DETAILED ACTION
Response to Amendment
The Amendment filed 06/05/2026 has been entered. Claims 1-7 and 10-14 remain pending in the application. Claims 1-5 have been withdrawn due to a restriction requirement. Claims 8 and 9 have been canceled. New claims 10-14 have been added. Claims 6-7 and 10-14 are presented for examination on the merits. The nonstatutory double patenting rejection previously set forth in the Non-Final Rejection mailed 03/06/2026 is maintained.
Claim Interpretation
Regarding claim 6, note that the limitation “for a clamp” is an intended use limitation that does not impart any structural limitations to the claimed steel. “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.” See MPEP §2111.02 (Il). In this case, a ferritic stainless steel of the prior art meeting the structural limitations of the claimed steel will be interpreted as being capable of being used “for a clamp”.
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 6-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of copending Application No. 17/286,761 (reference application).
The reference application claims “a ferritic stainless steel for clamps, the ferritic stainless steel comprising, in percent (%) by weight of the entire composition, C: 0.04 to 0.1%, Si: 0.2 to 0.35%, Mn: 0.01 to 1.5%, Cr: 14.0 to 18.0%, Al: 0.043 to 0.1%, V: 0.03 to 0.1%, N: 0.02 to 0.1%, the remainder being iron (Fe) and inevitable impurities, and satisfying following formulas (1) and (2), wherein the ferritic stainless steel has a yield strength of 320 MPa or more, a tensile strength of 510 MPa or more, and an elongation of 20% or more, wherein a number of precipitates with an average diameter of 0.5 μm or less is 2.5 x 106 pieces/mm2 or more, and wherein the precipitate comprises a Cr carbide and/or Cr nitride, (1) 0.35% , Si+Al+V - 0.6% (2) 0.09% 5 C+N - 0.12% where Si, Al, V, C, and N mean the content (% by weight) of each element.” The reference application further claims “the ferritic stainless steel according to claim 1, further comprising: any one or more selected from a group consisting of Ni: 0.001 to 0.5%, P: 0.05% or less, and S: 0.005% or less”.
Although the claims at issue are not identical, they are not patentably distinct from each other because of overlapping chemical compositions, microstructures (both are ferritic stainless steels and include Cr carbide or nitrides of overlapping sizes in overlapping amounts), and properties including yield strength, tensile strength, and elongation. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. See MPEP § 2144.05 I.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 10 and 14 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.
Claim 10 recites the limitation “comprising (Cr,Fe)23C6 and (Cr, Fe)7C3 carbides”. This limitation renders the claim indefinite since it is unclear whether the claimed (Cr,Fe)23C6 and (Cr, Fe)7C3 carbides are intended to modify the (Cr,Fe)-carbide or (Cr,Fe)-nitrides precipitates of claim 6, if the (Cr,Fe)23C6 and (Cr, Fe)7C3 carbides are additional carbides to the precipitates of claim 6, or a different interpretation.
Claim 14 recites the limitation “comprising Cr2N nitride”. This limitation renders the claim indefinite since it is unclear whether the claimed Cr2N nitride is intended to modify the (Cr,Fe)-carbide or (Cr,Fe)-nitrides precipitates of claim 6, if the Cr2N nitride is additional to the precipitates of claim 6, or a different interpretation.
Claim 11 is rejected under 35 U.S.C. 112(d), as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 11 recites the limitation “comprising, by weight, 12.0 to 18.0% of Cr”. Claim 6, upon which claim 11 depends, recites 14.0 to 18.0% Cr, which is a narrower content range than that of claim 11. Since claim 11 attempts to broaden the Cr content range of claim 6, claim 11 fails to include all the limitations of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 6-7 and 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over US 4986857 A of Hewitt.
Regarding claims 6-7 and 10-14, Hewitt teaches corrosion resistant steels from which martensite microstructures are generally absent (Title). Hewitt teaches typical corrosion resistant steels include 3CR12, 4003, and 409 and further teaches a ferrite factor used to improve properties of the instant invention and ferritic stainless steels (col. 1, lines 43-65; col. 2, lines 50-61; corrosion resistant steels of Hewitt read on claimed ferritic stainless steel for a clamp; one of ordinary skill in the art further understands 3CR12, 4003 and 409 are ferritic stainless steels).
