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) 1-13, 16, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Ide et al. (US 2012/0118442 A1) herein Ide, as evidenced by Abe et al. (US 2017/0275723 A1) herein Abe.
Ide discloses a ferritic stainless steel (0031, Ide) wherein the steel has corrosion resistance (0040, Ide). Ide does not specify sheet forming properties however the examiner notes that as discussed above any steel will have sheet forming properties. The examiner notes that the steel of Ide may take the form of a sheet (0050, Ide).
Ide does not specify that the steel is produced through AOD, however the examiner notes that this is merely an instance of product by process and does not further limit the ferritic stainless steel itself. See MPEP 2113. The examiner notes that applicant discloses that AOD is preferred because it is cheaper than alternative methods such as VOD (page 1 lines 16-20, instant spec).
The steel may comprise laves phase precipitates which have equivalent circle diameters of 0.1 µm or more (0020, 0046, Ide). The examiner notes that precipitates with diameters of 0.1 µm or more may be considered as particles.
The steel comprises a composition shown below in Table 1 which overlaps with the instantly claimed composition. The examiner notes that Ide does not specify the equations of the instant claims, however the examiner notes that these equations merely further limit the composition of the steel which still overlaps with the steel of Ide. The examiner notes that the overlap of the steel compositions of the instant claims and Ide is prima facie obvious. See MPEP 2144.05(I). The examiner notes that Ide discloses further optional elements, however Ide does not require elements outside of those instantly claimed and so meets the limitation of consisting. See MPEP 2111.03(II).
Ide discloses that the precipitates that the laves phase is A2B wherein A represents Fe, Cr, Si, or the like and B represents Nb, Mo, W, or the like (0026, Ide). Ide does not specify a dissolution temperature for the Laves phases, however the examiner notes that overlapping dissolution temperatures would naturally flow as evidenced by Abe. Abe discloses a ferritic stainless steel (0001, Abe) wherein the Laves phase may be Fe2Nb and has a dissolution temperature of 950-1050°C (0088, Abe). The examiner notes that Ide disclosing A2B wherein A represents Fe, Cr, Si, or the like and B represents Nb, Mo, W, or the like allows for the Laves phase Fe2Nb and so allows for Laves phases with dissolution temperatures of 950-1050°C and thus the dissolution temperatures of Ide overlap with the instantly claimed dissolution temperature of ≥900°C. The examiner notes that the overlap of the Laves dissolution temperatures of the instant claim and Ide is prima facie obvious. See MPEP 2144.05(I).
The examiner notes that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). MPEP 2144.05
Table 1
Instant claims, weight%
Ide, mass% (0032)
C
0.003-0.035 (claim 1)
0.003≤C<0.03 (claim 2)
≤0.01 (0032)
Si
0.05-1.0 (claim 1)
≤1 (0033)
Mn
0.10-0.8 (claim 1)
0.10-0.65 (claim 3)
≤1 (0034)
Cr
18-24 (claim 1)
20.0≤Cr<22.0 (claim 4)
20-40 (0039)
Ni
0.05-0.8 (claim 1)
0.05≤Ni<0.5 (claim 5)
≤1 (0043)
Mo
0.003-2.5 (claim 1)
0.003-0.5 (claim 6)
0.5-2.5 (claim 7)
≤4 (0040)
Cu
0.2-0.8 (claim 1)
0.2≤Cu<0.5 (claim 8)
≤1 (0043)
N
0.003-0.05 (claim 1)
0.003≤N<0.03 (claim 9)
≤0.02 (0038)
Ti
0.05-1.0 (claim 1)
0.07-0.40 (claim 10)
Nb+Ti+Zr: 0.05-0.6 (0041)
Nb
0.05-1.0 (claim 1)
Nb+Ti+Zr: 0.05-0.6 where Nb approaches 0.6 and Ti and Zr approaches 0 or Nb approaches 0.5 and Ti + Zr approaches 0.1 (0041)
V
0.03-0.5 (claim 1)
0.03-0.20 (claim 11)
≤1 (0043)
Al
0.010-0.04 (claim 1)
≤0.2 (0037)
Fe and impurities
Remainder (claim 1)
Balance (0044)
C+N
<0.06 (claim 1)
8≤(Ti+Nb)/(C+N)<40 (claim 1)
20≤(Ti+Nb)/(C+N)<30 (claim 12)
6≤(Ti+0.515*Nb+0.940*V)/(C+0.858*N)<40 (claim 1)
15≤(Ti+0.515*Nb+0.940*V)/(C+0.858*N)<30 (claim 13)
Leq: 5.8*Nb+5*Ti*Si
≥3.3 (claim 1)
≥4.5 (claims 14, 17, 19)
Regarding claim 16, the laves phases of Ide have a structure of A2B wherein A may be Fe, Cr, Si, or the like and B may be Nb, Mo, W, or the like (0026, Ide). The examiner submits it would have been obvious to one of ordinary skill in the art that B of A2B may also be Ti because Ti and Nb are taught by Ide to be substitutes for each other for the same benefits and both being capable of forming intermetallics (0042, Ide). The examiner notes that Laves phases are intermetallics.
