Our Ref: NICHE/PATENTS/2021/SAIL/N-584 June 18, 2021

To
M/S STEEL AUTHORITY OF INDIA LTD. (RDCIS)
Doranda, Ranchi – 834 002.

Kind Attn: Mr. Vishal Charan.

Sub: - FER OBJECTIONS REPORTING OF

CASE No. 201631005432.

RQ NO. R20203003574, dated 04/02/2020.

OBJECTION B –

(1). INVENTIVE STEP:

(I) Claim(s) (1-10) lack(s) inventive step, being obvious in view of teaching (s) of cited
document(s) above under reference for the following reasons:

The subject matter of claims 1-10 does not constitute an invention under section 2(1) (j) of
the Patents Act, 1970 (as amended) because it does not involve an inventive step in view
of following documents:

D1: EP0699773B1………………….………………………Published on 10/11/1999

D2: 535/KOL/2012…………..……………………………..Published on 15/11/2013
D3: JP11012642A………………………………………….Published on 19/01/1999

D1 discloses, a method for manufacturing an electric-resistance-welded steel pipe having

an excellent HIC resistance property and SSCC resistance property under a wet hydrogen
sulfide environment (refer para [0011]), the steel contains 0.005 to 0.2 wt.% C, 0.1 to 0.35
wt.% Si, 0.5 to 2 wt.% Mn, 0.01 wt.% or less P, 0.003 wt.% or less S, 0.001 to 0.1 wt.%

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Nb, and 0.001 to 0.006 wt.% Ca; optionally at least one element selected from the group
of 0.05 to 0.5 wt.% Cu, 0.5 wt.% or less Ni, 0.5 wt.% or less Mo, 1 wt.% or less Cr, 0.001 -
0.1 wt.% V and 0.001-0,1 wt.% Ti; and the remainder being iron and inevitable impurities
(refer para [0012]).

D2 discloses, a process for manufacture of alloy steel resistant to HIC and SSC in sour
gas media contains C (0.06 to 0.08%) by wt., Mn (1.35 to 1.5%) by wt., S (up to 0.01%) by
wt., P (up to 0.01 %) by wt., Si (0.25 to 0.45%) by wt., V (0.02 to 0.035%) by wt., Nb (0.04
to 0.05%) by wt., Ti (0.003 to 0.008%) by wt., and Cu (0.1 to 0.36%) by wt. along with
balance being Fe (refer Page number 9, Table 1 and Table 6). In manufacturing method of
D2 the alloy steel resistant to HIC and SSC in sour gas media comprising the steps of: (i)
reheating the steels ingots/slabs and soaking in a reheating furnace to 1150 to 1250 °C for
a period of 1 to 5 hours preferably about 3 hours; (ii) hot-rolling to plate of 15 to 18 mm
preferably about 16 mm with finish rolling temperatures in the range of preferably about
830°C; followed by, (iii) final rolling reduction and air cooling is done after hot rolling (refer
Page number 9).

Document D2 discloses all the features of the instant application except it does not uses
“Mo” along with copper to enhance the HIC and SSC resistant properties of the alloy. The
steel of D1 uses “Mo” in its composition to enhance the above mentioned properties.
Moreover, mere addition of “Mo” along with copper to enhance the properties of the steel
cannot be considered as an inventive feature.

Further, D3 discloses, a method of manufacture of a steel product for line pipe, excellent in
sulfide corrosion cracking resistance, capable of attaining the remarkable improvement in
sulfide corrosion cracking resistance of ferrite - pearlite steel which cannot be attained by
the conventional method contains C: 0.04wt. % to 0.2 wt. %, Mn: 0.5 wt. % to 2.0 wt. %, P:
0.01wt. % or less, S: 0.005 wt. % or less, Nb: 0.015 wt. % to 0.2wt. %, Ti: 0.01wt. % to
0.05 wt. % and others selected from group, B: 0.0003 wt. % to 0.005 wt. %, Cu: Less than
0.7 wt. %, Ni: 1.0 wt. % or less, Cr: Less than 1.0 wt. % and Mo: Less than 1.0 wt. % (refer
Abstract, claims and description).

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In view of the above documents D1-D3, the present application lacks inventive step
according to section 2(1) (ja) of The Patents Act, 1970 and a person skilled in the art will
be motivated by the above cited documents to conclude the invention.

(II) Claim(s)of the instant application conflict(s) with claim(s) of co-pending application no.

