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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on May 20, 2025 has been entered.
Response to Amendments and Status of Claims
Applicant’s amendments to the claims, filed March 17, 2025, are acknowledged. Claim 2 is amended. Claim 14, 16 and 18-19 are cancelled. Claims 24-24 are newly added. No new matter has been added.
Claims 1-13, 15, 17 and 20-24 are pending and currently considered in this office action.
Declaration
The of declaration of Jun-ichi Hamada, under 37 CFR 1.132 filed March 17, 2025, has been full considered. Upon further consideration, a new ground(s) of rejection is made over Kawagoe in view of Hatano and Ikegami, and over Hatano. Therefore, the declaration is deemed moot in view that none of the argued references (Hisayoshi and Chen), or argued teachings thereof, are applied in the current grounds of rejection.
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.
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.
Claims 1-3, 7, 13, 15, 17 and 20-24 are rejected under 35 U.S.C. 103 as being unpatentable over Kawagoe (US 20180363087 A) in view of Hatano (EP 2508639 A1) and Ikegami (JP 09-003605 A, English Machine Translation provided).
Regarding Claim 1, Kawagoe discloses an austenitic stainless steel (Abstract), comprising:
Element
Claim 1 (wt%)
Kawagoe (wt%)
Citation
C
0.002-0.30
0-0.15
[0063]
Si
1.0-4.0
0.1-4.0
[0063]
Mn
0.050-3.0
0-10.0
[0063]
Ni
5.0-15.0
1.0-28.0
[0063]
Cr
15.0-30.0
16.0-32.0
[0063]
Mo
0.50-4.0
0-5.0
[0072]
N
0.010-0.30
0-0.20
[0063]
V
0.050-1.0
Silent
Cu
0.10-2.50
0-3.0
[0072]
Al
0.002-0.10
0-5.0
[0072]
P
≤ 0.05
0-0.05
[0073]
S
≤ 0.01
0-0.01
[0073]
Fe+impurities
Balance
Balance
Abstract
Kawagoe further discloses wherein Si+Mo≥1.80% as claimed (see Table above, wherein Si+Mo ranges from 0.1-9.0%; para. [0063]; [0072]).
Kawagoe is silent towards the element V, and fails to disclose the claimed range.
Hatano teaches including 0.1-1.0% V in order to improve corrosion resistance and stress corrosion cracking resistance, while balancing for cost and workability (para. [0046]). Additionally, Hatano teaches a narrower range for Al of 0.01-1.0% Al, preferably 0.01-0.1% Al, in order to reduce oxidation (deoxidizing element), while balancing for formability and weldability (para. [0049]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included 0.1-1.0% V and limited Al to 0.01-0.1%, as taught by Hatano, for the invention disclosed by Kawagoe, in order to improve corrosion resistance and stress corrosion cracking resistance, while balancing for cost and workability, and in order to reduce oxidation, while balancing for formability and weldability (see teachings above).
Regarding the compositional ranges, 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). See MPEP § 2144.05.I.
Kawagoe fails to disclose the claimed total sum of grain boundary lengths A+B.
However, Kawagoe discloses wherein the austenitic stainless steel is produced by hot rolling, annealing and pickling, and further subjected to cold rolling, with a finish rolling reduction of up to 90% and total cold rolling reduction up to 98%, and final (bright) annealing from 950-1100C (para. [0077]-[0078]; [0084]-[0090]; para. [0095]; para. [0099]).
The method of Kawagoe therefore overlaps the claimed invention which requires hot-rolling, annealing, pickling, cold-rolling with a reduction of 80% or more, and annealing at 1100C or more (para. [0053]-[0055]).
Kawagoe does not disclose the duration of the annealing, and therefore fails to disclose an annealing time of greater than 0 to 55 seconds, as required by the instant invention. However, Hatano further teaches an annealing time of less than 1 minute (60s or less) for higher temperatures in order to reduce grain growth (para. [0059]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used an annealing time of 60s or less, which overlaps the instant range of up to 55s, as taught by Hatano, for the invention disclosed by Kawagoe, in order to reduce grain growth and minimize grain size (see teaching above).
Thus, Kawagoe and Hatano disclose the claimed composition and the instant method. Therefore, it would have been obvious to one of ordinary skill in the art that Kawagoe in view of Hatano possess the claimed grain boundary length sums because the composition and process are the same as the instant invention. When 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.
