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 statement(s) (IDS) submitted on 8/28/24 and 8/21/25 have been considered by the examiner.
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 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.
Language from the reference(s) is shown in quotations. Limitations from the claims are shown in quotations within parentheses. Examiner explanations are shown in italics.
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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Kamitani et al. (WO2020166668A1, as translated by US 20220098712 A1).
Regarding claims 1-4, Kamitani teaches “a steel material, and more particularly to a steel material suitable for use in a sour environment” (which reads upon “a steel material”, as recited in the instant claim; paragraph [0001]). Kamitani teaches that “it is preferable that the steel material according to the present invention can be used as a steel material utilized in an oil well environment, and that it is more preferable that the steel material according to the present invention can be used as a steel material, such as a casing pipe, a tubing pipe, or a line pipe” (which reads upon instant claims 3-4; paragraph [0213]). Kamitani teaches “B: 0.0005 to 0.0040%” (which reads upon instant claim 2; paragraph [0010]). Kamitani teaches that “a steel material according to the present disclosure has a chemical composition consisting of, in mass %” (paragraph [0010]).
Element
Claims 1 and 2
Kamitani [0010]
C
0.10 to 0.45%
0.20 to 0.45%
Si
1.00% or less
0.05 to 1.00%
Mn
0.01 to 1.00%
0.01 to 1.00%
P
0.050% or less
0.030% or less
S
0.0050% or less
0.0050% or less
Al
0.001 to 0.100%
0.005 to 0.100%
Cr
0.1 to 2.0%
0.60 to 1.50%
Mo
0.20 to 2.00%
more than 1.00 to 2.00%
N
0.010% or less
0.0100% or less
W
0 to 0.50%
0 to 0.50%
Co
0 to 0.50%
0 to 0.50%
Ni
0 to 0.50%
0 to 0.50%
Rare Earth
0 to 0.020%
0 to 0.0100%
Cu
0 to 0.50%
0 to 0.50%
B
0 to 0.0100% (claim 1)0.0001 to 0.0100% (2)
0.0005 to 0.0040% reads on claim 2
One or more of:
Ca
0.0005 to 0.0200%
0 to 0.0100%
Mg
0.0005 to 0.0200%
0 to 0.0100%
One or more of:
Ti
0.001 to 0.300%
0.002 to 0.020%
Nb
0.001 to 0.300%
0.005 to 0.100%
V
0.01 to 0.50%
0.05 to 0.30%
O
less than 0.0020%
Zr
0 to 0.0100%
Balance
Fe and impurities
Fe and impurities
Kamitani teaches that “a yield strength of the steel material is 758 to 862 MPa” (which reads upon “wherein: a yield strength is 758 to less than 862 MPa”, as recited in the instant claim; paragraph [0010]). Kamitani Table 1 gives sample compositions. While Kamitani is silent regarding Formulas (1) and (2), we can perform the calculations using the compositions from Table 1. Here, we use Table 1, composition A:
Mn x Sp ≤ 12.0;
0.45 x 9 = 4.05
4.05 ≤ 12.0. Accordingly, Formula (1) is satisfied.
0.05 ≤ 7 x Ti +2 x Nb + 3 x V ≤ 0.80;
0.05 ≤ 7 x 0.004 + 2 x 0.028 + 3 x 0.09 ≤ 0.80;
0.05 ≤ 0.028 + 0.056 + 0.27 ≤ 0.80;
≤ 0.356 ≤ 0.80. Accordingly, Formula (2) is satisfied.
Kamitani teaches a steel with a chemical composition (paragraph [0010]) and yield strength (paragraph [0010]) overlapping or lying within the claimed ranges of the claimed steel. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Since Kamitani teaches that Zr includes a value of 0% Zr is considered an optional element and the broader disclosure of Kamitani includes steels which do not include this optional element. Kamitani teaches that “Oxygen (O) is an impurity.” (which reads upon “balance being Fe and impurities”, as recited in the instant claim; paragraph [0073]). Kamitani therefore reads on the limitations a steel material consisting of, in mass %, C: 0.10 to 0.45%, Si: 1.00% or less, Mn: 0.01 to 1.00%, P: 0.050% or less, S: 0.0050% or less, Al: 0.001 to 0.100%, Cr: 0.1 to 2.0%, Mo: 0.20 to 2.00%, N: 0.010% or less, W: 0 to 0.50%, Co: 0 to 0.50%, Ni: 0 to 0.50%, rare earth metal: 0 to 0.020%, Cu: 0 to 0.50%, and B: 0 to 0.0100%, further containing one or more elements selected from a group consisting of: Ca: 0.0005 to 0.0200%, and Mg: 0.0005 to 0.0200%, further containing one or more elements selected from a group consisting of: Ti: 0.001 to 0.300%, Nb: 0.001 to 0.300%, and V: 0.01 to 0.50%, with the balance being Fe and impurities, and satisfying Formula (1) and Formula (2), wherein: a yield strength is 758 to less than 862 MPa, Mn×Sp≤12.(1) 0.05≤7×Ti+2×Nb+3×V≤0.8(2) where, in Formula (1), a content of Mn in percent by mass is substituted for “Mn”, and a content of S in ppm is substituted for “Sp”; a content of a corresponding element in percent by mass is substituted for each symbol of an element in Formula (2); note that, when a corresponding element is not contained, “0” is substituted for the symbol of the relevant element of claim 1, and containing one or more elements selected from a group consisting of: W: 0.01 to 0.50%, Co: 0.01 to 0.50%, Ni: 0.01 to 0.50%, rare earth metal: 0.001 to 0.020%, Cu: 0.01 to 0.50%, and B: 0.0001 to 0.0100% of claim 2.
