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 .
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) 1-2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Araki et al. (JP 3314834 B2, machine translation referred to herein as English equivalent) herein Araki, in further view of Hamada et al. (US 2015/0376732 A1).
Regarding claim 1:
Araki discloses a ferritic stainless steel [0001, Araki]. Araki does not specify that the steel is used for clamps, however the examiner notes that this is merely an instance of intended use and does not further limit the steel beyond the limitations instantly claimed. See MPEP 2111.02.
The steel of Araki comprises a composition shown below in Table 1. Araki does not specify the use of V or Al however the examiner submits that the use of these would have been obvious in view of Hamada. Hamada discloses a ferritic stainless steel [0001, Hamada] wherein 0.01-0.5% of vanadium is added to improve corrosion resistance and deep drawability [0038, Hamada] and 0.01-1.0% of aluminum is added as a deoxidizing element and to improve high temperature strength and oxidation resistance [0044, Hamada]. The examiner submits it would have been obvious to modify the ferritic stainless steel of Araki to include 0.01-0.5% of vanadium and 0.01-1.0% of aluminum to improve corrosion resistance, deep drawability, high temperature strength and oxidation resistance as taught by Hamada. The examiner notes Araki discloses wanting corrosion resistance and oxidation resistance [page 3, Araki]. Araki modified by Hamada does not specify equations (1) or (2) of the instant claim, however the examiner notes that these equations merely further limit the composition which still overlaps with the composition of Araki modified by Hamada. The examiner notes the overlap of the steel compositions of the instant claim and Araki modified by Hamada is prima facie obvious. See MPEP 2144.05(I).
Araki modified by other sources will herein be referred to as modified Araki.
Modified Araki does not specify a number of precipitates of ≤0.5µm average diameter wherein the precipitates comprise Cr carbide and/or nitride, however the examiner submits that a number and composition of precipitates overlapping with the instantly claimed number and composition would naturally flow from modified Araki. The examiner notes that Araki and the instant application disclose overlapping manufacturing methods as shown below in Table 2. The examiner notes that microstructural limitations including the number, size, and composition of precipitates will depend upon the steel composition and manufacturing method, and so a number, size, and composition of precipitates that overlaps with those instantly claimed would naturally flow from modified Araki for disclosing a steel composition and manufacturing method that overlap with those instantly claimed. See MPEP 2144.05(I) and 2145.
Table 1
Instant claims, weight%
Araki, wt%
C
0.04-0.1 (claim 1)
0.04-0.10 [page 3]
Si
0.2-0.35 (claim 1)
≤1.0 [page 3]
Mn
0.01-1.5 (claim 1)
≤1.0 [page 3]
Cr
14.0-18.0 (claim 1)
13-18 [page 3]
Al
0.005-0.2 (claim 1)
V
0.005-0.2 (claim 1)
N
0.02-0.1 (claim 1)
0.03-0.06 [page 3]
Ni
0.001-0.5* (claim 2)
P
≤0.05* (claim 2)
≤0.040 [page 3]
S
≤0.005* (claim 2)
≤0.030 [page 3]
Fe and inevitable impurities
Balance (claim 1)
Balance [page 7]
(1) Si+Al+V
0.35-0.6 (claim 1)
(2) C+N
0.09-0.12 (claim 1)
*one or more of these
Table 2
Instant application manufacturing [page 11]
Araki manufacturing
Reheat steel slab to 1000-1200°C
Heat slab to 1100-1220°C [page 5, Araki]
Hot roll
Finish temperature preferably ≥800°C
Hot roll, finish temperature of 950-1050°C [page 5, Araki]
Wind the steel at ≥700°C
Winding at 450-890°C [page 5, Araki]
Cold roll at reduction ratio of ≥60%
Cold roll with reduction of ≥70% [page 6, Araki]
Anneal at 550-950°C for ≤10 minutes
Anneal after cold rolling, example of 840°C for 60 seconds [page 5, Araki]
Regarding yield strength, tensile strength, and elongation, the examiner notes that mechanical properties including strength and elongation will depend upon the steel composition and manufacturing method, and so a yield strength, tensile strength, and elongation that overlap with the ranges instantly claimed would naturally flow from modified Araki for disclosing a composition and manufacturing method that overlaps with those instantly claimed. See MPEP 2144.05(I) and 2145.
Regarding claim 2, as shown above in Table 1 the phosphorus of Araki satisfies the instant claim and the sulfur overlaps with the instant claim. The examiner notes the overlap of the steel compositions of the instant claim and modified Araki is prima facie obvious. See MPEP 2144.05(I).
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 1-2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-7 of copending Application No. 17/786,152 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they disclose high-strength ferritic stainless steels for clamps with overlapping compositions, strengths, elongations, and chromium carbonitride sizes and particles per mm2.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 10/10/2025 have been fully considered but they are not persuasive.
Applicant argues that the claimed Si content, Si+Al+V total content, and C+N total content are critical. In response, Examiner notes that the cited examples do not provide sufficient evidence to demonstrate criticality of the claimed contents. Objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP §716.02. “To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range.” See MPEP §716.02(d).
Applicant argues that Araki in view of Hamada includes Al and V for different purposes than the instant invention. In response, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In response to Applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Applicant further argues that the property of “a number of precipitates with an average diameter of 0.5 µm or less is 2.5 x 106 pieces/mm2 or more” would not naturally flow from Araki modified by Hamada, because Araki modified by Hamada does not explicitly described whether hot-rolled annealing is performed, while in the method of the present application, this annealing may be omitted in some embodiments. In response, Examiner notes that Araki teaches that hot-rolling annealing may be omitted ([0010]-[0013]).
In response to Applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, both Araki and Hamada are directed to the same field of endeavor, which are ferritic stainless steels. Moreover, Hamada teaches adding Al and V for improvement in corrosion resistance, as Applicant has pointed out; Araki also desires corrosion resistance ([0007]). Therefore, it would have been obvious to one of ordinary skill in the art to modify Araki with Hamada in order to achieve an improvement in corrosion resistance.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY M LIANG whose telephone number is (571)272-0483. The examiner can normally be reached M-F: 9:00am-5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at (571)272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY M LIANG/Primary Examiner, Art Unit 1734