DETAILED ACTION
Claims 1 and 4-13 are pending, and claims 1 and 11-13 are currently under review.
Claims 4-10 are withdrawn.
Claims 2-3 and 14-15 are cancelled.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/30/2025 has been entered.
Response to Amendment
The amendment filed 9/30/2025 has been entered. Claims 1 and 4-13 remain(s) pending in the application.
Claim Interpretation
Independent claim 1 recites the phrase “consisting essentially of…” which limits the claim scope to only the recited elements and those that do not materially affect basic and novel characteristics of the claimed invention. See MPEP 2111.03(III). However, absent a specific indication of said basic and novel characteristics, the phrase “consisting essentially of…” must be construed as “comprising”. Since the instant specification and claims do not indicate which property is considered to be “basic and novel”, the examiner must construe the instant claim scope to be equivalent to “comprising”. See MPEP 2111.03(III).
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 and 11-13 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. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation that yield strength is 1280 MPa or more, and the claim also recites that the yield strength is between 1283 to 1410 MPa, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. The examiner interprets the claim scope to merely require the broader range of 1280 MPa or more.
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 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fujisawa et al. (JP2001254146, machine translation referred to herein).
Regarding claim 1, Fujisawa et al. discloses a hot rolled, annealed austenitic stainless steel having a composition as seen in table 1 below [0005, 0007, 0014]. Fujisawa et al. also discloses a cooling rate of the cast slab of 5 to 15 degrees C per second [0008]. The examiner notes that the overlap between the composition of Fujisawa et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I). The examiner notes that the claimed C+N relationship and formula (1) merely further limit the claimed steel composition and cooling rate, which is still overlapping with the disclosure of Fujisawa et al. Fujisawa et al. does not expressly teach that the steel is magnetic, such that one of ordinary skill would understand the steel to be nonmagnetic absent a specific teaching to the contrary. Fujisawa et al. does not expressly teach high strength; however, the examiner submits that a desirable strength would have naturally flowed from the steel of Fujisawa et al. which has an overlapping steel composition and properties, which meets the limitation of “high strength”. See MPEP 2145.
Fujisawa et al. does not expressly teach a yield strength range or permeability as claimed. However, the instant specification discloses obtaining the claimed yield strength by controlling the relationship of C+N as claimed [table3]. Permeability is further disclosed to be achieved by meeting the claimed steel composition and formula (1) [p.8, p.12 spec.]. Since Fujisawa et al. discloses an overlapping steel composition, including C+N values, and parameters resulting in an overlapping formula (1) as stated above, an overlapping yield strength range and permeability value would have naturally flowed absent concrete evidence to the contrary. See MPEP 2145 & MPEP 2144.05(I).
Table 1.
Element (wt.%)
Claim 1 (wt.%)
Fujisawa et al. (wt.%)
C
0.02 – 0.12
0 – 0.15
Si
0 – 1.2
0 – 1
Mn
0.5 – 1.32
0.2 – 2
Cr
17 – 22
16 – 22
Ni
11 – 15
6 – 13
Mo
0 – 3
0
N
0 – 0.25
0 – 0.3
Fe & Impurities
Balance
Balance
Regarding claim 13, Fujisawa et al. discloses the steel of claim 1 (see previous). The examiner notes that the Ni inclusion of Fujisawa et al. further overlap with the claimed ranges. See MPEP 2144.05(I).
Claim(s) 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fujisawa et al. (JP2001254146, machine translation referred to herein) in view of either one of Kato et al. (US 2004/0065393) or Miyakusu et al. (JPH07113144, machine translation referred to herein).
