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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/06/2025 has been entered.
Response to Amendment
The Amendment filed 10/10/2025 has been entered. Claims 1-7 remain pending in the application. Claims 1-5 have been withdrawn due to a restriction requirement. Claims 8-9 have been canceled. No new claims have been added. The nonstatutory double patenting rejection previously set forth in the Final Rejection mailed 07/10/2025 is maintained.
Claim Interpretation
Regarding claim 6, the term “elongation rate” is interpreted as an “elongation”, “elongation after fracture” or “elongation at break” given the claimed units of percentage (%) rather than an “elongation rate” meaning a speed at which deformation occurs which typically uses units of length change over time (e.g. %/s). The instant specification recites the “elongation rate” of the instant steel is controlled at least by adjusting C, Si, Mn, C+N, Si+Al+V values and a skin-pass rolling below an 8% reduction ratio (page 6, line 20-page 7, line 19; page 9, line 18-page 10, line 16; page 12, lines 12-15).
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: 0.005 to 0.2%, V: 0.005 to 0.2%, 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 § 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 are rejected under 35 U.S.C. 103 as being unpatentable 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).
Regarding claims 6-7, Ta teaches a cold-rolled ferritic stainless steel sheet (Abstract). Ta teaches a cold-rolled ferritic stainless steel sheet with a metallographic structure including a ferrite phase (Abstract). 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, since Ta teaches a ferritic stainless steel, Ta reads on the claimed “for a clamp”.
Ta therefore reads on the limitation ferritic stainless steel for a clamp of claim 6.
List 1
Instant claims (weight %)
Ta (mass %)
Hatano (mass %)
C
0.04-0.1
0.005-0.05
0.02-0.10
Si
0.2-0.4
0.02-0.75
0.01-1.0
Mn
0.01-1.5
0.1-1.0
0.01-1.0
Cr
14-18
16-18
15-20
Al
0.005-0.2
0.001-0.10
0.001-0.01
V
0.005-0.2
0.01-0.25
0.03-0.20
N
0.02-0.1
0.005-0.06
0.03-0.06
One or more selected from:
Ni
0.001-0.5 (claim 7)
-
-
P
≤ 0.05 (claim 7)
≤ 0.04
≤ 0.04
S
≤ 0.005 (claim 7)
≤ 0.01
≤ 0.03
Fe and inevitable impurities
Remainder
Balance
Balance
Expression (1)
0.35-0.6
0.031-1.1
0.041-1.21
Expression (2)
0.09-0.12
0.01-0.11
0.05-0.16
Elongation rate (%)
≥ 20%
≥ 25% (“elongation after fracture”)
-
Ta teaches a steel with a chemical composition ([0030], [0032]-[0067]), microstructure ([0069]-[0076], both are ferritic stainless steels), and elongation ([0018], [0092]-[0093]) overlapping with the claimed steel, as shown in List 1. While Ta does not explicitly disclose Expression (1) and Expression (2), one can perform the calculation which 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 Ta results in the following Expression (1) and Expression (2):
0.031% ≤ Si + Al + V ≤ 1.1%, and
0.01% ≤ C + N ≤ 0.11%,
which overlap with the ranges of the claimed expressions, as shown in Table 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.
Ta therefore reads on the limitation comprising, by weight, 0.04 to 0.1% 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 6, 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, an elongation rate of 20% or more of claim 6, and 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.
However, Ta does not explicitly disclose to 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, having a yield strength of 350 MPa or more of claim 6 and having a tensile strength of 510 MPa or more of claim 6.
Regarding the yield strength of claim 6, Ta teaches an overlap in Si, Al, and V compositions, as described above. Ta teaches skin pass rolling should be performed with an elongation ratio of 0.3% to 1.0% ([0083]), which is below the skin pass rolling of 2-8% of the instant specification.
Hatano teaches a ferritic stainless steel sheet having excellent corrosion resistance and ridging resistance, and a method for producing the same, where the steel plate contains, by mass%, C: 0.02-0.10%, Si: 0.01-1.00%, Mn: 0.01-1.00%, P: less than 0.040%, S: 0.03% or less, Al: 0.001-0.010%, N: 0.03-0.06%, Cr: 15-20%, V:0.03-0.20%, with the balance being Fe and unavoidable impurities (Abstract), which overlaps with the steel of Ta, as shown in Table 1 above. Hatano is considered analogous art since it is similarly concerned with a ferritic stainless steel and has overlapping chemical composition with Ta and the claimed invention.
