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 1-2 are under examination of which claims 1-2 were amended in Applicant’s reply filed on 01/23/202 is acknowledged.
Claims 3-8 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim.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 0.
Specification
The disclosure is objected to because of the following informalities: Table 5 duplicates process conditions and labels it as both “Classification Marks” “A” and “E” and recites in column labeled “Remarks” that A is a “Desirable Manufacturing Method” whereas “E” which has the exact same conditions is left blank.
Appropriate correction is required.
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.
List 1
Element
Instant Claims
(mass%)
Prior Art
US’868
(mass%)
C
0.30 – 0.60
0.32 – 1.2
Si
0.05 – 1.00
1 or less
Mn
0.10 – 1.50
2 or less
P
0.035 or less
-
S
0.010 or less
-
Cr
11 – 15
10.0 – 18
Ni
0.01 – 0.60
1.0 or less
Cu
0.01 – 0.50
-
See below
Mo
0.20 – 1.0
3.0 or less
V
0.01 – 0.50
-
See below
Al
0.03 or less
-
N
0.01 – 0.05
-
See below
O
0.01 or less
-
Sn Co Ti Nb Zr W B Ca Mg La Ce Y
one or more of 0.001 to 0.20 of Sn, 0.001 to 0.20 of Co, 0.005 to 0.1 of Ti, 0.005 to 0.5 of Nb, 0.005 to 0.1 of Zr, 0.005 to 0.1 of W, 0.0005 to 0.0030 of B, 0.0001 to 0.0030 of Ca, 0.0001 to 0.0030 of Mg, 0.0001 to 0.0030 of La, 0.0001 to 0.0030 of Ce, and 0.0001 to 0.0030 of Y
-
Fe + impurities
Balance
Balance
Claims 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/013223 A1 via its US English equivalent US 2021/0292868 A1 of Fujihara (US’868), and further in view of US 2009/0224613 A1 of Shimao (US’613).
In the alternative, Claims 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/013223 A1 via its US English equivalent US 2021/0292868 A1 of Fujihara (US’868), and further in view of WO 2015/022932 A1 via its English equivalent EP 3034642 A1 of Teraoka (EP’642).
Regarding claims 1 and 2, WO 2020/013223 A1 via its US English equivalent US 2021/0292868 A1 of Fujihara (US’868) “[0001] The present invention relates to a martensitic stainless steel strip and a method for producing the same.” “[0009] That is, according to an aspect of the present invention, there is provided a martensitic stainless steel strip having a martensite structure and a thickness of 1 mm or smaller.” which reads on the instant recited martensitic stainless steel sheet with a composition wherein the claimed ranges of the constituent elements of the instant alloy of the instant claims overlap or lie inside the ranges of various elements of the alloy of the prior art as shown in the List 1 above. Regarding P, S, Al and O, the prior art US’868 does not teach the addition of P, S, Al or O and therefore reads on the “or less” range of the instant claims. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed composition over the prior art disclosure since the prior art teaches the similar property/utility throughout the disclosed ranges. 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.{US’868 abstract, [0001], [0009]-[0013], [0018]-[0023]}.
US’868 further teaches [0009] “An area ratio of carbides present in a metal structure of the steel strip is within a range of 0.5% or more and 8.0% or less” [0021] “In the steel strip of the present embodiment, an area ratio of carbides present in a metal structure is 0.5% or more and 8.0% or less. Accordingly, progress of cracking can be curbed, and thus a steel strip having a high strength can be obtained. The area ratio of carbides may be evaluated using carbides having an equivalent circle diameter of 0.10 μm or larger. When the size of carbides is smaller than 0.10 μm, it is difficult to evaluate the carbides and no significant influence is applied to the characteristics of a steel strip because they are excessively small. In addition, there is a possibility that carbides having an excessively large size may become a starting point of fatigue fracture, and thus it is preferable that the size of the equivalent circle diameter of carbides be 5.0 μm or smaller. More preferably, the size thereof is 3.0 μm or smaller. In addition, if the area ratio of carbides is excessively low, there is a possibility that coarsening of crystal grains may be promoted due to overheating, and thus the area ratio of carbides is preferably 0.5% or more. The area ratio of carbides is more preferably 1.0% or more, and the area ratio of carbides is further preferably 1.5% or more. The area ratio of carbides in the present embodiment is obtained by observing a surface or a cross section of a steel strip at a magnification of 5,000 times using a scanning electron microscope (SEM) and calculating an area ratio from carbides which can be confirmed in a visual field of 25 μm×19 μm (475 μm2).” which meets the carbide ratio of the instant claims as the range claimed of the carbide ratio of the instant claims overlap or lie inside ranges disclosed by the prior art. 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
