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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/17/26 has been entered.
Status of Claims
Claims 1-2 and 4 are examined in this office action as claims 5-7 are withdrawn as directed to a non-elected invention.
Claim Interpretation
Claim 1 recites the limitation “A stainless steel” and goes on to recite that the “stainless steel contains 15 wt% or more of Cr”. As steel is an alloy where iron is alloyed with carbon this claim will be interpreted as requiring at least some carbon, 15 wt% or more of chromium, and the balance being iron where the iron makes up at least 50 wt% of the alloy otherwise the claimed material would not be a steel.
Claim Rejections - 35 USC § 102/103
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claims 1-2 and 4 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 2018/0219201 A1 of Kim.
As to claims 1-2 and 4, the claim preamble must be read in the context of the entire claim. The determination of whether preamble recitations are structural limitations or mere statements of purpose or use "can be resolved only on review of the entirety of the [record] to gain an understanding of what the inventors actually invented and intended to encompass by the claim" as drafted without importing "'extraneous' limitations from the specification." Corning Glass Works, 868 F.2d at 1257, 9 USPQ2d at 1966. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999), see MPEP § 2111.02(II). In the instant case, the claim fully sets forth the structure of the stainless steel having a surface oxide and therefore the recitation “for a fuel cell separator” is merely a statement of intended use and does not further limit the claim. Nevertheless, Kim discloses a stainless steel for a fuel cell separator plate (Kim, abstract).
Kim discloses where the composition of the stainless steel comprises 0 to 0.02 wt% C, 25 to 34 wt% Cr, and balance Fe (Kim, claim 2), meeting the claim limitations of including some carbon, balance Fe to make a steel and more than 15 wt% Cr. Kim discloses where a passive film is formed on the stainless steel base material which includes Cr—Fe oxide, a Mn oxide, a Si oxide, a Nb oxide, and the like (Kim, paragraph [0060]), meeting the claim limitations of where there are chromium and other metal oxides on the surface. However, Kim does not explicitly disclose wherein the steel has surface electrical conductivity nor a value of the following surface oxide atomic ratio (1) is 0.08 or more, as measured on a surface of the stainless steel containing 15 wt % or more of Cr by X-ray angle-resolved photoemission spectroscopy using an Al-Kα X-ray source under the condition where a take-off angle of photoelectrons is from 12° to 85°: Sum of atomic concentrations (at%)of Cr in Cr hydroxide / sum of atomic concentrations (at %) of metal elements in total oxides and hydroxides (1) wherein the Cr hydroxide represents CrOOH, Cr(OH)2, or Cr(OH)3, and the total oxides and hydroxides include a Cr oxide, the Cr hydroxide, an Fe oxide, an Fe hydroxide, and a metal oxide (MO), and the metal oxide (MO) includes a mixed oxide, wherein M represents an alloying element other than Cr and Fe or a combination thereof in a matrix, and O represents oxygen nor where a bandgap energy of a surface oxide layer of the stainless steel is 2 eV or less. Also, Kim does not explicitly disclose the properties claimed in claims 2 and 4 of a value of the surface oxide atomic ratio (1) is 0.2 or more and wherein the surface oxide layer of the stainless steel forms an ohmic contact with the matrix.
Nevertheless, as Kim discloses the same chemical composition of stainless steel with greater than 15 wt% Cr and with the same structure of oxides on the surface, the steel in Kim would have the same surface oxide atomic ratio (1) is 0.08 or more and 0.2 or more, where it has excellent surface electrical conductivity, a bandgap energy of a surface oxide layer of the stainless steel is 2 eV or less, wherein the surface oxide layer of the stainless steel forms an ohmic contact with the matrix, and a bandgap energy of a surface oxide layer of the stainless steel is 2 eV or less. “Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)), see MPEP § 2112.01(II).
