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 27, 29, 32, 34, 36 and 27 are amended. Claims 38-47 are withdrawn. Claim 48 is new. Claims 27-37 and 48 are examined herein.
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 27-37 and 48 are rejected under 35 U.S.C. 103 as being unpatentable over JP’513 (JP 4519513), as evidenced by Li (CN104141024).
Regarding claims 27-37, JP’513 discloses (Abstract; Claims 3 and 6; Table 1, Steel A to AB) an alloy with a composition that overlaps with the instant claimed composition 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’513 to produce a steel that meets the recited composition in claims 27-37. See MPEP 2144.05 I. The essential elements in Examples A to Q are C, Si, Mn, P, S, Ni, Cr, Mo Cu and N (See Table 1). As evidenced by Li, minor amount of Ti and Nb are present in high purity iron ([0051]; [0059]; [0070]). Thus, the steel disclosed by JP’513 contains Ti and Nb and the composition disclosed by JP’513 meets the transitional phrase “consisting of” recited in claims 27, 29, 32, 34 and 36.
Element
Claim 27
(mass %)
JP’513
(mass %)
Overlap
(mass %)
Ni
2-3.6
1.0-8.0
2-3.6
Mn
6-7
0.1-8.0
6-7
Cr
15-16.5
13-19
15-16.5
N
0.085-0.18
0.005-0.3
0.085-0.18
Mo
0-0.5
0.1-3.0
0.1-0.5
Nb
>0-0.4
impurity
impurity
Cu
>0-1
0.1-3
0.1-1
Si
0.4-1
0.1-4.0
0.4-1
C
0.06-0.095
0.03-0.14
0.06-0.095
S
0-0.007
0.0-0.008
0.0-0.007
P
0-0.045
0.01-0.04
0.01-0.04
Ti
>0-0.45
impurity
impurity
Fe + Impurities
Balance
Balance
Balance
JP’513 discloses that Md30 is 0-150 ºC (Claim 3), wherein
PNG
media_image1.png
32
354
media_image1.png
Greyscale
As evidenced by Li, the Nb content in high purity iron is 0.0018-0.0034 wt% ([0051]; [0059]; [0070]). 68%Nb in the steel of JP’513 is calculated to be in the range of 0.1224-0.2312. Thus, the Md30-68%Nb disclosed by JP’513 overlaps the recited Md30 in claim 27. 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, claims 27-37 are obvious over JP’513 as evidenced by Li.
Regarding claim 48, JP’513 discloses that the steel is austenitic stainless steel (Page 1, 1st paragraph), which meets the limitation recited in claim 48.
Response to Arguments
Applicant’s arguments dated 02/05/2026 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 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.
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/XIAOWEI SU/ Primary Examiner, Art Unit 1733
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