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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/28/2026 has been entered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/04/2025 was filed after the mailing date of the advisory action on 21/03/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings were received on 1/28/2026. These drawings are accepted.
Status of Claims
Claims 1 and 5 are currently amended, Claims 2 and 4 are cancelled, and Claims 3 and 6-8 are as originally filed.
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, 3, and 5-8 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.
Claim 1 recites expression (3) and a true strain value of 0.2 or less. However, there is no recitation of how the true strain is related to the strain ε that is in expression (3). There are also no values or ranges for the stress σ, strength coefficient K, or work-hardening exponent n. There is not a way for one of ordinary skill to ascertain the metes and bounds of expression (3).
Claims dependent on any of the rejected claims are likewise rejected under this statute.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3, and 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/070001 A1, based on the machine translation, in view of Nutor et al in American Journal of Materials Synthesis and Processing.
WO 2019/0070001 (WO ‘001) teaches an austenitic stainless steel welding metal comprising the composition shown in the table below with respect to the claimed invention. The final column under “WO ‘001” shows where the ranges taught in WO ‘001 fall with respect to the claimed ranges (see WO ‘001, abstract). WO ‘001 teaches an overlapping range of Mo and Cu and overlapping ranges for Expressions (1) and (2). In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists because the prior art discloses the utility of the composition over the entire disclosed range. See MPEP § 2144.05.
Element (% by wt)
Claim 1
Claim 3
WO ‘001
C
0.01
0.05
0.05
0.11
within
N
0.01
0.25
0.01
0.15
within
Si
> 0
1.5
0.10
0.50
within
Mn
0.3
3.5
1.0
2.5
within
Cr
17
22
17.0
21.0
within
Ni
9
14
9.0
11.5
within
Mo
> 0
2
0
0.50
overlaps lower range
Cu
0.2
2.5
0
0.50
overlaps lower range
Fe
BALANCE
BALANCE
overlaps
Expression (1)
≥ 63
47.1
71.5
overlaps lower range
Expression (2)
< 5.5
4.75
-2.63
within
Al
0 < Al ≤ 0.04%
0
0.03
overlaps lower range
Ti
0 < Ti ≤ 0.003%
0
0.10
overlaps lower range
B
0 < B ≤ 0.0025%
0
0.005
overlaps lower range
P
< 0.035%
0
0.035
matches
S
< 0.0035%
0
0.003
within
However, WO ‘001 does not recite the true strain value is 0.2 or less as recited in Claim 1.
Nutor et al teaches using the Hollomon model to predict strain-hardening in metals. The equation is
σ
T
=
K
ε
T
n
where
σ
T
is the true stress, εT is the true strain, n is the strain-hardening exponent and K is the strength coefficient. For most metals, the strain-hardening exponent falls between 0.10 to 0.50 and perfectly elastic plastic-solids have a strain-hardening exponent of zero. In predicting the strain-hardening behavior using the Hollomon model, we used stress-strain data obtained from tensile tests of steel and aluminium at room temperature. One of the most common mechanical stress–strain tests is performed in tension. The stress-strain data are obtained directly during the course of the test and an inverse test is unnecessary, unlike in the bending test (page 2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the true stain value in WO ‘001 would be within the range taught by Nutor et al, since Nutor et al teaches the metals includes steel (inter alia, page 3).
Regarding Claim 3, WO ‘001 overlaps the claimed range for Al, Ti, and B.
Regarding Claim 5, Nutor et al teaches a range of true strain that overlaps with 0-0.11 as described above.
Regarding the elongation in Claim 6, the tensile strength in Claim 7, or when cracks occur at the fifth stage in Claim 8, WO ‘001 in view of Nutor et al does not teach these claimed properties. 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. See MPEP § 2112.01. In this case, WO ‘001 teaches a substantially identical product in composition.
Claims 1, 3, and 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/071534 A1, based on the machine translation, in view of Nutor et al.
