether at least some degree or ratio of roundness is required. The examiner interprets the claim to be met by any shape that would be considered to be a rounded bar.
Claims 1-2 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 term “center position”, which is indefinite because it is unclear whether “center” requires specifically a midpoint that is equidistant from all edges of the cross section, or merely any position that is not located at an edge of the cross section, or any location that can be considered to be located along a midpoint between two extreme edge points of the cross section, or something else entirely. The examiner interprets the claim to be met by any of the aforementioned interpretations.
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) 1-2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hashizume et al. (US 5,496,421) in view of Matsuo et al. (US 2019/0177823).
Regarding claim 1, Hashizume et al. discloses a martensitic stainless steel for oil country tubular goods, which one of ordinary skill would understand to include round bar shapes [abstract, background]. Hashizume et al. further teaches that the steel has a composition as seen in table 1 below as well as a yield strength of 75 kg/mm2 or more [col.3 ln.23, col.4 ln.5 to col.6 ln.65]. The examiner notes that the overlap between the steel composition and strength of Hashizume et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I). Hashizume et al. is further silent regarding the requirement of non-recited elements, which meets the limitation of “consisting of…” as claimed.
Hashizume et al. does not expressly teach a concentration of Mo and W in a center portion as claimed. However, the examiner submits that overlapping Mo and W concentrations would have naturally flowed from the disclosure of Hashizume et al. One of ordinary skill would readily understand that steel inclusions and structure are directly affected by steel composition and manufacturing. Hashizume et al. discloses an overlapping steel microstructure and amount of Mo and W as stated above. Hashizume et al. also discloses an overlapping tempering step as shown in table 1 below, wherein the claimed Mo and W concentration features are directly and mainly influenced by said tempering parameters [0131-0146]. Since Hashizume et al. discloses an overlapping steel composition of Mo and W and an overlapping tempering step, the examiner submits that overlapping values of Mo and W concentrations in a center portion as claimed would have naturally flowed. See MPEP 2112 & MPEP 2144.05(I).
Hashizume et al. does not expressly teach an inclusion of Co as claimed. Matsuo et al. discloses that it is known to include up to 0.5 weight percent Co in martensitic stainless steels for oil country tubular goods to improve strength [abstract, 0080-0081]. Therefore, it would have been obvious to one of ordinary skill to modify the steel of Hashizume et al. by including Co for the aforementioned benefit of Matsuo et al. The examiner notes that the overlap between the Co amount of Matsuo et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I).
Table 1.
Element (wt.%)
Claim 1 (wt.%)
Hashizume et al. (wt.%)
C
0 – 0.03
0 – 0.06
Si
0 – 1
0 – 1
Mn
0 – 1
0 – 2
P
0 – 0.03
0 – 0.04
S
0 – 0.01
0 – 0.01
Cr
10 – 14
12 – 16
Ni
5 – 7.5
0.5 – 8
Mo
1.5 – 4
0.1 – 2.5
Cu
1 – 3.5
0.3 – 4
W
0.01 – 2
0 – 4
Co
0.01 – 0.5
0 – 0.5 (Matsuo et al.)
Ti
0.05 – 0.3
0 – 0.2
V
0.01 – 0.1
0.01 – 0.1
Ca
0.0005 – 0.01
0 – 0.01
Al
0.001 – 0.1
0.01 – 0.1
N
0 – 0.05
0 – 0.05
O
0 – 0.05
0
Nb
0 – 0.05
0.01 – 0.1
Sn
0 – 0.01
0
As
0 – 0.01
0
Sb
0 – 0.01
0
B
0 – 0.005
0
Mg
0 – 0.01
0
Rare earth
0 – 0.01
0 – 0.02
Fe & Impurities
Balance
Balance
Tempering Parameters
Instant specification [0131-0146]
Hashizume et al.
550 to 650 degrees C for 240 to 600 minutes
500 to 630 degrees C for a time in hours such that (20+log(t))(273+T) is between 15200 to 17800, which overlaps with time and formula FA of the instant specification. Example of overlap: 550 degrees and 6 hours [col.5 ln.45 to col.6 ln.30]
Meeting formula FA in [0132 spec.]
Subsequent cooling to 200 degrees C at 5 degrees C per second or higher
Air cooling to room temperature well known and commonly understood by one of ordinary skill, which encompasses the cooling rate of the instant specification.
Regarding claim 2, the aforementioned prior art discloses the steel of claim 1 (see previous). The examiner notes that the above composition of Hashizume et al. further overlaps with the claimed Nb range. See MPEP 2144.05(I).
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.
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, Jonathan Johnson can be reached at 5712721177. 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.
/NICHOLAS A WANG/Primary Examiner, Art Unit 1734
Prosecution Insights