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 .
Election/Restrictions & Status of Claims
Claims 4 and 5 are examined of which claim 4 was amended in Applicant’s reply.
Claims 1-3 and 6-12 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 24 April 2025.
Claim Rejections - 35 USC § 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 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.
List 1
Element
Instant Claims
(mass%)
Prior Art
(mass%)
C
0.0001 – 0.15
0.1 or less
Si
0.30 – 2.0
0.2 – 1
Mn
0.1 – 15
0.2 – 2
P
0.01 – 0.040
See below
Ni
5 – 30
3 – 15
S
0.0001 – 0.1
0.005 or less
Cr
16 – 25
13 – 20
Mo
5 or less
5 or less
Al
0.005 or less
0.005 or less
Ca
0.0030 or less
0.0001 – 0.01
Mg
0.0010 or less
0.0001 – 0.01
O
0.0010 – 0.0060
0.0005 – 0.01
N
0.0001 – 0.5
0.01 – 0.05
Cu, REM, B, Ti, Nb, V, W, Co, Sn
Claim 5: at least any one of
Cu: 0.1 – 4.0, REM 0.00001 – 0.0030,
B: 0.0001 – 0.0050, Ti: 0.01 – 0.50,
Nb: 0.01 – 0.50, V: 0.01 – 1.00,
W: 0.01 – 1.00, Co: 0.01 – 1.00 and
Sn: 0.01 – 1.00
Nb: 0.05 – 1
Fe +
impurities
Balance
Balance
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2015-074807 A of Kirihara and its English machine translation (JP’807) as evidenced by WO 2020/004595 A1 via its US English equivalent US 2021/0273232 A1 of Nagata (US’232).
Regarding claims 4-5, JP 2015074807 A and its English machine translation (JP’807) teaches {abstract, [0001], [0022]-[0038]} “a stainless steel excellent in surface quality” with a composition wherein the claimed ranges of the constituent elements of the instant alloy of the instant claims overlap or lie inside the ranges of various elements of the alloy of the prior art as shown in the List 1 above. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed composition over the prior art disclosure since the prior art teaches the similar property/utility throughout the disclosed ranges. 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.
Regarding the limitation of P: 0.01 mass% or more and 0.040 mass% or less of claim 4, the prior art JP’807 does not explicitly teach the presence of P as recited in the instant claim. However, the prior art JP’807 teaches that its steel has, other than the recited compositional constituents and ranges, {abstract, claims 1, 6} “the balance Fe with inevitable impurities”. In the same field of endeavor of stainless steel with inclusions, WO 2020/004595 A1 via its US English equivalent US 2021/0273232 A1 of Nagata (US’232) teaches “[0072] P (phosphorus) is an impurity element and an element obstructing the manufacturability and weldability, so the content should be as small as possible. For keeping the manufacturability or weldability from falling, the upper limit of the content is made 0.050%. From the viewpoint of the manufacturability or weldability, the content should be as small as possible. The upper limit may be preferably made 0.040%, more preferably 0.030%. Further, excessive reduction leads to an increase in the refining costs, so the lower limit of the content of P may be made 0.005%. More preferably, considering the manufacturing costs, it may be made 0.010%.” As the prior art JP’807 teaches that its steel, other than the recited compositional constituents and ranges, has {abstract, claims 1, 6} “the balance Fe with inevitable impurities”, one would expect the steel of JP’807 to have P in a range of 0.050 or less as US’232 teaches that P is an impurity element encountered during the manufacturing and is encountered in a range pf 0.050% or less.
It is noted that the prior art JP’807 is silent regarding the stainless steel foil and the thickness of the foil being “0.010 mm or more and 0.2 mm or less” of instant claim 4. However, MPEP provides that with regard to the shape, merely changing the shape/size/proportion of a prior art product would not be sufficient to distinguish from that prior art product as it has been held that changing the shape/size/proportion would require only ordinary skill in the art and hence are considered routine expedients. See MPEP § 2144.04 (IV). Therefore, making the specific thickness as claimed in the instant claims would require only ordinary skill in the art since thickness modification using rolling is well known in the art of steel making.