WO 2020/071534 (WO ‘534) teaches an austenitic stainless steel sheet comprising the composition shown in the table below with respect to the claimed invention. The final column under “WO ‘534” shows where the ranges taught in WO ‘534 fall with respect to the claimed ranges (see WO ‘534, abstract). WO ‘534 teaches an overlapping range of all claimed elements but Si and Mo and overlapping ranges for Expression (1) and (2). In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists because the prior art discloses the utility of the composition over the entire disclosed range. See MPEP § 2144.05. WO ‘534 teaches hot rolling, cold rolling to adjust the mechanical properties and reducing residual stress strain relief (pages 12-14). Winding the sheet increases the strength of the coil (page 10, bottom).
Element (% by wt)
Claim 1
Claim 3
WO ‘534
C
0.01
0.05
0.005
0.15
overlaps lower range
N
0.01
0.25
0.005
0.15
overlaps lower range
Si
> 0
1.5
0
0.5
within
Mn
0.3
3.5
0
1.5
overlaps lower range
Cr
17
22
15
20
overlaps lower range
Ni
9
14
6
15
overlaps lower range
Mo
> 0
2
0
2
matches
Cu
0.2
2.5
0
1.5
overlaps lower range
Fe
BALANCE
BALANCE
Expression (1)
≥ 63
33.5
89
overlaps lower range
Expression (2)
< 5.5
9.79
-11.55
overlaps
Al
0 < Al ≤ 0.04%
0
0.1
overlaps
Ti
0 < Ti ≤ 0.003%
0
0.3
overlaps
B
0 < B ≤ 0.0025%
0
0.01
overlaps
P
< 0.035%
reads
S
< 0.0035%
reads
However, WO ‘534 does not recite the true strain value is 0.2 or less as recited in Claim 1.
Nutor et al teaches using the Hollomon model to predict strain-hardening in metals. The equation is
σ
T
=
K
ε
T
n
where
σ
T
is the true stress, εT is the true strain, n is the strain-hardening exponent and K is the strength coefficient. For most metals, the strain-hardening exponent falls between 0.10 to 0.50 and perfectly elastic plastic-solids have a strain-hardening exponent of zero. In predicting the strain-hardening behavior using the Hollomon model, we used stress-strain data obtained from tensile tests of steel and aluminium at room temperature. One of the most common mechanical stress–strain tests is performed in tension. The stress-strain data are obtained directly during the course of the test and an inverse test is unnecessary, unlike in the bending test (page 2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the true stain value in WO ‘534 would be within the range taught by Nutor et al, since Nutor et al teaches the metals includes steel (inter alia, page 3).
Regarding Claim 3, WO ‘534 overlaps the claimed ranges and reads on no P or S, though the examiner notes that they are optional based “comprising at least one of” recited in the claim.
Regarding Claim 5, Nutor et al teaches a range of true strain that overlaps with 0-0.11 as described above.
Regarding the elongation in Claim 6, the tensile strength in Claim 7, or when cracks occur at the fifth stage in Claim 8, WO ‘534 does not teach these claimed properties. 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. See MPEP § 2112.01. In this case, WO ‘534 teaches a substantially identical product in composition.
Claims 1, 3, and 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2021/141107 Al (published 07/15/2021), based on Osuki et al (US 20220411908), which is in the same patent family, in view of Nutor et al.
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Osuki et al teaches an austenitic stainless steel material comprising the composition shown in the table below with respect to the claimed invention. The final column under “Osuki et al” shows where the ranges taught in Osuki et al fall with respect to the claimed ranges (abstract). Osuki et al teaches an overlapping range of all claimed elements but Si and overlapping ranges for Expressions (1) and (2). In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists because the prior art discloses the utility of the composition over the entire disclosed range. See MPEP § 2144.05. Osuki et al teaches the stainless steel material has excellent stress relaxation crack resistance [0010, 0209]. The material is subjected to hot rolling [0202-0203] and cooled [0204].
