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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted between 07 June 2024 and 03 March 2026 were considered by the examiner. The submission is in compliance with the provisions of 37 CFR 1.97.
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.
Claims 1 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over US2015078955 of Bouzekri in view of CN111041385 (machine translation) of Li.
Regarding claim 1, Bouzekri discloses a method of producing austenitic iron/carbon/manganese steel sheets having a high strength and excellent toughness and being suitable for cold forming, and sheets thus produced in the same field of endeavor as the claimed invention. Bouzekri teaches an alloy with 17%≦Mn≦24%, 0.5%≦C≦0.7%, Cr≦1%, Para[0009]. These ranges overlap with the claimed ranges, and one of ordinary skill in the art would be able to select values for C and Mn, as taught by Bouzekri, that satisfy the two equations, 24*[C]+[Mn]≥25 and 33.5*[C]-[Mn]≤18, from claim 1. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, see MPEP 2144.05. Bouzekri also discloses austenite, Para[0002]. Bouzekri does not specifically teach the numerical limitation related to lateral expansion in the weld heat affected zone, however, Bouzekri teaches an alloy that meets the compositional limitations of the claimed invention. "Products of identical chemical composition cannot have mutually exclusive properties”, see MPEP 2112.01. Bouzekri also teaches hot rolling in the claimed temperature range, Para[0069]. This meets the limitations of the claimed heat treatment. 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, see MPEP 2112.01.
Additionally, Li teaches a SA517GrF steel plate for spent fuel storage tank and production method thereof in the same field of endeavor as the claimed invention. Li discloses lateral expansion ≥1.0mm, Para[0011]. This overlaps with the claimed range of more than 0.32mm. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, see MPEP 2144.05. Li teaches that the technical problem to be solved by the present invention is to provide a SA517GrF steel plate for spent fuel storage tank and a production method thereof, Para[0007]. Therefore, it would be obvious to one of ordinary skill in the art to produce the austenitic steel disclosed by Bouzekri resulting in the lateral expansion in the weld heat affected zone taught by Li in order to provide a spent fuel storage tank. Thus, Bouzekri in view of Li covers all limitations of claim 1.
Claim 6 further limits claim 1 by claiming a dislocation density of the steel is 2.3*1015 to 3.3*1015/mm2.
Bouzekri does not specifically teach the numerical limitation related to dislocation density of the steel, however, Bouzekri teaches an alloy that meets the compositional limitations of the claimed invention. "Products of identical chemical composition cannot have mutually exclusive properties”, see MPEP 2112.01. Bouzekri also teaches hot rolling in the claimed temperature range, Para[0069]. This meets the limitations of the claimed heat treatment. 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, see MPEP 2112.01. Thus, Bouzekri in view of Li covers all limitations of claim 6.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over US2015078955 of Bouzekri in view of CN111041385 (machine translation) of Li, as cited above, further in view of CN107620010 (machine translation) of Mo.
Claim 2 further limits claim 1 by claiming a room temperature yield strength of the steel is 245 MPa or more and less than 400 MPa.
Bouzekri does not specifically teach the numerical limitation related to room temperature yield strength, however, Bouzekri teaches an alloy that meets the compositional limitations of the claimed invention. "Products of identical chemical composition cannot have mutually exclusive properties”, see MPEP 2112.01. Bouzekri also teaches hot rolling in the claimed temperature range, Para[0069]. This meets the limitations of the claimed heat treatment. 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, see MPEP 2112.01.
Additionally, Mo discloses a low-yield-ratio high-toughness high-manganese steel plate and production method thereof in the same field of endeavor as the claimed invention. Mo teaches overlapping ranges for Mn and C and a yield strength of ≥300 MPa, Para[0018]. This overlaps with the claimed range of 245 to 400 MPa. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, see MPEP 2144.05. Mo teaches that the technical problem to be solved by the present invention is to provide a low-yield-ratio high-toughness high-manganese steel plate; at the same time, the present invention also provides a method for producing a low-yield-ratio high-toughness high-manganese steel plate, Para[0007]. Therefore, it would be obvious to one of ordinary skill in the art to produce the austenitic steel disclosed by Bouzekri resulting in the room temperature yield strength taught by Mo in order to provide low-yield-ratio high-toughness high-manganese steel plate. Thus, Bouzekri in view of Li and Mo covers all limitations of claim 2.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over US2015078955 of Bouzekri in view of CN111041385 (machine translation) of Li, as cited above, further in view of KR20130075565 (machine translation) of Lee.
Claim 3 further limits claim 1 by claiming that the weld heat- affected zone includes, as a microstructure, 95 area% or more (including 100 area%) of austenite and 5 area% or less (including 0 area%) of grain boundary carbide.
Bouzekri does not specifically teach the numerical limitation related to the area percentage of the microstructure, however, Bouzekri teaches an alloy that meets the compositional limitations of the claimed invention. "Products of identical chemical composition cannot have mutually exclusive properties”, see MPEP 2112.01. Bouzekri also teaches hot rolling in the claimed temperature range, Para[0069]. This meets the limitations of the claimed heat treatment. 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, see MPEP 2112.01.
