DETAILED ACTION
Claims 1-4 are pending and currently under review.
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.
Claims 1-4 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. Claim 1 recites the term “MX-type precipitate”, which is indefinite because the addition of the word "type" to an otherwise definite expression extends the scope of the expression so as to render it indefinite. See MPEP 2173.05(b)(III)(E). It is unclear what the term “type” is meant to convey. For example, it is unclear whether the claimed precipitates are limited to specifically MX formulas, or whether the claim merely requires precipitates having the same or similar crystal structure, or something else entirely. The examiner interprets the claim to be met by any of the above interpretations.
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.
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.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kamiya et al. (JP20180709790, machine translation referred to herein).
Regarding claim 1, Kamiya et al. discloses a steel material having a composition as shown in table 1 below [0001, 0010]. Kamiya et al. does not expressly require the inclusion of any non-recited elements, which meets the limitation of “consisting of…” as claimed. The examiner notes that the overlap between the composition of Kamiya et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I).
Kamiya et al. does not expressly teach formulas (1) and (2) as claimed. However, the examiner notes that these formulas merely further limit the claimed Mn, S, Ti, Nb, and V amounts, which further overlap with the claimed ranges of Kamiya et al. above. Kamiya et al. further teaches a yield strength range of 1103 to 1206 MPa, which meets the claimed range.
Kamiya et al. does not expressly teach a number density of precipitates as claimed. However, the examiner submits that overlapping precipitate parameters would have naturally flowed from the disclosure of Kamiya et al. which is prima facie obvious. See MPEP 2112 & MPEP 2144.05(I). One of ordinary skill would readily recognize that steel properties and microstructure are a direct result of steel composition and manufacturing parameters. The instant specification further expressly discloses controlling the claimed precipitate parameters by controlling an intermediate heating step prior to quenching as further shown in table 1 below [0085-0113]. Kamiya et al. discloses an overlapping composition as shown above. Kamiya et al. further teaches an overlapping manufacturing process as explained in table 1 below [0054-0065, 0067-0072, table2]. Since Kamiya et al. discloses a substantially similar and overlapping steel composition and method of manufacture, one of ordinary skill would expect a substantially similar and overlapping range of precipitate parameters relative to those as claimed to naturally flow from the disclosure of Kamiya et al.
The examiner’s position is further bolstered by the overlapping mechanical properties of yield strength disclosed by Kamiya et al., wherein one of ordinary skill would readily understand an overlapping yield strength to be a direct result of the claimed precipitate microstructure.
Table 1.
Element (wt.%)
Claim 1 (wt.%)
Kamiya et al. (wt.%)
C
0.1 – 0.45
0.2 – 0.5
Si
0 – 1
0.05 – 1
Mn
0.01 – 1
0.1 – 1
P
0 – 0.05
0 – 0.03
S
0 – 0.005
0 – 0.005
Al
0.001 – 0.1
0.005 – 0.1
Cr
0.1 – 2
0.1 – 1.2
Mo
0.2 – 2
1.1 – 2.5
N
0 – 0.01
0 – 0.01
W
0 – 0.5
0 – 1
Co
0 – 0.5
0 – 1
Ni
0 – 0.5
0 – 1
Rare earth
0 – 0.02
0 – 0.005
Cu
0 – 0.5
0 – 1
B
0 – 0.01
0 – 0.005
One or more of
Ca
Mg
0.0005 – 0.02
0.0005 – 0.02
0 – 0.005
0 – 0.005
One or more of
Ti
Nb
V
0.001 – 0.3
0.001 – 0.3
0.001 – 0.5
0.002 – 0.02
0 – 0.05
0.01 – 0.3
Fe & Impurities
Balance
Balance
Manufacturing Parameters
Instant specification [0085-0113]
Kamiya et al. [0054-0065, 0067-0072, table2]
Slab reheating at 1100 to 1300 degrees C
Slab reheating at 1250 degrees C
Hot rolling and/or pipe forming
Hot rolling and pipe forming
Intermediate heating at 400 to 600 degrees C for 20 to 120 minutes
Preheat tempering at 550 degrees C for 30 minutes
High temperature heating at 880 to 1000 degrees C for 10 to 90 minutes
Quenching treatment at Ac3 to 1000 degrees C for 15 minutes
Quenching at 300 degrees C per minute or faster
Water cooling, which one of ordinary skill would readily understand to meet/overlap the claimed cooling rate
Tempering at 650 to 700 degrees C for 20 to 180 minutes
Tempering at 655 to 680 degrees C for 30 minutes
Regarding 2, Kamiya et al. discloses the steel of claim 1 (see previous). The examiner notes that the aforementioned composition of Kamiya et al. further overlaps with the claimed ranges. See MPEP 2144.05(I).
Regarding claims 3-4, Kamiya et al. discloses the steel of claims 1-2 (see previous). Kamiya et al. further teaches the steel for oil well pipes [0001].
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 1-4 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18/842,233 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the only difference between the instant claims and co-pending claims is a recitation of yield strength of “862 MPa or more” as instantly claimed versus “758 to less than 862 MPa” in the co-pending claims. These ranges are substantially close such that prima facie obviousness exists because there is a miniscule, negligible difference between “less than 862 MPa” and “862 MPa or more” which is not patentably distinct absent concrete evidence to the contrary. See MPEP 2144.05(I).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS A WANG whose telephone number is (408)918-7576. The examiner can normally be reached usually M-Th: 7-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 5712721177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734
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