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 & Status of Claims
Applicant’s election without traverse of Group I, claims 1-6, drawn to a steel plate in the reply filed on 26 MARCH 2026 is acknowledged.
Claims 7-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 26 MARCH 2026.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it contains phrases which can be implied (See lines 1-3). A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claim 1 is objected to because of the following informalities:
The term thereof should be replaced with the appropriate feature.
Appropriate correction is required.
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 1-6 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.
Regarding claims 1-6, instant claim 1 require “A steel plate, comprising by weight %: 0.04 to 0.08% of carbon (C), 0.1 to 0.35% of silicon (Si), 1.4 to 1.8% of manganese (Mn), 0.01 to 0.035% of sol.Al (Al), 0.2 to 0.5% of nickel (Ni), 0.1 to 0.3% of chromium (Cr), 0.05 to 0.15% of molybdenum (Mo), 0.015 to 0.035% of niobium (Nb), 0.005 to 0.02% of titanium (Ti), 0.002 to 0.006% of nitrogen (N), 0.01% or less of phosphorous (P), 0.003% or less of sulfur (S), with a balance of iron (Fe) and other inevitable impurities”. However, it is unclear what would encompass “other inevitable impurities” as neither the specification nor claim defines the term or sets forth what would constitute the “other” inevitable impurities. Claims 2-6 are dependents of claim 1, do not resolve the aforementioned issues and thereby also indefinite.
Regarding claims 1 and 3-6, instant claim 1 requires “a microstructure at a point equal to ¼ of a thickness thereof has a mixed structure of acicular ferrite and bainite as a main structure”. The term “main structure” in claim 1 is a relative term which renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. As there is no explicit definition of what is meant by the term “main structure” either in the claims or the specification, it is unclear what amount of the various phases would satisfy the term and therefore the instant claims.
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.
List 1
Element
Instant Claims
(mass%)
Prior Art
JP’258
(mass%)
Prior Art
KR’706 Broad
(mass%)
Prior Art
KR’706 Steel B
(mass%)
C
0.04 – 0.08
0.04 – 0.16
0.03 – 0.06
0.039
Si
0.1 – 0.35
0.01 – 0.5
0.05 – 0.50
0.18
Mn
1.4 – 1.8
0.2 – 2.5
0.5 – 1.6
1.40
Al
0.01 – 0.035
0.001 – 0.10
0.01 – 0.05
0.033
Ni
0.2 – 0.5
0.03 – 2.0
0.1 – 0.4
0.306
Cr
0.1 – 0.3
0.03 – 1.5
0.05 – 0.35
0.267
Mo
0.05 -0.15
0.01 – 1.0
0.05 – 0.3
0.102
Nb
0.015 – 0.035
0.003 – 0.02
0.02 – 0.07
0.034
Ti
0.005 – 0.02
0.003 – 0.05
0.005 – 0.02
0.011
N
0.002 – 0.006
0.001 – 0.008
0.002 – 0.01
0.0042
P
0.01 or less
0.03 or less
0.015 or less
0.0053
S
0.003 or less
0.02 or less
0.005 or less
0.0007
Fe +
impurities
Balance
Balance
Balance
Balance
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2012-172258 A of Nakajima and its English machine translation (JP’258).
Regarding claims 1-6, JP 2012-172258 A of Nakajima and its English machine translation (JP’258) teaches a steel plate and a method for producing a thick steel plate, and more particularly, to a method for producing a very thick steel plate for a welded structure having high rolling productivity and excellent low temperature toughness with a composition wherein the claimed ranges of the constituent elements of the instant alloy of the instant claims overlap or lie inside the ranges of various elements of the alloy of the prior art as shown in the List 1 above. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, 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 composition over the prior art disclosure since the prior art teaches the similar property/utility 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I. (JP’258 abstract, [0001]-[0003], [0014]-[0069]).
It is noted that the prior art does is silent regarding the instant formulaic expression R and its recited range of the instant claims. However, as the prior art discloses a composition wherein the claimed ranges of the various elements of the instant alloy overlap or lie inside the ranges of various elements of the alloy of the prior art (see compositional analysis above), the ranges of the formulaic expression of the instant claims would also overlap or lie inside the values of the prior art resulting from the instant formulaic expression. In addition, it is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art, In re Cooper and Foley 1943 C.D. 357, 553 O.G. 177; 57 USPQ 117, Saklatwalla v. Marburg, 620 O.G. 685, 1949 C.D. 77, and In re Pilling, 403 O.G. 513, 44 F(2) 878, 1931 C.D. 75.
Regarding the microstructure, the prior art teaches that its steel plate has “The microstructure of the steel sheet produced by the method for producing a thick steel sheet of the present invention is ferrite and bainite, or a mixed structure of ferrite, pearlite, and bainite. By having such a structure, the strength and toughness required for the steel sheet produced by the production method of the present invention are ensured. The average crystal grain size in the central part of the thickness of the steel sheet produced by the method for producing a thick steel sheet of the present invention is 5 to 20 μm.” and shows via examples in Table 4 of the various phases of Ferrite, Bainite and Pearlite thereby reading on the instant claimed limitations of the recited ranges of the microstructure phases and grain size of the ferrite. (JP’258 abstract, [0001]-[0003], [0014]-[0069], Table 4). Regarding the limitation of acicular ferrite, although the prior art does not define it as acicular ferrite, one skilled in the art recognizes that the ferrite would be acicular since the steel of the prior art has greater than 0.025 mass% of carbon.
The prior art teaches “a thick steel plate having a thickness of 60 to 100 mm, yield stress of 315 to 460 MPa” thereby reading on the recited ranges of the thickness and yield strength of the instant claims. (JP’258 abstract, [0001]-[0003], [0014]-[0069]).
