DETAILED ACTION
Claims 1 and 5-11 are pending, and claims 1 and 5-6 are currently under review.
Claims 2-4 are cancelled.
Claims 7-11 are withdrawn.
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 .
Response to Amendment
The amendment filed 12/15/2025 has been entered. Claims 1 and 5-11 remain(s) pending in the application.
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 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Talonen (US 2017/0268076).
Regarding claim 1, Talonen discloses an austenitic stainless steel having a composition as seen in table 1 below [abstract, 0009]. The examiner notes that the overlap between the composition of Talonen and that as claimed is prima facie obvious. See MPEP 2144.05(I). Talonen does not expressly teach compositional formulas (1) to (3) as claimed. However, the examiner notes that these formulas merely further limit the Mn, C, Cu, Cr, Ni, N, and Si amounts, which still overlaps with the disclosed ranges of Talonen. See MPEP 2144.05(I). Talonen further teaches a grain size of less than 5 micrometers which falls within the claimed range [claim10].
Talonen does not expressly teach a tensile strength and yield strength as claimed. However, the examiner submits that overlapping strength values would have naturally flowed from the prior art, which is prima facie obvious. See MPEP 2112 & MPEP 2144.05(I). Specifically, one of ordinary skill would readily understand that mechanical properties (ie. strength) depend upon the microstructure and composition of the steel and as discussed above the steels of the instant application and Talonen have an identical microstructure and overlapping compositions, and so the examiner submits that overlapping mechanical properties, including yield and tensile strengths, would naturally flow from the steel of Talonen, which is prima facie obvious.
Alternatively, the instant specification discloses that the instantly claimed mechanical property ranges are achieved by controlling the alloy composition, cold annealing in the range of 800-1000°C, and cold reducing at >50% reduction ratio [000116-000117, instant spec]. Talonen discloses annealing at 700-1050°C with cold reduction of at least 50% [0010, Talonen]. Since Talonen discloses an overlapping steel composition and method of manufacture, one of ordinary skill in the art would have expected mechanical properties overlapping with those as instantly claimed to naturally flow from Talonen. See MPEP 2112 & MPEP 2144.05(I).
Table 1.
Element (wt.%)
Claim 1 (wt.%)
Talonen (wt.%)
C
0.06 – 0.15
0 – 0.4
N
0 – 0.3
0.05 – 0.5
Si
1 – 2
0 – 3
Mn
5 – 7
3 – 20
Cr
15 – 16
10 – 30
Ni
0 – 0.3
0 – 4.5
Cu
0 – 2.5
0 – 3
Fe & Impurities
Balance
Balance
Regarding claims 5-6, Talonen discloses the steel of claim 1 (see previous). Talonen does not expressly teach an elongation as claimed. However, the examiner submits that overlapping elongation values would have naturally flowed from the prior art, which is prima facie obvious. See MPEP 2112 & MPEP 2144.05(I). Specifically, one of ordinary skill would readily understand that mechanical properties (ie. elongation) depend upon the microstructure and composition of the steel and as discussed above the steels of the instant application and Talonen have an identical microstructure and overlapping compositions, and so the examiner submits that overlapping mechanical properties, including elongation, would naturally flow from the steel of Talonen, which is prima facie obvious.
Alternatively, the instant specification discloses that the instantly claimed mechanical property ranges are achieved by controlling the alloy composition, cold annealing in the range of 800-1000°C, and cold reducing at >50% reduction ratio [000116-000117, instant spec]. Talonen discloses annealing at 700-1050°C with cold reduction of at least 50% [0010, Talonen]. Since Talonen discloses an overlapping steel composition and method of manufacture, one of ordinary skill in the art would have expected mechanical properties overlapping with those as instantly claimed to naturally flow from Talonen. See MPEP 2112 & MPEP 2144.05(I).
Claim(s) 1 and 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Leinonen (EP3878983).
Regarding claim 1, Leinonen discloses an austenitic stainless steel having a composition as seen in table 2 below [abstract, 0032-0033]. The examiner notes that the overlap between the composition of Leinonen and that as claimed is prima facie obvious. See MPEP 2144.05(I). Leinonen does not expressly teach compositional formulas (1) to (3) as claimed. However, the examiner notes that these formulas merely further limit the Mn, C, Cu, Cr, Ni, N, and Si amounts, which still overlaps with the disclosed ranges of Leinonen. See MPEP 2144.05(I). Leinonen et al. further teaches achieving a yield strength of at least 500 MPa and a tensile strength of at least 720 MPa, which also overlaps with the claimed ranges [0026-0027]. Leinonen further teaches a grain size of 0.5 to 5 micrometers, which falls within the claimed range [0025].
Table 2.
Element (wt.%)
Claim 1 (wt.%)
Leinonen (wt.%)
C
0.06 – 0.15
0 – 0.3
N
0 – 0.3
0 – 0.8
Si
1 – 2
0 – 3
Mn
5 – 7
0 – 21
Cr
15 – 16
15 – 28
Ni
0 – 0.3
0 – 26
Cu
0 – 2.5
0 – 4
Fe & Impurities
Balance
Balance
Regarding claims 5-6, Leinonen discloses the steel of claim 1 (see previous). Leinonen further teaches an elongation of at least 20 percent, which overlaps with the claimed ranges [0028]. See MPEP 2144.05(I).
Response to Arguments
The previous double patenting rejections have been withdrawn in view of applicant’s amendments.
Applicant's arguments filed 12/15/2025 have been fully considered but they are not persuasive.
Applicant argues that the instant application controls grain size and phase stabilization by different means relative to the cited prior art. In response, the examiner notes that the instant claims are directed to a steel product, wherein the cited prior art teaches all of the compositional and structural limitations of the claimed product. The specific means by which the claimed composition and structure is achieved is irrelevant to patentability. See MPEP 2113. Again, if applicant is arguing that the claimed formulas achieve critical and unexpected results over the prior art, the examiner cannot concur absent specific reasoning and/or evidence demonstrating said criticality and unexpected results, which applicant has not presented.
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 NICHOLAS A WANG whose telephone number is (408)918-7576. The examiner can normally be reached usually M-Th: 7-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 5712721177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734