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 .
DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/24/2026 has been entered.
Status of claims
Claims 1, 3, and 5-6 have been amended; Claims 7-10 are added as new claims; Claims 3-6 are withdrawn as non-elected claims; Claims 1-2 and 7-10 remain for examination, wherein claim 1 is an independent claim.
Information Disclosure Statement
IDS filed on 1/21/2026 has been recorded.
Previous Rejections/Objections
Previous rejection of Claims 1-20 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
has been withdrawn in view of the Applicant's argument filed on 03/18/2026.
However, in view of the Applicant’s amendment, newly cited prior art(s), and reconsideration, a new ground rejection has been listed as following.
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.
Claim(s) 1-2 and 7-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kirhara Fumiaki et al (JP 2015074807 A, with on-line translation, listed in IDS filed on 5/24/2023, thereafter JP’807) in view of Zhang et al (CN 104141050 A, with on-line translation, thereafter CN’050).
Regarding claims 1-2, JP’807 teaches a stainless steel excellent in surface quality and a method of inexpensively producing the stainless steel by using general purpose equipment. (Abstract, examples, and claims of JP’807), which reads on the claimed stainless steel as claimed in the instant claims. The comparison between the claimed alloy composition ranges and the example #3 in table 1 of JP’807 has been listed in following table. All of the alloy composition ranges disclosed in JP’807 are within the claimed alloy composition ranges. Regarding the limitations for the inclusions, which have been rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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 as stated above. Since JP’807 teaches all of the all of the limitations in the instant claims, Claims 1-2 are anticipated by JP’807.
Element
From instant Claim 1 (mass %)
Example #3 in table 1 of JP’807 (mass %)
Within range
(mass %)
C
0.0001-0.15
0.018
0.018
Si
0.3-2.0
0.55
0.55
Mn
0.1-5
1.81
1.81
Ni
5-20
12.45
12.45
S
0.0001-0.003
0.0025
0.0025
Cr
16-25
17.61
17.61
Ca
0.0001-0.002
0.0023
Very close
O
0.0001-0.004
0.0031
0.0031
Al
0.02 or less
0.003
0.003
Mg
0.002 or less
0.0015
0.0015
N
0.0001-0.5
0.022
0.022
Fe
Balance + impurities
Balance + impurities
Balance + impurities
Limitations of inclusions
Inclusions with an equivalent circle diameter of 5 mm or more
Rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph
From claim 2
Including at least one of
Cu: 4 or less;
Mo: 5 or less;
REM: 0.03 or less;
B: 0.0001-0.0050;
Ti: 0.01-0.50;
Nb: 0.01-0.50;
V: 0.01 or 1.00;
W: 0.01 or 1.00;
Co: 0.01 or 1.00;
Sn: 0.01 or 1.00;
Cu: 0.2
Cu: 0.2
Still regarding claim 1, JP’807 teaches having CaO-SiO2-MgO-Al2O3-F-based non-metallic inclusions (par.[0047] of JP’807). JP’807 teaches including non-metallic inclusion contained in the stainless steel contains one or more kind of MgO, MgO-Al2O3 and CaO-SiO2-MgO-Al2O3-based oxide, the non-metallic inclusion having a length of 5 μm or more is 100 or less per cm2. (Abstract, examples, and claims of JP’807), which overlap the number densities of 1st, 2nd, and 3rd inclusions as claimed in the instant claim; and JP’807 provides different inclusions compositions, for example: CaO: 20 to 60%, SiO2: 10 to 40%, Al2O3: 30% or less, and MgO: 5 to 50% for CaO-SiO2-MgO-Al2O3-based oxide (par.[0040]-[0042] of JP’807), which overlap the claimed ranges of inclusions as claimed in the instant claim. Overlapping in number density and composition ranges creates a prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the number density and composition ranges of inclusions from the disclosure of JP’807 since JP’807 teaches the same stainless steel as claimed throughout whole disclosing range. It is noted that JP’807 does not specify the mass% of CaF2 in the third inclusion as claimed in the instant claim 1. CN’050 teaches a double phase stainless steel slab ingots slag system for electric slag remelting (Abstract of CN’050) and CN’050 teaches the slag composition and weight percentage are as follows: CaF2: 30 % of 40%, Al2O3: 30 % ~ 35%, CaO2: 2 % ~ 30%, SiO2: 6 % ~ 10%, MgO: 2 % ~ 5% (Abstract, examples, and claims of CN’050), which overlaps all of the claimed 3rd inclusions as claimed in the instant claim 1. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to include proper amount of CaF2 in the inclusions with proper amount of CaF2, Al2O3, CaO2, SiO2, and MgO from the disclosure of CN’050 for the stainless steel of JP’807 in order to obtain improved technique performance (Abstract and par.[0006] of CN’050).