Regarding claims 20, as shown above, Ide suggests Ti approaching 0.1 (0041). Overlapping ranges are prima facie obvious.
8. Applicant argues Hideshima does not teach or suggest an Nb content more than 0.5%. The examiner disagrees. While Hideshima does teach an upper range of 0.5% (Hideshima, para 38), as stated in the above rejection, it would have been within the skill of one of ordinary skill in the art to select a value slightly above 0.5% in order to provide stabilization of C and N.
Finally, the examiner notes that for Ide values where Nb = 0.51%, Ti = 0.11%, Si = 1.0-1.1%, C = 0.01%, N = 0.02%, the ratio of (ti+nb)/(C+N)= 20.67; the Tieq/Ceq = 14.85, and Leq = 3.5-3.8. The examiner notes that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). MPEP 2144.05
Claim(s) 1-14 and 16-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hideshima et al. (US 2004/0244884 A1) herein Hideshima.
Hideshima discloses a ferritic stainless steel (0002, Hideshima) with good corrosion resistance as a goal (0004, 0032, 0036, 0040, 0042, Hideshima).
Hideshima does not specify sheet forming properties however the examiner notes that as discussed above any steel will have sheet forming properties. The examiner notes that the steel of Hideshima may take the form of a sheet (0002, Hideshima).
Hideshima does not specify that the steel is produced through AOD, however the examiner notes that this is merely an instance of product by process and does not further limit the ferritic stainless steel itself. See MPEP 2113. The examiner notes that applicant discloses that AOD is preferred because it is cheaper than alternative methods such as VOD (page 1 ll. 16-20, instant spec).
Hideshima discloses that Laves phases may be present as precipitates (0056, Hideshima) wherein precipitates are particles (0009, Hideshima).
The steel comprises a composition shown below in Table 2 which overlaps with the instantly claimed composition. The examiner notes that Hideshima does not specify the equations of the instant claims, however the examiner notes that these equations merely further limit the composition of the steel which still overlaps with the steel of Hideshima. The examiner notes that the overlap of the steel compositions of the instant claims and Hideshima is prima facie obvious. See MPEP 2144.05(I). The examiner notes that Hideshima discloses further optional elements, however Hideshima does not require elements outside of those instantly claimed and so meets the limitation of consisting. See MPEP 2111.03(II).
Hideshima does not disclose the types of Laves phase present or their dissolution temperatures, however the examiner notes that overlapping Laves phases would naturally flow. The instant application discloses that the Laves phase particles are formed quickly in exposure to temperatures of 650-850°C (P12/L15-16, instant spec). Hideshima discloses hot roll annealing at 450-1080°C (0062, Hideshima) and finish annealing at ≤1080°C wherein the temperature is controlled to avoid re-dissolution of precipitates and growth of coarse grains (0068, Hideshima). The examiner submits that overlapping Laves particles with those instantly claimed would naturally flow from Hideshima because Hideshima discloses an overlapping composition and overlapping heat treatment temperatures required to form the instantly claimed Laves particles. See MPEP 2144.05(I) and 2145.
