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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 07/13/2026 has been entered.
Status of Claims
Claims 1-2, 6-7, 14 and 18 are pending. Claims 1-2 are presented for this examination. Claims 6-7 and 14 and 18 are withdrawn. Claims 3-5,8-13, 15-17 and 19-21 are cancelled.
Status of Previous Rejection
All prior art 103 rejections are withdrawn from previous office action of 04/14/2026 in view of amendment of claim 1.
112 4th rejections are withdrawn from previous office action of 04/14/2026 in view of cancellation of claims 8-9 and 11.
A new ground of art rejections is 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 § 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 are rejected under 35 U.S.C. 103 as being unpatentable over Takano (JP2020050916A)
As for claim 1-2, instant claim 1 is amended to require Mn 1-12%. Hence, scope of claim is changed.
Takano discloses a martensitic stainless steel having carbonitride as precipitates in a ferrite phase having average particle size of 1 micron or more with number of carbonitrides is 10 or more per 1600 µm2, which suggests density is greater than 0.00625 piece/ µm2. Hence, Takano suggested number of carbonitrides greater than 0.00625 piece/ µm2 overlaps claimed 0.01-20 piece/ µm2. average particle size of 1 micron or more overlaps claimed 2 µm or less.
A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
The steel has overlapping elemental composition as illustrated in Table 1 below.
Table 1
Element
Applicant
(weight %)
Takano et al.
(weight %)
(Claims)
Broad Ranges
C
0.03-0.5
0.12-0.7
0.12-0.5
N
0.001-0.5
<=0.14
0.001-0.14
Si
0.01-5
0.1-1
0.1-1
Mn
1-12
0.1-1.5
1-1.5
P
0.001-0.1
<=0.05
0.001-0.05
S
0.0001-1
<=0.01
0.0001-0.01
Cr
10-35
10.5-16
10.5-16
Ni
0.01-5
<=1.5
0.01-1.5
Cu
0.001-3
<=1.5
0.001-1.5
Mo
0.001-3
0.9-3
0.9-3
Nb
0.001-1
<=0.1
0.001-0.1
V
0.001-1
<=0.2
0.001-0.2
Average particle size (µm)
<=2
>=1
1-2
Density (piece/µm2)
0.01-20
>=0.00625
0.01-20
Hardening hardness index A
200-800
B (Claim 2)
0.0001-0.01
<=0.01
0.0001-0.01
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, Takano 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 07/13/2026 is considered but is moot in view of new ground of art rejection above.
Conclusion
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/JENNY R WU/Primary Examiner, Art Unit 1733
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