List 1
Instant claims (weight %)
Hewitt (mass%)
C
0.0631-0.0690
0.25 max
Si
0.2-0.4
2.0 max
Mn
0.01-1.5
2.5 max
Cr
14-18
12-18 (claim 11)
10-18
Al
0.005-0.2
0.005-0.1 (claim 12)
0.5 max
V
0.005-0.2
0.005-0.1 (claim 13)
0-1.0
N
0.02-0.1
0.1 max
One or more selected from:
Ni
0.001-0.5 (claim 7)
0-5
P
≤ 0.05 (claim 7)
0.1 max
S
≤ 0.005 (claim 7)
-
Optional: Mo, Zr, Nb, Cu
Fe and inevitable impurities
Remainder
Balance (“and unavoidable impurities”)
Expression (1)
0.35-0.6
0-3.5 (calculated)
Expression (2)
0.09-0.12
0-0.35 (calculated)
Yield strength
≥ 350 MPa
350 MPa (“proof stress”)
Tensile strength
≥ 510 MPa
520 MPa
Elongation rate (%)
≥ 20%
25%
Hewitt teaches a steel with a chemical composition (col. 2, lines 35-49; claims 2 and 24; one of ordinary skill in the art understands wt% and mass% are used interchangeably in the steel arts), microstructure (col. 1, lines 46-61; col. 3, lines 50-61; “absence of martensite microstructures” in Abstract), yield strength (col. 2, lines 5-6, “proof stress” is used as a synonym for “yield strength”), tensile strength (col. 2, lines 5-12), and elongation rate (col. 2, lines 5-12) overlapping or lying within the claimed ranges of the claimed steel, as shown in List 1. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Since Hewitt teaches Mo, Zr, Nb, and Cu include a value of 0% (col. 2, lines 35-49), these elements are considered optional elements and the broader disclosure of Hewitt includes steels which do not include these optional elements.
Hewitt therefore reads on the limitations a ferritic stainless steel for a clamp, comprising, by weight, 0.0631 to 0.0690 % of C, 0.2 to 0.4% of Si, 0.01 to 1.5% of Mn, 14.0 to 18.0% of Cr, 0.005 to 0.2% of Al, 0.005 to 0.2% of V, 0.02 to 0.1 % of N, and the remainder as Fe and inevitable impurities of claim 1, having a yield strength of 350 MPa or more and having a tensile strength of 510 MPa or more and an elongation rate of 20% or more of claim 1, further comprising any one or more selected from the group consisting of 0.001 to 0.5% of Ni, 0.05% or less of P, and 0.005% or less of S of claim 7, comprising, by weight, 12.0 to 18.0% of Cr of claim 11, comprising, by weight, 0.005 to 0.1% of Al of claim 12, and comprising, by weight, 0.005 to 0.1% of V of claim 13.
While Hewitt does not explicitly disclose Expression (1) and Expression (2), performing the calculations results in values overlapping with the claimed ranges as shown in List 1. Using the minimum and maximum contents for Si, Al, V, C, and N of Hewitt results in the following Expression (1) and Expression (2):
0% ≤ Si + Al + V ≤ 3.5%, and
0% ≤ C + N ≤ 0.35%,
which overlap with the ranges of the claimed expressions, as shown in List 1. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Hewitt therefore reads on the limitation reads on the limitation satisfying the following Expressions (1) and (2) where (1) 0.35% ≤ Si + Al + V ≤ 0.6% and (2) 0.09% ≤ C + N ≤ 0.12% of claim 6.
Regarding processing, Hewitt teaches producing a steel without reheating in an annealing furnace (claim 1).