Regarding claims 11-12, Fujisawa et al. discloses the steel of claim 1 (see previous). Fujisawa et al. does not expressly teach a Mo inclusion as claimed. However, this feature would have been obvious in view of the prior art. Kato et al. discloses that it is known to include Mo in nonmagnetic austenitic stainless steels in an amount of 2 to 2.5 weight percent such that ductility can be improved [abstract, 0026]. Therefore, it would have been obvious to modify the steel of Fujisawa et al. by including the Mo amount of Kato et al. to improve ductility as stated above. The examiner notes that the Mo amount of Kato et al. falls within the claimed ranges. Alternatively, Miyakusu et al. discloses that it is known to include Mo in nonmagnetic austenitic stainless steels in an amount of up to 3 weight percent to improve corrosion resistance [0007-0008, 0013]. Therefore, it would have been obvious to modify the steel of Fujisawa et al. by including the Mo amount of Miyakusu et al. to improve corrosion resistance as stated above. The examiner notes that the Mo amount of Miyakusu et al. overlaps with the claimed range, which is prima facie obvious. See MPEP 2144.05(I).
Claim(s) 1 and 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Debold et al. (US 4,554,028).
Regarding claim 1, Debold et al. discloses an austenitic, nonmagnetic stainless steel having a yield strength of at least 90 ksi, a magnetic permeability of less than 1.02 [col.1 ln.3-5], and a composition as seen in table 2 below [abstract]. Debold et al. further teaches a C+N sum that overlaps with the claimed range [abstract]. The examiner notes that the overlap between the steel composition and yield strength of Debold et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I).
The recitations of “hot rolled annealed” and formula (1) are product-by-process limitations which are only considered to require a structure imparted by the claimed process. See MPEP 2113. The examiner notes that these product-by-process limitations merely impart a structure of no ferrite [p.12 spec.], as well as a yield strength and magnetic permeability as claimed. The disclosure of Debold et al. already overlaps and meets the claimed yield strength and magnetic permeability as noted above. Debold et al. is also silent regarding any inclusion of ferrite and expressly teaches against ferrite, such that one of ordinary skill would understand ferrite to be absent. Therefore, the disclosure of Debold et al. reasonably meets all of the imparted structural features of the aforementioned product-by-process limitations.
Table 2.
Element (wt.%)
Claim 1 (wt.%)
Debold et al. (wt.%)
C
0.02 – 0.12
0 – 0.1
Si
0 – 1.2
0 – 0.6
Mn
0.5 – 1.32
1 – 11
Cr
17 – 22
18 – 23
Ni
11 – 15
14 – 25
Mo
0 – 3
2.5 – 6.5
N
0 – 0.25
At least 0.15
Fe & Impurities
Balance
Balance
Regarding claims 11-13, Debold et al. discloses the steel of claim 1 (see previous). The examiner notes that the steel composition of Debold et al. above further overlaps with the claimed ranges. See MPEP 2144.05(I).
Claim(s) 1 and 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ota et al. (JPS63206454, machine translation referred to herein) alone or alternatively further in view of or evidenced by ASM Handbooks (1993, Selection of wrought austenitic stainless steels) and evidenced by Debold et al. (US 4,554,028).
Regarding claim 1, Ota et al. discloses an austenitic, nonmagnetic stainless steel subjected to hot rolling and annealing [p.3], said steel having a composition as seen in table 3 below [p.2-3, table1]. Ota et al. does not expressly teach a C amount; however, one of ordinary skill would understand that conventional austenitic stainless steels include C amounts which overlap with the claimed range. The examiner notes that the overlap between the steel composition Ota et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I). Alternatively, this is disclosed by ASM Handbooks, which shows that conventional austenitic stainless steels have C amounts of up to 0.08 weight percent, up to 0.15 weight percent, etc. [table1]. Therefore, as evidenced by ASM Handbooks, one of ordinary skill would recognize overlapping C values to naturally be present in austenitic stainless steels. Alternatively, it would have been obvious to one of ordinary skill to modify the steel of Ota et al. by specifying a conventional, well-known C amount as disclosed by ASM Handbooks, wherein said conventional C amounts overlap with the claimed range [table1].
Ota et al. does not teach a sum of C+N as claimed. However, the examiner notes that this limitation merely further limits the C and N ranges, which still overlap with the disclosure of Ota et al. alone or in view of or evidenced by ASM Handbooks. See MPEP 2144.05(I).
