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
Applicant’s election without traverse of Group I, claims 1-8 and 11-12, in the reply filed on 8/12/2026 is acknowledged. Examiner agrees with Applicant’s argument that claims 11 and 12 fall within elected Group I.
Claims 9-10 and 13-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8/12/2026.
Specification
The abstract of the disclosure is objected to because it exceeds 200 words and thus, substantially exceeds the preferable length of 50 to 150 words. MPEP 608.01(b). 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 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.
Claim 5-7 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 5 recites the broad recitation “a residual stress of less than or equal to 50 MPa,” and the claim also recites “preferably less than or equal to 40 MPa” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
With respect to claims 6 and 7, each claim recites a ferrite content in terms of “t,” however, the claims do not define the term and do not depend on, for example, claim 4 that defines the term. Therefore, the limitations of claims 6 and 7 are indefinite as it is unclear what content of ferrite is required.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 and 11-12 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 2 recites a steel pipe composition having identical compositional ranges to that of claim 1, from which it depends. Therefore, Claim 2 fails to further limit the subject matter of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. Claims 11 and 12 are rejected based on their dependency.
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.
Claim(s) 1-3, 8, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Okatsu et al. (US 2020/0325553).
With respect to Claim 1, Okatsu teaches a steel pipe for oil industry applications, the steel pipe having a composition, in weight%, as follows (para. 2, 21-25, 34-68):
Claim 1
Okatsu
C
0.16-0.3
0.2-0.5
Si
0.15-0.5
0.01-0.35
Mn
1.2-1.8
0.45-1.5
Nb
0.02-0.04
0.005-0.035*
Mo
0.1-0.2
0.05-0.35
Fe
90% or more Fe and inevitable impurities
Balance Fe and inevitable impurities
Ti
Optional, 0.015-0.03
0.003-0.10*
B
Optional, 0.0015-0.0035
0.001-0.003
Other
-
Cr: 0.35-1.1
Al: 0.01-0.08
Cu: 0.02-0.09
Ca: 0.001-0.003
V: 0.005-0.02*
W: 0.01-0.2*
Ta: 0.01-0.3*
Zr: 0.003-0.10*
*optional element
Compositional ranges including zero are interpreted as optional elements. Thus, Okatsu teaches a steel pipe with compositional ranges overlapping each of the instantly claimed ranges. It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Furthermore, as Okatsu teaches a steel pipe for oil industry applications, it is deemed capable of the recited intended use of “for oil cylinder” in the preamble of claim 1. Note, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Here, the only claimed structure is the composition. As the reference teaches the composition, it meets the instant limitation.
With respect to Claim 2, the claim is drawn to the same composition ranges as claim 1. Therefore, Okatsu meets the instantly claimed limitations. (see rejection of claim 1 above).
With respect to Claim 3, 8, and 11, the reference teaches wherein the steel pipe comprises Ti and B in overlapping ranges. (see rejection of claim 1 above). Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05. Additionally, Okatsu teaches examples wherein the steel pipe has a wall thickness greater than 20 mm, meeting the claimed ranges of claims 3, 8, and 11, respectively. (Table 2-1).
Claim(s) 4-7, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Okatsu et al. (US 2020/0325553) as applied to claim 1 (with respect to claim 4) and claims 2 (with respect to claim 12), in view of Tian (CN 107747035)(machine translation provided).
With respect to Claims 4, 6-7 and 12, Okatsu is silent as to the microstructure of the steel pipe.
Tian teaches wherein the steel pipe has a microstructure comprising tempered sorbite, ferrite and dispersed carbide. (pgs. 1 and 3-4 of translation).
It would have been obvious to one of ordinary skill in the art to modify the steel pipe of Okatsu to exhibit the microstructure disclosed by Tian, comprising sorbite and ferrite, in order to obtain a pipe having beneficial microstructure and resulting properties for use in oil pipe applications.
