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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/2/2026 has been entered.
Status of claims
Claim 1 is amended; Claims 6 and 18-20 are withdrawn from consideration as non-elected claims; Claims 1-5 and 7-17 remain for examination, wherein claim 1 is an independent claim. It is acknowledged of the Applicant’s “Terminal Disclaimer” filed on 1/20/2026, which has been approved on 2/5/2026.
Previous Rejections/Objections
Previous rejection of Claims 1-5 and 7-17 under 35 U.S.C. 102 (a)(1) as being anticipated by Hirata et al (US-PG-pub 2010/0034689 A1, listed in IDS filed on 10/19/2022, thereafter PG’689) is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 1/20/2026.
Previous rejection of Claims 1-5 and 7-17 under 35 U.S.C. 103 as being unpatentable over Hirata et al (JP 2014001436 A, with on-line translation, thereafter JP’436) alone or further in view of Hirata et al (US-PG-pub 2018/0258505 A1, thereafter PG’505) is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 1/20/2026.
Previous rejection of Claims 1-5 and 7-17 on the ground of nonstatutory obviousness type double patenting as being unpatentable over claims 1-16 of copending application No. 17/996,700 (US-PG-pub 2023/0220508 A1) is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 1/20/2026 and the Applicant’s “Terminal Disclaimer” filed on 1/20/2026, which has been approved on 2/5/2026.
However, in view of the Applicant’s “Arguments/Remarks with amendment” filed on 1/20/2026, newly recorded prior art, and reconsideration, the new ground rejection is 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) 1-5 and 7-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hirata et al (US-PG-pub 2010/0034689 A1, listed in IDS filed on 10/19/2022, thereafter PG’689) in view of Senba et al (JP 2000256803 A, with on-line translation, thereafter JP’803).
Regarding claims 1, 3, 5, 7, and 11-17, PG’689 teaches an austenitic stainless steel (Abstract, claims, and examples of JP’PG’689), which reads on the austenitic heat resistant steel as claimed in the instant claims. The comparison between the alloy composition ranges disclosed by the working example #A4 in table 4 of PG’689 and those claimed in the instant claim has been listed as following table. All of the essential alloy composition ranges disclosed in the Working Example #A4 in table 4 of PG’689 are within the claimed composition ranges. Since PG’689 teaches all of the essential alloy composition as claimed in the instant invention, which meets the claimed “consisting of” language as claimed in the instant claims. The claimed NbER is analyzed as extraction residues (an amount of Nb present in a form of its precipitate) (par.[0091] of the US-PG-pub 2023/0203629 A1, corresponding to the specification of the instant application). PG’689 teaches forming Nb included carbide or carbonitride precipitates (par.[0038]-[0039] and [0080] of PG’689). PG’689 does not specify the range of Nb-NbER as claimed in the instant claim 1. JP’803 teaches an austenitic stainless steel excellent in high-temperature strength and ductility suitable as a material for high-temperature equipment such as boilers and chemical plants (Abstract and claims of JP’803). All of the alloy composition ranges disclosed by JP’803 overlap the claimed alloy composition ranges. MPEP 2144 05 I. JP’803 indicates that the content of non-solid solution Nb after solution heat treatment lies in the range of 0.04×Cu (weight %) to 0.085×Cu (weight %) in order to improve the ductility of austenitic stainless steel having excellent high-temperature characteristics (Abstract, par.[0033]-[0034] of JP’803), which overlaps the claimed Nb-NbER range. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the amount of Nb-NbER from the disclosure of JP’803 for the steel of PG’689 in order to improve the ductility of austenitic stainless steel having excellent high-temperature characteristics (Abstract, par.[0033]-[0034] of JP’803). The claimed rupture time under specific conditions are recognized as material properties fully depended on the alloy composition and microstructures. PG’689 in view of JP’803 teaches the same alloy composition treated by the same precipitate treatment with the similar Nb-NbER amount for the same austenitic stainless steel application. The claimed properties would be highly expected for the steel of PG’689 in view of JP’803. MPEP 2112 01 and 2145 II.
