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, 3, 7-8, 10-11 and 13-15 are examined in the instant action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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, 7-8, 10-11 and 13-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding Claims 1, 3, 7-8, 10-11 and 13-15, claims 1 and 8 were amended to recite the composition of the bar-shaped stainless steel product comprising, by mass%, FROM: “0.001 to 0.030% of C” and “0.001 to 0.030 of N” TO: “wherein the composition further comprises either (a) C: 0.001% or more and less than 0.020% and N: 0.001% to 0.030% or (b) C: 0.001% to 0.030% and N: 0.001% or more and less than 0.020%”.
The specification teaches as follows regarding C and N in the steel:
C: 0.001 to 0.030%
C increases strength and machinability of the steel product. The C content is thus 0.001% or more. However, an excessive C content decreases soft magnetic properties, high-speed cold forging properties, and machinability. The C content is thus 0.030% or less. The C content is preferably 0.020% or less, more preferably 0.015% or less.
N:0.001 to 0.030%
N increases strength and machinability of the steel product. Further, N is an element forming nitrides. The N content is thus 0.001% or more, preferably 0.002% or more. However, an excessive N content decreases soft magnetic properties, machinability, and high-speed cold forging properties. Further, an excessive N content makes the average particle size of nitrides large, increasing the solute N content. The N content is thus 0.030% or less. The N content is preferably 0.025% or less, more preferably 0.020% or less.
However, the teaching of correlating the C and N ranges in the manner using the two specific discrete correlated ranges are not taught by the instant specification. Therefore, the claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding Claims 7, 11 and 13-15, instant claims were amended to recite “An electromagnetic component comprising the bar-shaped stainless steel product”.
The specification teaches as follows regarding bar-shaped stainless steel product and the electromagnetic component:
The present invention relates to an electromagnetic stainless steel, in particular, a bar-shaped stainless steel product excellent in high-speed cold forging properties, machinability, and soft magnetic properties, and an electromagnetic component using the same.
The invention has been made on the basis of the above findings. A preferable exemplary embodiment of the invention will be described in detail. In the following description, the preferable exemplary embodiment of the invention will be described as the invention. Requirements of the invention will be described in detail below. Regarding steel products having a bar-shape according to the invention, examples of a “bar-shaped steel product” include a “steel bar”, a “wire rod”, a “steel wire”, a “deformed wire”, and a “deformed steel bar”.
6. Electromagnetic Component
Examples of an electromagnetic component using the bar-shaped stainless steel product of the invention include a core and a connector of an injector and a solenoid valve. Since the bar-shaped steel product used as a material has excellent soft magnetic properties, effects of “improvement in magnetic attractive force”, “reduction in a component diameter”, and “improvement in responsiveness” can be provided. Further, since the bar-shaped steel product used as a material is excellent in high-speed cold forging properties and machinability, components using the bar-shaped steel product can be produced at low costs with at high productivity and near-net-shape manufacture in cold forging is also possible.
As seen above, the specification does not teach an electromagnetic component “comprising” the bar-shaped stainless steel product as amended in the claims. Therefore, the claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1, 3, 7-8, 10-11 and 13-15 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, 3, 7-8, 10-11 and 13-15, claims 1 and 8 require the bar-shaped stainless steel product to have “comprising” and “balance consisting of Fe and impurities” for its chemical/constituent composition. The transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps while the transitional phrase “consisting of” which excludes any element, step, or ingredient not specified in the claim. See MPEP § 2111.03. Therefore, it is unclear whether the instant claims require an open or closed composition.
Claims 3, 7, 10-11 and 13-15 are dependents of claims 1 and 8, do not resolve the aforementioned issue and thereby also indefinite.
Regarding claims 1, 3, 7-8, 10-11 and 13-15, claims 1 and 8 were amended to recite “wherein the composition further comprises either (a) C: 0.001% or more and less than 0.020% and N: 0.001% to 0.030% or (b) C: 0.001% to 0.030% and N: 0.001% or more and less than 0.020%”. It is unclear what ranges of C and N are required by the instant claims as the amendments provide conflicting ranges. For example, C: 0.019 is shared by both the limitations (a) and (b). However, limitation (a) allows N to be as high as 0.030 whereas limitation (b) requires N to less than 0.020. Similar issues can be seen when N as the first to fit the C.