Further, Tian teaches a method of making comprising piercing a blank, hot rolling to form a pipe, tension reduction step, cooling, cold working, and tempering at a temperature of 500-650°C. (pgs. 3-4 of translation). The instant application discloses a method of making comprising casting a billet, perforating the billet and rolling to form a pipe, tension reduction step, cooling, straightening, and tempering at a temperature below 550°C (see para. 32-43 of PG Pub.). Thus, Tian teaches a steel pipe having substantially the same composition, a microstructure comprising tempered sorbite and ferrite, and made by a substantially similar method to that instantly disclosed. Accordingly, the steel pipe of Okatsu, modified to obtain the microstructure by utilizing the method of making of Tian, would necessarily be expected to result in the microstructural limitations recited in claims 4, 6-7, and 12. See MPEP 2112.01.
"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, 195 USPQ 430, 433 (CCPA 1977). Thus, the burden is shifted to the applicant to prove that the product of the prior art does not necessarily or inherently possess the characteristics attributed to the claimed product. See In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (“When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not."); MPEP 2112.01. Therefore, the prima facie case can only be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product.
With respect to Claim 5, Okatsu teaches wherein the steel exhibits a yield strength of 758-861 MPa (para. 2, 81); however, the reference is silent as to tensile strength, yield ratio, and residual stress.
Tian teaches wherein the steel pipe has a yield strength of 670 MPa or more, tensile strength of 750 MPa or more. (see pg. 5 of translation). Thus, Tian teaches yield strength, tensile strength, and yield-to-tensile strength ratios (e.g. 670/750=89.3 within the claimed range) overlapping the instantly claimed ranges. Overlapping ranges, in particular, where the ranges of a claim overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05. Finally, Tian teaches selecting processing parameters to eliminate residual stress (see pg. 4 of translation) and therefore, is interpreted to teach a residual stress of zero or substantially zero, falling within the claimed range.
It would have been obvious to one of ordinary skill to modify the steel pipe of Okatsu, to select a tensile strength exceeding 730 MPa, yield ratio below 0.92, and low residual stress, as taught by Tian, in order to obtain a high strength steel pipe useful for oil pipe applications. Furthermore, as the combined steel pipe of Okatsu in view of Tian comprises substantially the same composition and properties, including yield strength and tensile strength, it would expected to necessarily exhibit the same properties, including the claimed residual stress. MPEP 2112.01.
Claim(s) 1-2, 4-7, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Tian (CN 107747035)(machine translation provided).
With respect to Claim 1, Tian teaches a steel pipe for oil pipe applications, the steel pipe having a composition, in weight%, as follows (pgs. 1-4 of translation):
Claim 1
Tian
C
0.16-0.3
0.11-0.17
Si
0.15-0.5
0.1-0.5
Mn
1.2-1.8
1.2-1.7
Nb
0.02-0.04
0.01-0.06
Mo
0.1-0.2
0.05-0.2
Fe
90% or more Fe and inevitable impurities
Balance with unavoidable impurities
Ti
Optional, 0.015-0.03
≤ 0.03
B
Optional, 0.0015-0.0035
0.0005-0.003
Other
-
Al: 0.01-0.05
V: 0.02-0.09
Compositional ranges including zero are interpreted as optional elements. Thus, Tian teaches a steel pipe with compositional ranges overlapping each of the instantly claimed ranges. It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Furthermore, as Tian teaches a steel pipe for oil pipe applications, it is deemed capable of the recited intended use of “for oil cylinder” in the preamble of claim 1. Note, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Here, the only claimed structure is the composition. As the reference teaches the composition, it meets the instant limitation.
With respect to Claim 2, the claim is drawn to the same composition ranges as claim 1. Therefore, Tian meets the instantly claimed limitations. (see rejection of claim 1 above).
