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
Applicant's election with traverse of Species 7 (Claims 20 and 21) in the reply filed on 01/26/2026 is acknowledged. The traversal is on the ground(s) that the identified species are not mutually exclusive: claims 4 and 5 relate to a cold strip and a method for manufacturing the same the cold strip is obtained by first manufacturing a hot strip (in accordance with claims 20-21) and then submitting it to an additional step of cold-rolling and therefore claims 4 and 5 (species 1) are also readable upon the elected species. This is not found persuasive because this case is filed under PCT Rule 13.1 and the restriction requirement is based on whether Species 1 (claims 4-5) and Species 7 (Claims 20-21) share a specifical technical feature. Since JPH1060528A teaches an alloy that meets the recited composition in claim 1 and the alloy is made by hot rolling (Abstract; [0015] to [0028]; [0033]; [0034]), Species 1 (claims 4-5) and Species 7 (Claims 20-21) lack special technical feature and the requirement is still deemed proper and is therefore made FINAL. Claims 4-10, 12-14 and 16-19 are withdrawn. Claims 1-3 and 20-21 are examined herein.
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 and 20-21 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.
Claim 1 recites the limitation "the manufacturing" in the last line. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction is required.
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 1-3 and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over JP’018 (JP 2020-190018).
Regarding claims 1 and 2, JP’018 discloses ([0025] to [0037]) a Fe-Ni alloy with a composition that overlaps the recited composition and it would be obvious to one of ordinary skill in the art to select an amount of each element based on the ranges disclosed in JP’018 to make a Fe-Ni alloy that meet the recited composition in claims 1 and 2. See MPEP 2144.05 I.
Element
Claim 1
(mass %)
JP’018
(mass %)
Overlap
(mass %)
C
0.04-0.15
0.0-0.1
0.04-0.1
Si
0.1-0.35
0.0-1.0
0.1-0.35
Mn
0.5-1.25
0.0-1.0
0.5-1.0
Cu
0.001-0.85
0.0-0.1
0.001-0.1
Ni
36.5-38.5
35-40
36.5-38.5
Fe + impurities
Balance
Balance
Balance
Regarding claim 3, JP’018 discloses that the alloy contains 0.3 wt% or less Cr, 0.1 wt% or less Co, 0.005 wt. % or less S, 0.025 wt. % or less P, 0.5 wt.% or less Mo, 0.1 wt. % or less O, 0.1 wt. % or less Ca, 0.1 wt. % or less Mg and 0.01 wt. % or less Al ([0025] to [0037]), which overlap the recited amount of impurities in claim 3. 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, claim 3 is obvious over JP’018.
Regarding claims 20 and 21, JP’018 discloses a method of making the Fe-Ni alloy comprising forming a melt comprising the disclosed composition; forming the alloy into billets; hot rolling the billets to obtain a hot-rolled plate ([0045] to [0047]), which meets the limitations recited in claims 20 and 21.
Conclusion
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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