The prior art JP’807 teaches {abstract, claims 1-6} “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 any 1 cm and MgO·Al2O3 in the non-metallic inclusion is 50% or less by the number ratio” which reads on “a number of inclusions with a maximum equivalent circle diameter of 5 µm or more is 0.5 inclusions/mm2 or less” of instant claim 4.
The prior art JP’807 is silent regarding the limitation of MnO·Al2O3·Cr2O3 as being present as inclusion in its steel as recited in instant claim 4. 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. Instant specification teaches the formation of MnO.Al2O3.Cr2O3 as follows. “Cr is an essential element to secure the corrosion resistance of a stainless steel. However, when the Cr content is higher than 25 mass %, the production of a stainless steel becomes difficult, and also the Cr2O3 percentage content in inclusions increases, and thus MnO.Al2O3.Cr2O3 is easily generated. Therefore, the Cr content is 16 mass % or more and 25 mass % or less.” “Al is an element which may be added as a deoxidizing material to a stainless steel produced using a versatile refining method, and an element which inevitably enters a steel deoxidized with Si such as the present invention due to erosion of e.g. impurities and a refractory in a raw material. In addition, when the Al content is higher than 0.005 mass %, large and hard MgO.Al2O3 and/or large and hard MnO.Al2O3.Cr2O3 are generated, which leads to holes at the time of production, and variations in fatigue properties. Therefore, the Al content is 0.005 mass % or less, and preferably 0.003 mass % or less.” “When the O content is lower than 0.0010 mass %, large and hard MgO.Al2O3 is generated, which leads to holes at the time of production, and variations in fatigue properties. In addition, when the O content is higher than 0.0060 mass %, large and hard MnO.Al2O3.Cr2O3 is generated, which leads to holes at the time of production, and variations in fatigue properties. Therefore, the O content is 0.0010 mass % or more and 0.0060 mass % or less, and preferably 0.0020 mass % or more and 0.0050 mass % or less.” (instant specification [0030]-[0036]). Therefore, it is expected that the alloy 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 structure or composition (see compositional analysis above) and b) the claimed and prior art products are produced by identical or substantially identical processes (instant alloy: instant specification [0042]-[0053]; Prior art: [0043]-[0048]). 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).
Response to Arguments
Applicant's arguments filed 14 April 2026 have been fully considered but they are not persuasive.
Regarding the recited P amount, please see how the prior art reads on the instant range.
Regarding the arguments directed to the inclusions, it is agreed that the prior art JP’807 is silent regarding the limitation of MnO·Al2O3·Cr2O3 as being present as inclusion in its steel as recited in instant claim 4. However, as shown above, it is expected that the alloy 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 structure or composition and b) the claimed and prior art products are produced by identical or substantially identical processes. 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).
As noted above, the prior art renders the instant claims obvious. If a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990). Rebuttal evidence and arguments can be presented in the specification, In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed. Cir. 1995), by counsel, In re Chu, 66 F.3d 292, 299, 36 USPQ2d 1089, 1094-95 (Fed. Cir. 1995), or by way of an affidavit or declaration under 37 CFR 1.132, e.g., Soni, 54 F.3d at 750, 34 USPQ2d at 1687; In re Piasecki, 745 F.2d 1468, 1474, 223 USPQ 785, 789-90 (Fed. Cir. 1984). However, arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). See MPEP § 2145. Attorney argument is not evidence unless it is an admission, in which case, an examiner may use the admission in making a rejection. See MPEP § 2129 and § 2144.03 for a discussion of admissions as prior art. The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) ("An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness."). See MPEP § 716.01(c) for examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration. See MPEP § 2145 I.
Conclusion
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOPHY S. KOSHY whose telephone number is (571)272-0030. The examiner can normally be reached M-F 8:30 AM- 5:00 PM.
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/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
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