In the alternative, Kim also discloses a substantially identical method of manufacture of this stainless steel where the steel with a composition of comprises 0 to 0.02 wt% C, 25 to 34 wt% Cr, and balance Fe (Kim, claim 2) is cold rolled using a cold rolling mill (Kim, paragraph [0060]). Kim discloses where the cold rolled sheet is dipped in a sulfuring acid solution followed by a mixed acid solution of nitric and hydrofluoric acid (Kim, paragraph [0023]), where a sulfuric acid solution reads upon a nonoxidizing acid solution and a nitric acid solution reads upon an oxidizing acid solution, and thereby matching the method of forming the claimed stainless steel as disclosed in paragraph [00019], [00022], and [00023] and claim 5 of cold rolling followed by a primary surface treatment in an nonoxidizing acid solution and a secondary surface treatment performed by immersing the sheet in an oxidizing acid solution. As Kim discloses the same starting material, stainless steel sheet with greater than 15 wt% Cr and applies the same method of cold rolling, followed by use of a nonoxidizing and oxidizing acid solution immersion, the same method applied to the same material would necessarily produce the same properties of a surface oxide atomic ratio (1) is 0.08 or more and 0.2 or more, where it has surface electrical conductivity, a bandgap energy of a surface oxide layer of the stainless steel is 2 eV or less, and wherein the surface oxide layer of the stainless steel forms an ohmic contact with the matrix.. “Where 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) (emphasis added), see MPEP § 2112.01(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 and 4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 17/786509 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘509 application claims a substantially identical stainless steel with an identical composition with surface oxides and overlapping ratio of oxides. Further, it also claims an identical method of manufacture for the stainless steel sheet. Claims 2-4 of the ‘509 application are also substantially identical to the instant dependent claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-2 and 4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of copending Application No. 18/038389 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘389 application claims a substantially identical stainless steel with an identical composition with surface oxides and overlapping ratio of oxides. Further, it also claims an identical method of manufacture for the stainless steel sheet. Claims 2-3 of the ‘509 application are also substantially identical to the instant dependent claims..
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
With respect to the 102/103 rejection over Kim, applicant argues that applicant has discovered and defined a unique parameter, the surface oxide element ratio (1) which quantifies the proportion of Cr in the Cr hydroxides to the atomic concentrations of metal elements in oxides and hydroxides which is not a conventional compositional limitation and Kim does not recognize nor measure this parameter and it is not inherently present as it lacks the necessary recognition and measurement (Applicant's remarks, pg. 5, 2nd through 4th paragraphs). Applicant argues that inherency is not established in Kim as it only refers to Cr oxides and does not mention hydroxides, does not measure the ratio of Cr hydroxides to all oxides, does not used AR-XPS angle resolved measurement, does not recognize the exact ratio, nor the correlation with bandgap energy (Applicant’s remarks, pg. 6 2nd paragraph and table). Applicant argues that Kim has a different objective of achieving low interface contact resistant and corrosion resistance while the current application is concerned with achieving surface hydrophilicity and electrical conductivity and as Kim does not recognize the claimed parameter, there would be no motivation to arrive at this parameter (Applicant's remarks, pg. 6, last two paragraphs – pg. 7 first full paragraph).
In response to applicant's argument that Kim does not disclose controlling the surface oxide element ratio and has different objectives, 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). If this were not the case, applicants could continually measure and quantify new parameters and extend their patent rights in new applications arguing that the prior art didn’t “recognize” and measure the property. As Kim discloses the same starting material and applies a substantially identical method thereto, the same properties would naturally flow therefrom. Whether a property is measured or not does not mean that the steel does not possess the property. The fact that applicant is the first to measure a property does not mean that the prior art does not possess the property. Applicant has disclosed a method of manufacturing the material to achieve the claimed surface oxide element ratio and the Kim reference discloses this method and therefore would necessarily possess this property.
Applicant also argues that Kim does not disclose a substantially identical method as Kim employs a 3-step modification process where step 1 and step 2 involve treating in sulfuric acid in specific potential conditions and step 3 in a nitric/hydrofluoric acid mixture whereas the present embodiment is a two-step process with the first step being hydrochloric or sulfuric acid followed by a second nitric acid solution step which excludes electrolysis (Applicant’s remarks, pg. 7, last paragraph and table).