However, Hewitt does not explicitly disclose which includes (CrFe)-carbide or (CrFe)-nitrides precipitates, wherein at least 2.5 x106 (CrFe)-carbide or (CrFe)-nitride precipitates having an average diameter of 0.5 μm or less per mm2 are distributed of claim 6, comprising (Cr,Fe)23C6 and (Cr,Fe)7C3 carbides of claim 10, and comprising Cr2N nitride of claim 14.
Since the steel of Hewitt has overlapping composition, microstructure, yield strength, tensile strength, and elongation rate with the claimed invention, one of ordinary skill in the art would reasonably expect the steel of modified Hewitt to possess the claimed carbides and nitrides.
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). See MPEP § 2112.01 I. “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. Therefore, it is expected that the steel of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (see compositional analysis above), b) the claimed and prior art products are identical or substantially identical in structure (both steels are ferritic, as described above), and c) the claimed and prior art products are produced by identical or substantially identical processes (both omit a hot-rolling annealing step). Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
Given the overlap of composition, microstructure, and processing of the steel of Hewitt and the claimed invention, one of ordinary skill in the art would reasonably expect the steel of Hewitt to possess the claimed (CrFe)-carbide or (CrFe)-nitrides precipitates, wherein at least 2.5 x106 (CrFe)-carbide or (CrFe)-nitride precipitates having an average diameter of 0.5 μm or less per mm2 are distributed of claim 6, (Cr,Fe)23C6 and (Cr,Fe)7C3 carbides of claim 10, and Cr2N nitride of claim 14.
Hewitt therefore reads on the limitations (CrFe)-carbide or (CrFe)-nitrides precipitates, wherein at least 2.5 x106 (CrFe)-carbide or (CrFe)-nitride precipitates having an average diameter of 0.5 μm or less per mm2 are distributed of claim 6, comprising (Cr,Fe)23C6 and (Cr,Fe)7C3 carbides of claim 10, and comprising Cr2N nitride of claim 14.
Hewitt therefore reads on all the limitations of claims 6-7 and 10-14.
Claims 6-7 and 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over US 4986857 A of Hewitt in view of JP 3314834 B2 of Minamino (with reference to its English machine translation).
Regarding claims 6-7 and 10-14, Hewitt teaches corrosion resistant steels from which martensite microstructures are generally absent (Title). Hewitt teaches typical corrosion resistant steels include 3CR12, 4003, and 409 and further teaches a ferrite factor used to improve properties of the instant invention and ferritic stainless steels (col. 1, lines 43-65; col. 2, lines 50-61; corrosion resistant steels of Hewitt read on claimed ferritic stainless steel for a clamp; one of ordinary skill in the art further understands 3CR12, 4003 and 409 are ferritic stainless steels).
List 2
Instant claims (weight %)
Hewitt (mass%)
Minamino (wt%)
Minamino Example 1 (wt%)
C
0.0631-0.0690
0.25 max
0.04-0.10
0.063
Si
0.2-0.4
2.0 max
≤ 1.0
0.47
Mn
0.01-1.5
2.5 max
≤ 1.0
0.41
Cr
14-18
12-18 (claim 11)
10-18
13-18
13.38
Al
0.005-0.2
0.005-0.1 (claim 12)
0.5 max
-
-
V
0.005-0.2
0.005-0.1 (claim 13)
0-1.0
-
-
N
0.02-0.1
0.1 max
0.03-0.06
0.0317
One or more selected from:
Ni
0.001-0.5 (claim 7)
0-5
-
-
P
≤ 0.05 (claim 7)
0.1 max
≤ 0.040
0.023
S
≤ 0.005 (claim 7)
-
≤ 0.040
0.003
Optional: Mo, Zr, Nb, Cu
Fe and inevitable impurities
Remainder
Balance (“and unavoidable impurities”)
Balance (“and unavoidable impurities”)
Balance (“and unavoidable impurities”)
Expression (1)
0.35-0.6
0-3.5 (calculated)
0-1.0 (calculated)
0.47 (calculated)
Expression (2)
0.09-0.12
0-0.35 (calculated)
0.07-0.16 (calculated)
0.095 (calculated)
Yield strength
≥ 350 MPa
350 MPa (“proof stress”)
-
-
Tensile strength
≥ 510 MPa
520 MPa
-
-
Elongation rate (%)
≥ 20%
25%
-
-
Hewitt teaches a steel with a chemical composition (col. 2, lines 35-49; claims 2 and 24; one of ordinary skill in the art understands wt% and mass% are used interchangeably in the steel arts), microstructure (col. 1, lines 46-61; col. 3, lines 50-61; “absence of martensite microstructures” in Abstract), yield strength (col. 2, lines 5-6, “proof stress” is used as a synonym for “yield strength”), tensile strength (col. 2, lines 5-12), and elongation rate (col. 2, lines 5-12) overlapping or lying within the claimed ranges of the claimed steel, as shown in List 2. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Since Hewitt teaches Mo, Zr, Nb, and Cu include a value of 0% (col. 2, lines 35-49), these elements are considered optional elements and the broader disclosure of Hewitt includes steels which do not include these optional elements.