It is noted that the prior art is silent regarding its alloy having the properties of a) tensile strength and the specific impact toughness results with the specific test as recited in the instant claims. 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). See MPEP § 2112.01 I. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Therefore, it is expected that the alloy of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (see compositional analysis above), b) the claimed and prior art products are identical or substantially identical in structure (see microstructural analysis above) and c) the claimed and prior art products are produced by identical or substantially identical processes {instant alloy: instant specification [0091]-[00126]; Prior art: [0014]-[0052]}. Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over KR 2015-0074706 A of Chon and its English machine translation (KR’706).
Regarding claims 1 and 3-6, KR 2015-0074706 A of Chon and its English machine translation (KR’706) teaches “a thick steel plate for a line pipe with excellent drop weight tearing test characteristics at low temperatures and yield ratio characteristics, and a manufacturing method thereof” with a composition wherein the claimed ranges of the constituent elements of the instant alloy of the instant claims overlap or lie inside the ranges of various elements of the alloy of the prior art as shown in the List 1 above. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, 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 composition over the prior art disclosure since the prior art teaches the similar property/utility 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I. (KR’706 abstract, [0001]-[0057], claims 1-5).
It is noted that the prior art does is silent regarding the instant formulaic expression R and its recited range of the instant claims. However, as the prior art discloses a composition wherein the claimed ranges of the various elements of the instant alloy overlap or lie inside the ranges of various elements of the alloy of the prior art (see compositional analysis above), the ranges of the formulaic expression of the instant claims would also overlap or lie inside the values of the prior art resulting from the instant formulaic expression. In addition, it is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art, In re Cooper and Foley 1943 C.D. 357, 553 O.G. 177; 57 USPQ 117, Saklatwalla v. Marburg, 620 O.G. 685, 1949 C.D. 77, and In re Pilling, 403 O.G. 513, 44 F(2) 878, 1931 C.D. 75.
Regarding the microstructure, the prior art teaches that its steel plate has “The microstructure of the thick steel plate comprises: 60-80 area% of acicular ferrite; 20-30 area% of bainite; less than 10 area% of equiaxed ferrite; and less than 5 area% of martensitic islands. The effective average grain size of the acicular ferrite and the equiaxed ferrite is less than or equal to 10 μm, the effective average grain size of the bainite is less than or equal to 20 μm, the effective average grain size of the martensitic islands is less than or equal to 3 μm, and the thickness of the thick steel plate is greater than or equal to 25 mm.” thereby reading on the instant claimed limitations of the recited ranges of the microstructure phases and grain size of the ferrite (KR’706 abstract, claims 1-5).
The prior art teaches “the steel plate has a thickness of 25 mm or more” “a yield strength of at least 65 ksi and a thickness of 25 mm or more” thereby reading on the recited ranges of the thickness and yield strength of the instant claims. Table 3 shows inventive examples having tensile strength of 609-625 MPa thereby also reading on the recited tensile strength (KR’706 abstract, [0078]-[0079], claims 1-5, Table 3).
It is noted that the prior art is silent regarding its alloy having the properties of a) the specific impact toughness results with the specific test as recited in the instant claims. 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). See MPEP § 2112.01 I. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Therefore, it is expected that the alloy of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (see compositional analysis above), b) the claimed and prior art products are identical or substantially identical in structure (see microstructural analysis above) and c) the claimed and prior art products are produced by identical or substantially identical processes {instant alloy: instant specification [0039]-[00119]; Prior art: [0025]-[0079]}. Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
Regarding claim 2, KR 2015-0074706 A if Chon and its English machine translation (KR’706) teaches “a thick steel plate for a line pipe with excellent drop weight tearing test characteristics at low temperatures and yield ratio characteristics, and a manufacturing method thereof” with a composition and a specific example Steel B in Table 1 that lies within the claimed ranges for all of elements except C.
With respect to C, instant claim requires “0.04 to 0.08” while the specific example of the prior art discloses “0.039”. MPEP § 2144.05 I provides the guidance that Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner,778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). It is also noted that the instant specification provides no distinguishable properties between 0.039 and 0.04 and therefore does not provide any criticality of the claimed narrow range. Therefore, the claimed range of the instant claim is obvious over that of the prior art since the claimed value is so close to the value provided by the prior art and there is no evidence on the record that the difference of 0.039 vs 0.04 for C would provide different distinguishable properties.
Steel B of the prior art meets the value required by the range of R of instant claim. Table 3 Example 6 teaches 42% acicular ferrite, 52% of bainite wherein the acicular ferrite has grain size of 12.6 microns thereby reading on the instant recited microstructure.
The prior art teaches “the steel plate has a thickness of 25 mm or more” thereby reading on the recited ranges of the thickness (KR’706 abstract, [0078]-[0079], claims 1-5, Table 3). 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
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 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18/265348 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application teaches a steel plate with substantially identical composition, microstructure and properties. Regarding the properties that the claims of copending are silent of, it is expected that the alloy of the reference application would have the recited features since the claims of the reference application teaches a steel plate with substantially identical composition, microstructure and properties and a substantially identical method of making it as the instant steel.
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). See MPEP § 2112.01 I. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. US 12,612,674 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent teaches a steel plate with substantially identical composition, microstructure and properties. Regarding the properties that the claims of patent are silent of, it is expected that the alloy of the patent would have the recited features since the claims of the reference application teaches a steel plate with substantially identical composition and microstructure.
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). See MPEP § 2112.01 I. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOPHY S. KOSHY whose telephone number is (571)272-0030. The examiner can normally be reached M-F 8:30 AM- 5:00 PM.
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/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
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