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 .
Status of Claims
Claims 1-2, 4-6 and 9-11 are amended. Claims 3, 7-8 and 13 are cancelled. Claims 12 and 14-16 are withdrawn. Claims 1-2, 4-6 and 9-11 are examined herein.
Status of Previous Rejections
The rejections of claims 1-7 and 9-11 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph have been withdrawn in view of the amendment.
The rejection of claim 10 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph has been withdrawn in view of the amendment.
The rejections of claims 1-2, 4-7 and 9-11 under 35 U.S.C. 102(a)(1) as being anticipated by JP’751 (JPH07-316751A) have been withdrawn in view of the amendment.
The rejections of claims 1-5 and 9-11 rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN’702 (CN111621702A) have been withdrawn in view of the amendment.
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.
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.
Claims 1-2, 4-6 and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Nishiyama (US 2008/0107559).
Regarding claims 1-2, 4, 6 and 9-11, Nishiyama teaches an austenitic stainless steel, comprising 0.07 wt.% carbon, 26.1 wt.% chromium, 19.1 wt.% nickel, 1.56 wt.% silicon, 0.87 wt.% manganese, 0.16 wt.% nitrogen, 0.001 wt.% sulfur, 0.018 wt.% phosphorus, 0.02 wt.% yttrium, 0.5 wt.% Cu and the balance being iron (Fe) and inevitable impurities (Abstract; Table 1, Sample No. 3), which meets the recited amounts of C, Ni, Si, Mn, N, S, P and rare earth in claims 1-2, 4 and 9-11. The Cr amount in Sample No. 3 of Nishiyama is close to the recited amount of Cr in claims 1 and 6. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). See MPEP 2144.05 I.
N+3xC+3xREM=0.43, which meets 0.40 % ≤ N+3xC+3xREM ≤ 0.60% recited in claim 1. The rare earth in Sample No. 3 of Nishiyama is yttrium, not cerium and lanthanum. However, Nishiyama discloses that the rare earth elements can be any element of yttrium and Ln series, preferably La, Ce and Nd in the amount of 0.005-0.08 wt.% to increase scale peeling resistance ([0066] to [0069]). Thus, it would be obvious to one of ordinary skill in the art that the yttrium in Sample No. 3 of Nishiyama can be replaced with La or Ce to increase scale peeling resistance as disclosed by Nishiyama. Thus, claims 1-2, 4, 6 and 9-11 are obvious over Nishiyama.
Regarding claim 5, Nishiyama discloses that the rare earth elements can be any element of yttrium and Ln series, preferably La, Ce and Nd in the amount of 0.005-0.08 wt.% ([0066] to [0069]), which overlaps the recited amount of claim 5. 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). See MPEP 2144.05 I. Thus, claim 5 is obvious over Nishiyama.
Response to Arguments
Applicant’s arguments dated 05/01/2026 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Xiaowei Su whose telephone number is (571)272-3239. The examiner can normally be reached 8:00-5:00.
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/XIAOWEI SU/Primary Examiner, Art Unit 1733
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