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
Applicant’s election without traverse of Group I, claims 1-2, drawn to a martensitic stainless steel sheet in the reply filed on 01/23/2026 is acknowledged.
Claims 3-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim.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 01/23/2026.
Specification
The amendment filed 09/08/2023 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: The addition of the phrase "one or more of" with respect to the properties (A), (B) and (C) – see “AMENDMENTS TO THE SPECIFICATION” filed 09/08/2023. The specification and the priority documents indicate that the invention as disclosed requires the presence of all of the three properties (A), (B) and (C). If any of the samples fails to meet the requirements of one of the three properties (A), (B) and (C), it is considered to be a comparative example. See instant specification Tables 3 and 4.
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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 1-2 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1-2, claim 1 was amended with the recitation of the phrase “one of more of” preceding the carbide properties (A), (B) and (C). However, instant specification teaches that all of the inventive samples meet all of the requirements of the carbide properties (A), (B) and (C). Moreover, the specification does not teach through recitation or samples that would be considered inventive that meets only one or two of the carbide properties (A), (B) and (C). Therefore, the claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1-2 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.
Regarding claims 1-2, instant claims recite both “comprising” and “consisting of” with respect to the chemical composition of the steel. The transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps whereas the transitional phrase “consisting of” which excludes any element, step, or ingredient not specified in the claim. See MPEP § 2111.03. As the claims recite both an open and closed transitional terms with respect to the composition, it is unclear whether the claim is limited to those recited elements or if the claim allows additional, unrecited elements.
Regarding claims 1-2, claim 1 recites “(B) a carbide area ratio in the area of the plate thickness of ½t±0.7 mm on the test surface parallel to the rolling direction and the plate thickness direction of the steel sheet is 0.6% or less through observation using a 100-fold optical microscope” and “wherein the carbides in the (A) and (B) are colored with Murakami's reagent, and the carbide cleanliness index is inclusion cleanliness defined in the test method A of JIS G0555 in the (A), and in the (B), the carbide area ratio is optionally measured by EBSD method”. It is unclear what is meant by the limitation “the carbide area ratio is optionally measured by EBSD method” as limitation (B) requires the determination of the ratio indicating that measurement or determination of the ratio would not be optional as recited by the latter limitation.
Claim 1 recites the limitations “the area”, “the plate thickness of ½t±0.7 mm” “the test surface” “the rolling direction” “the test method A of JIS G0555” in lines 10-19. There is insufficient antecedent basis for this limitation in the claim.
Regarding claims 1-2, claim 1 recites “0.01 to 0.60 or less of Ni”. The 0.60 or less includes values below 0.01 such as zero. Therefore, it is unclear if the instant claims are requiring the presence of Ni as it recites various lower limits.
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
EP’642
(mass%)
Prior Art
US’868
(mass%)
C
0.30 – 0.60
0.40 – 0.50
0.32 – 1.2
Si
0.05 – 1.00
0.25 – 0.60
1 or less
Mn
0.10 – 1.50
2.0 or less
2 or less
P
0.035 or less
0.035 or less
-
S
0.010 or less
0.010 or less
-
Cr
11 – 15
11.0 – 15.5
10.0 – 18
Ni
0.01 – 0.60
0.01 – 0.60
1.0 or less
Cu
0.01 – 0.50
0.50 or less
-
Mo
0.0 – 1.0
0.10 or less
3.0 or less
V
0.01 – 0.50
0.10 or less
-
Al
0.03 or less
0.03 or less
-
N
0.01 – 0.05
0.01 – 0.05
-
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
Sn: 0.005 – 0.10
-
Fe + impurities
Balance
Balance
Balance
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).
Regarding claims 1 and 2, 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” 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 O, the prior art EP’642 does not teach the addition of O and therefore reads on the “0.01 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. {EP’642 abstract, [0001], [0012]-[0022], [0024]-[0054]}.
It is noted that the prior art EP’642 does not teach the carbide area ratio being 0.6% or less as recited in instant claim 1. In the same field of endeavor, WO 2020013223 A1 via its US English equivalent US 2021/0292868 A1 of Fujihara (US’868) teaches “[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.” 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).” The range claimed of the carbide ratio of the instant claims overlap or lie inside ranges disclosed by the prior art. 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 EP’642 and add adjust carbide area ratio as suggested by US’868. Doing so would be advantageous to a) suppress the coarsening of crystal grains and b) curb the progress of cracking thereby obtaining a steel strip having a high strength. {US’868 [0009], [0021]}.
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.
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, 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]}.
Conclusion
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