DETAILED ACTION
Response to Amendment
The Amendment filed 01/30/2026 has been entered. Claims 1-8 and 13-30 remain pending in the application. Claims 14-29 have been withdrawn due to a restriction requirement. Claims 9-12 have been canceled. New claim 30 has been added. The drawing objections previously set forth in the Non-Final Rejection mailed 10/31/2025 regarding I, E, V, and SCE in Fig. 7 are withdrawn in view of Applicant’s remarks (pages 6-7). Applicant's amendments to the claims have overcome the objections previously set forth in the Non-Final Rejection mailed 10/31/2025. The nonstatutory double patenting rejections previously set forth in the Non-Final Rejection mailed 10/31/2025 are withdrawn because US 11591663 B2 and copending Application No. 18/888,241 do not include the claimed lamellar or globular form and the claimed smallest dimension as recited in amended claim 1 of the instant invention. Applicant's cancellation of claims 9-12 and amendments to claim 13 have overcome the 112(a) rejections previously set forth in the Non-Final Rejection mailed 10/31/2025. Applicant's amendments to the claims have overcome the 112(b) rejections previously set forth in the Non-Final Rejection mailed 10/31/2025 with the exception of those recited in this Office action.
Drawings
The drawings are objected to because Fig. 1 and Fig. 3-5 use dashed, thin solid, and thick solid lines in the plot which are not explained in the drawings nor the instant specification.
The drawings are also objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description:
CC in Fig. 1 and Fig. 3-5.
The Examiner notes that CC is possibly an abbreviation for body-centered cubic. One of ordinary skill in the art typically refers to this phase as “BCC” rather than the “CC” used by Applicant, which might have been obtained from the terminology used by the ThermoCalc software used to generate diagrams of Figures 1-5 (page 5, lines 27-28).
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
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 1-8, 13 and 30 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 the limitation “the austenitic phase in a range from 20 to 60 wt.% relative to the microstructure”. This limitation renders the claim indefinite since the use of “wt.%” units makes it unclear what portion of the microstructure is meant to be sigma phase and austenitic phase. The instant specification recites “the steel has a mass fraction of sigma phase” and “a mass fraction of austenite” (page 12, lines 14-17). Microstructures are typically reported in terms of area or volume, and not weight percentage or mass fraction.
Claims 2-8, 13 and 30 depend on claim 1, do not resolve the aforementioned issues, and are thereby also indefinite.
Claim 1 recites the limitation “a smallest dimension of the lamellar form or the globular form in a cross-sectional view is less than 10 μm”. This limitation renders the claim indefinite since it is unclear whether the smallest dimension of the austenitic phase refers to a length, diameter, area, or a different dimension. It is further unclear what constitutes the smallest dimension and therefore how to determine the claimed size of the austenitic phase in the instant invention. For example, it is unclear how many measurements are needed to identify the “smallest” dimension within the group measured.
Claims 2-8, 13 and 30 depend on claim 1, do not resolve the aforementioned issues, and are thereby also indefinite.
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 1-8, 13 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/158111 A1 of Yoshimura (using US 2022/0106659 A1 as its English translation).
Regarding claims 1-8, 13 and 30, Yoshimura teaches a duplex stainless steel with high strength and high toughness (reads on claimed stainless steel).
Element
Instant claims (wt%)
Yoshimura (mass%)
Cr
29-35
20.0-30.0
Ni
7-10
8-10 (claim 30)
5.0-10.0
Mn
0-3
0.10-1.5
Al
0-3
≤ 0.5 (optional)
Mo
3-10
3.5-10 (claim 2)
3.5-6 (claim 3)
4-6 (claim 4)
2.0-5.0
W
0-5
0.2-5 (claim 5)
0.5-5 (claim 6)
≤ 1.5 (optional)
Cu
0-2
1.0-2.0
Si
0-3
≤ 1.0
Ti
0-1
≤ 0.5 (optional)
Nb
0-1
≤ 0.5 (optional)
C
0-0.1
≤ 0.03
N
0-0.5
≤ 0.075
S
0-0.5
≤ 0.005
P
0-0.1
≤ 0.03
Fe
“comprising”
Balance (“and inevitable impurities”)
Optional: W, V, Zr, B, REM, Ca, Sn, Mg, Ta, Co, Sb, Al, Ti, Nb
Impurities
“any”, “each at concentration of ≤ 0.5
Inevitable impurity: ≤ 0.01
Austenitic phase
20-60 wt%
20-70 vol%
Hardness
575-900 HV10
650-900 HV10 (claim 7)
675-900 HV10 (claim 8)
-
Yoshimura teaches a stainless steel with a chemical composition (claims 1-2, [0060]-[0135]) and microstructure (claim 1, [0136]-[0146]) overlapping with the claimed steel, as shown in List 1. 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 chemical composition of claims 1-6, compositional ranges including zero, including the claimed ranges of Mn, Al, W (in claim 1), Cu, Si, Ti, Nb, C, N, S, and P, are interpreted as optional elements. The Examiner notes that wt% and mass% are equivalent and used interchangeably for chemical compositions in the metallurgical arts.
