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 .
Status of Claims
Claims 1-4 are pending and are presented for this examination.
Priority
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 06/27/2024 and is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 112
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.
Claims 2 and 4 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. Instant claim 2 required “containing one or more” is open inclusive transitional term according to MPEP 2111.03 I. That is, term “containing” is interpreted as “comprising”, which does not exclude additional unrecited element. In contrast, independent claim 1 requires “consisting of” which is a close transitional term. Hence, it excludes additional unrecited element according MPEP 2111.03 II.
Hence, claim 2 fails to further limit the subject matter of the claim 1 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.
Claim Rejections - 35 USC § 103
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) 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Yuga (US20190226039).
As for claims 1-4, Yuga discloses a high strength seamless steel pipe for oil country tubular goods, which reads on claims 3-4 required oil well steel pipe.
The steel pipe has 90% or more tempered martensite with oxide inclusion having a particle diameter of 4 microns or more is 35 or less per 100 mm2 ([0065]).
The steel pipe consists of overlapping elemental compositions as required by instant claims 1-2 as illustrated in Table 1 below.
Table 1
Element
Applicant
(weight %)
Yuga et al.
(weight %)
Overlap
(weight %)
C
0.15-0.45
0.2-0.5
0.2-0.45
Si
0.05-1
0.05-0.4
0.05-0.4
Mn
0.05-0.3
0.3-0.9
0.3
P
<=0.03
<=0.015
<=0.015
S
<=0.005
<=0.005
<=0.005
Al
0.005-0.1
0.03-0.1
0.03-0.1
Cr
0.3-1.1
0.6-0.7
0.6-0.7
Mo
0.4-2
1-3
1-2
Ti
0.003-0.02
<=0.003
0.003
Nb
0.002-0.1
0.001-0.02
0.002-0.02
B
0.0005-0.004
0.0005-0.004
0.0005-0.004
N
<=0.01
0
0
O
<=0.004
<=0.003
<=0.003
V
0-0.3
0.02-0.3
0.02-0.3
Cu
0-0.5
<=1
0-0.5
Ni
0-0.5
<=1
0-0.5
W
0-1.5
<=3
0-1.5
Ca
0-0.01
0.0005-0.005
0.0005-0.005
Mg
0-0.01
<=0.0008
<=0.0008
Zr
0-0.01
0
0
REM
0-0.01
0
0
YS (MPa)
>=862
>=862
>=862
V (Claim 2)
0.01-0.3
0.02-0.3
0.02-0.3
Instant claim 1 required limitations after “in a case” is not given patentable distinction because term “in a case” means “if something happens”. In the instant case, Yoga does not disclose YS more than 931 MPa or more. Hence, a number density of the Si oxide is 5/200 mm2 or less is not given patentable distinction over prior art.
With respect o number density of Si oxide, it is an inherent property limitation as a combination of steel material composition, microstructure and process of making.
Since the steel material of Yuga has compositions, microstructure that meet the instant application compositions and microstructure and is made from a similar process steps as required by instant application, it is therefore reasonable to believe that the claimed property limitations would have naturally flowed following the suggestion of Yuga. See MPEP 2112.01 I.
When the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the prior art products necessarily possess the characteristics of the claimed product. 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, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "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." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNY R WU whose telephone number is (571)270-5515. The examiner can normally be reached on 8:30 AM-5:00 PM.
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, Keith Hendricks can be reached on (571)272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JENNY R WU/Primary Examiner, Art Unit 1733
Prosecution Insights