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 1-5, 10-13 and 18 are examined of which claims 1-3, 10 and 18 were amended.
Claims 6-9, 14-17 and 19 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim.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 02 June 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
Broad Range
(mass%)
C
N
C: 0.200 or less
N: 0.200 or less
C+N: 0.100 or more
C: 0.03 – 0.14
N: 0.005 – 0.20
∴C+N = 0.0305 – 0.34
Si
1.00 – 3.50
0.1 – 3.0
Mn
5.00 or less
0.1 – 5.0
Ni
4.00 – 10.00
5.0 – 9.0
Cr
12.00 – 18.00
14.0 – 19.0
Cu
3.500 or less
0.8 or less
Mo
1.00 – 5.00
0.2 – 2.0
Claim 2: one or more selected from 0.100% or less of Al, 0.010% or less of O, 0.0001 to 0.500% of V, and 0.0001 to 0.015% of B
V: 0.1 – 0.5
Claims 3, 10: one or more selected from 0.010 to 0.500% of Ti, 0.010 to 0.500% of Co, 0.010 to 0.100% of Zr, 0.010 to 0.100% of Nb, 0.0005 to 0.0030% of Mg, 0.0003 to 0.0030% of Ca, 0.010 to 0.200% of Y, 0.001 to 0.100% of Ln, 0.001 to 0.500% of Sn, 0.001 to 0.500% of Sb, 0.010 to 0.100% of Pb, and 0.010 to 0.500% of W
Ti: 0.1 – 0.5
Fe + impurities
Balance
Balance
Claims 1, 2, 4, 5 and 18 rejected under 35 U.S.C. 103 as being unpatentable over JP 2002-146483 A of Takano and its English machine translation (JP’483) of record.
Regarding claims 1, 2 and 18, JP 2002-146483 A of Takano and its English machine translation (JP’483) teaches {abstract, [0001], [0005]-[0007]} “an austenitic stainless steel wire” having specific compositions 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. (JP’483 abstract, [0001]-[0023], [0025]- [0030], Tables 1-2, claims 1-7).
The prior art teaches that its steel has a) an Md30 value is -20 (°C) to 40 (°C). Md30=551-462(C+N)-9.2Si-8.1Mn-29 (Ni+Cu)-13.7Cr-18.5Mo ... (1), b) tensile strength od 1900 N/mm2 or more, c) deformation-induced martensite is 20 to 80% thereby meeting the claimed recitation of these properties.
JP’483 is silent regarding the recited features of instant claims of the steel material having: a) an elongation at break (EL) of 12.0% or more, b) TS × EL of 24000 or more, and c) a stress relaxation percentage of 1.20% or less. 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 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 composition (see compositional analysis above) and b) the claimed and prior art products are identical or substantially identical in structure (see microstructure 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).
Regarding the claimed limitation of C+N, the prior art is silent and teaches the equation of 2C+N. 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. 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 claim 4, it is noted that the prior art does not teach of the thickness as recited in the instant claim. However, the prior art teaches how to make thickness modifications using rolling in [0026]. In addition, MPEP provides that with regard to the shape/size/proportion, 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.
Regarding claim 5, instant claim recites intended use for the steel material. Although the prior art does not explicitly teach that the material is used for a plate spring, the prior art teaches [0002] “In recent years, there has been an increasing need for weight reduction in stainless steel wires for springs and the like, and there has been a demand for higher strength. As this type of material, steel wires obtained by subjecting austenitic stainless steel wires such as SUS304, SUS301, and SUS302 to heavy wire drawing have been used. In particular, a strength of 1900 N/mm2 or more is required after wire drawing.” Therefore, 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 take the steel wire of JP’483 and use it for springs since JP’483 teaches that an austenitic stainless steel wire with a strength of 1900 N/mm2 or more thereby solving the needs for weight reduction in stainless steel wires for springs and the like, and the demand for higher strength. {JP’483 abstract, [0002], Table 1}.
Claims 3, 10 and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2002-146483 A of Takano and its English machine translation (JP’483) as applied to claims 1, 2 and 18 above, and further in view of US 2015/0376729 A1 of Matsubayasjhi (US’729) of record.
Regarding claims 3 and 10, JP’483 does not teach the presence of elements and ranges recited in claims 3 and 10. In the same field of endeavor of austenitic stainless steels, US 2015/0376729 A1 of Matsubayasjhi (US’729) teaches “[0001] The present invention relates to an austenitic stainless steel sheet that is suitable for a part used in various types of equipment and devices functioning by utilizing magnetism and is capable of maintaining nonmagnetism even after working under severe condition, and to a method for producing a high elastic limit nonmagnetic stainless steel material that is excellent in toughness using the same as a raw material.” and points out “[0046] In addition to the aforementioned elements, Ca and REM (rare earth elements) used as a deoxidizing agent and a desulfurizing agent are allowed to be incorporated in an amount of 0.01% or less in total”. Therefore, 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 take the steel material of JP’483 and add Ca and/or REM in an amount of 0.01% or less in total as a deoxidizing agent and a desulfurizing agent thereby improving the quality of the steel material.