With respect to the claimed Nb content, it’s the examiner’s position that Hideshima’s Nb content of 0.1-0.5%, while the disclosed and claimed range does not overlap but are merely close, establishes a prima facie case of obviousness in order to provide stabilization of C and N (See MPEP 2144.04, I and Hideshima para 38).
Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."
Table 2
Instant claims, weight%
Hideshima, mass%
C
0.003-0.035 (claim 1)
0.003≤C<0.03 (claim 2)
≤0.02 (0021)
Si
0.05-1.0 (claim 1)
≤0.8 (0023)
Mn
0.10-0.8 (claim 1)
0.10-0.65 (claim 3)
≤1.5 (0025)
Cr
18-24 (claim 1)
20.0≤Cr<22.0 (claim 4)
8-35 (0031)
Ni
0.05-0.8 (claim 1)
0.05≤Ni<0.5 (claim 5)
≤0.50 (0039)
Mo
0.003-2.5 (claim 1)
0.003-0.5 (claim 6)
0.5-2.5 (claim 7)
≤3.0 (0041)
Cu
0.2-0.8 (claim 1)
0.2≤Cu<0.5 (claim 8)
≤2.0 (0043)
N
0.003-0.05 (claim 1)
0.003≤N<0.03 (claim 9)
≤0.05 (0033)
Ti
0.05-1.0 (claim 1)
0.07-0.40 (claim 10)
0.05-0.4 (0035)
Nb
0.05-1.0 (claim 1)
0.1-0.5 and slightly above 0.5 (0037)
V
0.03-0.5 (claim 1)
0.03-0.20 (claim 11)
≤0.3 (0045)
Al
0.010-0.04 (claim 1)
≤0.3 (0047)
Fe and impurities
Remainder (claim 1)
Balance (0010)
C+N
<0.06 (claim 1)
8≤(Ti+Nb)/(C+N)<40 (claim 1)
20≤(Ti+Nb)/(C+N)<30 (claim 12)
6≤(Ti+0.515*Nb+0.940*V)/(C+0.858*N)<40 (claim 1)
15≤(Ti+0.515*Nb+0.940*V)/(C+0.858*N)<30 (claim 13)
Leq: 5.8*Nb+5*Ti*Si
≥3.3 (claim 1)
≥4.5 (claims 14, 17, 19)
The examiner notes that Hideshima would have suggested the following values:Nb = 0.55% (Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)); Ti = 0.40% ; Si = 0.79% ; C = 0.019%, N = 0.010%; V = 0.30% such that
Leq = 4.77; ((Ti+Nb)/(C+N) = 32.76; and Tieq/Ceq = 34.99
Response to Arguments
Applicants argue all but two of Ides examples include only one of Nb, Ti, and Zr. The examiner notes that the references are not limited to the teachings in the examples. In this case, Ide broadly teaches it’s Nb, Ti, and Zr elements may be added alone or in combination in the range of 0.05 to 0.6% (Ide para 42). So, for example, as one of ordinary skill selects an Nb amount that approaches 0.6% and Ti and Zr amounts approach 0, it’s the examiner’s position that the claimed limitations are met.
Applicants argue that Ide does not recognize the benefits of a steel composition having a Leq value >= 3.3. The examiner notes that 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).
Applicant argues that Ide teaches Nb, Ti, and Zr are limited to be between 0.05 and 6%. The examiner disagrees. It would have been within the skill of one of ordinary skill in the art to select values slightly outside of the disclosed range with the expectation that those values would have the same properties. The examiner notes that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). MPEP 2144.05
Applicant argues Hideshima teaches away from an Nb that exceeds 0.5%. The examiner disagrees. As explained previously, one of ordinary skill would merely weigh increased strength with the trade off of exaggerated precipitation. Applicants point to values in Hideshima of 0.8% Nb as evidence that excess Nb cracked (p. 9). The examiner notes that legal basis for the rejection involves values that are “merely close” (titanium metals). 0.8% is not close as it is much further apart than the 0.55% value stated in the rejection.
Conclusion
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JONATHAN JOHNSON
Primary Examiner
Art Unit 1734
/JONATHAN JOHNSON/Primary Examiner, Art Unit 1734
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