Further and additionally, Ikegami teaches a similar composition and an overlapping process including cold roll reduction of 40% or more, and annealing at 1000-1100C for 10-30s, in order to obtain a grain size number of 8 or more (22.5um or less), thereby reducing surface roughness and facilitating an improved mirror finishing for a press formed article and reducing the load of treatment prior to use for a building material, a sink, etc. (para. [0001]-[0002]; para. [0020]-[0021]). One of ordinary skill in the art would appreciate that a grain size number of 8 or more would comprise a equivalent grain size of 22.5um or less.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have obtained a grain size number of 8 or more, and therefore a grain size of 22.5um or less, as taught by Ikegami, for the invention disclosed by Kawagoe and Hatano, in order to reduce surface roughness and facilitate improved mirror finishing for a press formed article, thereby reducing the load of treatment prior to use for a building material, a sink, etc. (see teaching above; see Abstract of Kawagoe, wherein reduced surface roughness, such as below 1.2um, is desired).
One of ordinary skill in the art would appreciate the grain boundaries representing the grain size taught by Ikegami to be comprised of high angle (15 degrees or more) grain boundaries. Therefore, it would be further obvious to one of ordinary skill in the art that the austenitic stainless steel sheet of Kawagoe, Hatano and Ikegami, with a grain size of 22.5um or less, comprise a claimed value of A (sum of general grain boundary lengths comprising a high angle (15 degrees) grain boundary – see para. [0052] of instant invention) within a 1mm2 cross-section of at least 2.9, and further, 3.1 mm/mm2, reading on the claimed range for A+B. For example, the sum of general grain boundary lengths of grains having a grain size of 22.5um, or 0.0225mm, may be conservatively estimated using a tessellation array of hexagons (44x44 array of regular hexagons assuming a short diagonal of 0.0225mm) or an array of squares (44x44 array of squares with a side length of 0.0225mm), of which produce, for a 1mmx1mm (1mm2) area, a general sum of grain boundary lengths A of 77mm/mm2 and 93mm/mm2, respectively, which are well above the claimed values.
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). See MPEP § 2144.05.I.
Regarding Claim 2, Kawagoe discloses wherein the austenitic stainless steel further comprises at least one of:
Element
Claim 2 (wt%)
Kawagoe (wt%)
Citation
Nb
0.005-0.30
0.01-0.80
[0070]
Ti
0.005-0.30
0.01-0.50
[0071]
B
0.0002-0.005
0-0.02
[0072]
W
0.05-3.0
0-1.0
[0072]
Zr
0.05-0.30
0-0.50
[0072]
Sn
0.01-0.50
0-0.50
[0072]
Co
0.03-0.30
0-1.0
[0072]
REM
0.001-0.20
0-0.05 (Y)
[0072]
Regarding the compositional ranges, 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). See MPEP § 2144.05.I.
Regarding Claim 3 and Claim 7, Kawagoe is silent toward fatigue limit properties. However, Kawagoe and Hatano disclose the claimed composition and the instant method, and it would have been obvious to one of ordinary skill in the art that Kawagoe in view of Hatano possess the claimed fatigue limit properties because the composition and process are the same as the instant invention. When 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.
Regarding Claim 13 and Claim 22, Kawagoe discloses comprising 16.0-32.0% Cr, which reads on the claimed range of 15.00-19.32% Cr (para. [0063]). Regarding the compositional ranges, 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). See MPEP § 2144.05.I.
Regarding Claim 15, Claim 17 and Claim 23, Kawagoe discloses up to 5.0% Mo, which reads on the claimed range of 1.34-4.0% (para. [0072]). Regarding the compositional ranges, 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). See MPEP § 2144.05.I.
Regarding Claim 21, Kawagoe discloses up to 1.0wt% Co, which reads on the claimed range of 0.03-0.30% Co (para. [0072]). Regarding the compositional ranges, 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). See MPEP § 2144.05.I.
Regarding Claim 20 and Claim 24, Kawagoe and Hatano disclose the claimed composition and the instant method. Therefore, it would have been obvious to one of ordinary skill in the art that Kawagoe in view of Hatano possess the claimed grain boundary length sums of 3.1mm/mm2 or more because the composition and process are the same as the instant invention. When 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.