Element
From instant Claims 1, 5, and 11-17 (mass %)
Disclosed by Working example #A4 in table 1 of PG’689 (mass %)
Within range
(mass %)
C
0.04-0.12
0.08
0.08
Si
0.01-0.30
0.23
0.23
Mn
0.50-1.50
0.74
0.74
P
0.001-0.040 (cl.1) 0.010-0.040 (cl.5,11-17)
0.027
0.027
S
< 0.0050
< 0.0010
< 0.0010
Cu
2.2-3.8
2.88
2.88
Ni
8.0-11.0
8.87
8.87
Cr
17.7-19.3
18.07
18.07
Mo
0.01-0.55
0.21
0.21
Nb
0.40-0.650
0.52
0.52
B
0.0010-0.0060
0.0041
0.0041
N
0.050-0.160
0.11
0.11
Al
0.025 or less
0.010
0.010
O
0.020 or less
Trace amount
Trace amount
Co
0-1.00
0.19
0.19
W
0-1.00
Trace amount
Trace amount
Ti
0-0.40
0.004
0.004
V
0-0.40
0.067
0.067
Ta
0-0.40
Trace amount
Trace amount
Sn
0-0.0300
0.0170
0.0170
Ca
0-0.0100
0.0001
0.0001
Mg
0-0.0100
0.0001
0.0001
REM
0-0.0800
Trace amount
Trace amount
Fe
Balance with impurities
Balance with impurities
Balance with impurities
Nb-NbER
0.170-0.480
(0.04-0.085) x [Cu] (JP’803)
Overlapping
0.17-0.245
From instant Claims 3 and 7 (mass %)
One or mor of
Co: 0.01-1.00;
W: 0.01-1.00;
Ti: 0.01-0.40;
V: 0.01-0.40;
Ta: 0.01-0.40;
Sn:0.0002-0.03;
Ca: 0.0002-0.01;
Mg: 0.0002-0.01;
REM: 0.0005-0.08
Co: 0.19;
Ti: 0.004;
V: 0.067;
Sn: 0.0170;
Co: 0.19;
Ti: 0.004;
V: 0.067;
Sn: 0.0170;
Regarding claims 2, 4, and 8-10, the claimed formula (ii) (cl.2) and formula (iii) (cl.4 and 8-10) are recognized as general formula directly depend on the amount of Nb and B (cl.2) and Nb, P, and B (cl.4 and 8-10). Since PG’689 teaches the same P, B, Nb, and NbER as claimed in the instant claims. The claimed Nb-NbER would be inherently exist in the alloy of PG’689. MPEP 2112 III&IV.
Claim(s) 1-5 and 7-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hirata et al (JP 2014001436 A, with on-line translation, thereafter JP’436) in view of Hirata et al JP’803.
Regarding claims 1, 3, 5, 7, and 11-17, JP’436 teaches an austenitic heat-resistant steel pipe which can be suitably used as a member for equipment which is heated at high temperature and cooled repeatedly, and has superior resistance to thermal fatigue characteristics even when welded with a different material of a ferritic heat-resistant steel member (Abstract, claims, and examples of JP’436), which reads on the austenitic heat resistant steel as claimed in the instant claims. The comparison between the alloy composition ranges disclosed by the Working Example #A2 in table 1 of JP’436 and those claimed in the instant claim has been listed as following table. All of the essential alloy composition ranges disclosed in the Working Example #A2 in table 1 of JP’436 are within the claimed composition ranges. It is noted that the Nb and N ranges disclosed by the Working Example #A2 in table 1 of JP’436 are outside the claimed ranges. However, JP’436 indicates to adjusting Nb in range 0.2-1.2 mass% (par.[0050] of JP’436) and N in range 0.01-0.25 mass% (par.[0053] of JP’436) in order to improve the properties of the alloy, which overlaps the claimed Nb and N ranges as recited in the instant claim. 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 amount of Nb and N in the alloy as claimed from the disclosures of JP’436 since JP’436 teaches the same austenitic stainless steel as claimed through whole disclosing range. Since JP’436 teaches all of the essential alloy composition as claimed in the instant invention, which meets the claimed “consisting of” language as claimed in the instant claims.