Element (% by wt)
Claim 1
Claim 3
Osuki et al
C
0.01
0.05
0
0.3
overlaps
N
0.01
0.25
0.05
0.25
overlaps
Si
> 0
1.5
0
1.5
matches
Mn
0.3
3.5
0
2
overlaps
Cr
17
22
15
25
overlaps
Ni
9
14
8
20
overlaps
Mo
> 0
2
0.05
5
overlaps
Cu
0.2
2.5
0
4
overlaps
Fe
BALANCE
BALANCE
Expression (1)
≥ 63
41.6
136
overlaps lower range
Expression (2)
< 5.5
3.085
-17.65
overlaps
Al
0 < Al ≤ 0.04%
0
0.1
overlaps
Ti
0 < Ti ≤ 0.003%
0
0.5
overlaps
B
0 < B ≤ 0.0025%
0.0005
0.01
overlaps
P
< 0.035%
reads
S
< 0.0035%
reads
However, Osuki et al does not recite the true strain value is 0.2 or less as recited in Claim 1.
Nutor et al teaches using the Hollomon model to predict strain-hardening in metals. The equation is
σ
T
=
K
ε
T
n
where
σ
T
is the true stress, εT is the true strain, n is the strain-hardening exponent and K is the strength coefficient. For most metals, the strain-hardening exponent falls between 0.10 to 0.50 and perfectly elastic plastic-solids have a strain-hardening exponent of zero. In predicting the strain-hardening behavior using the Hollomon model, we used stress-strain data obtained from tensile tests of steel and aluminium at room temperature. One of the most common mechanical stress–strain tests is performed in tension. The stress-strain data are obtained directly during the course of the test and an inverse test is unnecessary, unlike in the bending test (page 2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the true stain value in Osuki et al would be within the range taught by Nutor et al, since Nutor et al teaches the metals includes steel (inter alia, page 3).
Regarding Claim 3, Osuki et al overlaps the claimed ranges and reads on no P or S, though the examiner notes that they are optional based “comprising at least one of” recited in the claim.
Regarding Claim 5, Nutor et al teaches a range of true strain that overlaps with 0-0.11 as described above.
Regarding the elongation as in Claim 6, the tensile strength in Claim 7, or when cracks occur at the fifth stage in Claim 8, Osuki et al does not teach these claimed properties. 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. See MPEP § 2112.01. In this case, Osuki et al teaches a substantially identical product in composition.
Response to Arguments
Applicant's arguments filed 02/24/2026 have been fully considered but they are not persuasive. Applicant argues that none of the references as combined by the examiner in the office action mailed 08/28/2025 satisfy all of Expressions (1), (2), and (3) or the true strain value. Nutor et al is recited above to teach that expression (3) is known in the art as the Holloman model and the true strain value for metals is in the range of 0.10-0.50. The maximum work-hardening exponent “occurring at a true stain as defined in Expression (3)” does not have any value, and there are no values for
σ
T
or n to determine a maximum work-hardening exponent. Regarding “this material property is a direct consequence of the compositional requirements recited in Expression (1),” the cited prior art teaches overlapping ranges as stated above. Applicants can rebut a prima facie case of obviousness based on overlapping ranges by showing the criticality of the claimed range or by showing that the art, in any material respect, teaches away from the claimed invention. See MPEP § 2144.05 III.
The composition ranges in WO ‘001 teach a range for Expression (1) of 47.1-71.5, with only the lower limits of Mo and Cu overlapping the claimed range. The composition ranges in WO ‘534 teach a range for Expression (1) of 33.5-89. The composition ranges of Osuki et al teach a range for Expression (1) of 41.6-136. The office action does not recite any expression (1) values of the range of only and approximately 30-50.
The amendment filed 01/28/2026 overcomes the provisional double patenting rejections.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tima M. McGuthry-Banks whose telephone number is (571)272-2744. The examiner can normally be reached Monday through Friday, 7:30 am to 4:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith D. Hendricks can be reached at (571) 272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Tima M. McGuthry-Banks
Primary Examiner
Art Unit 1733
/TIMA M. MCGUTHRY-BANKS/Primary Examiner, Art Unit 1733
Prosecution Insights