Hatano teaches skin pass rolling may be carried out for the purpose of shape correction with an elongation of 0.3% to 3% ([0023]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the skin pass rolling of Ta with the elongation of 0.3% to 3% of Hatano for the purpose of shape correction of the stainless steel, as taught by Hatano.
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 (see processing analysis above). 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 Ta, as modified by Hatano, and the claimed invention, one of ordinary skill in the art would reasonably expect the steel of modified Ta to have the claimed yield strength.
Furthermore, instant specification recites the Si content is controlled to 0.2 to 0.6% to improve tensile strength and yield strength through a solid solution strengthening effect (page 7, lines 10-13). Instant specification recites yield strength (YS) is increased through a solid solution strengthening effect resulting from an increase in the content of Si, Al, and V which are substitutive elements, and thus 320 MPa or more may be exhibited, with a Si+Al+V value of more than 0.35% (page 9, line 22 - page 10, line 4). Instant specification further recites the cold-rolled annealed steel sheet may be subjected to skin-pass rolling at a reduction ratio of 2 to 8% to ensure a yield strength of 350 MPa or more (page 12, lines 12-14).
Since modified Ta has overlapping composition, microstructure, and processing with the claimed invention, one of ordinary skill in the art would reasonably expect the steel of modified Ta to have the claimed yield strength.
Ta, as modified by Hatano, therefore reads on the limitation having a yield strength of 350 MPa or more of claim 6.
Regarding the precipitates of claim 6, Ta teaches overlapping V, C, and N compositions, as described above. Ta teaches the stainless steels were made into slabs having a thickness of 250 mm by using a continuous casting method, these slabs were heated to a temperature of 1200°C, and hot-rolled steel sheets having a thickness of 3 mm were obtained by performing hot rolling ([0085]). Ta teaches the temperature of the steel sheets on the exit side of the finish rolling mill was 900°C to 980° C, and the coiling temperature was 600°C to 800°C ([0085]), which overlaps with the finishing temperature and winding temperature of the instant specification for achieving fine precipitates. Ta teaches performing shot blasting and descaling treatment after having performed hot-rolled-sheet annealing on the hot-rolled steel sheets ([0086]). Ta teaches continuous hot-rolled annealing for a short time ([0078], step corresponds to a continuous annealing step). Ta teaches the hot-rolling annealing step is performed at 914°C in 28 seconds and that the steel achieves an elongation of 25% or more (Test No. 2, made of Steel B, Table 2, [0093], overlapping chemical composition with an infinitesimally small difference in Al with a 0.004% Al instead of the claimed 0.005% Al). Ta teaches after having performed cold rolling on the obtained hot-rolled and annealed steel sheets to a thickness of 0.8 mm, and having performed cold-rolled-sheet annealing, skin pass rolling was performed with an elongation ratio of 0.3% to 0.9% in order to obtain final products ([0086]). While this skin pass rolling elongation is below the skin pass rolling of 2-8% of the instant specification, such limitations are taught by Hatano as described above.
Himes teaches an overview of batch annealing and continuous annealing processes (Title), and is considered relevant to the steel of Ta since it teaches the difference between batch and continuous annealing processes. Himes teaches batch annealing is typically left for 10 to 30 hours, but this time depends on the customer's requirements (What is Batch Annealing?).
While Ta does not completely omit the hot-rolling annealing step, it uses a continuous annealing step with a short time of, for example, 28 seconds therefore avoiding precipitate coarsening that would be expected from longer batch annealing furnace processes. One of ordinary skill in the art would understand a batch annealing process to encompass a range of 10 to 30 hours, as evidenced by Himes, and would reasonably expect the continuous hot-rolling annealing of 28 seconds of Ta to not coarsen the precipitates past the claimed average diameter. One of ordinary skill in the art would therefore reasonably expect the steel of modified Ta to possess the claimed (Cr,Fe)-carbonitride precipitates with the claimed size and amounts given the overlap in the steel composition, structure, and processing between the steel of modified Ta and the claimed invention.
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 (see processing analysis above). 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).
