Detailed Office Action
Notice of Pre-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
Request to Continue Examination
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/10/26 has been entered.
Response to Amendments
The amendment filed on 08/28/26 has been entered. Claims 1 – 20 remain pending and under examination. The amendments to claim 1 find support in at least the original claim set.
The amendments to the claims and specification have overcome the previous objections.
Claim Rejections – U.S.C. §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.
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.
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 – 16 and 19 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over Fuchsman (US2019/0203313, cited with the OA on 07/31/26).
Regarding claims 1 – 7 and 16, Fuchsman teaches a high – chromium martensitic steel with oxidation resistance for power generation and chemical/petrochemical industry [Title, 0001]. The steel has a compositon of:
Element
Claimed Invention (wt%)
Fuchsman (wt%)
Reference
Relation
Chromium (Cr)
10 – 11 wt%
10.25 – 11% (claim 2)
10.5 – 12%
[0067]
Overlaps
Aluminum (Al)
0.005 – 0.03%
0.005 – 0.015% (claim 3)
≤ 0.02%
[0065]
Overlaps
Carbon (C)
0.08 – 0.2%
0.12 – 0.18% (claim 4)
0.1 – 0.16%
[0055]
Falls within
Overlaps
Silicon (Si)
0.1 – 0.6%
0.2 – 0.4% (claim 5)
0.25 – 0.6%
[0057]
Falls within
Overlaps
Vanadium (V)
0.05 – 0.4%
0.1 – 0.3% (claim 6)
0.15 – 0.3%
[0070]
Falls within
Titanium (Ti)
– 0.1%
0.015 – 0.06% (claim 7)
0.001 – 0.02%
[0086]
Overlaps
Overlaps
Sum of Mn, P, S, Mo, W, Ni, Nb, N, Cu, B, Zr, As, Sn, Sb, Pb, H, and Co
No more than 5 wt%
3.52 – 7.68%
Based on ranges disclosed
Overlaps
Iron (Fe) and impurities
Balance
Balance
-
Meets
Meeting the composition of claims 1 and 16. Wherein the steel formed into a component meets the claimed “article”.
With regards to the overlapping ranges taught, “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)”, absent evidence of criticality or unexpected results (MPEP 2144.05 I).
Regarding claim 8, Fuchsman teaches the invention as applied claim 1.
Element
Claimed Invention (wt%)
Fuchsman (wt%)
Reference
Relation
Chromium (Cr)
10.25 – 11%
10.5 – 12%
[0067]
Overlaps
Aluminum (Al)
0.005 – 0.015%
≤ 0.02%
[0065]
Overlaps
Carbon (C)
0.12 – 0.18%
0.1 – 0.16%
[0055]
Falls within
Silicon (Si)
0.2 – 0.4%
0.25 – 0.6%
[0057]
Falls within
Vanadium (V)
0.1 – 0.3%
0.15 – 0.3%
[0070]
Falls within
Titanium (Ti)
0.015 – 0.06%
0.001 – 0.02%
[0086]
Overlaps
Sum of Mn, P, S, Mo, W, Ni, Nb, N, Cu, B, Zr, As, Sn, Sb, Pb, H, and Co
No more than 5 wt%
3.52 – 7.68%
Based on ranges disclosed
Overlaps
Iron (Fe) and impurities
Balance
Balance
-
Meets
“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)”
Regarding claim 9, Fuchsman teaches the invention as applied in claim 1. Fuchsman teaches that the composition has a manganese content of 0.3 – 0.8 wt%, which overlaps with the claimed range [0059], and a molybdenum content of 0.1 – 0.6 wt%, which overlaps with the claimed range [0069]. “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)”
Regarding claim 10, Fuchsman teaches the invention as applied in claim 1. Fuchsman teaches that the composition has a manganese content of 0.3 – 0.8 wt%, which overlaps with the claimed range [0059], and a molybdenum content of 0.1 – 0.6 wt%, which overlaps with the claimed range (shared endpoints) [0069]. “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)”
Regarding claims 11 – 14, Fuchsman teaches the invention as applied in claim 1. Fuchsman does not expressly teach the freezing range (claims 11 – 12), martensitic start temperature range (claim 13), or a martensite 90% temperature range (claim 14). However, Fuchsman teaches a substantially identical composition to the claimed range and properties such as freeze range and martensitic start and Ms90% would depend on the composition and as such, there is a reasonable expectation to an ordinarily skilled artisan that the composition of Fuchsman would possess property ranges that met the claimed ranges.
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, in this case composition, a prima facie case of obviousness is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (MPEP 2112.01 I). Furthermore, products of identical chemical composition cannot have mutually exclusive properties. (In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)) (MPEP 2112.01 II).