Claims 3, 7, 10-11 and 13-15 are dependents of claims 1 and 8, do not resolve the aforementioned 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
(mass%)
C
0.001 – 0.030
0.015 – 0.090
Si
0.01 – 4.00
≤ 1.0
Mn
0.01 – 2.00
≤ 1.0
Ni
0.01 – 4.00
≤ 2.0
Cr
8.0 – 35.0
9.0 – 14.0
Mo
0.01 – 5.00
≤ 1.0
Cu
0.01 – 2.00
≤ 1.0
N
0.001 – 0.030
0.015 – 0.080
Al
7.000 or less
Below 0.1
Ti, Nb, B
0 to 2.00% of Ti; 0 to 2.00% of Nb; 0 to 0.1000% of B; one or more elements selected from 0.001% or more of Ti, 0.001% or more of Nb, and 0.0001% or more of B being comprised
Nb ≤ 0.1
Others
Claims 3, 10: One or more groups selected from First Group, Second Group, and Third Group below:
First Group: one or more elements selected from 0.0001 to 2.5% of Sn; 0.001 to 2.0% of V; 0.05 to 3.0% of W; 0.0004 to 0.05% of Ga; 0.05 to 2.5% of Co; 0.01 to 2.5% of Sb; and 0.01 to 2.5% of Ta,
Second Group: one or more elements selected from 0.0002 to 0.05% of Ca; 0.0002 to of Mg; 0.0002 to 0.012% of Zr; and 0.0002 to 0.05% of REM, and
Third Group: one or more elements selected from 0.0001 to 0.30% of Pb; 0.0001 to 0.80% of Se; 0.0001 to 0.30% of Te; 0.0001 to 0.50% of Bi; 0.0001 to 0.50% of S; and 0.0001 to 0.30% of P
P ≤ 0.040
Fe + impurities
Balance
Balance
Claims 1, 3, 7-8, 10-11 and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over US 4594115 A of Lacoude (US’115).
Regarding claims 1, 3, 7-8, 10-11 and 13-15, US 4594115 A of Lacoude (US’115) teaches “martensitic stainless steel rods or machine wire” “The rod or machine wire produced according to the invention are characterized by their mechanical properties and are recognizable by analysis, these mechanical features showing clearly in such an analysis. They are also characterized by a ferrite proportion of below 30% in the martensite and typically between 15 and 25%” 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. {abstract, col 1:1-10, col 1:50 – col 2:20, col 2:26-40, claims 1-10}. 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.
Regarding the recited limitation of “a solute N content in steel being 0.020 mass % or less and/or a solute B content in steel being 0.015 mass % or less” of claims 1 and 8, the prior art does not require B (Boron) to be part of its alloy. As the absence of B in the composition would not result in solute B being present in the steel of the prior art, the prior art steel would have property as recited in the instant claims (zero solute B content).
Although the prior art teaches that its steel has “an average grain or phase diameter (martensite and ferrite) which is 65 μm to 11 μm which is equivalent to 5 to 10 ASTM (ASTM specification E 112)”, the prior art is silent regarding its alloy having the properties of a) an average particle size of nitrides being 10 μm or less b) a strain rate without cracking at a compressibility of 70% is 0.1/s or more, a hole depth, which represents a tool life, through drilling is 50 mm or more, or coercive force is 5.0 A/m or less [claims 1, 8], as recited in the instant claims. 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 structure or composition (see compositional analysis above) and b) the claimed and prior art products are produced by identical or substantially identical processes {instant alloy: instant specification [0050]-[0051] Prior art: col 2:42 – col 3:55; Instant Specification points to “Temperature at Finish Rolling Entering Side” and “Roll Diameter of Finish Rolling” to be impacting these properties and the prior art teaches substantially identical processing – see below for comparison}.
Instant Specification:
[0050] 4-1. Temperature at Finish Rolling Entering Side
In the hot rolling for the bar-shaped steel product, a temperature at a finish rolling entering side is preferably controlled. The temperature at the finish rolling entering side of the bar-shaped steel product varies the average particle size of nitrides and varies a fraction of the solute N content in steel and a fraction of the solute B content in steel. The temperature at the finish rolling entering side thus affects soft magnetic properties, high-speed cold forging properties, and machinability. When the temperature at the finish rolling entering side of the bar-shaped steel product exceeds 1,200 degrees C., nitrides easily dissolve to increase the solute N content and the solute B content, decreasing soft magnetic properties and high-speed cold forging properties. Further, when the temperature at the finish rolling entering side of the bar-shaped steel product exceeds 1,200 degrees C., the average particle size of nitrides is too small, resulting in poor machinability. Thus, the temperature at the finish rolling entering side is 1,200 degrees C. or less, preferably 1,100 degrees C. or less, and more preferably 1,050 degrees C. or less. On the other hand, when the temperature at the finish rolling entering side is less than 600 degrees C., the solute N content is too small, resulting in poor machinability. Further, when the temperature at the finish rolling entering side is less than 600 degrees C., nitrides not forming a solid solution make the average particle size of nitrides large, decreasing high-speed cold forging properties. The temperature at the finish rolling entering side is thus 600 degrees C. or more. The temperature at the finish rolling entering side is preferably 700 degrees C. or more, more preferably 800 degrees C.