Furthermore, instant specification recites the size and amount of precipitates is implemented through omission of hot-rolling annealing and performing skin-pass rolling (page 2, lines 18-22). Instant specification recites a C content of 0.04% to 0.1% serves to improve strength by being precipitates as (Cr,Fe)23C6 and (Cr,Fe)7C3 carbides (page 6, lines 20-23). Instant specification recites a content of N of 0.02% to 0.1% serves to improve strength by being precipitated as Cr2N nitride (page 8, lines 16-19). Instant specification recites the content of V is 0.005 to 0.2% where V serves to form carbonitride by fixing C and N and is an element effective for suppressing the growth of carbonitride and refining it (page 8, lines 10-15). Instant specification further recites increasing the C+N content and increasing the amount of work hardening through a precipitate refinement effect caused by omitting hot-rolling annealing increases the amount of (Cr,Fe)-carbonitride precipitates (page 10, lines 11-14). Instant specification recites that fine precipitates are formed at a finishing temperature of 800°C or more and winding at 700°C or more and coarsening of the precipitates is prevented by omitting subsequent hot-rolling annealing (page 12, lines 1-5). Instant specification further recites the typical batch annealing furnace (BAF) annealing after hot-rolling causes the fine precipitates precipitated in the hot-rolled coil to coarsen, reduces the total number of fine precipitates, and makes it difficult to ensure high strength (page 12, lines 6-11).
Since modified Ta has overlapping composition, microstructure, and processing with the claimed invention, one of ordinary skill in the art would reasonably expect the steel of modified Ta to have the claimed precipitates in the claimed amount and size.
Modified Ta therefore reads on the limitations which includes (Cr,Fe)-carbide or (Cr,Fe)-nitride precipitates, wherein at least 2.5x106 (Cr,Fe)-carbide or (Cr,Fe)-nitride precipitates having an average diameter of 0.5 μm or less per mm2 are distributed of claim 6.
Regarding the tensile strength of claim 6, modified Ta teaches overlapping Si, C, and N compositions and processing steps, as described above.
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 (see processing analysis above). 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).
Furthermore, instant specification recites the Si content is controlled to 0.2 to 0.6% to improve tensile strength and yield strength through a solid solution strengthening effect (page 7, lines 10-13). Instant specification recites by increasing the amount of (Fe,Cr)-carbonitride precipitates by increasing the C+N content and by increasing the amount of work hardening through a precipitate refinement effect caused by omitting hot-rolling annealing, a tensile strength (TS) of 510 MPa or more may be implemented (page 10, line 11-14). Instant specifications further recite that when a C+N value is less than 0.09%, it is difficult to implement desired tensile strength (page 10, lines 14-16).
Since modified Ta has overlapping composition, microstructure, and processing with the claimed invention, one of ordinary skill in the art would reasonably expect the steel of modified Ta to have the claimed tensile strength.
Modified Ta therefore reads on the limitation having a tensile strength of 510 MPa or more of claim 6.
Modified Ta therefore reads on all the limitations of claims 6-7.
Response to Arguments
Applicant's arguments filed 10/10/2025 have been fully considered but they are not persuasive.
Applicant argues that the cited references, whether considered alone or in a combination, do not disclose or fairly suggest a steel sheet having a composition that satisfies claimed Expressions (1) and (2) while also having the claimed yield strength, tensile strength and elongation by including the claimed amount of metal carbides or nitrides with a particle size smaller than a threshold value (remarks, page 4).
In response, the 35 U.S.C. 103 rejections in this Office action establish a prima facie case of obviousness since the steel of modified Ta has a chemical composition, microstructure, elongation and processing overlapping with the instant invention. MPEP § 2112.01 merely requires the burden of proof either based on identical structure or compositions OR (emphasis added) produced by identical or substantially identical process. In the instant case, examiner provided specific and explicit evidence of the steel of modified Ta having overlapping chemical composition and microstructure. Hence, burden is shifted to Applicant to provide rebuttal evidence that closest prior art of Ta having overlapping chemical composition and microstructure would not result in the claimed overlapping Expressions, yield strength, tensile strength, and precipitates. Since Applicant fails to meet such burden, the 35 U.S.C. 103 rejections are therefore maintained absent evidence of contrary. In this case, the steel of modified Ta teaches a chemical composition and microstructure overlapping with the instant invention. Therefore, the claimed and prior art products are identical or substantially identical in structure or composition and a prima facie case of obviousness has been established. It is well known in the metallurgical arts that the mechanical properties are dependent on the chemical composition and microstructure. One of ordinary skill in the art would reasonably expect the steel of modified Ta to necessarily possess the claimed precipitates, yield strength, and tensile strength despite not explicitly measuring or disclosing them given the chemical composition and microstructure of Ta overlaps with the claimed steel, as described in the 35 U.S.C. 103 rejections in this Office action.
