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 18-23 and 25-49 are pending. Claims 18-23 and 25-37 are presented for this examination. Claims 38-49 are withdrawn. Claim 24 is cancelled. Claims 18, 23, 25, 30, 31 and 37 are amended.
Status of Previous Rejection
All prior art rejections are maintained from previous office action of 07/07/2025.
112 2nd paragraph rejections of claims 23, 30 and 37 are withdrawn in view of amendment of claims 23, 30 and 37.
New 112 4th paragraph rejections are rendered in view of amendment of claims 18 and 23.
Priority
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 10/02/2025 and is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 23, 30 and 37 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Instant claim 23 “further comprising” does not (emphasis added) exclude any unrecited additional element due to open transition phrase “comprising”. However, instant claim 23 depends on claim 18 while claim 18 is amended to be “consisting of”, in which “consisting of” excludes any unrecited additional element.
Hence, claim 23 fails to further limit the subject matter of the claim upon which it depends.
Same reason also applies to claims 30 and 37.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 18-23 and 25-37 are rejected under 35 U.S.C. 103 as being unpatentable over Sawada (US20170298485A1).
As for claims 18-23 and 25-37, Sawada discloses an austenitic stainless steel plate comprising preferable ranges of each elemental compositions widely overlapping claimed elemental ranges as illustrated in Table 1 below. Hence, the stainless steel plate meets instant claim 18 required an alloy, instant claim 25 required blank and instant claim 31 required component. The stainless steel reads on instant claim 31 required iron-based alloy.
With respect to instant claim 18 recitation “consisting of”, Sawada discloses Cu 0.01-2%; and Co 0.01-0.5%. However, Sawada explicitly discloses his heart of invention is to provide an austenitic stainless steel plate that is less expensive and has a high hardness. ([0034])
Hence, even if Cu is to enhance cold rolling workability (paragraph [0043]) and Co is to increase high temperature strength (paragraph [0044]), there is no express teaching away of not having Cu and Co because Sawada does not criticize, discredit or otherwise discourage excluding Cu and Co.
Hence, it would have been obvious to one skill in the art, at the time the invention is made to omit Cu and Co if enhancement of cold rolling workability and increase of high temperature strength are not desired.
Omission of an element and its function is obvious if the function of the element is not desired. See MPEP 2144.04 II A
Table 1
Element
Applicant
(weight %)
Sawada et al.
(weight %)
Preferable ranges
paragraphs[0037]-[0052]
Overlap
(weight %)
C
(Claims 18, 25, 31)
0.02-0.08
0.02-0.08
0.02-0.08
Si
(Claims 18, 25, 31)
0.2-0.4
0.1-2.2
0.2-0.4
Mn
(Claims 18, 25, 31)
1.6-2
0.1-2
1.6-2
Cr
(Claims 18, 25, 31)
13.5-16
14-22.2
14-16
Mo
(Claims 18, 25, 31)
2-2.5
2-3.2
2-2.5
Ni
(Claims 18, 25, 31)
24-27
22-27
24-27
V
(Claims 18, 25, 31)
0.25-0.35
0.2-0.5
0.2-0.35
Al
(Claims 18, 25, 31)
0.4-0.6
0.1-4
0.4-0.6
Ti
(Claims 18, 25, 31)
2-2.5
2-4
2-2.5
Nb
(Claims 18, 25, 31)
1-1.2
1-3.93
1-1.2
W
(Claims 18, 25, 31)
1.8-2.2
1.1-4
1.8-2.2
B
(Claims 18, 25, 31)
0.004-0.006
0.003-0.01
0.004-0.006
C
(Claims 19, 26, 32)
0.02
0.02-0.08
0.02
C
(Claims 20, 27, 33)
0.03-0.08
0.02-0.08
0.03-0.08
Ti
(Claims 21, 28, 34)
2.5
2-4
2-4
Ti
(Claim 22, 29, 35)
2-2.3
2-4
2-4
Sn
Sb
N
P
Or S
(Claims 23, 30,37)
<=0.008
<=0.002
<=0.005
<=0.025
<=0.015
0
0
<=0.012
0
0
0
0
<=0.005
0
0
With respect to instant claims 25 and 31 recitation “consisting of”, it should be noted instant claims 25 and 31 recitation “an iron-based alloy, containing” is still open transitional phase due to term “containing” is synonymous with “comprising” which does not exclude any additional unrecited element according to MPEP 2111.03 I.
With respect to instant claim 36, Sawada expressly disclose the austenitic stainless steel as a gas turbine part is well known in the art. (paragraph [0004])
As to instant claimed wherein clause, it is product by process limitation in a product claim. Hence, they are not given patentable distinction over prior art.
According to MPEP 2113, determination of patentability of product is based on the product itself. That is, the patentability of product does not depend on its method of production unless the process of making the claimed product imparts any structural and/or functional limitation and characteristic on the claimed product.
Response to Argument
Applicant’s argument filed on 09/12/2025 is considered but is not persuasive for the following reasons:
Applicant argues instant application discloses high temperature strength and good cold rolling workability are both desirable, argument is completely incommensurate in scope of current art rejection which does NOT (emphasis added) reply on instant application as basis for art rejection. That is, Sawada is closest prior art, not instant application. Sawada does not discredit, criticize with respect to omitting Cu and Co. Sawada expressly discloses Co is an expensive element ([0044]) which suggests Co should be eliminated for cost reduction. Therefore, if high temperature strength and good cold rolling workability are not desired, it would have been obvious to try to omit Co and Cu for the benefit of reduction of cost since Sawada explicitly discloses cost reduction is his main concern ([0034]) according to MPEP 2145 X B Obvious To Try.
An "obvious to try" rationale may support a conclusion that a claim would have been obvious where one skilled in the art is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. " [A] person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007).
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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 Jenny Wu whose telephone number is (571)270-5515. The examiner can normally be reached on 9am-5:30pm Monday through Thursday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached on (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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/JENNY R WU/Primary Examiner, Art Unit 1733