Element
From instant Claims 1, 5, and 11-17 (mass %)
Disclosed by example #A2 in table 1 of JP’436 (mass %)
Within range
(mass %)
C
0.04-0.12
0.06
0.06
Si
0.01-0.30
0.12
0.12
Mn
0.50-1.50
0.91
0.91
P
0.001-0.040 (cl.1) 0.010-0.040 (cl.5,11-17)
0.038
0.038
S
< 0.0050
0.001
0.001
Cu
2.2-3.8
2.5
2.5
Ni
8.0-11.0
8.0
8.0
Cr
17.7-19.3
18.0
18.0
Mo
0.01-0.55
0.29
0.29
Nb
0.40-0.650
0.32
Adjusting in range: 0.2-1.2
--
Overlapping range: 0.40-0.65
B
0.0010-0.0060
0.0012
0.0012
N
0.050-0.160
0.20
Adjusting in range: 0,01-0.25
--
Overlapping range: 0.050-0.160
Al
0.025 or less
0.005
0.005
O
0.020 or less
0.005
0.005
Co
0-1.00
Trace amount
Trace amount
W
0-1.00
Trace amount
Trace amount
Ti
0-0.40
Trace amount
Trace amount
V
0-0.40
Trace amount
Trace amount
Ta
0-0.40
Trace amount
Trace amount
Sn
0-0.0300
Trace amount
Trace amount
Ca
0-0.0100
0.0005
0.0005
Mg
0-0.0100
Trace amount
0-trace amount
REM
0-0.0800
0.0005
0.0005
Fe
Balance with impurities
Balance with impurities
Balance with impurities
Nb-NbER
0.170-0.480
(0.04-0.085) x [Cu] (JP’803)
Overlapping
From instant Claims 3 and 7 (mass %)
One or mor of
Co: 0.01-1.00;
W: 0.01-1.00;
Ti: 0.01-0.40;
V: 0.01-0.40;
Ta: 0.01-0.40;
Sn:0.0002-0.03;
Ca: 0.0002-0.01;
Mg: 0.0002-0.01;
REM: 0.0005-0.08
Ca: 0.0005;
REM: 0.005
Ca: 0.0005;
REM: 0.005
Still regarding Claim 1, the claimed NbER is analyzed as extraction residues (an amount of Nb present in a form of its precipitate) (par.[0091] of the US-PG-pub 2023/0203629 A1, corresponding to the specification of the instant application). JP’436 teaches forming Nb included carbide or carbonitride precipitates (par.[0050] of JP’436). JP’803 teaches an austenitic stainless steel excellent in high-temperature strength and ductility suitable as a material for high-temperature equipment such as boilers and chemical plants (Abstract and claims of JP’803). All of the alloy composition ranges disclosed by JP’803 overlap the claimed alloy composition ranges. MPEP 2144 05 I. JP’803 indicates that the content of non-solid solution Nb after solution heat treatment lies in the range of 0.04×Cu (weight %) to 0.085×Cu (weight %) in order to improve the ductility of austenitic stainless steel having excellent high-temperature characteristics (Abstract, par.[0033]-[0034] of JP’803), which overlaps the claimed Nb-NbER range. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the amount of Nb-NbER from the disclosure of JP’803 for the steel of JP’436 in order to improve the ductility of austenitic stainless steel having excellent high-temperature characteristics (Abstract, par.[0033]-[0034] of JP’803). The claimed rupture time under specific conditions are recognized as material properties fully depended on the alloy composition and microstructures. JP’436 in view of JP’803 teaches the same alloy composition treated by the same precipitate treatment with the similar Nb-NbER amount for the same austenitic stainless steel application. The claimed properties would be highly expected for the steel of JP’436 in view of JP’803. MPEP 2112 01 and 2145 II.
Regarding claims 2, 4, and 8-10, the claimed formula (ii) (cl.2) and formula (iii) (cl.4 and 8-10) are recognized as general formula directly depend on the amount of Nb and B (cl.2) and Nb, P, and B (cl.4 and 8-10). 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, 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. In the instant case, in the absence of evidence to the contrary, the selection of the proportions of P, B and Nb from JP’436 in order to meet the claimed equation 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. Since JP’436 teaches similar P, B, and Nb as claimed in the instant claims. It would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the amount of P, B, and Nb from the disclosing of JP’436 to meet the claimed formula.
Response to Arguments
Applicant’s arguments to the art rejection to Claims 1-5, and 7-17 have been considered but they are moot in view of the new ground rejection as stated as above. Regarding the arguments related to the amended features, the Examiner’s position has stated as 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