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, 3-4, 7-8 and 10-15 are examined in the instant action.
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, 3-4, 7-8 and 10-15 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, 3-4, 7-8 and 10-15, 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.
In addition, claims 1 and 8 require “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”. It is unclear what ranges of these elements (Ti, Nb and B) would satisfy the claims as it requires both a zero as well as a non-zero values for them.
Claims 3-4, 7 and 10-15 are dependents of claims 1 and 8, do not resolve the aforementioned issue and thereby also indefinite.
Regarding claims 7, 11 and 13-15, instant claims require “An electromagnetic component using the bar-shaped stainless steel product”. It is unclear what is meant by the phrase “using the bar-shaped stainless steel product” and what structure or properties would be encompassed by electromagnetic component that that is “using the bar-shaped stainless steel product”. For example, is it requiring some processing of using the bar-shaped stainless steel product to result in the electromagnetic component that would have specific properties and structure or is it requiring an electromagnetic component to employ the bar-shaped stainless steel product to attain some process and/or process?
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.
Claims 1, 3-4, 7-8 and 10-15 are is/are rejected under 35 U.S.C. 103 as being unpatentable over US 4594115 A of Lacoude (US’115).
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
Regarding claims 1, 3-4, 7-8 and 10-15, 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 [claims 1, 8], 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 4, 12], 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 {col 7:17-21} “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 as the martensitic/ferritic DP stainless steel would be electromagnetic in nature due to the martensite and ferrite phases present in the steel.
Conclusion
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/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733