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 .
Election/Restrictions & Status of Claims
Claims 1-3 are examined of which claims 1-3 were amended in Applicant’s reply.
Claims 4-7 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/09/2025.
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 1-3 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.
Regarding claims 1-3, instant claim 1 was amended with the limitation of “wherein an austenite phase fraction γWt at 1200°C is 19% or more”. However, it is unclear where “γWt” refers to the units of the austenite or whether it is directed to a reference symbol to represent the austenite phase fraction and is not directed to the unit of measurement. It is also unclear whether the limitation of “wherein an austenite phase fraction γWt at 1200°C is 19% or more” is directed to a future property or capability of the steel sheet, in other words, the steel sheet after or once it is made has this or is capable of having this property at 1200°C or whether it is directed to the property during the making of the steel sheet in other words an intermediate product/step such as during the step of making a slab and heating of the slab at 1200°C. Claims 2-3 are dependents of claim 1, do not resolve the issue and thereby also indefinite.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 Rejections - 35 USC § 102/103
List 1
Element
Instant Claims
(mass%)
Prior Art
No. 26 Steel D
(mass%)
C
0.001 – 0.3
0.01
Si
0.01 – 1.0
0.2
Mn
0.1 – 3.0
1.6
Cr
10 – 15
12.5
N
0.001 – 0.3
0.02
P
0.03 or less
0.02
Ni
1.0 or less
-
Cu
1.0 or less
0.1
Al
1.0 or less
0.03
Mo
0.003 or less
-
Ti
1.0 or less
-
Fe + impurities
Balance
Balance
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over JP 2004-197197 A of Matsubara and its English machine translation (JP’197).
Regarding claims 1 and 3, JP 2004-197197 A of Matsubara and its English machine translation (JP’197) {abstract, [0001]-[0006], [0008]-[0055]} teaches [0001] “a ferritic stainless steel sheet suitable for use in household articles, kitchen articles, automobile parts, and the like, and particularly to improvement in workability and ridging resistance” [0009] “a ferritic stainless steel sheet which advantageously solves the problems of the prior art described above, has a high r value, is excellent in workability, and has excellent ridging resistance” having specific compositions wherein a specific example, Steel D (Table 1:composition) Example No. 26 (Tables 2-2 and 3-2: processing and properties), that lies within the claimed compositional range of the instant claims as shown in the List 1 above thereby anticipating the alloy of the instant claims. A specific example in the prior art which is within a claimed range anticipates the range. “[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art.” Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962)) See MPEP § 2131.03 I.
Regarding the recited formula (1) and its recited range, the specific sample provides a value of 6.34 for the equation, γS = 900C − 30Si + 12Mn + 23Ni − 17Cr − 12Mo + 12Cu − 49Ti − 52Al + 950N + 178, thereby anticipating the recited range. In addition, 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, Saklatwalla 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.
The prior art JP’197 is silent regarding its steel having the amended recited feature of instant claim of “wherein an austenite phase fraction γWt at 1200°C is 19% or more” of instant claim 1. (Please see above for the indefiniteness posed by the instant limitation). Regarding the recited limitation “wherein a ridging height (Wt) is 10 μm or less, measured after 15% elongation at a thickness of 1.0 mm or less” of claim 3, although the prior art teaches in Table 3-2 that Example No. 26 has a ridging grade 1 which is defined as [0015] “Ridging grade 1 for undulation height of steel sheet of 10μm or less” and points out [0045] “The ridging resistance was determined by applying a 20% tensile strain to a tensile test piece, measuring the undulation height of the steel sheet, determining a ridging grade, and evaluating the ridging resistance. The ridging grade was determined from the undulation height of the steel sheet according to the following criteria. Ridging grade 1 for undulation height of steel sheet of 10μm or less, ridging grade 2 for undulation height of steel sheet of more than 10μm and 20μm or less, ridging grade 3 for undulation height of steel sheet of more than 20μm and 30μm or less, Ridging grade 4, ridged grade 5 when the undulation height of the steel sheet exceeded 50 μm.”, the prior art is silent regarding the specific test conditions recited in the instant claim 3.
