DETAILED ACTION
Response to Amendment
In view of the amendments to claim 11, the 35 U.S.C. 112 rejection directed to this claim is withdrawn.
In view of the cancellation of claim 2, the 35 U.S.C. 112 rejection directed to this claim is rendered moot.
In view of the amendments to independent claim 1, the prior art rejections under U.S. Patent Application Publication Number 2019/0219218 (Ide), U.S. Patent Number 6,296,953 (Linden), WO 2010/109484 (Venkatraman) are withdrawn.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3, and 4 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Number 11,079,045 (US ‘045).
In regards to independent claim 1 and dependent claim 3, US ‘045 is directed to an electric resistance welded clad steel pipe or tube. (1:7-9) The electric resistance welded clad steel pipe or tube includes at least a first layer and a second layer placed on one surface of the first layer. (9:43-46) The first layer is made of carbon steel or low-alloy steel as base metal, and the second layer is made of stainless steel or a nickel-containing alloy as cladding metal. (9:46-48) The composition of the second layer is as follows:
Claim 1
Claim 2
US ‘045
(13:62-14:7 and 15:20-28)
Carbon
Greater than zero and less than or equal to 0.08%
Greater than zero and less than or equal to 0.08%
0.15 or less
Silicon
Greater than zero and less than or equal to 0.75%
Greater than zero and less than or equal to 0.75%
5.0 or less
Manganese
Greater than zero and less than or equal to 2.0%
Greater than zero and less than or equal to 2.0%
2.0 or less
Nickel
10.00-14.00%
10.00-14.00%
6.0 or more
Chromium
16.00-18.00%
16.00-18.00%
15.0 or more
Molybdenum
2.00-3.00%
2.00-3.00%
20.0 or less
Nitrogen
0.02-0.20%
0.02-0.20%
0.5 or less
Iron
Remainder
Remainder
Cr, Mo, N Satisfy
Cr+3.3xMo+16xN≥25%
Cr+3.3xMo+16xN≥25%
The ranges of US ‘045 overlap the claimed ranges. Further, as to the inequation set forth in claims 1 and 2, US ‘045 sets forth compositional ranges that overlap the claimed ranges and include values that would meet the claimed inequation. Accordingly, a prima facie case of obviousness is established.
The first layer has a total area ratio of ferrite and bainite of 90% or more. (18:10-18) The process can include the formation of ferrite-pearlite. (26:3-7) Therefore, the microstructure of the first layer would satisfy the claimed microstructure. The cladding material can be an austenitic stainless steel. (12:38-40)
As to claim 4, the amount of P and S may be 0.1% or less and 0.1% or less, respectively. (14:1-2)
Response to Arguments
Applicant's arguments filed 24 June 2026 have been fully considered but they are not persuasive.
In view of the amendments to independent claim 1, the prior art rejections under U.S. Patent Application Publication Number 2019/0219218 (Ide), U.S. Patent Number 6,296,953 (Linden), WO 2010/109484 (Venkatraman) have been withdrawn. Therefore, the arguments directed to these references are rendered moot.
Applicant asserts that US ‘045 includes contents of the Ni, Mo, and N are smaller and the relationship of Cr, Mo, and N are not taught. Applicant asserts that US ‘045 does not disclose the relationship between Cr, Mo, and N. Applicant points to C1-C4 and C6 in Table 1 of US ‘045 as showing that the values do not meet the claimed relationship.
This argument is not found to be persuasive.
The use of patents as references is not limited to what patentees describe as their own inventions or to the problems with which they are concerned. MPEP 2123. They are part of the literature of the art, relevant for all they contain. Id. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Id. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. Id. The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed. Id.
As set forth in the previous Office and above, the ranges of the compositional components within US ‘045 overlap the claimed ranges. Such ranges include values that would satisfy the claimed relationship. For example, the ranges taught by US ‘045 overlap the ranges that would meet this relationship. Therefore, the ranges overlap and would satisfy the relationship within those ranges.
Further, the presence of preferred embodiments or disclosed examples does not constitute a teaching away from that broader disclosure. The reference does not criticize, discredit, or otherwise discourage selection of values within the claimed ranges or in the ranges within the overlapping portions that meet the claimed relationship. Therefore, the presence of these examples does not constitute a teaching away from that broader disclosure.
Applicant argues that US ‘045 does not disclosure the microstructure as set forth in the instant claims.
This argument is not found to be persuasive.
U.S. ‘045 sets forth that the first layer can include the formation of ferrite-pearlite. (26:3-7) Therefore, this would meet the limitation of the base layer having a microstructure of ferrite + pearlite. The claim does not preclude the presence of other microstructures. The base layer is comprised of that microstructure. If Applicant intends to preclude other microstructures from being present, Applicant is encouraged to amend the claim setting forth such intention.
U.S. ‘045 sets forth that the cladding material can be an austenitic stainless steel. (12:38-40) This meets the claimed limitation that the corrosion resistant layer has a microstructure of austenite.
It is noted in the response filed on 16 January 2026 that claims 12-19 be rejoined with the elected claims if the elected product claims are found allowable. Applicant is encouraged to review the method claims 12-19 to correct any dependency issues, indefiniteness issues (e.g. use of the term “preferably” within process steps), and other like issues that would need to be addressed if these claims were to be rejoined.
Allowable Subject Matter
Claims 5-9 and 11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
A search of the prior art failed to turn up each and every claimed limitation in a single reference or an appropriate combination of multiple references for the combination of the base layer having the composition as set forth within these dependent claims along with the microstructure and other limitations of claim 1. Additionally, a search did not turn up the thickness values and properties as set forth in the instant claims with the structure as set forth within independent claim 1.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Daniel Schleis whose telephone number is (571)270-5636. The examiner can normally be reached 10 AM to 4 PM Monday through Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at (571) 272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Daniel J. Schleis
Primary Examiner
Art Unit 1784
/Daniel J. Schleis/Primary Examiner, Art Unit 1784
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