Further, it would be obvious that the invention of Kawagoe, Hatano and Ikegami, which comprises a grain size of 22.5um or less, comprise the claimed range of grain boundary sums (see above explanation in Claim 1). 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). See MPEP § 2144.05.I.
Claims 4-6 and 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over Kawagoe (US 20180363087 A) in view of Hatano (EP 2508639 A1) and Ikegami (JP 09-003605 A, English Machine Translation provided), as applied to Claims 1-3 and 7 above, respectively, in further view of Hisayoshi (previously cited, JP 2001059141 A, English Machine Translation previously provided).
Regarding Claim 4, Claim 6, Claim 8, and Claim 11, Kawagoe fails to disclose wherein the austenitic stainless steel is used for an exhaust port.
Hisayoshi teaches wherein an austenitic stainless-steel comprising an overlapping composition and process, is used to form an exhaust part, because this steel comprises high temperature cracking resistance in welding, high temperature salt corrosion resistance and excellent oxidation resistance (para. [0001]; para. [0011]; para. [0018]-[0032]; para. [0044] and para. [0048]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the austenitic stainless steel of Kawagoe and Hatano for an exhaust part, as taught by Hisayoshi, because this steel comprises high temperature cracking resistance in welding, high temperature salt corrosion resistance and excellent oxidation resistance suitable for an exhaust port (see teaching above). Additionally, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See MPEP 2144.07.
Regarding Claim 5, Claims 9-10 and Claim 12, Kawagoe fails to disclose wherein the austenitic stainless steel is used for a double pipe structure exhaust manifold.
Hisayoshi teaches wherein an austenitic stainless-steel comprising an overlapping composition and process, is used to form an exhaust manifold, and one with a double pipe structure, because this steel comprises high temperature cracking resistance in welding, high temperature salt corrosion resistance and excellent oxidation resistance (para. [0001]; para. [0011]; para. [0076]; para. [0018]-[0032]; para. [0044] and para. [0048]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the austenitic stainless steel of Kawagoe and Hatano for an exhaust manifold with a double pipe structure, as taught by Hisayoshi, because this steel comprises high temperature cracking resistance in welding, high temperature salt corrosion resistance and excellent oxidation resistance suitable for an exhaust part and a double pipe exhaust manifold (see teaching above).
Additionally, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See MPEP 2144.07.
Claims 1-3, 7, 13 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Hatano (EP 2508639 A1).
Regarding Claim 1, Hatano discloses an austenitic stainless steel (Abstract), comprising:
Element
Claim 1 (wt%)
Hatano (wt%)
Citation
C
0.002-0.30
0.005-0.05
[0038]
Si
1.0-4.0
0.1-2.0
[0040]
Mn
0.050-3.0
0.5-4.0
[0041]
Ni
5.0-15.0
5.0-8.0
[0042]
Cr
15.0-30.0
14-19
[0039]
Mo
0.50-4.0
0.1-1.0
[0045]
N
0.010-0.30
0.005-0.1
[0044]
V
0.050-1.0
0.1-1.0
[0046]
Cu
0.10-2.50
1.0-4.0
[0043]
Al
0.002-0.10
0.01-0.5
[0049]
P
≤ 0.05
0-0.05
[0051]
S
≤ 0.01
0-0.005
[0051]
Fe+impurities
Balance
Balance
Abstract
Hatano discloses a range of Si and Mo which sums to 0.2-3.0%, which reads on the claimed range of Si+Mo ≥1.80%, as also shown above.
Regarding the compositional ranges, 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). See MPEP § 2144.05.I.
Hatano fails to disclose the claimed total sum of grain boundary lengths A+B.
However, Hatano discloses a grain size (comprising high angle grain boundaries of 15 degrees or more) of 10um or less (para. [0060]-[0061]; Fig. 3, (i) steel). It would be obvious to one of ordinary skill in the art that the austenitic stainless steel sheet of Hatano, with a grain size of 10um or less, comprise a claimed value of A (sum of general grain boundary lengths comprising a high angle (15 degrees) grain boundary – see para. [0052] of instant invention) within a 1mm2 cross-section of at least 2.9, and further, 3.1 mm/mm2, reading on the claimed range for A+B.