However, Kamitani does not explicitly disclose a number density of MX-type precipitates which have an equivalent circular diameter of 100 nm or less and in which, when a total content of Mo, Nb, V, and Ti is defined as 100% by mass, a content of Mo is more than 50% by mass is 20/μm2 or more.
Applicant teaches that “in the intermediate temperature heating process, fine Mo-based MX-type precipitates are caused to precipitate in the intermediate steel material” (paragraph [0191]). Applicant teaches that “a preferable heating temperature in the intermediate temperature heating process is 400 to less than 600° C” (paragraph [0191]). Applicant teaches that “if the heating temperature is too low, the amount of Mo-based MX-type precipitates that are precipitated in the intermediate temperature heating process will decrease, and that as a result, the number density of Mo-based MX-type precipitates in the produced steel material will decrease” (paragraph [0191]). Applicant teaches that “on the other hand, if the heating temperature is too high, the Mo-based MX-type precipitates will grow too much and the Mo-based MX-type precipitates will coarsen in the intermediate temperature heating process, and consequently the number density of Mo-based MX-type precipitates in the produced steel material will decrease” (paragraph [0191]). Applicant teaches that “a preferable holding time in the intermediate temperature heating process is 20 to 120 minutes” (paragraph [0193]). Applicant teaches that “if the holding time is too short, the amount of Mo-based MX-type precipitates that are precipitated in the intermediate temperature heating process will decrease, and that as a result, the number density of Mo-based MX-type precipitates in the produced steel material will decrease” (paragraph [0193]). Applicant teaches that “on the other hand, if the holding time is too long, the Mo-based MX-type precipitates will grow too much, and the Mo-based MX-type precipitates will coarsen in the intermediate temperature heating process, and as a result, the number density of Mo-based MX-type precipitates in the produced steel material will decrease” (paragraph [0193]).
Kamitani teaches that “tempering is performed on the intermediate steel material on which the aforementioned quenching is performed” (paragraph [0161]). Kamitani teaches that “a preferable tempering temperature is 500 to less than 700° C” (paragraph [0166]). Kamitani teaches that “a more preferable tempering time (holding time) is 10 to 60 minutes” (paragraph [0166]).
Since the steel of Kamitani has overlapping composition and yield strength with the claimed invention, as well as conforming to Equations (1) and (2), one of ordinary skill in the art would reasonably expect the steel of Kamitani to possess the claimed MX-type precipitates.
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). See MPEP § 2112.01 I. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Therefore, it is expected that the steel of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (see compositional analysis above), b) the claimed and prior art products are identical or substantially identical in structure, and c) the claimed and prior art products are produced by identical or substantially identical processes (see overlapping heat treatment analysis above). Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
Given the overlap of composition, yield strength, and processing of the steel of Kamitani and the claimed invention, one of ordinary skill in the art would reasonably expect the steel of Kamitani to possess the claimed number density of MX-type precipitates which have an equivalent circular diameter of 100 nm or less and in which, when a total content of Mo, Nb, V, and Ti is defined as 100% by mass, a content of Mo is more than 50% by mass is 20/μm2 or more of claim 1.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA JANSSEN whose telephone number is (571)272-5434. The examiner can normally be reached on Mon-Thurs 10-7 and alternating Fri 10-6.
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. The Examiner requests that interviews not be scheduled during the last week of each fiscal quarter or the last half of September, which is the end of the fiscal year. Q4: 9/21-9/30/26; Q1: 1/4-1/8/27.
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.
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/REBECCA JANSSEN/Primary Examiner, Art Unit 1733
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