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 .
Status of the Claims
Claims 1-8 are pending wherein claims 1-3 and 7 are currently under examination and claims 4-6 and 8 are withdrawn from further consideration pursuant 37 CFR 1.142(b) as being drawn to a non-elected method of producing steel plate. Applicant’s election of claims 1-3 and 7 was made without traverse in the Response filed on September 24, 2026.
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.
Claims 1 are rejected under 35 U.S.C. 103 as being unpatentable over Sano et al. (JP 2020-193374).
In regard to claim 1, Sano et al. (JP ‘374) discloses welded steel pipe that would be formed from steel plate comprising elemental contents relative to that of the instant invention as set forth below (pages 6-7).
Element
Instant Claim
(mass percent)
Sano et al. (JP ‘374)
(mass percent)
Overlap
C
0.01 – 0.20
0.03 – 0.06
0.03 – 0.06
Si
0.01 – 0.50
0 – 0.50
0.01 – 0.50
Mn
0.50 – 2.50
0.8 – 1.6
0.8 – 1.6
Al
0.01 – 0.06
0 – 0.08
0.01 – 0.06
N
0.001 – 0.01
0 – 0.008
0.001 – 0.008
P
0 – 0.02
0 – 0.008
0 – 0.008
S
0 – 0.01
0 – 0.0015
0 – 0.0015
O
0 – 0.01
0 – 0.003
0 – 0.003
Fe
Balance
Balance
Balance
The Examiner notes that the amounts of carbon, silicon, manganese, aluminum, nitrogen, phosphorus, sulfur and oxygen disclosed by Sano et al. (JP ‘374) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to select the claimed amounts of carbon, silicon, manganese, aluminum, nitrogen, phosphorus, sulfur and oxygen from the amounts disclosed by Sano et al. (JP ‘374) because Sano et al. (JP ‘374) discloses the same utility throughout the disclosed ranges.
With respect to the recitation “at a 0.5 mm depth position from the surface of the steel plate, average hardness is 230HV0.1 or less and hardness variation is 30HV0.1 or less, a maximum value of hardness in the thickness direction is at a position 1.0 mm or more and ¼ or less of the thickness of the steel plate from the surface of the steel plate, and hardness variation in the thickness direction is 70HV1 or less, and the steel plate has a metallic microstructure where, at a 0.5 mm depth position from the surface of the steel plate, a volume fraction of bainite microstructure is 90% or more” in claim 1, Sano et al. (JP ‘374) discloses controlling the hardness to 250 HV or less in the central segregation [0014]; there would be a Vickers hardness HV10 of the area outside the central segregation (240 to 260 HV) [0018]; and the microstructure of the steel in the thickness direction is 95% or more bainite with 1% or less martensite from a depth of 2 mm from the inner surface to 2 mm from the outer surface and as such the claimed hardness variation would be met due to the composition/microstructure being substantially uniform (pages 4-5).
In regard to claim 2, Sano et al. (JP ‘374) discloses wherein the molybdenum content would be 0.05 to 0.50 mass percent molybdenum (page 7 of Translation).
In regard to claims 3 and 7, Sano et al. (JP ‘374) discloses wherein the calcium content would be between 0.001 and 0.004 mass percent (page 7 of Translation).
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 and 7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of copending Application No. 18/836,351 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
In regard to claims 1-3 and 7, claims 1-3 of copending Application No. 18/836,351 require substantially similar amounts of carbon, silicon, manganese, aluminum, nitrogen, phosphorus, sulfur, oxygen, copper, chromium, antimony, tin, nickel, molybdenum, tungsten, vanadium, titanium, cobalt, niobium, boron, calcium, magnesium and rare earth metals. Even though the lower limit of bainite is 20% in Application No. 18/836,351 relative to 90% bainite in the instant application, the microstructures would overlap in scope.
Claims 1-3 and 7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of copending Application No. 18/836,003 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
In regard to claims 1-3 and 7, claims 1-3 and 7 of copending Application No. 18/836,003 require substantially similar amounts of carbon, silicon, manganese, aluminum, nitrogen, phosphorus, sulfur, oxygen, copper, chromium, antimony, tin, nickel, molybdenum, tungsten, vanadium, titanium, cobalt, niobium, boron, calcium, magnesium and rare earth metals. Even though the lower limit of bainite is 20% in Application No. 18/836,003 relative to 90% bainite in the instant application, the microstructures would overlap in scope.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Edmonds, D. V., and R. C. Cochrane. "Structure-property relationships in bainitic steels." Metallurgical Transactions A 21.6 (1990): 1527-1540.
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/JESSEE R ROE/Primary Examiner, Art Unit 1759
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