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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/12/2025 has been entered.
Status of Claims
Claims 1, 3-7, 11, 13-14, 16-18 and 20 are amended. Claim 8 is withdrawn. Claims 1, 3-7, 11, 13-14, 16-18 and 20 are examined herein.
Status of Previous Rejections
The rejections of Claims 1-3, 7, 9 and 19-20 under 35 U.S.C. 102(a)(1) as being anticipated by JP’319 (JP 2007-2319A) have been withdrawn in view of the amendment.
The rejections of Claims 1-3, 7, 9 and 19-20 under 35 U.S.C. 103 as being unpatentable over JP’319 (JP 2007-2319A) have been withdrawn in view of the amendment.
Claim Rejections - 35 USC § 103
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.
Claims 1, 3-7, 11, 13-14, 16-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Iseda (US 2003/0231976).
Regarding claims 1, 6 and 16-18, Iseda discloses (Abstract; [0051] to [0098]) an austenite stainless steel plate with a composition that overlaps the instant claimed composition of C, Si, Mn, P, S, Ni, Cr, Mo, Cu, N, O, Ti, Al, Ca and Fe, and therefore it would have been obvious to one of ordinary skill in the art to have selected amounts of each element from the ranges disclosed in Iseda to produce a steel plate that meets the recited composition in claims 1, 6 and 16-18. See MPEP 2144.05 I.
Element
Claim 1
(mass %)
Iseda
(mass %)
Overlap
(mass %)
C
0.01-0.2
0.03-0.12
0.03-0.12
Si
0-2
0.1-0.9
0.1-0.9
Mn
0-3
0.1-2
0.1-2
P
≤0.035
≤0.04
≤0.035
S
≤0.03
≤0.03
≤0.03
Ni
6-14
8-15
8-14
Cr
20-26
15-22
20-22
Mo
0-3
0.1-5
0.1-3
Cu
0.01-3
0.1-5
0.1-3
Ti
0-1
0.002-0.05
0.002-0.05
Al
0-0.2
0.0005-0.03
0.0005-0.03
Ca
0-0.1
0.0001-0.2
0.0001-0.1
N
0.1-0.25
0.005-0.2
0.1-0.2
O
≤0.008
0.001-0.008
0.001-0.008
Fe + Impurities
Balance
Balance
Balance
Iseda discloses an example (Table 1, Steel No. 12) containing C, Si, Mn, P, S, Ni, Mo, Ti, N, O, Ti, Al, Ca and O within the recited composition ranges in claim 1 and containing Cr amount close to the recited Cr range in claim 1. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). See MPEP 2144.05 I. Steel No. 12 of Iseda contains N less than the recited amount in claim 1 and does not contain Cu. However, Iseda discloses that 0.005-0.2 mass% N and 0.1-5 ass% Cu improve the strength of the steel ([0068; [0077]). One of ordinary skill in the art would be motivated to add more N and 0.1-5 mass% Cu in the Steel No. 12 of Iseda in order to improve the strength as disclosed by Iseda.
Steel No. 12 of Iseda has grain size no. of 8.7 (Table 2), which converts to 15.69 µm. According to the composition and grain size of Steel No. 12, E=-10.87 and F=0.107, which meets the recited E and F in claim 1.
Iseda discloses that inclusion is eliminated by forming uniformly dispersed Ti2O3 ([0062]; [0070]; [0071]), which meets the limitation that a number of inclusions having a diameter of 15 µm or more is 1.0/mm2 or less as recited in claim 1.
Claim 1 recites “optionally further comprising 0.105% by mass or less of Nb”. Since this limitation is optional, the steel plate disclosed by Iseda meets the recited limitation in claim 1.
Regarding claim 3, Iseda discloses that the amount of B is 0.0001-0.2 mass% ([0075]), which overlaps the recited amount of B in claim 3. It would be obvious to one of ordinary skill in the art to have chosen the amount of B based on the B amount disclosed by Iseda to make a steel that meets the recited amount of B in claim 3. See MPEP 2144.05 I.