For example, the sum of general grain boundary lengths of grains having a grain size of 10.0um, or 0.010mm, may be conservatively estimated using a tessellation array of hexagons (100x100 array of regular hexagons assuming a short diagonal of 0.010mm) or an array of squares (100x100 array of squares with a side length of 0.010mm), of which produce, for a 1mmx1mm (1mm2) area, a general sum of grain boundary lengths A of 175mm/mm2 and 206 mm/mm2, respectively, which are well above the claimed values. Additionally, one of ordinary skill in the art could measure the length of the grain boundaries present in the micrograph in Fig. 3 (steel (i)) and appreciate a sum of grain boundary lengths to fall within the claimed ranges as well.
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). See MPEP § 2144.05.I.
Regarding Claim 2, Hatano discloses wherein the austenitic stainless steel further comprises at least one of:
Element
Claim 2 (wt%)
Hatano (wt%)
Citation
Nb
0.005-0.30
0.005-0.5
[0048]
Ti
0.005-0.30
0.005-0.5
[0048]
B
0.0002-0.005
0.0005-0.01
[0047]
Ca
0.0005-0.0100
0.0001-0.005
[0050]
Mg
00002-0.010
0.0001-0.005
[0050]
REM
0.001-0.20
0.005-0.50
[0047]
Regarding the compositional ranges, 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). See MPEP § 2144.05.I.
Regarding Claim 3 and Claim 7, Hatano is silent toward fatigue limit properties. However, Hatano discloses the claimed composition and structure (grain boundaries), and it would have been obvious to one of ordinary skill in the art that Hatano possess the claimed fatigue limit properties. When 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.
Regarding Claim 13, Hatano discloses comprising 14-19% Cr, which reads on the claimed range of 15.00-19.32% Cr (para. [0039]). Regarding the compositional ranges, 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). See MPEP § 2144.05.I.
Regarding Claim 20, Hatano disclose a grain size of 10um or less, and one of ordinary skill in the art would appreciate the steel of Hatano to therefore comprise the claimed range of grain boundary length sums of 3.1mm/mm2 or more (see explanation above in Claim 1; see also Fig. 3, steel (i), which comprise the claimed amount of grain boundary lengths). 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). See MPEP § 2144.05.I.
Claims 4-6 and 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over Hatano (EP 2508639 A1), as applied to Claims 1-3 and 7 above, respectively, in further view of Hisayoshi (previously cited, JP 2001059141 A, English Machine Translation previously provided).
Regarding Claim 4, Claim 6, Claim 8, and Claim 11, Hatano fails to disclose wherein the austenitic stainless steel is used for an exhaust port.
Hisayoshi teaches wherein an austenitic stainless-steel comprising an overlapping composition and process, is used to form an exhaust part, because this steel comprises high temperature cracking resistance in welding, high temperature salt corrosion resistance and excellent oxidation resistance (para. [0001]; para. [0011]; para. [0018]-[0032]; para. [0044] and para. [0048]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the austenitic stainless steel of Hatano for an exhaust part, as taught by Hisayoshi, because this steel comprises high temperature cracking resistance in welding, high temperature salt corrosion resistance and excellent oxidation resistance suitable for an exhaust port (see teaching above). Additionally, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See MPEP 2144.07.
Regarding Claim 5, Claims 9-10 and Claim 12, Hatano fails to disclose wherein the austenitic stainless steel is used for a double pipe structure exhaust manifold.
Hisayoshi teaches wherein an austenitic stainless-steel comprising an overlapping composition and process, is used to form an exhaust manifold, and one with a double pipe structure, because this steel comprises high temperature cracking resistance in welding, high temperature salt corrosion resistance and excellent oxidation resistance (para. [0001]; para. [0011]; para. [0076]; para. [0018]-[0032]; para. [0044] and para. [0048]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the austenitic stainless steel of Hatano for an exhaust manifold with a double pipe structure, as taught by Hisayoshi, because this steel comprises high temperature cracking resistance in welding, high temperature salt corrosion resistance and excellent oxidation resistance suitable for an exhaust part and a double pipe exhaust manifold (see teaching above).
Additionally, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See MPEP 2144.07.
Claims 21-22 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Hatano (EP 2508639 A1), as applied to Claim 1 above, in further view of Kawagoe (US 20180363087 A).