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. MPEP § 2112 III provides that A REJECTION UNDER 35 U.S.C. 102/103 CAN BE MADE WHEN THE PRIOR ART PRODUCT SEEMS TO BE IDENTICAL EXCEPT THAT THE PRIOR ART IS SILENT AS TO AN INHERENT CHARACTERISTIC. Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103, expressed as a 102 /103 rejection. "There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102." In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). This same rationale should also apply to product, apparatus, and process claims claimed in terms of function, property or characteristic. Therefore, a 35 U.S.C. 102 /103 rejection is appropriate for these types of claims as well as for composition claims. See MPEP § 2112 III.
Therefore, it is expected that the alloy of the prior art possesses the properties as claimed in the instant claims 1 and 3 since a) the claimed and prior art products are identical or substantially identical in composition (see compositional analysis above), b) the claimed and prior art products are identical or substantially identical in structure (prior art microstructure is a ferritic stainless steel sheet). 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 the case that the recited limitation of claim 1 (“wherein an austenite phase fraction γWt at 1200°C is 19% or more”) is directed to a property or state encountered during the making of the steel sheet, MPEP provides that product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP § 2113. Since the prior art teaches a product, a ferritic stainless steel sheet, the product of the prior art reads on the instant claimed product thereby meeting the instant claimed limitations.
Regarding claim 2, the prior art in Table 3-2 teaches that Example No. 26 has an average ferrite grain size D1 and D2 of 8.8 and 9.1 microns thereby meeting the instant recited limitation. The D1 and D2 are taught as follows in the prior art.
[0027] “The ferritic stainless steel sheet of the present invention has the above composition and a ferrite structure in which the average crystal grain size of ferrite gradually decreases from the center of the thickness to the surface layer. The crystal grain size gradient structure referred to in the present invention means a structure in which the average crystal grain size of the surface layer portion is 98% or less as compared with the average in the thickness direction. The average crystal grain size of the surface layer portion in the present invention means the average crystal grain having the above-described size and measured in a visual field centered on a position 0.1 mm from the outermost portion in the thickness direction (depth direction). Is the diameter. The average crystal grain size in the thickness direction (hereinafter referred to as the thickness average crystal grain size) is a value obtained by averaging the average crystal grain size at each position in the thickness direction measured at a pitch of 0.2 mm over the entire thickness. . Further, when the average crystal grain size of the surface layer portion is larger than 98% of the average thickness of the sheet thickness, the improvement in ridging resistance is not remarkable.”
[0044] “A test piece was sampled from the center of the obtained stainless cold-rolled steel sheet from the center of the width, and the section in the C direction was measured from the outermost part in the thickness direction from the 0.1 mm position to the 3.9 mm position at an interval of 0.2 mm using an optical microscope. Observing a visual field of 400 μm (center distribution 200 μm each) and 300 μm (center distribution 150 μm each) in the plate width direction and a total of 20 visual fields with a magnification of 250 × The average crystal grain size was determined in each field of view and used as the value at each center position in the plate thickness direction, and the average value was further averaged in the plate thickness direction to measure the plate thickness average crystal grain size. Incidentally, the average crystal grain size of the ferrite, in accordance with the provisions of JIS G 0552, using an image analyzer to determine the average cross-sectional area of the crystal grains, assuming that it is circular, converted to the crystal grain size, The average crystal grain size was used. In addition, the crystal grain size of ferrite is a thickness average crystal grain size D2 which is an average value of the entire region in the thickness direction, and a surface layer portion measured in a visual field centered on a position of 0.1 mm in the thickness direction from the outermost portion. Was determined.”
Response to Arguments
Applicant's arguments filed 14 APRIL 2026 have been fully considered but they are not persuasive.
With respect to the arguments that the embodiments provided by the prior art do not teach the claimed matter, the arguments have been fully considered but they are not persuasive. Patents are relevant as prior art for all they contain. "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).See MPEP § 2123.
Regarding the arguments directed to the amended feature of “wherein an austenite phase fraction γWt at 1200°C is 19% or more” of claim 1 and the ridging height of claim 3, please see above as to how the prior art meets the instant limitation.
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 JOPHY S. KOSHY whose telephone number is (571)272-0030. The examiner can normally be reached M-F 8:30 AM- 5:00 PM.
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/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
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