With respect to Claims 4, 6-7, and 12 Tian teaches wherein the steel pipe has a microstructure comprising tempered sorbite, ferrite and dispersed carbide. (pgs. 1 and 3-4 of translation). Furthermore, Tian teaches a method of making comprising piercing a blank, hot rolling to form a pipe, tension reduction step, cooling, cold working, and tempering at a temperature of 500-650°C. (pgs. 3-4 of translation). The instant application discloses a method of making comprising casting a billet, perforating the billet and rolling to form a pipe, tension reduction step, cooling, straightening, and tempering at a temperature below 550°C (see para. 32-43 of PG Pub.). Thus, Tian teaches a steel pipe having substantially the same composition, a microstructure comprising tempered sorbite and ferrite, and made by a substantially similar method to that instantly disclosed. Accordingly, the steel pipe of Tian would necessarily be expected to result in the microstructural limitations recited in claims 4 and 12. See MPEP 2112.01.
"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, 195 USPQ 430, 433 (CCPA 1977). Thus, the burden is shifted to the applicant to prove that the product of the prior art does not necessarily or inherently possess the characteristics attributed to the claimed product. See In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (“When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not."); MPEP 2112.01. Therefore, the prima facie case can only be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product.
With respect to Claim 5, Tian teaches wherein the steel pipe has a yield strength of 670 MPa or more, tensile strength of 750 MPa or more. (pg. 5 of translation). Thus, Tian teaches yield strength, tensile strength, and yield-to-tensile strength ratios (e.g. 670/750=89.3 within the claimed range) overlapping the instantly claimed ranges. Overlapping ranges, in particular, where the ranges of a claim overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05. Finally, Tian teaches selecting processing parameters to eliminate residual stress (see pg. 4 of translation) and therefore, is interpreted to teach a residual stress of zero or substantially zero, falling within the claimed range.
In the alternative, as the reference teaches a steel pipe having substantially the same composition and properties, including yield strength and tensile strength, it would expected to necessarily exhibit the same properties, including the claimed residual stress. See MPEP 2112.01.
Claim(s) 3, 8, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Tian (CN 107747035) as applied to Claim 1 (with respect to Claims 3 and 8) and claim 2 (with respect to claim 11) in view of Okatsu et al. (US 2020/0325553).
With respect to Claims 3, 8, and 11, Tian teaches wherein the steel pipe comprises Ti and B in overlapping ranges. (see rejection of claim 1 above). Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Tian does not specifically teach a pipe with a wall thickness of 20 mm or more (claims 3 and 11) or 9 mm or more (claim 8).
Okatsu teaches a steel pipe for oil applications, the steel pipe having compositional ranges substantially overlapping to those of Tian and the instant claims and further teaches examples wherein the steel pipe has a wall thickness greater than 20 mm, meeting the claimed range. (Table 2-1). Thus, Okatsu teaches that a steel pipe, comprising a substantially similar composition to that of Tian, may be beneficially used for applications comprising a wall thickness greater than 20 mm.
It would have been obvious to one of ordinary skill in the art to modify the steel pipe of Tian to comprise a wall thickness of more than 20 mm, as taught by Okatsu, in order to form a steel pipe for oil applications requiring such wall thickness.
Furthermore, a mere change in form, such as modifying the wall thickness of a pipe, would have been prima facie obvious to one of ordinary skill in the art. MPEP 2144.05; Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.").
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 1-3, 8, and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 11505842 (corresponding to Okatsu publication above). Although the claims at issue are not identical, they are not patentably distinct from each other because: the instant and related claims are both drawn to steel pipes having overlapping compositional ranges. It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05. With respect to claims 3, 8, and 11, the related claims recite overlapping Ti and B contents but are silent as to wall thickness. However, a mere change in form, such as modifying the wall thickness of a pipe, would have been prima facie obvious to one of ordinary skill in the art. MPEP 2144.05.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2016/0273067, drawn to a steel bar comprising overlapping compositional ranges.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN A HEVEY whose telephone number is (571)270-0361. The examiner can normally be reached Monday-Friday 9:00-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN A HEVEY/Primary Examiner, Art Unit 1735
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