With respect to the instant claims requiring the carbide properties of (A), (B) and (C), instant specification [067]-[0069] teaches “ An area of carbides at a plate thickness of ½t±0.7 mm on the same test surface as in the Carbide Evaluation (A) is observed with a 100-fold optical microscope and an area ratio of the carbides is obtained. 0.6% or less of the area ratio of the carbides corresponds to 3.0 or less of the inclusion cleanliness index according to the definition of the test method A and 1.7 of imoy in the definition of the test method B.” “Coarse carbides can also be quantified by extraction residue analysis. For instance, by an iodine-methanol method, a thin plate across the entire thickness is molten, and only coarse carbides are separated and collected with a filter having 10-μm mesh and analyzed. 0.6 mass % or less of the Cr content corresponds to 3.0 of the inclusion cleanliness index according to the definition of the test method A in the Carbide Evaluation (A).” In other words, instant specification teaches via these paragraphs as well as examples 1-55 of Tables 3 and 4 that these properties (A), (B) and (C) are correlated. As the prior art teaches “An area ratio of carbides present in a metal structure of the steel strip is within a range of 0.5% or more and 8.0% or less” which overlaps with the instant claimed range, all of the other properties (A) and (C) would also overlap. 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
It is noted that the prior art US’868 does not teach the recited ranges of Cu: 0.01 – 0.50, V: 0.01 – 0.50, N: 0.01 – 0.05 (claim 1) and one or more of 0.001 to 0.20 of Sn, 0.001 to 0.20 of Co, 0.005 to 0.1 of Ti, 0.005 to 0.5 of Nb, 0.005 to 0.1 of Zr, 0.005 to 0.1 of W, 0.0005 to 0.0030 of B, 0.0001 to 0.0030 of Ca, 0.0001 to 0.0030 of Mg, 0.0001 to 0.0030 of La, 0.0001 to 0.0030 of Ce, and 0.0001 to 0.0030 of Y (claim 2).
In the same field of endeavor, US 2009/0224613 A1 of Shimao (US’613) teaches [0012] “a plate material which is a plate material of a martensite-type, ferrite-type or precipitation-hardening stainless steel or a Cr-based heat-resistant steel” wherein the steel contains {abstract, [0012], [0020], [0024]-[0029]} “0.0001-0.1% by mass of N” “at least one kind selected from the group consisting of Ti, Co, Cu, Zr, Nb, V, Mo, W, Ta and B in a total amount of 0.0001-5% by mass”. The prior art further teaches “[0025] O and N also have influences on the magnetic properties so that they should be contained preferably in the ranges of 0.0001-0.1% by mass of O and 0.0001-0.1% by mass of N and, if falling within these ranges, no particular decrease is caused in the saturation magnetic flux density.” “[0028] At least one kind of the additive elements selected from Ti, Zr, Nb, Mo, V, W and Ta causes a decrease in the magnetic flux density when the element forms a solid solution in the ferrite phase of the material but form intermetallic compounds with the unavoidably intermixing C, O and N in the form of carbides, oxides and nitrides. These precipitates are precipitated finely and uniformly within the alloy texture to serve for prevention of migration of dislocations in the course of plasticity working. Accordingly, the alloy is freed from excessively high ductility to exhibit an effect of decreasing occurrence of burrs at the cross section subjected to shearing in the punching works of the plate material.” “[0029] As is the case in stainless steels, Mo and V exhibit an effect of improving the corrosion resistance of iron alloy plate materials.” Therefore, it 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 to take the steel of US’868 and add Cu, V, N and Ti in the ranges suggested by US’613. Doing so would be advantageous to ensure a) stabilization saturation magnetic flux density, b) prevention of migration of dislocations in the course of plasticity working, and c) improving the corrosion resistance of iron alloy plate materials.