Regarding Claim 21, Hatano fails to disclose Co.
Kawagoe teaching including up to 1.0wt% Co in order to elevate corrosion resistance and workability (para. [0072]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included up to 1wt% Co, as taught by Kawagoe, and which reads on the claimed range of 0.03-0.30% Co, for the invention disclosed by Hatano, in order to improve corrosion resistance and workability (see teaching above). 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). See MPEP § 2144.05.I.
Regarding Claim 22, Hatano discloses comprising 14-19% Cr, which reads on the claimed range of 15.00-19.32% Cr (para. [0039]). Regarding the compositional ranges, 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). See MPEP § 2144.05.I.
Regarding Claim 24, Hatano disclose a grain size of 10um or less, and one of ordinary skill in the art would appreciate the steel of Hatano to therefore comprise the claimed range of grain boundary length sums of 3.1mm/mm2 or more (see explanation above in Claim 1; see also Fig. 3, steel (i), which comprise the claimed amount of grain boundary lengths). 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). See MPEP § 2144.05.I.
Response to Arguments
Applicant’s arguments, filed March 17, 2025, regarding the rejection of Claim 1, and dependent claims thereof, under 35 U.S.C. 103 over Hisayoshi in view of Chen have been fully considered, and upon further search and consideration, a new ground(s) or rejection is made under 35 U.S.C. 103 over Kawagoe in view of Hatano and Ikegami, and over Hatano, as detailed above.
Applicant’s arguments regarding the compositional differences between Hisayoshi and Chen are therefore deemed moot in view of the new ground(s) of rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Inoue (previously cited, US 20160032434 A1): teaches an austenitic stainless steel sheet comprising the claimed composition which is cold rolled with a 50-70% reduction (Abstract; see para. [0044] wherein steel is hot rolled to 3 to 5mm, and then cold rolled to 1.5mm, which equates to a reduction ratio of 50-70%).
Ishizaki (US 20170167005 A1): teaches wherein smaller grain sizes increase the total length of the crystal grain boundaries and therefore increase defect sink sites (para. [0030]).
Fleury (KR 20120072790 A: English Machine Translation provided): teaches cold-rolling 70-90% in order to obtain a processed grain boundary microstructure (para. [0019]).
Hisayoshi (previously cited and cited above, JP 2001059141 A, see updated English Machine Translation provided): teaches a steel comprising 0.004-0.07% C, 2.5-4.5% SI, 0.05-2.0% Mn, 9.0-16.0% Ni, 14.0-21.0% Cr, 0-2.0% Mo, 0005-0.1% N, 0-1.5%Cu, 0-0.2% Al, 0-0.026% P, 0-0.01% S, 0-0.25% Nb, 0-0.003% B, 0.0002-0.2% total of one or more of Ca, REM and Mg, and a remainder of Fe and impurities, which reads on the compositional ranges of C, Si, Mn, Ni, Cr, Mo, N, Cu, Al, P, and S of Claim 1, and of Nb, B, Ca, REM and Mg of Claim 2. Hisayoshi further teaches including cold rolling and annealing at 1100°C (para. [0048]).
Chen (previously cited, US 20190055622 A): teaches an austenitic steel comprising 0.05-1.0wt% V in order to increase strength (para. [0003]-[0024]; para. [0040]). Chen further teaches cold-rolling the austenitic steel sheet using a reduction of 30-80% and subsequently annealing the cold-rolled steel sheet at 1100°C for between 5 seconds and 5 hours (para. [0090]-[0091]). Chen teaches that this processing enables high strength and ductility (para. [0093]).
Chen also teaches wherein the cold-rolling and subsequent annealing produces a microstructure comprising up to 100% austenite grains and enables a grain size less than or equal to 30um, thereby preventing strength and elongation from being lowered (para. [0024]; para. [0096], one of ordinary skill in the art would appreciate pm is a typo of um – see equivalent WO 2017148892 A1, para. [0047]; see also micrograph presented in Fig. 3 showing grain size smaller than 30um).
ASTM (ASTM E112-25, Standard Test Methods for Determining Average Grain Size): demonstrates the equivalent grain size (in um) for different grain size numbers (Table II).
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/CATHERINE P SMITH/Examiner, Art Unit 1735
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735