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 1-2, 6-9, 11, 14 and 18 are pending. Claims 1-2 and 8-9 and 11 are presented for this examination. Claims 6-7 and 14 and 18 are withdrawn. Claims 3-5, 10, 12, 13, 15-17 and 19-21 are cancelled.
Status of Previous Rejection
All prior art 103 rejections are withdrawn from previous office action of 11/13/2025 in view of amendment of claim 1.
112 2nd paragraph rejection are withdrawn in view of argument.
A new ground of art rejections is rendered in view of amendment of claim 1.
112 4th paragraph rejection is also rendered in view of amendment of claim 1.
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 08/17/2023 and 09/21/2023 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 8-9 and 11 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. Recitation in claims 8-9 and 11 are identical to amended wherein clauses as required by instant claim 1.
Since claims 8-9 and 11 depends on claim 1, instant claims 8-9 and 11 fail to further limit the subject matter of the claim upon which it depends.
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.
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.
Claim(s) 1-2, 8-9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Song (US20240271240) in view of Hasegawa (EP0779374A1).
As for claim 1-2, 8-9 and 11, instant claim 1 is amended to require C 0.03-0.5%. Hence, scope of claim is changed.
Song discloses a martensitic stainless steel sheet (Abstract line 1) for brake disc[0003]. Broad ranges of each elemental compositions ([0054]-[0075)) except Nb are within instant claimed ranges including amended C range.
Precipitates in the ferrite phase (mother phase) has average particle size 10 micron or less [0027]and density ranges of 0.42-0.58 pieces/µm2 [0028]as illustrated in table 1 below.
Table 1
Element
Applicant
(weight %)
Song et al.
(weight %)
Table 1 Example 1
Broad Ranges
C
0.03-0.5
0.38
0.3-0.5
N
0.001-0.5
0.02
0.01-0.025
Si
0.01-5
0.4
0.3-0.5
Mn
0.01-12
0.45
0.4-0.6
P
0.001-0.1
Impurity
Impurity
S
0.0001-1
Impurity
Impurity
Cr
10-35
13.5
13.1-14.5
Ni
0.01-5
0.4
0.3-0.5
Cu
0.001-3
0.05
0.001-0.5
Mo
0.001-3
1.05
0.95-1.1
Nb
0.001-1
V
0.001-1
0.07
0.05-0.3
Average particle size (µm)
<=2
<=10
<=10
Density (piece/µm2)
0.01-20
0..42-0.58
0..42-0.58
Hardening hardness index A
200-800
B (Claim 2)
0.0001-0.01
<=0.01
<=0.01
Song differs from instant claimed invention such that it does not disclose presence of Nb, B and hardening hardness index.
Hasegawa discloses a martensitic stainless steel having similar compositions as Song and explicitly discloses Nb up to 0.5% to improve low temperature toughness and B up to 0.01% to improve hot workability (Page 5 lines 36-40)
Hence, it would have been obvious to one skill in the art, at the time the invention is made to add Nb and B as suggested by Hasegawa, in the martensitic stainless steel of Song for the benefit of improving low temperature toughness and hot workability.
With respect to hardening hardness index, 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.
With respect to amended first, second and third wherein clauses, they are inherent mechanical properties according to MPEP 2112.01.
When the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the prior art products necessarily possess the characteristics of the claimed product. See MPEP 2112.01.
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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)
how the claimed hardness decrease and 0.2% proof stress are obtained are product by process limitation according to MPEP 2113.
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.
In the instant case, Song in view of Hasegawa discloses each elemental composition, microstructure, precipitates density and particle size which are similar to claimed composition microstructure, precipitates density and particle size. Therefore, claimed mechanical properties would be expected absent clear and convincing evidence of the contrary.
Response to Argument
Applicant’s argument filed on 03/13/2026 is considered but is moot in view of new ground of art rejection.
In response to applicant’s argument that none of examples of Yazawa discloses amended claim 1 required C 0.03-0.5%, argument is moot since Yazawa is withdrawn.
In view of argument that process disclosed in Yazawa is different from present specification, argument is moot since Yazawa is withdrawn. Second, absent criticality of process condition including hot rolling, winding and tempering temperature on amended wherein clause, applicant’ allegation completely lacks any evidence support. Where is the criticality of process conditions? The answer is none.
That is, whether the process conditions of prior art are not determined in view of precipitate size is incommensurate in scope of claimed invention which is directed to a product, not a process of making. As long as prior art explicitly discloses elemental composition, precipitate size and density, prior art would necessarily posses claimed wherein clauses with respect to mechanical properties absent clear and convincing evidence of the contrary.
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 R WU whose telephone number is (571)270-5515. The examiner can normally be reached on 8:30 AM-5:00 PM.
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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
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