Applicant argues that Ta relates to a ferritic stainless cold-rolled steel sheet having desired surface appearance before and after forming and having desired formability (remarks, page 5). Applicant further argues that Hatano, on the other hand, relates to a ferritic stainless steel having stable corrosion resistance and desired anti-ridging properties and Himes described batch annealing and continuous annealing processes and thus, none of the cited references, whether considered alone or in a combination, disclose or suggest Expressions (1) and (2) for the content of Si, Al, V, C and N (remarks, page 5).
In response to applicant's argument that Ta and Hatano disclose ferritic stainless steels for desired surface appearance and stable corrosion resistance respectively, the references are considered analogous art since they are both ferritic stainless steels and are therefore in the same field of endeavor as the instant invention despite focusing on surface appearance and corrosion resistance respectively. In order for a reference to be proper for use in an obviousness rejection under 35 U.S.C. 103, the reference must be analogous art to the claimed invention. In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d 1209, 1212 (Fed. Cir. 2004). A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). Note that "same field of endeavor" and "reasonably pertinent" are two separate tests for establishing analogous art; it is not necessary for a reference to fulfill both tests in order to qualify as analogous art. See Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212. See MPEP 2141.01(a). In this case, Ta and Hatano are in the same field of endeavor since they both teach ferritic stainless steels.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this case, Ta is relied on for the teachings of a ferritic stainless steel with chemical compositions and resulting Expression (1) and Expression (2) values overlapping with the claimed steel.
Applicant argues that while Ta broadly discloses the claimed range of content, no example in Ta discloses a steel composition that satisfies all of the claimed limitations, nor does it measure, let alone disclose, the claimed mechanical properties of the steel (remarks, page 5).
In response, Applicant agrees that Ta discloses an overlapping chemical composition with the instant invention. It is well known in the metallurgical arts that the mechanical properties are dependent on the chemical composition and microstructure. One of ordinary skill in the art would reasonably expect the steel of modified Ta to necessarily possess the claimed precipitates, yield strength, and tensile strength despite not explicitly measuring or disclosing them given the chemical composition and microstructure of Ta overlaps with the claimed steel, as described in the 35 U.S.C. 103 rejections in this Office action.
Applicant argues that the steels of Hatano have an elongation in a range from 0.3% to 3%, which is significantly and materially lower than the claimed elongation of 20% or more (remarks, page 5). Applicant further argues that while Hatano discloses controlling the content of C and N, the steels of Hatano do not have elemental content within the claimed range (remarks, page 5).
In response to the argument regarding the elongation of Hatano, the elongation of 0.3% to 3% of Hatano referred to by Applicant is the elongation used for skin pass rolling ([0023]) and not the elongation of the final steel, as argued by Applicant. Therefore, the steel of Hatano does not have an elongation “which is significantly and materially lower than the claimed elongation of 20% or more”, as argued by Applicant. Furthermore, the elongation is taught by Ta, as described in List 1 and in the 35 U.S.C. 103 rejections in this Office action.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this case, Ta, and not Hatano, is relied on for the teachings of a ferritic stainless steel with chemical compositions and resulting Expression (1) and Expression (2) values overlapping with the claimed steel.
Applicant argues that Himes merely discusses the advantage and disadvantages of batch annealing and continuous annealing without curing any of the deficiencies of the combined teachings of Ta and Hatano discussed herein (remarks, page 6). Applicant further argues that, for example, Himes does not disclose any metal compositions including V, Si or Al, and as a logical consequence, simply cannot cure the deficiencies of Ta (remarks, page 6)
In response, the teachings of Himes are relevant since Ta teaches a continuous annealing step of 28 seconds and Himes describes the differences between continuous and batch annealing processes. Instant specification recites the typical batch annealing furnace (BAF) annealing after hot-rolling causes the fine precipitates precipitated in the hot-rolled coil to coarsen, reduces the total number of fine precipitates, and makes it difficult to ensure high strength (page 12, lines 6-11). Since Ta teaches a continuous annealing step with a holding time in the order of seconds rather than a batch annealing step of 30+ hours, one of ordinary skill in the art would reasonably expect the continuous annealing of Ta to result in precipitates overlapping in size and amount with the instant invention, as described in the 35 U.S.C. 103 rejections in this Office action.
Conclusion
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