DETAILED ACTION
Claims 1-20 are pending and currently under review.
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 .
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 1-20 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. Claims 1-6, 8-9, 11-16, and 18-20 recite the term “trace” which is expressly states in the instant specification to have multiple definitions [0093 spec.]. This passage defines “trace” to mean both “less than one millionth in a substance” as well as merely “very small”. This passage further expressly states that the “meaning of the word ‘trace’ varies with the development of trace analysis technology”. Therefore, it is unclear to the examiner as to what particular numerical value, if any, is required by the term “trace”. The examiner interprets the term to refer to impurity amounts.
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.
Claim(s) 1-2, 5-12, and 15-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kondo et al. (JP2000192196, machine translation referred to herein).
Regarding claims 1, 11, and 20, Kondo et al. discloses a steel having a composition as seen in table 1 below [0007-0008]. The examiner notes that the overlap between the steel composition of Kondo et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I). Kondo et al. further teaches using the steel for oil well equipment, which one of ordinary skill would understand to naturally include electronic devices and mechanical parts.
Table 1.
Element (wt.%)
Claims 1, 11, 20 (wt.%)
Kondo et al. (wt.%)
Cr
7 – 11
9 – 14
Ni
2 – 7.5
1 – 8
Co
6 – 15
0.5 – 7
Mo
4 – 7
3.1 – 7
O
Trace to 0.4
0 – 0.01
C
Trace to 0.35
0.001 – 0.05
Fe
50 – 80
Balance
Regarding claims 2 and 12, Kondo et al. discloses the steel of claims 1 and 11 (see previous). Kondo et al. further teaches an inclusion of 0.001 to 0.5 weight percent Nb, which overlaps with the claimed range [0008]. See MPEP 2144.05(I).
Regarding claims 5 and 15, Kondo et al. discloses the steel of claims 1 and 11 (see previous). Kondo et al. further teaches an inclusion of 0 to 5 weight percent W, which overlaps with the claimed range [0007]. See MPEP 2144.05(I).
Regarding claims 6 and 16, Kondo et al. discloses the steel of claims 1 and 11 (see previous). Kondo et al. further teaches inclusions of 0.05 to 1 weight percent Si and 0.05 to 2 weight percent Mn, which overlaps with the claimed range [0007]. See MPEP 2144.05(I).
Regarding claims 7 and 17, Kondo et al. discloses the steel of claims 1 and 11 (see previous). The examiner notes that the aforementioned composition of Kondo et al. further overlaps with the claimed range. See MPEP 2144.05(I).
Regarding claims 8 and 18, Kondo et al. discloses the steel of claims 1 and 11 (see previous). Kondo et al. does not expressly teach the claimed B amount. However, Kondo et al. teaches unavoidable impurities, which one naturally include overlapping amounts of B as recognized by one of ordinary skill. See MPEP 2144.05(I). Alternatively, the examiner notes that overlapping amounts of B are commonly-known for martensitic steels and would have been obvious to include as recognized by one of ordinary skill.
Regarding claims 9 and 19, Kondo et al. discloses the steel of claims 1 and 11 (see previous). Kondo et al. further teaches an inclusion of 0.0005 to 0.05 weight percent of rare earths, which overlaps with the claimed range [0008]. See MPEP 2144.05(I).
Claim(s) 3-4 and 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kondo et al. (JP2000192196, machine translation referred to herein)in view of Bletton et al (US 5,427,635).
Regarding claims 3-4 and 13-14, Kondo et al. discloses the steel of claims 1 and 11 (see previous). Kondo et al. further teaches an inclusion of Nb of 0.001 to 0.5 weight percent [0008]. Kondo et al. does not teach an inclusion of Ta as claimed. Bletton et al. discloses that it is known to include Ta as a stabilizing element in an amount of up to 1 weight percent in martensitic stainless steels [col.6 ln.9-20]. Therefore, it would have been obvious to one of ordinary skill to modify the steel of Bletton et al. by including Ta for the aforementioned benefit. The examiner notes that the Ta range of Bletton et al. overlaps with that as claimed. See MPEP 2144.05(I).
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Deutsche (GB1021405).
Regarding claims 1, 11, and 20, Deutsche discloses a structural steel having a composition as seen in table 2 below [p.2 ln.95-115]. The examiner notes that the overlap between the steel composition of Deutsche and that as claimed is prima facie obvious. See MPEP 2144.05(I). Deutsche further teaches that the steel is a structural steel for aircraft, etc., which one of ordinary skill would understand to naturally include electronic device structures and mechanical parts [p.1 ln.1-20]. Deutsche is silent regarding any O inclusions, which one of ordinary skill would understand to mean that O is included in mere impurity amounts, which overlaps with the claimed range.
Table 2.
Element (wt.%)
Claims 1, 11, 20 (wt.%)
Deutsche et al. (wt.%)
Cr
7 – 11
10 – 13
Ni
2 – 7.5
5 – 8
Co
6 – 15
2 – 12
Mo
4 – 7
1 – 6
O
Trace to 0.4
n/a (impurity)
C
Trace to 0.35
0 – 0.03
Fe
50 – 80
Balance
Regarding claims 2-4 and 12-14, Deutsche discloses the steel of claims 1 and 11 (see previous). Deutsche further teaches an inclusion of 0.1 to 1 weight percent columbium (ie. Nb) and tantalum, which overlaps with the claimed ranges [p.2 ln.95-115]. See MPEP 2144.05(I).
Regarding claims 5 and 15, Deutsche discloses the steel of claims 1 and 11 (see previous). Deutsche further teaches an inclusion of 1 to 6 weight percent W, which overlaps with the claimed range [p.2 ln.95-115]. See MPEP 2144.05(I).
Regarding claims 6 and 16, Deutsche discloses the steel of claims 1 and 11 (see previous). Deutsche further teaches inclusions of up to 0.2 weight percent Si and up to 0.2 weight percent Mn, which overlaps with the claimed range [p.2 ln.95-115]. See MPEP 2144.05(I).
Regarding claims 7 and 17, Deutsche discloses the steel of claims 1 and 11 (see previous). The examiner notes that the aforementioned composition of Deutsche is further close and overlaps with the claimed range. See MPEP 2144.05(I). Regarding closeness, the examiner notes that the lower Cr limit of Deutsche et al. is substantially close such that similar properties would be present such as high yield strength [p.2 ln.59-65].
Regarding claims 8 and 18, Deutsche discloses the steel of claims 1 and 11 (see previous). Deutsche further teaches an inclusion of up to 0.1 weight percent B, which overlaps with the claimed range [p.2 ln.59-65].
Regarding claims 9 and 19, Deutsche discloses the steel of claims 1 and 11 (see previous). Deutsche further teaches an inclusion of up to 0.2 weight percent of Ce (ie. rare earths), which overlaps with the claimed range [p.2 ln.59-65]. See MPEP 2144.05(I).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS A WANG whose telephone number is (408)918-7576. The examiner can normally be reached usually M-Th: 7-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 5712721177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734