Regarding the microstructure of claim 1, the Examiner notes that, in view of the 112(b) rejection regarding austenitic phase given in units of wt%, the percentage is interpreted as a ratio and therefore the volume fraction of Yoshimura reads on the claimed range.
Regarding the sigma phase of claim 1, while Yoshimura does not explicitly disclose a sigma phase, Yoshimura teaches the stainless steel may contain precipitates ([0143], sigma phase is well-known in the art to be an intermetallic compound made of Cr-rich particles and therefore is included in the precipitates of Yoshimura given the overlap in Cr between the claimed invention and the steel of Yoshimura).
Yoshimura teaches a yield strength YS is 862 MPa or more (claim 1).
Yoshimura teaches a solution treatment at 1000-1150°C for 5-210 minutes ([0154]-[0158]) and an aging heat treatment at 350-600°C for 5 to 100 minutes ([0165]-[0171], both heat treatments are considered hardening treatments).
Yoshimura therefore reads on the limitation a stainless steel with a chemical composition comprising iron and, by weight: 29 ≤ Cr ≤ 35%; 7 ≤ Ni ≤ 10%; 0 ≤ Mn ≤ 3%; 0 ≤ Al ≤ 3%; 3 ≤ Mo ≤ 10%; 0 ≤ W ≤ 5%; 0 ≤ Cu ≤ 2%; 0 ≤ Si ≤ 3%; 0 ≤ Ti ≤ 1%; 0 ≤ Nb ≤ 1%; 0 ≤ C ≤ 0.1%; 0 ≤ N ≤ 0.5%; 0 ≤ S ≤ 0.5%; 0 ≤ P ≤ 0.1%; and any impurities, each at a concentration of less than or equal to 0.5%, wherein the paramagnetic stainless steel comprises a microstructure comprising a sigma phase and an austenitic phase, the austenitic phase in a range from 20 to 60 wt.% relative to the microstructure of claim 1, wherein the Mo is in a range from 3.5% to 10% of claim 2, wherein the Mo is in a range from 3.5 to 6% of claim 3, wherein the Mo is in a range from 4 to 6% of claim 4, wherein the W is in a range from 0.2% to 5% of claim 5, and wherein the W is in a range from 0.5% to 5% of claim 6, and wherein the Ni is in a range from 8 to 10% of claim 30.
However, Yoshimura does not explicitly disclose a paramagnetic stainless steel, the paramagnetic stainless steel has a hardness in a range from 575 to 900 HV10, wherein the austenitic phase is in a lamellar form or a globular form, and a smallest dimension of the lamellar form or the globular form in a cross-sectional view is less than 10 μm of claim 1, wherein the hardness is in a range from 650 to 900 HV10 of claim 7, wherein the hardness is in a range from 675 to 900 HV10 of claim 8, and wherein the smallest dimension is less than 5 μm of claim 13.
Since Yoshimura teaches a stainless steel with a chemical composition, austenitic phase, and hardening treatment overlapping with the instant invention, one of ordinary skill in the art would reasonably expect the stainless steel of Yoshimura to necessarily possess the claimed paramagnetic property, HV10 hardness ranges, austenitic phase in lamellar or globular form, and dimensions of the austenitic phase.
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 steel 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 composition (see compositional analysis above and in List 1), b) the claimed and prior art products are identical or substantially identical in structure (see microstructure analysis above and in List 1), and c) the claimed and prior art products are produced by identical or substantially identical processes (both have a hardening treatment with overlapping temperatures). 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).
In this case, absent any clear and convincing evidence and/or arguments to the contrary, the stainless steel of Yoshimura has an overlapping chemical composition and austenitic phase, as outlined above, and identical or substantially identical processes, and therefore one of ordinary skill in the art would reasonably expect the steel of Yoshimura to necessarily possess the claimed paramagnetic property, HV10 hardness ranges, austenitic phase in lamellar or globular form, and dimensions of the austenitic phase claimed in the instant invention. A prima facie case of obviousness has been properly established herein. As the Patent Office does not possess the laboratory facilities to test any differences in the claimed invention versus that of the reference, the burden shifts to applicant to demonstrate otherwise.
Yoshimura therefore reads on all the limitations of claims 1-8, 13, and 30.
Response to Arguments
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action in view of the amended Cr and Ni content of amended claim 1 and new claim 30.
Applicant’s arguments with respect to claims 1-13 (remarks, page 8) 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 extension fee 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 date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAYELA ALDAZ whose telephone number is (571)270-0309. The examiner can normally be reached Monday -Thursday: 10 am - 7 pm and alternate Friday: 10 am - 6 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith 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.
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/M.A./Examiner, Art Unit 1733
/REBECCA JANSSEN/Primary Examiner, Art Unit 1733
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