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 .
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.
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 1-20 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 1 recites the broad recitation Cu: 0.01-0.3%, and the claim also recites 0.12-0.3% and 0.12-.22% 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. Claim 2 includes the same nested range claim structure. The remaining claims depend from claim 1 and are rejected for at least the same reason.
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 8 recites the broad recitation 0.5-50%, and the claim also recites 2.5-28.6% 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.
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 12 recites the broad recitation 0.5-50% total thickness percentage, and the claim also recites 2.5-20% total thickness percentage 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.
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 16 recites the broad recitation Cu: 0.12-0.3%, and the claim also recites Cu: 0.12-0.22% 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.
Claim 2 is 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. The limitations set forth in claim 2 are recited in claim 1 and thus claim 2 does not further limit the claimed material. 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
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.
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.
Claims 1, 3 and 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over EP 3862456 A1 to Nippon Steel Stainless Steel Corp (Nippon Steel).
With regard to claim 1, Nippon Steel discloses a tube (not disclosed), wherein the tube has a corrosion-resistant layer and a base layer in a thickness direction (a sheet of carbon steel clad with an anticorrosion coating), the corrosion-resistant layer is located at least on an inner wall of the tube, and the corrosion-resistant layer, in addition to Fe and inevitable impurities (paragraph 0073 and table 1, “Balance Fe and unavoidable impurities”), further comprises the following chemical elements in wt%:0<C<0.08% (Table 1, 0.022); Si: 0.3-0.6% (0.51); Mn: 0.5-2.0% (1.44); Ni: 11.00-13.00% (11.11); Cr: 16.50-18.00% (16.8); Mo: 2.00-3.00% (2.83); N: 0.02-0.15% (0.045); and Cu: 0.01-0.3%, preferably Cu: 0.12-0.3% (0.27), more preferably Cu: 0.12-0.22%; wherein Cr, Mo, N and Cu satisfy the following inequation: Cr+3.3 xMo+16xN+10xCu>26.0% (the values set forth above satisfy the inequation).
Nippon Steel fails to disclose a tube made from the material of the metal plate. It would have been obvious to one having ordinary skill in the art at the time of filing to form the plate of Nippon Steel into a tubular member having the coated surface on the interior of the pipe in order to provide a corrosion protected pipe for conveying fluids.
With regard to claim 3, Nippon Steel discloses the tube according to claim 1 as set forth above, and further discloses wherein the inevitable impurities in the corrosion-resistant layer include: S<0.030% (table 1, S=0.0006) and P<0.045% (table 1, P=0.026).
With regard to claims 8-9, Nippon Steel discloses the tube according to claim 1 as set forth above, and further discloses a thickness accounting for 2.5-20% of the total thickness of the tube (table 1, A).
With regard to claim 10, Nippon Steel discloses the tube according to claim 1 as set forth above, and further discloses wherein the base layer has a microstructure of ferrite+pearlite, or ferrite+pearlite+bainite; and wherein the corrosion resistant layer has a microstructure of austentite (table 1, A, table 3).
With regard to claim 11, Nippon Steel discloses the tube according to claim 1 as set forth above but fails to disclose a yield strength of greater than or equal to 426 MPa, a tensile strength of greater than or equal to 580 MPa, an elongation of greater than or equal to 31%, and an average corrosion rate of less than or equal to 0.05 mm/year in an environment where the temperature is less than or equal to 40 degrees Celsius and the aluminum sulfate concentration is less than or equal to 30 wt.%. As the pipe of Nippon Steel has the same chemical composition and similar thickness and method making, it would have been obvious to one having ordinary skill to provide a pipe have the claimed performance characteristics in order to provide a type that is suitable for use in desired locations.
Claims 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over EP 3862456 A1 to Nippon Steel Stainless Steel Corp (Nippon Steel) in view of EP 3511082 B1 to JFE Steel Corp (JFE)
With regard to claims 4-5 and 7, Nippon Steel discloses the tube according to claim 1 as set forth above, and further discloses wherein the base layer comprises the following chemical elements in wt%:C: 0.01-0.20% (Table 2, “D”, 0.094); Si: 0.10-0.50% (0.35); Mn: 0.50-2.00% (1.41); Al: 0.02-0.04% (0.033); Ti: 0.005-0.014% (0.011); Nb: 0.005-0.020% (not disclosed); and N<0.006% (0.0045); the balance being Fe and inevitable impurities, and : S<0.010% (table 2) and P<0.015% (table 2).
Nippon Steel fails to disclose Nb: 0.005-0.02% as part of the material of base metal.
JFE discloses a clad welded pipe having more than 0.01% and less than 0.2% (JFE, paragraph 0130). It would have been obvious to one having ordinary skill in the art at the time of filing to provide the base steel of Nippon with Nb in the range taught by JFE, in order to improve the strength of the steel by forming carbide or dissolving in the steel.
With regard to claim 6, Nippon Steel in view of JFE discloses the tube according to claim 4 as set forth above, but fails to disclose the addition of Boron 0<B<0.0003%. It would have been obvious to one having ordinary skill in the art at the time of filing to provide the base layer with trace amounts of Boron less than 0.0003% by weight, in order to benefit from the hardening provided by Boron as it migrates to grain boundaries and inhibits the transformation of austenite into softer ferrite or pearlite and providing a harder steel.
Allowable Subject Matter
Claims 12-20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The prior art of record fails to teach or suggest the combination of the specific apparatus of claim 1 and the method steps, specifically the heating and rolling and the coiling after water cooling steps, together in combination with the other elements.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. USPNs 2019/0219218 and 6296953 disclose clad steel pipes having similar configurations.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID R DEAL whose telephone number is (469)295-9216. The examiner can normally be reached M-F generally 8-4 pm CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisors can be reached at: Craig M Schneider (571) 272-3607 and Ken Rinehart (571) 272-4881. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID R DEAL/ Primary Examiner
Art Unit 3753
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