The Examiner notes that, while Hewitt teaches overlapping contents for C, the 0.25 mass% max carbon content of the steel of Hewitt is broader than the 0.0631 to 0.0690 weight% C of the claimed invention.
Minamino teaches a ferritic stainless steel sheet (Title) with overlapping composition ([0004]-[0009], Table 1), as shown in List 2. Minamino and Hewitt are considered analogous art since they are similarly concerned with ferritic stainless steel sheets.
Minamino teaches in order to achieve a proper balance in terms of cost and manufacturability, the content of C must be 0.04% with an upper limit of 0.10% to avoid adversely affecting the workability of the steel ([0006], ranges overlap with the claimed C ranges). Minamino further teaches an inventive example with 0.63% C (Example 3 of Table 1, C content of Minamino is infinitesimally close to the claimed lower limit of 0.0631%C).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the carbon content of the steel of Hewitt with the narrower range of Minamino, such as within claimed ranges, to balance cost and manufacturability, and reduce negative impact to the steel’s workability, as taught by Minamino.
In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Modified Hewitt therefore reads on the limitations a ferritic stainless steel for a clamp, comprising, by weight, 0.0631 to 0.0690 % of C, 0.2 to 0.4% of Si, 0.01 to 1.5% of Mn, 14.0 to 18.0% of Cr, 0.005 to 0.2% of Al, 0.005 to 0.2% of V, 0.02 to 0.1 % of N, and the remainder as Fe and inevitable impurities of claim 1, having a yield strength of 350 MPa or more and having a tensile strength of 510 MPa or more and an elongation rate of 20% or more of claim 1, further comprising any one or more selected from the group consisting of 0.001 to 0.5% of Ni, 0.05% or less of P, and 0.005% or less of S of claim 7, comprising, by weight, 12.0 to 18.0% of Cr of claim 11, comprising, by weight, 0.005 to 0.1% of Al of claim 12, and comprising, by weight, 0.005 to 0.1% of V of claim 13.
While Hewitt does not explicitly disclose Expression (1) and Expression (2), performing the calculations results in values overlapping with the claimed ranges as shown in List 2. Using the minimum and maximum contents for Si, Al, V, C, and N of Hewitt results in the following Expression (1) and Expression (2):
0% ≤ Si + Al + V ≤ 3.5%, and
0% ≤ C + N ≤ 0.35%,
which overlap with the ranges of the claimed expressions, as shown in List 2. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Modified Hewitt therefore reads on the limitation reads on the limitation satisfying the following Expressions (1) and (2) where (1) 0.35% ≤ Si + Al + V ≤ 0.6% and (2) 0.09% ≤ C + N ≤ 0.12% of claim 6.
Regarding processing, Hewitt teaches producing a steel without reheating in an annealing furnace (claim 1).
However, Hewitt does not explicitly disclose which includes (CrFe)-carbide or (CrFe)-nitrides precipitates, wherein at least 2.5 x106 (CrFe)-carbide or (CrFe)-nitride precipitates having an average diameter of 0.5 μm or less per mm2 are distributed of claim 6, comprising (Cr,Fe)23C6 and (Cr,Fe)7C3 carbides of claim 10, and comprising Cr2N nitride of claim 14.