(3).SUFFICIENCY OF DISCLOSURE:

this In connection, Inventor(s) is/are requested to provide the difference between

the present invention and the cited references. The Ld. Examiner has alleged that
the invention lacks inventive step with reference to D1- D3 (as annexed). The
inventor is therefore requested to provide detailed response for onward
communication to the Patent Office.

(4).SCOPE:

(I) Claim(s) 1-10 does/do not define the scope of invention for which the protection is
claimed for the following reasons:

The subject matter of claims 1-10 are not within the scope of description. The complete
specification compares three types of steel. Cr containing, Cu-Cr containing and Cu-Mo
containing steel.

The properties of the steel containing Cu-Cr and Cu-Mo are almost similar with each other,
especially CSR, CLR and CTR as disclosed in Table 5 (Both the steels are within the limit
of Class I specification) and diffusible hydrogen content as disclosed in Table 7. Further,
data in Table 6 of Cu-Cr steel has not been provided.

Hence, it can be assumed that the desired feature of the invention, i.e. to achieve sour
resistance against HIC and SCC resistance can be achieved by both types of steel. Thus,
only claiming steel containing Cu and Mo is not within the scope of the description and
hence cannot be allowed.

(5).CLARITY AND CONCISENESS:

(I) Claim(s) 1-10 are not clearly worded in respect of:

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1. Claims lack proper antecedent bases (a, an, the) for the features of the claims
appearing therein. Claims containing terms that are introduced in the claims for the first
time should be recited using the indefinite articles “a” or “an” and rest should be recited
using the definite article “the”.

2. The chemical composition of the steel sheet should be fully disclosed in the principle
claim. There is high possibility of impurities in the steel during manufacturing and the same
should be included in the claims and description.

3. Claim 1 claims an alloy steel having a chemical composition in particular range. Table 1
of the description discloses only single composition of the steel sheet. Thus it is not clear
how the ranges of the steel alloy have been decided. Moreover, Table 1 contains
“Aluminum”, while the steel as claimed in claims does not have Aluminum in it. Thus
claims in its current form are not clear and not within the scope of the description.

(6).OTHERS REQUIREMENTS:

(I)

1. All the submitted documents and forms have been presumed as originally signed by the
authorized signatory under the provisions of the Patents Act, 1970. If not, submit the
originally signed copy of the same failing to which the document may not be considered
filed.

2. (a) Examiner has cited particular columns/paragraphs and line numbers in the
references applied to the claims above for the convenience of the applicant. Although the
specified citations are representative of the teachings of the art and are applied to specific
limitations within the individual claim, other passages and figures may apply as well.
Hence, the applicant, while preparing responses, shall fully consider the references in
entirety as potentially teaching all or part of the claimed invention, as well as the context of
the passage as taught by the prior art or
Disclosed by the Examiner.

(b) Amendments if any should be in compliance with section 59(1) of The Patents Act,
1970.

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(c) A marked/highlighted copy should be provided under rule 14 (2) to show and
understand how the amendments are carried in the original claims. Further, the support for
the subject matter added should be submitted by pointing out the corresponding page(s)
and paragraph(s) in the complete specifications and the subject matter of the amendments
should be in compliance with section 59 of the Act.

PART-III: FORMAL REQUIREMENTS

Statement & Under Taking (Form 3 Details)

1. Details regarding application for patents which may be filed outside India from time to
time for the same or substantially the same invention should be furnished within six
months from the date of filing of the said application under clause (b) of sub section (1) of
section 8 and rule 12(1) of The Patents Act 1970.

2. Details regarding the search and/or examination report including claims of the
application allowed, as referred to in rule 12(3) of the Patent Rule, 2003, in respect of
same or substantially the same invention filed in all major Patent office’s along with
appropriate translation where applicable, should be submitted within a period of six
months from the date of receipt of this communication as provided under section 8(2) of
The Patents Act 1970.

Form 13

Copy of all the documents and forms shall be submitted in line with FORM 13 dated
04/02/2020, thus a fresh copy of claims shall be submitted duly signed by the authorized
agent.

Other Deficiencies

1. Complete specification should contain the numbering to every fifth line of each page of
the description and each page of the claims at the right half of the left margin as per Rule
9 (1) (d) of The Patents Rule, 2003.

2. Complete specification should contain paragraph numbers to each page of the

description.

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On the basis of suggestions made by Inventors / applicant. A draft reply to the FER will be
prepared and the same will be sent for the inventor’s approval.

Here it may please be noted that we are required to all official objections within six
months from the date of FER 17.06.2021. Last date 17.12.2021.

Yours faithfully,

Sd/-
(N. K. Gupta)
For NICHE.

Encl: As above (FER copy and cited document D1 –D3).

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