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/Restriction
Applicant’s election without traverse of Group I (claims 1-5) in the reply filed on 02/06/2026 is acknowledged.
Claim 6 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 02/06/2026.
Status of Claims
Applicant’s response filed 02/06/2026 has been entered.
Pending: claims 1-6
Withdrawn: claim 6
Under examination: claims 1-5
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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Miyauchi et al. (JPH07197205A; Espacenet English machine translation cited and attached).
Regarding claim 1, with regard to the claimed austenitic steel composition, Miyauchi teaches the following composition for an austenitic stainless steel sheet (Abstract), which overlaps with the claimed ranges:
Element
Instant claim(wt. %)
Miyauchi
Location in reference
Fe
Balance
Balance
Abstract
C
>0 to 0.05
0-0.2
[0016]
Si
>0 to 2
0-1
[0016]
Mn
>0 to 2
0-2
[0016]
S
0-0.01
0-0.02
[0014]
Cr
16-22
15-27
[0016]
Ni
9-15
Ni+Co: 6-35
[0016]
Mo
>0 to 3
0-5
[0016]
N
0.15-0.25
0.08-0.15
[0012]
B
0.004-0.06
0.003-0.015
[0012]
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 I.). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05 I.).
With regard to the claimed “wherein 10 or more BN precipitates are distributed per 100 x 100 µm2”, although Miyauchi does not explicitly teach this limitation, Miyauchi teaches that the invention is characterized in that BN is precipitated on 90% or more of the surface of the steel, and the amount of gas adsorbed on the surface is small, and the austenitic stainless steel is characterized in that it is a thin plate [0012]. Thus, it is prima facie expected that the relatively large BN precipitates percentage of Miyaushi meets the claimed number density limitation in claim 1.
Furthermore, Miyaushi discusses the conditions under which BN precipitation occurs – that is, that at 650-900°C, precipitation occurs at a greater proportion than at lower temperatures, and that at temperatures too high, solubility increases (and therefore precipitation decreases) [0023]. As such, a POSITA would find it obvious to vary the ranges and conditions to arrive at the claimed number density, because doing so allows for shorter bake time when there is a sufficient amount of BN [0012].
Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." The burden of proof is similar to that required with respect to product-by-process claims. (MPEP 2112 V).
Regarding claims 2-3, Miyauchi does not explicitly teach the number density of MnS precipitates; however, the MnS precipitates quantity and characteristics would be in part determined by the quantities of Mn and S, and the production method – because the Mn and S ranges of Miyauchi overlap with the claimed ranges, and because there is a similarity in the processing method, such as heating to a temperature of 1000°C or higher after cold working, and performing solution treatment at 1000-1200°C [0019], which overlaps with the range in the instant specification of 1100-1250°C (see page 8, lines 17-18 of instant spec).
Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." The burden of proof is similar to that required with respect to product-by-process claims. (MPEP 2112 V).
Regarding claim 4, Miyauchi teaches that the Cu content is 5% or less [0016], which overlaps with the claimed 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 (MPEP 2144.05 I.). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05 I.).
Regarding claim 5, Miyauchi does not explicitly teach the pitting potential, but pitting potential is one measurement for the test of corrosion resistance. In view of Miyauchi having a substantially similar composition, a substantially similar BN precipitate property, and a similar process of making, it is prima facie expected that Miyauchi’s steel’s corrosion resistance and therefore pitting potential property overlap with or are substantially similar to that which is claimed.
Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." The burden of proof is similar to that required with respect to product-by-process claims. (MPEP 2112 V).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adil Siddiqui whose telephone number is (571)272-8047. The examiner can normally be reached M-F 10AM-6PM CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADIL A. SIDDIQUI/Primary Examiner, Art Unit 1735
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