Ota et al. does not teach a formula (1) as claimed relating to a cooling rate during casting. However, the examiner notes this feature is a product-by-process limitation which merely imparts a structure of no ferrite as disclosed in [p.12 spec.]. See MPEP 2113. Accordingly, Ota teaches an austenitic structure as stated previously and further is silent regarding any ferrite, such that one of ordinary skill would understand ferrite to be absent, which meets the steel structure imparted by the aforementioned product-by-process limitations.
Ota et al. further teaches achieving exemplary yield strengths of up to approximately 182 kgf/mm2, which overlaps with the claimed ranges [table1]. See MPEP 2144.05(I). Although these particular examples are not specifically relied upon in the above rejections, the examiner submits that one of ordinary skill would understand exemplary properties to be encompassed by the general disclosure of Ota et al.
Ota et al. does not expressly teach a magnetic permeability. However, Ota et al. expressly teaches a nonmagnetic austenitic stainless steel, which is evidenced by Debold et al. to naturally refer to austenitic stainless steels having magnetic permeability values of less than 1.02 [col.1 ln.3-5]. Therefore, as evidenced by Debold et al., the nonmagnetic austenitic stainless steel of Ota et al. would naturally be expected to have a permeability of less than 1.02, which overlaps with the claimed range. See MPEP 2144.05(I).
Table 3.
Element (wt.%)
Claim 1 (wt.%)
Ota et al. (wt.%)
C
0.02 – 0.12
0 – 0.15 (ASM Handbooks)
Si
0 – 1.2
0.1 – 5
Mn
0.5 – 1.32
0.5 – 5
Cr
17 – 22
13 – 30
Ni
11 – 15
5 – 20
Mo
0 – 3
0 – 5
N
0 – 0.25
0.3 – 1.5
Fe & Impurities
Balance
Balance
Regarding claims 11-13, the aforementioned prior art discloses the steel of claim 1 (see previous). The examiner notes that the above composition of Ota et al. further overlaps with the claimed ranges. See MPEP 2144.05(I).
Response to Arguments
Applicant's arguments filed 9/30/2025 have been fully considered but they are not persuasive.
Applicant argues that the prior art references do not meet the narrower claimed scope of “consisting essentially of” as amended. The examiner cannot concur. As explained above, the claim scope must be construed to be equivalent to “comprising”, which does not distinguish over the prior art.
Even if a narrower claim scope were required, the examiner still cannot concur. Fujisawa et al. expressly teaches P as an impurity, which meets the claimed elements [0011]. Debold et al. does not expressly require B or Cu as necessary elements, contrary to applicant’s arguments, such that these elements can be omitted (ie. zero amount) which meets the claims [col.4 ln.29-58].
Applicant again argues that the claimed C+N and formula (1) ranges achieve unexpected and critical results. The examiner cannot concur. Firstly, C and N are well known and understood by those of ordinary skill to affect steel strength through formation of precipitates of carbides/nitrides. Accordingly, the effect of C and N on steel yield strength is not unexpected, but rather wholly expected. See MPEP 716.02(a-c). Furthermore, the examiner notes that evidence of unexpected or critical results must also be of statistical and practical significance, and applicant further has the burden to explain said data and demonstrate how said data is significant. See MPEP 716.02(b-d). However, no explanation has been provided by applicant, and upon further consideration the data of the instant specification appears to show that similar values of yield strength (ie. comparative example 17) of 1,262 MPa can still be achieved without meeting the claimed C+N range, which is a mere difference of approximately 1 percent in yield strength when meeting the claimed range vs. not meeting the claimed range. One of ordinary skill would understand this small percent difference to be both statistically and practically insignificant.
Finally, the prior art of Debold et al. already achieves the claimed permeability and strength values, such that these features cannot be considered to be critical and unexpected when they are expressly taught in the prior art.
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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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734