Additionally, Lee teaches austenitic steel with excellent cryogenic toughness in heat affected zone in the same field of endeavor as the claimed invention. Lee teaches that the austenite in the weld heat affected zone of the steel is 95% or more in area fraction. That is, the steel material of the present invention is a concept including a steel material which is welded and has a weld heat affected zone, and the ratio of austenite in the internal structure is preferably 95% or more as an area fraction. The ratio of the above-described austenite structure is in a range required to have a toughness of 41 J or more at -196 °C, Para[0039]. Lee also teaches that it is preferable that the ratio of the carbide present in the austenite grain boundary in the weld heat affected zone is not more than 5% by area fraction. That is, it is preferable that the carbide is not formed as a harmful component as possible which reduces the toughness of the weld heat affected zone, Para[0040]. Therefore, it would be obvious to one of ordinary skill in the art to produce the austenitic steel disclosed by Bouzekri resulting in the microstructure of the weld heat affected zone of Lee in order to achieve adequate toughness. Thus, Bouzekri in view of Li and Lee covers all limitations of claim 3.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over US2015078955 of Bouzekri in view of CN111041385 (machine translation) of Li, as cited above, further in view of EP3617337 of Arao.
Claim 4 further limits claim 1 by claiming an average grain size of the weld heat-affected zone is 5 to 200µm.
Bouzekri teaches a mean grain size of 9.5 µm, Para[0059]. This lies within the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, see MPEP 2144.05.
Additionally, Arao discloses a high-Mn steel and production method therefor in the same field of endeavor as the claimed invention. Arao teaches that the grain size of the austenite is an equivalent circular diameter of 50 µm or more, Para[0028]. This overlaps with the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, see MPEP 2144.05. Arao discloses that according to the present disclosure, it is possible to provide high-Mn steel excellent in low-temperature toughness and ductility, Para[0011]. Therefore, it would be obvious to one of ordinary skill in the art to produce the steel of Bouzekri and Arao achieving a grain size in the claimed range in order to provide a high-Mn steel with excellent low temperature toughness and ductility. Thus, Bouzekri in view of Li and Arao covers all limitations of claim 4.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over US2015078955 of Bouzekri in view of CN111041385 (machine translation) of Li, as cited above, further in view of WO2018105510 (machine translation) of Ueda.
Claim 5 further limits claim 1 by claiming an average grain aspect ratio of the weld heat-affected zone is 1.0 to 5.0.
Bouzekri does not specifically teach the numerical limitation related to the grain aspect ratio of the weld heat-affected zone, however, Bouzekri teaches an alloy that meets the compositional limitations of the claimed invention. "Products of identical chemical composition cannot have mutually exclusive properties”, see MPEP 2112.01. Bouzekri also teaches hot rolling in the claimed temperature range, Para[0069]. This meets the limitations of the claimed heat treatment. 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, see MPEP 2112.01.
Additionally, Ueda teaches a high Mn steel sheet and method for producing the same in the same field of endeavor as the claimed invention. Ueda discloses a grain aspect ratio of 3 or more and that the deformation zone within the crystal grain also effectively acts as a trapping site for diffusible hydrogen and effectively acts on stress corrosion cracking. This makes it possible to remarkably improve the suppression of stress corrosion cracking, Para[0036]. This overlaps with the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, see MPEP 2144.05. Therefore, it would be obvious to one of ordinary skill in the art to produce the steel of Bouzekri with the grain aspect ratio of Ueda in order to improve the suppression of stress corrosion cracking. Thus, Bouzekri in view of Li and Ueda covers all limitations of claim 5.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over US2015078955 of Bouzekri.
Regarding claim 7, Bouzekri discloses a method of producing austenitic iron/carbon/manganese steel sheets having a high strength and excellent thoughness and being suitable for cold forming, and sheets thus produced in the same field of endeavor as the claimed invention. Bouzekri teaches an alloy with 17%≦Mn≦24%, 0.5%≦C≦0.7%, Cr≦1%, Para[0009]. These ranges overlap with the claimed ranges, and one of ordinary skill in the art would be able to select values for C and Mn, as taught by Bouzekri, that satisfy the two equations, 24*[C]+[Mn]≥25 and 33.5*[C]-[Mn]≤18, from claim 7. Bouzekri also discloses austenite, Para[0002], and hot rolling at 850 °C, Para[0069]. This lies within the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, see MPEP 2144.05. Thus, Bouzekri teaches all limitations of claim 7.
Double Patenting
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.
Claims 1-6 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-6 of copending Application No. 18707417 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claims 1 and 3-6 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1 and 3-6 of copending Application No. 18717029 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB BENJAMIN STILES whose telephone number is (571)272-0598. The examiner can normally be reached Monday-Friday 7:30am - 5:00pm.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/JACOB BENJAMIN STILES/Examiner, Art Unit 1733
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