However, it is not clear how Kim’s 3 step process does not read upon the disclosed method of manufacture in the instant specification. While Kim splits the sulfuric acid treatment into two steps with each step having different electrolysis parameters, this meets the disclosed method for making the claimed invention. Applicant merely requires treatment in hydrochloric or sulfuric acid and allows for electrolysis by current. This is followed by another step where a mixed acid solution of nitric and hydrofluoric acid is used to treat the stainless steel in Kim, meeting the instant required treatment in a Nitric acid solution.
Applicant argues that Kim requires electrolysis in the sulfuric acid treatment while the present embodiment excludes electrolysis and relies on immersion which leads to different surface reactions and chemical states (Applicant’s remarks, pg. 8 1st paragraph).
However, applicant’s disclosed method in the specification does not match this description. Applicant’s method merely requires immersing in a nonoxidizing acid solution followed by immersing in a oxidizing acid solution (see claim 5 and paragraphs [00019], [00022], and [00023]) and the disclosure allows for electrolysis (see Inventive Example 6 in Table 2 which involves immersing in sulfuric acid solution followed by electrolytic treatment for 10 seconds).
Applicant argues that Kim uses a mix of nitric and HF acid whereas the present embodiment uses nitric acid alone and explicitly excludes use of HF (Applicant’s remarks, pg. 8, 2nd paragraph).
However, this argument has no basis in the disclosure. There is no mention of hydrofluoric acid either being used or excluded in the specification.
Applicant argues that Kim’s three step process contrasts with the instant two step process and would produce distinct properties (Applicant’s remarks, pg. 8, 3rd paragraph).
However the disclosed method is open to unrecited steps (see claim 5) and there is only a singular immersion in sulfuric acid in Kim, merely the electrolytic treatment is split into two different current densities. Hence, the immersion disclosed in Kim meets the required primary surface treatment performed by immersing the cold-rolled stainless steel sheet in a nonoxidizing solution.
Applicant argues that these process distinctions result in different chemical states in the formed film and as Kim does not use the same process nor targets, the properties are not inherent (Applicant’s remarks, pg. 8, 4th paragraph).
While applicant argues that the Cr hydroxide ratio property is controlled and is a target, this is not a part of the disclosed method. Applicant is not conducting acid treatment for a period, testing the Cr hydroxide ratio, then conducting further acid treatment to achieve a desired ratio. What applicant is disclosing is taking a stainless steel sheet and immersing the sheet in two acid baths. No particular time or other parameters is required in the broadest disclosed method. Applicant discloses that this method achieves the claimed properties. Thus, Kim’s method which also involves immersing in two acid solutions is substantially identical to the disclosed method and therefore would produce the same properties.
Applicant argues that the claimed values for the atomic ratio (1) is not an arbitrary selection, but Table 2 and Figs 1A and 1B show the relationship of bandgap energy to this ratio and therefore this value is critical and unexpected as instead of a passivated film, the instant invention shows that by controlling this ratio, a semiconducting film can be achieved (Applicant’s remarks, pg. 8 last paragraph – pg. 9 3rd paragraph).
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "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(d). Further, 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. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960), see MPEP § 716.02(d)(II). In this case, the claims are directed to all stainless steels with all potential compositions while the data in the tables and figures are limited to the stainless steel composition in paragraphs [0056]-[0080] of the specification. Thus, applicant’s arguments are not commensurate in scope with the claims. Further, it is not clear how the substantially identical method applied to the identical compositional starting material would not produce the same properties. While applicant may have applied a new way to quantify the product, this does not demonstrate that the product is not obvious in view of the Kim disclosure. Thus applicant’s arguments are not persuasive and the rejection is maintained.
Finally, applicant addresses the Double Patenting rejections over copending applications 17/786509 and 18/038389 by noting that they will be addressed upon indication that claims in one of the applications is indicated as allowable (Applicant’s remarks, pg. 10, first 2 paragraphs).
However, the instant amendments do not overcome the double patenting rejection and therefore the rejections are maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Joshua S Carpenter whose telephone number is (571)272-2724. The examiner can normally be reached Monday - Friday 8:00 am - 5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached on (571) 272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSHUA S CARPENTER/Examiner, Art Unit 1733
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
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