In the alternative, In the same field of endeavor, WO 2015/022932 A1 via its English equivalent EP 3034642 A1 of Teraoka (EP’642) teaches [0001] “martensitic stainless steel having excellent corrosion resistance after quenching or after quenching and tempering” [0021] “hot-rolling the heated ingot to obtain a hot-rolled plate” [0040] “Specifically, hot-rolled plates were produced by heating ingots having a thickness of 100 mm at 1240°C and then hot-rolling the ingots to a plate thickness of 6 mm”. EP’642 further teaches [0033] “Cu: 0.50% or less [0034] In many cases, Cu is inevitably contained in steel by being mixed into the steel from scraps during melting. In addition, there are also cases in which Cu is intentionally added to steel in order to increase austenite stability. However, inclusion of excess Cu degrades hot workability or corrosion resistance, and thus the amount of Cu is set to 0.50% or lower. In some cases, Cu precipitates during quenching and tempering, impairs the soundness of a passivation film, and thus degrades corrosion resistance. Therefore, the amount of Cu is preferably set to 0.20% or lower. In order to decrease the amount of Cu inevitably mixed into steel, a high-purity raw material is essentially required to produce steel, which leads to an increase in raw material costs. Therefore, the amount of Cu is preferably set to 0.01% or higher.” “V: 0.10% or lower [0035] In many cases, V is inevitably mixed into steel from ferrochromium which is an alloy raw material. Since V has a strong action of narrowing the austenite single-phase region temperature, the amount of V is set to 0.10% or lower. In addition, V is an element highly capable of forming a carbide, and in Cr carbonitrides including a V-based carbide as a nucleus, there is a tendency that solution treatment of the Cr carbonitrides is delayed. Therefore, the amount of V is preferably set to 0.08% or lower. In addition, since it is difficult to decrease the amount of V mixed into steel as an inevitable impurity, the lower limit of the amount of V is preferably set to 0.01%. When productivity or the production cost is collectively taken into account, the amount of V is preferably set in a range of 0.03% to 0.07%.” [0037] N: 0.01% to 0.05% [0038] “N has an effect of increasing as-quenched hardness like C. In addition, as another effect that C does not have, N improves corrosion resistance by means of the following two actions. The first one is an action of strengthening a passivation film and the second one is an action of suppressing the precipitation of Cr carbides (suppressing the generation and growth of Cr-depleted zones). In order to obtain the above-described effects, the amount of N is set to 0.01% or higher. However, addition of excess N generates blowholes during casting at atmospheric pressure, and thus the amount of N is set to 0.05% or lower. Regarding an effect of N suppressing sensitization, the optical range of the amount of N varies depending on the amount of Sn added. Since Sn is an expensive element, it is preferable to set the amount of Sn added to the lowest level, and thereby to suppress an increase in the raw material cost. Therefore, in order to suppress sensitization together with a small amount of Sn, the amount of N is preferably set to 0.025% or higher. In addition, since N increases the hardness of a hot-rolled and annealed plate and thus degrades workability, the amount of N is preferably set to 0.035% or lower.” Sn: 0.005% to 0.10% [0039] “Sn is a segregated element which is concentrated in not only crystal grain boundaries in the matrix but also interfaces between precipitates and the matrix. Thus, Sn suppresses the growth and coarsening of the precipitates. Therefore, addition of Sn suppresses sensitization in a hardening cooling step, and thus an effect of improving corrosion resistance is obtained. Since this effect can be reliably obtained by setting the amount of Sn to 0.005%, the lower limit of the amount of Sn is set to 0.005%. However, it is known that the solid solubility limit of Sn in an austenite phase is low, and, in plain carbon steel, Sn causes cracks during hot-rolling or defects. In addition, when steel is aged at a temperature in a range of 400°C to 700°C for a long period of time, there are cases in which the toughness of steel degrades. Thus, the amount of Sn is desirably decreased as much as possible. In ferritic stainless steel, Sn has a relatively large solid solubility limit, and thus, in certain types of ferritic stainless steel, similar to Cr or Mo, 0.1 % or more of Sn is added thereto in order to strengthen a passivation film by actively adding Sn to steel. However, martensitic stainless steel is austenite in a producing process thereof or during hardening heating. In addition, addition of Sn degrades hot workability, and, when steel is used in a high-temperature environment, aging embrittlement occurs. Therefore, there is an optical range for the amount of Sn added. The limit amount of Sn at which hot workability and high-temperature aging embrittlement characteristics are not deteriorated varies depending on the types of steel. In high-carbon martensitic stainless steel, the upper limit of the amount of Sn is 0.1%.” Therefore, it 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 to take the steel of US’868 and expect the Cu and V to be present in the ranges claimed in the instant claims as EP’642 teaches that Cu and V are inevitable impurities and are to be controlled in a particular range. Regarding N and Sn, it 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 to take the steel of US’868 and add N and Sn in the ranges suggested by EP’642. Doing so would be advantageous since a) the addition of N improves corrosion resistance and b) the addition of Sn suppresses the growth and coarsening of the precipitates. {EP’642 abstract, [0001], [0012]-[0022], [0024]-[0054]}.
Response to Arguments
Applicant's arguments filed 06/09/2026 regarding “Claims 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/013223 A1 via its US English equivalent US 2021/0292868 A1 of Fujihara (US’868), and further in view of WO 2015/022932 A1 via its English equivalent EP 3034642 A1 of Teraoka (EP’642)” have been fully considered but they are not persuasive. With respect to the argument that EP’642 requires 0.10 or less of Mo, the primary prior art of record US’868 teaches 3.0 or less for Mo and EP’642 is referenced to cure the deficiencies. With respect to the argument US’868 does not teach the “martensitic stainless steel as presently claimed”, the prior art teaches carbide area ratio of 0.5 to 8.0 which reads on the instant claim requirement of 0.6% or less.
Applicant’s arguments, see page 11-12, filed 06/09/2026, with respect to the rejections a) Claims 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2015/022932 A1 via its English equivalent EP 3034642 A1 of Teraoka (EP’642), and further in view of WO 2020/013223 A1 via its US English equivalent US 2021/0292868 A1 of Fujihara (US’868) indicating that EP’642 requires 0.10 or less of Mo have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of amendments to the instant claims.
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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