Since the steel of Hewitt has overlapping composition, microstructure, yield strength, tensile strength, and elongation rate with the claimed invention, one of ordinary skill in the art would reasonably expect the steel of modified Hewitt to possess the claimed carbides and nitrides.
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). See MPEP § 2112.01 I. “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. Therefore, it is expected that the steel of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (see compositional analysis above), b) the claimed and prior art products are identical or substantially identical in structure (both steels are ferritic, as described above), and c) the claimed and prior art products are produced by identical or substantially identical processes (both omit a hot-rolling annealing step). Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
Given the overlap of composition, microstructure, and processing of the steel of Hewitt and the claimed invention, one of ordinary skill in the art would reasonably expect the steel of Hewitt to possess the claimed (CrFe)-carbide or (CrFe)-nitrides precipitates, wherein at least 2.5 x106 (CrFe)-carbide or (CrFe)-nitride precipitates having an average diameter of 0.5 μm or less per mm2 are distributed of claim 6, (Cr,Fe)23C6 and (Cr,Fe)7C3 carbides of claim 10, and Cr2N nitride of claim 14.
Modified Hewitt therefore reads on the limitations (CrFe)-carbide or (CrFe)-nitrides precipitates, wherein at least 2.5 x106 (CrFe)-carbide or (CrFe)-nitride precipitates having an average diameter of 0.5 μm or less per mm2 are distributed of claim 6, comprising (Cr,Fe)23C6 and (Cr,Fe)7C3 carbides of claim 10, and comprising Cr2N nitride of claim 14.
Modified Hewitt therefore reads on all the limitations of claims 6-7 and 10-14.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over US 4986857 A of Hewitt in view of JP 3314834 B2 of Minamino (with reference to its English machine translation), as applied to claim 6 above, and further in view of JP 2006/299374 A of Hatano (as cited in prior Office action and on IDS mailed 03/27/2024 with reference to provided translation).
Modified Hewitt teaches the steel of claim 6 as described above.
The Examiner notes that, while Hewitt teaches overlapping contents for V, the 1.0 mass% max V content of the steel of Hewitt is broader than the 0.1 max weight% V of the claimed invention.
Hatano teaches a ferritic stainless steel sheet having excellent corrosion resistance and ridging resistance, and a method for producing the same (Abstract). Hatano is considered analogous art since it is similarly concerned with a ferritic stainless steel and has overlapping chemical composition with Hewitt.
Hatano teaches adding V with a lower limit of 0.03% to achieve corrosion resistance and ridging resistance ([0015]) and an upper limit of 0.20% ([0007]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the vanadium content of the steel of Hewitt with the narrower range of Hatano, such as within claimed ranges, to achieve corrosion resistance and ridging resistance, as taught by Hatano.
Modified Hewitt therefore reads on the limitation comprising, by weight, 0.005 to 0.1% of V of claim 13.
Response to Arguments
Due to claim amendments filed 06/05/2026, the 35 U.S.C. 103 rejection of claims 6-7 over US 2017/0283923 A1 of Ta (as cited in prior Office action) in view of JP 2006/299374 A of Hatano (as cited in prior Office action and on IDS mailed 03/27/2024 with reference to provided translation in prior Office action), as evidenced by “Batch Annealing vs. Continuous Annealing: Which Works Best?” of Himes (as cited in prior Office action) has been withdrawn. Amended claim 6 now recites a composition with a carbon content of 0.0631 to 0.0690%, and therefore the composition of modified Ta does not read on amended claim 6.
Applicant’s arguments with respect to claims 6-7 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAYELA ALDAZ whose telephone number is (571)270-0309. The examiner can normally be reached Monday -Thursday: 10 am - 7 pm and alternate Friday: 10 am - 6 pm.
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/M.A./Examiner, Art Unit 1733
/REBECCA JANSSEN/Primary Examiner, Art Unit 1733
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