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
Claim 1 is amended. Claims 5-8 are new. Claims 1-8 are pending.
Status of Previous Rejections
The rejections of claims 1-4 under 35 U.S.C. 103 as being unpatentable over Kobayashi (US 2006/0163231) have been withdrawn in view of the amendment.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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over JP’335 (JP4545335B2), and further in view of Kobayashi (US 2006/0163231).
Regarding claim 1, JP’335 discloses (Abstract; [0021] to [0035]) a ferritic stainless steel welding wire with a composition that overlaps with the instant claimed composition of C, Si, Mn, P, S, Cu, Ni, Cr, Mo, Ti, Mg and N and therefore it would have been obvious to one of ordinary skill in the art to have selected amounts of each element from the ranges disclosed in JP’335 to produce a ferritic stainless steel welding wire that meets the recited composition in claim 1. See MPEP 2144.05 I.
Element
Claim 1
(mass %)
JP’335
(mass %)
Overlap
(mass %)
C
≤0.05
≤0.03
≤0.03
Si
≤1.0
≤2.0
0.0-1.0
Mn
2.5-5.0
1.0-5.0
2.5-5.0
P
≤0.04
≤0.04
≤0.04
S
≤0.01
≤0.01
≤0.01
Cu
≤0.5
0.01-5
0.01-0.5
Ni
0.01-1.00
0.01-5
0.01-1.00
Cr
12-20
8-20
12-20
Mo
≤0.5
0
0
Ti
0.2-2.0
0.0-0.3
0.2-0.3
Nb
0.1-0.8
---
---
Al
0.02-0.2
0.0-0.5
0.02-0.2
Mg
≤0.02
0
0
O
≤0.02
---
---
N
0.001-0.05
≤0.05
0.001-0.05
Fe + Impurities
Balance
Balance
Balance
JP’335 is silent on the amount of Nb and O. Kobayashi teaches (Abstract) a steel having major composition overlapping the composition of JP’335. Kobayashi discloses that 1 mass% or less Nb increases corrosion resistance ([0032]) and lowering oxygen content to 0.02 wt.% or less is beneficial for steel toughness ([0030]). Thus, it would be obvious to one of ordinary skill in the art to make a steel containing 1 mass% or less Nb and 0.02 mass% or less oxygen as taught by Kobayashi in the process of making the steel of JP’335 in order to make a steel having good corrosion resistance and toughness as disclosed by Kobayashi. The amount of Nb and O disclosed by JP’335 overlaps the recited Nb and O amount in claim 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). See MPEP 2144.05 I. Thus, the recited amount of Nb and O is obvious over JP’335 in view of Kobayashi.
Kobayashi discloses that the steel is used for making a welding wire (Abstract). It would be obvious to one of ordinary skill in the art the steel disclosed by JP’335 in view of Kobayashi can be used to make a welding wire.
JP’335 discloses (Table 1) example A5 containing C, Si, P, S, Cr, N, Al and Ni amounts that meet the recited composition ranges in claim 1 and Mn amount close to the recited Mn range in claim 1. 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. The Ni equivalent of example A5 is calculated to be 1.185 and meets the recited Ni equivalent in claim 1.
JP’335 discloses (Table 1) example A6 containing C, Si, P, S, Cr, N, Cu, Mn and Ni amounts that meet the recited composition ranges in claim 1. The Ni equivalent of example A6 is calculated to be 1.495 and meets the recited Ni equivalent in claim 1.
Further, it is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art. In re Cooper and Foley 1943 C.D. 357, 553 O.G. 177; 57 USPQ 117, Taklatwalla v. Marburg, 620 O.G. 685, 1949 C.D. 77, and In re Pilling, 403 O.G. 513, 44 F(2) 878, 1931 C.D. 75. In the absence of evidence to the contrary, the selection of the proportions of elements would appear to require no more than routine investigation by those ordinary skilled in the art. In re Austin, et al., 149 USPQ 685, 688. Thus, claim 1 is obvious over JP’335 in view of Kobayashi.
Regarding claim 2, Kobayashi discloses that the content of at least one of Nb and Ta is eight times or greater the total content of ([C]+[N]) ([0032]), which covers an embodiment that [Nb]/([C]+[N]) is 8 or greater. Thus, ([Ti]+[Nb])/([C]+[N]) disclosed in Kobayashi is greater than 8, which overlaps the recited T value in claim 2. 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, the recited T value in claim 2 is a prima facie case of obviousness over JP’335 in view of Kobayashi.
Regarding claims 3 and 4, Kobayashi discloses a welded part using the welding wire and that the weld metal portion has a grain size number of 5-8 ([0050] to [0069]; Table 2 and Table 3), which meets the limitation recited in claims 3 and 4.
Regarding claims 5-7, JP’335 discloses example A6 which has Mn amount close to the recited Mn amount in claim 5. The Ni equivalent of example A6 is calculated to be 1.495, which is close to the recited Ni equivalent in claims 6 and 7. 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. Thus, claims 5-7 are obvious over JP’335 in view of Kobayashi.
Allowable Subject Matter
Claim 8 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed 06/22/2026 have been fully considered but they are not persuasive.
First, the applicants argued that Kobavashi’s examples have Mn outside the claimed range.
In response, JP’335 discloses (Table 1) example A5 containing Mn amount close to the recited Mn range in claim 1. 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. See MPEP 2144.05 I.
JP’335 also discloses example A6 containing Mn within the recited amount of Mn. Thus, JP’335 discloses a Mn amount that meets the recited Mn range in claim 1.
Second, the applicants argued that Kobayashi does not teach the recited Ni Equivalent.
In response, JP’335 discloses that the Ni equivalent of example A5 is calculated to be 1.185 and the Ni equivalent of example A6 is calculated to be 1.495. Both meet the recited Ni equivalent in claim 1.
Third, the applicants argued that Kobayashi teaches away the claimed Mn range.
In response, the Mn range disclosed by Kobayashi overlaps the recited Mn range. 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, the recited Mn amount is obvious over JP’335 in view of Kobayashi.
Fourth, the Specification’s comparative Examples Establishes the Criticality of the claimed Ni Equivalent.
In response, JP’335 discloses that the Ni equivalent of example A5 is calculated to be 1.185 and the Ni equivalent of example A6 is calculated to be 1.495. Both meet the recited Ni equivalent in claim 1.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached at 5712721401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/XIAOWEI SU/Primary Examiner, Art Unit 1733
Prosecution Insights