Regarding claim 15, Fuchsman teaches the invention as applied in claim 1. The examiner notes that the “patentability of a product does not depend on its method of production.” (MPEP 2113 I). Given that claim 1 is directed to a composition and Fuchsman teaches a composition that meets the claimed compositional ranges, the composition is identical to the compositional scope claimed and therefore, meets the “structure” implied by the limitations.
For purposes of compact prosecution, Fuchsman teaches that the composition can be casted and wrought [0041, 0107]
Regarding claim 19, Fuchsman teaches the invention as applied claim 16.
Element
Claimed Invention (wt%)
Fuchsman (wt%)
Reference
Relation
Chromium (Cr)
10.25 – 11%
10.5 – 12%
[0067]
Overlaps
Aluminum (Al)
0.005 – 0.015%
≤ 0.02%
[0065]
Overlaps
Carbon (C)
0.12 – 0.18%
0.1 – 0.16%
[0055]
Falls within
Silicon (Si)
0.2 – 0.4%
0.25 – 0.6%
[0057]
Falls within
Vanadium (V)
0.1 – 0.3%
0.15 – 0.3%
[0070]
Falls within
Titanium (Ti)
0.015 – 0.06%
0.001 – 0.02%
[0086]
Overlaps
Sum of Mn, P, S, Mo, W, Ni, Nb, N, Cu, B, Zr, As, Sn, Sb, Pb, H, and Co
No more than 5 wt%
3.52 – 7.68%
Based on ranges disclosed
Overlaps
Iron (Fe) and impurities
Balance
Balance
-
Meets
“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)”
Regarding claim 20, Fuchsman teaches the invention as applied in claim 16. Fuchsman teaches that the composition has a manganese content of 0.3 – 0.8 wt%, which falls within the claimed range [0059], and a molybdenum content of 0.1 – 0.6 wt%, which overlaps with the claimed range [0069]. “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)”
Claims 17 – 18 are rejected under 35 U.S.C. 103 as being unpatentable over Fuchsman (US2019/0203313), as applied to claim 16, in further view of Yamada (US2012/0160376, cited with the previous OA of 04/14/26)
Regarding claims 17 – 18, Fuchsman teaches the invention as applied in claim 16. Fuchsman discloses that the steel composition described has various beneficial properties including high temperature creep resistance and oxidation [0094, 0107] for use in power generation such as piping, forgings and plates [0012]. Fuchsman also describes that the class of steel can be used in boiler components [0005]. Fuchsman does not expressly teach that the composition can be used as part of a turbine.
Yamada teaches a martensitic cast steel composition with a similar composition to Fuchsman [0002, 0013 – 0029]. Yamada teaches that the steel can be used in a steam turbine such as a turbine casing, (meeting the claimed limitation of turbine component casing), and nozzle boxes (meeting the claimed turbine component nozzles) because high temperature resistance including creep and toughness [0059, 0005, 0052, 0053, 0055].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have combined the teachings of Fuchsman and Yamada to use the composition of Fuchsman in the applications/components of Yamada to achieve predictable results. Both Fuchsman and Yamada are directed to high chromium martensitic steel for high temperature applications (i.e., same field of endeavor). Moreover, Fuchsman and Yamada teach similar compositions and Fuchsman expressly notes that the composition can be used in applications with steam contact and has beneficial properties of creep resistance and oxidation resistance that are important for the application of Yamada. Therefore, an ordinarily skilled artisan would have had a reasonable expectation of success in achieving predictable results.
Claims 1 – 16 and 19 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over Minami (US 11,105,501) in view of Jablonski (US 8,246,767, cited with the OA on 07/31/26).
Regarding claims 1 – 3, 6, and 16, Minami teaches a high-chromium heat-resistant steel [Title]. Minami teaches that the steel has a compositon of [Table 1, Preferred Range]:
Element
Claimed Invention (wt%)
Minami (mass%)
Relation
Chromium (Cr)
10 – 11 wt%
10.25 – 11% (claim 2)
10.45 – 11%
Falls within
Aluminum (Al)
0.005 – 0.03%
0.005 – 0.015% (claim 3)
0 – 0.025%
Overlaps
Carbon (C)
0.08 – 0.2%
0.08 – 0.11%
Falls within
Silicon (Si)
0.1 – 0.6%
0.15 – 0.35%
Falls within
Vanadium (V)
0.05 – 0.4%
0.1 – 0.3% (claim 6)
0.15 – 0.25%
Falls within
Titanium (Ti)
0.01 – 0.1%
Does not teach
-
Sum of Mn, P, S, Mo, W, Ni, Nb, N, Cu, B, Zr, As, Sn, Sb, Pb, H, and Co
No more than 5 wt%
0.937 – 1.816
Falls within
Iron (Fe) and impurities
Balance
Balance
Meets
Meeting the composition of claims 1 and 16. Wherein the steel formed into a component meets the claimed “article”.
