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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 21 APRIL 2026 has been entered.
Election/Restrictions & Status of Claims
Claims 1-5 are examined of which claim 1 was amended in Applicant’s reply.
Claims 6-8 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 23 May 2025.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-5 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.
Regarding claims 1-5, claim 1 recites “the remainder of Fe and other unavoidable impurities”. The claim was also amended to recite “wherein the unavoidable impurities comprises at least one of P: 0.035 wt% or less, or S: 0.01 wt% or less”. However, it is unclear whether the latter recitation of “wherein the unavoidable impurities comprises at least one of P: 0.035 wt% or less, or S: 0.01 wt% or less” is directed to the “other unavoidable impurities” (emphasis added) or “unavoidable impurities” that are not included as part of “other unavoidable impurities” thereby making it unclear what element or group of elements would encompass the “other unavoidable impurities” of instant claims.
Regarding claims 1-5, claim 1 requires 4 expressions and specific ranges for these expressions and many of them one sided. However, based on the amended elemental ranges recited in claim 1, the lower or upper limits recited in the expressions are not attainable. Specifically, Expression (4): 1+45C−5Si+0.09Mn+2.2Ni−0.28Cr−0.67Cu+88.6N requires a range ≥11 and ≤17 while the recited elemental ranges allow only from 15.954 – 28.764. Claims 2-5 are dependent on claim 1, do not resolve the issue and thereby also indefinite.
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
KR’725
(mass%)
C
> 0.06 – 0.08
0.05 – 0.13
N
0.2 – 0.25
0.06 – 0.2
Si
0.8 – 1.5
1.0 or less
Mn
8.0 – 9.5
8.0 – 12.0
Cr
15.0 – 16.5
14.0 – 16.5
Ni
> 0.3 – 1.0
0.5 – 2.5
Cu
0.8 – 1.8
2.0 or less
Fe +
impurities
Balance
Balance
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over KR 2006-0075725 A of Chae and its English machine translation (KR’725).
Regarding claims 1-5, KR 2006-0075725 A of Chae and its English machine translation (KR’725) teaches "a work hardening low Ni austenitic stainless steel", "Cr-Mn-Ni-C-N-based work hardening stainless steel" wherein "Ni" "which is an expensive alloying element substituted with manganese, carbon and nitrogen" "compared to Cr-Ni metastable work hardening stainless steel" "In general, the work hardening stainless steel refers to a stainless steel that is formed so as to obtain high strength by cold working such as temper rolling by reducing the stability of the austenite phase to an appropriate level and transforming the austenite phase into processed organic martensite during cold deformation." "However, these steels usually contain more than 7% by weight of nickel, an expensive alloying element, which makes the material expensive." Further, the prior art teaches "In order to achieve the above object, the present invention, in weight%, C 0.05-0.13%, Si up to 1.0% by weight, Mn 8.0-12.0%, P 0.03% or less, S 0.01% or less, Cr 14.0-16.5%, Ni 0.5 -2.5%, Mo 0.5% or less, N 0.06-0.2%, Cu 2.0% or less, B 0.007% or less, and the balance aims at providing the work hardening austenite stainless steel which consists of iron and a normal impurity." thereby teaching a steel 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. {abstract, pages 2-3, claims 1-4}.
List 2
Expression #
Calculation Formula
Claimed
Range
Ranges based on elemental ranges claimed
Prior Art Range
Expression
(1)
Ni+0.47Mn+15N
≥7.5
7.060 – 9.215
5.160 – 11.140
Expression
(2)
23(C+N)+1.3Si+0.24(Cr+Ni+Cu)+0.1Mn
≥12
11.684 – 15.122
6.810 – 15.130
Expression
(3)
551−462(C+N)−9.2Si−8.1Mn−13.7Cr−29(Ni+Cu)≤70
≤70
0.540 – 121.320
-64.40 – 229.080
Expression
(4)
1+45C−5Si+0.09Mn+2.2Ni−0.28Cr−0.67Cu+88.6N
≥11 and ≤17
15.954 – 28.764
5.906 – 36.950
It is noted that the prior art is silent regarding expressions (1) to (4) of the instant claims. However, as the prior art discloses a composition wherein the claimed ranges of the various elements of the instant alloy overlap or lie inside the ranges of various elements of the alloy of the prior art (see compositional analysis above), the ranges of the formulaic expression of the instant claims would also overlap or lie inside the values of the prior art resulting from the instant formulaic expressions (See calculation in List 2 above). In addition, it is 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, Saklatwalla 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.
Regarding claims 2-5, as noted above, it is unclear how these properties are connected to the stainless steel. If they are reciting the capability of the steel or in other words, the properties are directed to those being attained having a particular process performed in the future, the properties would be attained by doing the process on the steel of the prior art since the steel of the prior art and that of the instant steel have substantially identical composition (see above) and structure (austenitic stainless steel). 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. 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, see pages 5-6, filed 21 April 2026, with respect to the rejections a) Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over US 2010/0233015 A1 of Hamada (US’015) and b) Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/059660 A1 via its English equivalent EP 3674435 A1 of Choi (EP’435), have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of amendments to the instant claims.
Conclusion
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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