[0051] 4-2. Roll Diameter of Finish Rolling
A roll diameter of finish rolling affects a strain amount and strain distribution of the bar-shaped steel product, relates to the average particle size of nitrides and the solute N content in steel, and affects soft magnetic properties, high-speed cold forging properties, and machinability. The roll diameter of finish rolling is thus required to be controlled. When the roll diameter of finish rolling is less than 50 mm, no strain is introduced to a center portion of the bar-shaped steel product, failing to facilitate formation of fine nitrides on dislocation and making the average particle size of nitrides large. Further, the solute N content increases at a roll diameter of finish rolling of less than 50 mm, reducing soft magnetic properties and high-speed cold forging properties. Note that the effect of the roll diameter of finish rolling on the solute N content in steel also applies to the solute B content. The solute B content increases when the roll diameter of finish rolling is less than 50 mm. The roll diameter of finish rolling is thus 50 mm or more, preferably 80 mm or more, and still more preferably 100 mm or more. On the other hand, when the roll diameter of finish rolling exceeds 500 mm, nitrides are too fine and the solute N and B contents increase, decreasing machinability and magnetic properties. The roll diameter of finish rolling is thus 500 mm or less, preferably 400 mm or less, and more preferably 300 mm or less.
Prior Art: “The rolling conditions required to obtain the mechanical properties of rod or machine wire according to the invention are the following: after optional hot rough preliminary processing of the product, which is or is not followed by cooling, the product must be brought to between 1050° C. and 1160° C. before being subjected to final hot rolling, this preselected temperature being obtained by either preheating or reheating, or by general preliminary processing conditions which bring the product to this temperature at the time of the arrival of the product at the final rolling. Final hot rolling of the product which has thus been brought to between 1050° and 1160° C. is then effected in practice at a temperature below or equal to 1050° C., as the product cools down 10° C. or more while this rolling is being started, and it must produce a cross-section reduction of "S/s" at least equal to 3, wherein "S" is the cross-section obtained during said rolling and "s" is the cross-section obtained at the end of said final hot rolling. Tests have shown that the final hot rolling should preferably be terminated between a temperature of 1050° and 950° C., of the product.” “The rods according to the invention are presented in the form of raw, i.e., untrimmed or rough hot rolled rods, or hot rolled an then trimmed rods, optionally with a surface finish, of diameter or thickness between 15 and 250 mm and preferably between 15 and 120 mm.”
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 recitation of “electromagnetic component” of instant claims 7, 11 and 13-15, the prior art teaches that its steel is “characterized by a ferrite proportion of below 30% in the martensite and typically between 15 and 25%” meaning that its steel is a martensitic stainless steel with ferrite as the second phase. Therefore, the teaching of the prior art {col 7:10-21} “The process is particularly adapted to the production of rods or machine wire using continuous hot rolling means.” “The rods or machine wire of the invention are particularly used for the manufacture of corrosion-resistant mechanisms, which operate in contact with water, water vapor, wine or beer: such as shafts, pistons, cylinder liners, valves or bolts and nuts.” would meet the electromagnetic component of the instant claims as the martensitic/ferritic DP stainless steel would be electromagnetic in nature due to the martensite and ferrite phases present in the steel.
Response to Arguments
Applicant's arguments filed 05/06/2026 have been fully considered but they are not persuasive.
Regarding the arguments directed to “comprising” and “balance consisting of Fe and impurities”, instant claims require the bar-shaped stainless steel product to have both “comprising” and “balance consisting of Fe and impurities” for its chemical/constituent composition. Therefore, it is unclear whether the instant claims require an open or closed composition since the claims recite both with respect to the entirety of the composition.
Regarding the arguments directed to the composition, the amended ranges present both subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention as well as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor. For the purposes of applying prior art, the ranges are interpreted with the broader range. The prior art of record teaches “The stainless steels and semi-stainless steels of the invention have the following compositions, % by weight, the preferential ranges indicated to be taken separately or in any combination: C=0.015 to 0.090% and preferably 0.030 to 0.060% N=0.015 to 0.080% and preferably 0.020 to 0.050%” thereby reading on the instant claimed limitations.
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 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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