Regarding claims 7-10, the 30-40wt% CaF2 range disclosed by CN’050 is within the claimed CaF2 ranges as claimed in the instant claims.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-2 and 7-10 are rejected on the ground of non-statutory obviousness type double patenting as being unpatentable over claims 1-12 of co-pending application No. 17/800,924 (US-PG-Pub 2023/0077573 A1) in view of CN’050.
Regarding claims 1-2 and 7-10, although the conflicting claims are not identical, they are not patentable distinct from each other because claims 1-12 of co-pending application No. 17/800,924 (US-PG-Pub 2023/0077573 A1) teaches a stainless steel with all of the alloy composition ranges overlap the claimed alloy composition ranges and similar oxide inclusions, which is a prima facie case of obviousness. MPEP 2144 05 I. It would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the alloy composition ranges as disclosed in claims 1-12 of co-pending application No. 17/800,924 (US-PG-Pub 2023/0077573 A1) since claims 1-12 of co-pending application No. 17/800,924 (US-PG-Pub 2023/0077573 A1) teaches the same stainless steel for sheet application throughout whole disclosing range. It is noted that claims 1-12 of co-pending application No. 17/800,924 (US-PG-Pub 2023/0077573 A1) does not specify the mass% of CaF2 in the third inclusion as claimed in the instant claim 1. CN’050 teaches a double phase stainless steel slab ingots slag system for electric slag remelting (Abstract of CN’050) and CN’050 teaches the slag composition and weight percentage are as follows: CaF2: 30 % of 40%, Al2O3: 30 % ~ 35%, CaO2: 2 % ~ 30%, SiO2: 6 % ~ 10%, MgO: 2 % ~ 5% (Abstract, examples, and claims of CN’050), which overlaps all of the claimed 3rd inclusions as claimed in the instant claim 1. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to include proper amount of CaF2 in the inclusions with proper amount of CaF2, Al2O3, CaO2, SiO2, and MgO from the disclosure of CN’050 for the stainless steel of claims 1-12 of co-pending application No. 17/800,924 (US-PG-Pub 2023/0077573 A1) in order to obtain improved technique performance (abstract and par.[0006] of CN’050). Thus, no patentable distinction was found in the instant claims compared with claims 1-12 of co-pending application No. 17/800,924 (US-PG-Pub 2023/0077573 A1) in view of CN’050.
This is a provisional obvious-type double patenting rejection since the conflict claims in the co-pending application have not in fact been patented.
Claims 1-2 and 7-10 are rejected on the ground of non-statutory obviousness type double patenting as being unpatentable over claims 1-8 of co-pending application No. 17/800,971 (US-PG-Pub 2023/0115048 A1) in view of CN’050.
Regarding claims 1-2 and 7-10, although the conflicting claims are not identical, they are not patentable distinct from each other because claims 1-8 of co-pending application No. 17/800,971 (US-PG-Pub 2023/0115048 A1) teaches a stainless steel with all of the alloy composition ranges overlap the claimed alloy composition ranges and similar oxide inclusions, which is a prima facie case of obviousness. MPEP 2144 05 I. It would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the alloy composition ranges as disclosed in claims 1-8 of co-pending application No. 17/800,971 (US-PG-Pub 2023/0115048 A1) since claims 1-8 of co-pending application No. 17/800,971 (US-PG-Pub 2023/0115048 A1) teaches the same stainless steel for sheet application throughout whole disclosing range. It is noted that claims 1-8 of co-pending application No. 17/800,971 (US-PG-Pub 2023/0115048 A1) does not specify the mass% of CaF2 in the third inclusion as claimed in the instant claim 1. CN’050 teaches a double phase stainless steel slab ingots slag system for electric slag remelting (Abstract of CN’050) and CN’050 teaches the slag composition and weight percentage are as follows: CaF2: 30 % of 40%, Al2O3: 30 % ~ 35%, CaO2: 2 % ~ 30%, SiO2: 6 % ~ 10%, MgO: 2 % ~ 5% (Abstract, examples, and claims of CN’050), which overlaps all of the claimed 3rd inclusions as claimed in the instant claim 1. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to include proper amount of CaF2 in the inclusions with proper amount of CaF2, Al2O3, CaO2, SiO2, and MgO from the disclosure of CN’050 for the stainless steel of claims 1-8 of co-pending application No. 17/800,971 (US-PG-Pub 2023/0115048 A1) in order to obtain improved technique performance (Abstract and par.[0006] of CN’050). Thus, no patentable distinction was found in the instant claims compared with claims 1-8 of co-pending application No. 17/800,971 (US-PG-Pub 2023/0115048 A1) in view of CN’050.
This is a provisional obvious-type double patenting rejection since the conflict claims in the co-pending application have not in fact been patented.
Response to Arguments
Applicant’s arguments to the art rejection to Claims 1-2 and 7-10 have been considered but they are moot in view of the new ground rejection as stated above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIE YANG whose telephone number is (571)270-1884. The examiner can normally be reached on IFP.
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/JIE YANG/Primary Examiner, Art Unit 1734
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