Regarding claims 11-13, it is noted that the prior art JP’483 does not teach of the thickness as recited in the instant claim. However, the prior art teaches how to make thickness modifications using rolling in [0026]. In addition, MPEP provides that with regard to the shape/size/proportion, 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.
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 1-5, 10-13 and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18/250,278 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application teaches an austenitic stainless steel material with substantially identical composition, microstructure and properties.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-5, 10-13 and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of copending Application No. 18/707,671 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application teaches an austenitic stainless steel material with substantially identical composition, microstructure and properties.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Affidavit or Declaration Under 37 CFR 1.132
The declaration under 37 CFR 1.132 filed 12/01/2025 is insufficient to overcome the rejections a) Claims 1, 2, 4, 5 and 18 rejected under 35 U.S.C. 103 as being unpatentable over JP 2002-146483 A of Takano and its English machine translation (JP’483) and b) Claims 3, 10 and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2002-146483 A of Takano and its English machine translation (JP’483) as applied to claims 1, 2 and 18 above, and further in view of US 2015/0376729 A1 of Matsubayasjhi (US’729) as set forth in the last Office action because:
Please note that the Applicant amended the instant claims and therefore the rejections of record had to be modified to address the amendments.
Regarding the declaration, Applicant provides the opinion that the prior art JP’483 would not possess the recited features of instant claims of the steel material having: a) an elongation at break (EL) of 12.0% or more, b) TS × EL of 24000 or more, and c) a stress relaxation percentage of 1.20% or less. Applicant provides as follows:
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MPEP provides as follows regarding objective evidence. See MPEP § 716.01(c)
Although factual evidence is preferable to opinion testimony, such testimony is entitled to consideration and some weight so long as the opinion is not on the ultimate legal conclusion at issue. While an opinion as to a legal conclusion is not entitled to any weight, the underlying basis for the opinion may be persuasive. In re Chilowsky, 306 F.2d 908, 134 USPQ 515 (CCPA 1962) (expert opinion that an application meets the requirements of 35 U.S.C. 112 is not entitled to any weight; however, facts supporting a basis for deciding that the specification complies with 35 U.S.C. 112 are entitled to some weight); In re Lindell, 385 F.2d 453, 155 USPQ 521 (CCPA 1967) (Although an affiant’s or declarant’s opinion on the ultimate legal issue is not evidence in the case, "some weight ought to be given to a persuasively supported statement of one skilled in the art on what was not obvious to him." 385 F.2d at 456, 155 USPQ at 524 (emphasis in original)). In assessing the probative value of an expert opinion, the examiner must consider the nature of the matter sought to be established, the strength of any opposing evidence, the interest of the expert in the outcome of the case, and the presence or absence of factual support for the expert’s opinion. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 227 USPQ 657 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986). See also In re Oelrich, 579 F.2d 86, 198 USPQ 210 (CCPA 1978) (factually based expert opinions on the level of ordinary skill in the art were sufficient to rebut the prima facie case of obviousness); Ex parte Gray, 10 USPQ2d 1922 (Bd. Pat. App. & Inter. 1989) (statement in publication dismissing the "preliminary identification of a human b-NGF-like molecule" in the prior art, even if considered to be an expert opinion, was inadequate to overcome the rejection based on that prior art because there was no factual evidence supporting the statement); In re Carroll, 601 F.2d 1184, 202 USPQ 571 (CCPA 1979) (expert opinion on what the prior art taught, supported by documentary evidence and formulated prior to the making of the claimed invention, received considerable deference); In re Beattie, 974 F.2d 1309, 24 USPQ2d 1040 (Fed. Cir. 1992) (declarations of seven persons skilled in the art offering opinion evidence praising the merits of the claimed invention were found to have little value because of a lack of factual support); Ex parte George, 21 USPQ2d 1058 (Bd. Pat. App. & Inter. 1991) (conclusory statements that results were "unexpected," unsupported by objective factual evidence, were considered but were not found to be of substantial evidentiary value). Although an affidavit or declaration which states only conclusions may have some probative value, such an affidavit or declaration may have little weight when considered in light of all the evidence of record in the application. In re Brandstadter, 484 F.2d 1395, 179 USPQ 286 (CCPA 1973). An affidavit of an applicant as to the advantages of their claimed invention, while less persuasive than that of a disinterested person, cannot be disregarded for this reason alone. Ex parte Keyes, 214 USPQ 579 (Bd. App. 1982); In re McKenna, 203 F.2d 717, 97 USPQ 348 (CCPA 1953).
As noted 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 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 composition (see compositional analysis above) and b) the claimed and prior art products are identical or substantially identical in structure (see microstructure 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).
It is agreed that there exists slight differences in processing. However, the prior art has substantially identical processing. Moreover, there is no data in the instant specification or the instant declaration that would lead one to conclude that the specific step that the Applicant relies upon in the instant declaration would be the modulator of the recited properties.
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Response to Arguments
Applicant's arguments filed 12/01/2025 have been fully considered but they are not persuasive.
Regarding the declaration and the arguments associated with it, please see section titled “Response to Affidavit or Declaration Under 37 CFR 1.132” above.
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.
Regarding the double patenting rejections, instant rejections are maintained as all of the applications are copending.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KEITH HENDRICKS can be reached on (571)272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733