Regarding claims 4 and 11, Iseda discloses that the amount of Mg is 0.0001-0.2 mass% and the amount of REM is 0.0001-0.2 mass% ([0075]), which overlaps the recited amount of Mg and REM in claims 4 and 11. It would be obvious to one of ordinary skill in the art to have chosen the amount of Mg and REM based on the Mg and REM amount disclosed by Iseda to make a steel that meets the recited amount of Mg and REM in claims 4 and 11. See MPEP 2144.05 I.
Regarding claims 5 and 13-14, Iseda discloses that the steel contains 0.0001-0.2 wt.% Hf ([0075]), which overlaps the recited amount of Hf in claims 5 and 13-14. It would be obvious to one of ordinary skill in the art to have chosen the amount of Hf based on the Hf amount disclosed by Iseda to make a steel that meets the recited amount of Hf in claims 5 and 13-14. See MPEP 2144.05 I.
Regarding claims 7 and 20, Iseda is silent on the pitting potential of the steel. However, in view of the fact that Iseda teaches an austenitic steel that meets the recited composition in the instant claims, one of ordinary skill in the art would expect that the pitting potential disclosed by Iseda to meet the recited limitation in claims 7 and 20. “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.
Response to Arguments
Applicant’s arguments dated 11/12/2025 have been considered but are moot in view of the new rejection ground.
Applicant’s arguments dated 07/11/2025 have also been considered:
First, the applicants argued that Iseda requires at least 0.3%. Claim 1 required that if Nb is present, it must be present in the amount of 0.105% by mass or less.
In response, claim 1 recites “optionally further comprising 0.105% by mass or less of Nb”. Since this limitation is optional, the steel plate disclosed by Iseda meets the recited limitation in claim 1. If the applicants intend to limit the amount of Nb to 0.105% or less, “optionally” should be deleted.
Second, the applicants argued that Iseda does not teach the recited formulas.
In response, it is also well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art. In re Cooper and Foley 1943 C.D. 357, 553 O.G. 177; 57 USPQ 117, Taklatwalla v. Marburg, 620 O.G. 685, 1949 C.D. 77, and In re Pilling, 403 O.G. 513, 44 F(2) 878, 1931 C.D. 75. Unless the claimed formulas have criticality, the selection of the proportions of elements would appear to require no more than routine investigation by those ordinary skilled in the art. In re Austin, et al., 149 USPQ 685, 688. Iseda teaches an example that meets the recited "E" and "F". Even though this example has N content lower than the claimed N amount, Iseda disclosed N has an effect of improving steel strength, one of ordinary skill in the art would be motivated to increase the N content in order to make a steel having improved strength.
Third, the applicants argued that the claimed formulas have unexpected results.
In response, 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. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). 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 and MPEP 2144.05 III. For Formula F, comparative examples that meet the recited composition are "J', "P", "Q" and "R". The claimed F value is zero or more. However, P, Q and R all have value of lower than "-9" or lower. There is no evidence that when F is just below zero, the properties of comparative examples are not good. For Formula "E, only one Comparative Example that does not meet Formula E is provided. Further, the claimed amount of C, Ti, Al and Ca are much broader than the examples. Therefore, the applicants have not established the criticality of the claimed Formulas over the entire claimed composition ranges.
Fourth, the applicants argued that Iseda does not teach the recited pitting potential in claim 7.
In response, Comparative examples "J", "P" and "Q" all have the recited pitting potential. Thus, pitting potential is not determined by the recited formulas. Since Iseda teach a steel composition that meets the recited composition, the steel of Iseda is expected to have the claimed pitting potential.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Xiaowei Su whose telephone number is (571)272-3239. The examiner can normally be reached 8:00-5:00.
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/XIAOWEI SU/Primary Examiner, Art Unit 1733