Minami does not expressly disclose the presence of titanium.
Jablonski teaches a high-chromium steel for producing a martensitic microstructure [Title, Abstract] with an overlapping alloy content to that of Minami [Col 10, line 45 – 66]. Jablonski teaches that the steel composition is used for its creep strength and oxidation/corrosion resistance [Col 7, line 15 – 25]. Moreover, Jablonski teaches that titanium is added the steel composition in order to produce titanium carbides as primary and secondary precipitates which further improves creep-strength and oxidation/corrosion resistance [Col 7, line 15 – 40]. Jablonski teaches that the titanium content added to the steel is 0.05 – 0.15 wt% to produce carbides which promote the creep strength, long term microstructural stability, and improved oxidation resistance [Col 8, line 64 – Col 9, line 25].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have modified the compositon of Minami to include 0.05 – 0.15 wt% of titanium, as described by Jablonski. Minami and Jablonski are directed to the same field of endeavor of high chromium steel as well as their specific use in environments where creep strength, oxidation resistance, and corrosion resistance are important. As such, an ordinarily skilled artisan would have considered the teachings of Jablonski to be pertinent to the disclosure of Minami. Moreover, Minami and Jablonski are directed to steel compositions overlapping in alloying content scope. Therefore, an ordinarily skilled artisan would have had a reasonable expectation of success in applying the teachings of Jablonski to Minami. Lastly, an ordinarily skilled artisan would have been motivated to apply the teachings because the inclusion of titanium in the disclosed amount produces carbides which improve creep-strength, oxidation resistance, corrosion resistance, and long-term stability of the microstructure.
With regards to the overlapping ranges taught, “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)”, absent evidence of criticality or unexpected results (MPEP 2144.05 I).
Regarding claim 4, Minami in view of Jablonski teaches the invention as applied claim 1. Minami teaches that the range of carbon can extend from 0.08 – 0.13% [Table 1, Range], which overlaps with the claimed range. “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)”
Regarding claim 5, Minami in view of Jablonski teaches the invention as applied claim 1. Minami teaches that the range of silicon can extend from 0.15 – 0.45% [Table 1, Range], which encompasses/overlaps with the claimed range. “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)”
Regarding claim 7, Minami in view of Jablonski teaches the invention as applied claim 1. Jablonski teaches that the range of titanium can be 0.05 – 0.15% [Col 9, line 24], which overlaps with the claimed range. “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)”
Regarding claim 8, Minami in view of Jablonski teaches the invention as applied claim 1.
Element
Claimed Invention (wt%)
Minami (mass%)
Relation
Chromium (Cr)
10.25 – 11%
10.45 – 11%
Falls within
Aluminum (Al)
0.005 – 0.015%
0 – 0.025%
Overlaps
Carbon (C)
0.12 – 0.18%
0.08 – 0.13%
[Table 1, Range]
Overlaps
Silicon (Si)
0.2 – 0.4%
0.15 – 0.35%
Overlaps
Vanadium (V)
0.1 – 0.3%
0.15 – 0.25%
Falls within
Titanium (Ti)
0.015 – 0.06%
0.05 – 0.15%
[Col 9, line 24, Jablonski]
Overlaps
Sum of Mn, P, S, Mo, W, Ni, Nb, N, Cu, B, Zr, As, Sn, Sb, Pb, H, and Co
No more than 5 wt%
0.937 – 1.816
Falls within
Iron (Fe) and impurities
Balance
Balance
Meets
“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)”
Regarding claim 9, Minami teaches the invention as applied in claim 1. Minami teaches that the composition has a manganese content of 0.4 – 0.6 mass %, which falls within the claimed range, and a molybdenum content of 0.45 – 0.55 mass%, which falls within with the claimed range [Table 1, preferred range]. “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)”
Regarding claim 10, Minami in view of Jablonski teaches the invention as applied in claim 1. Minami teaches that the composition has a manganese content of 0.4 – 0.6 mass %, which overlaps with the claimed range [Table 1, preferred range], and a molybdenum content of 0.45 – 0.55 mass%, which overlaps with the claimed range (shared endpoints) [Table 1, range]. “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)”
Regarding claims 11 – 14, Minami in view of Jablonski teaches the invention as applied in claim 1. Minami does not expressly teach the freezing range (claims 11 – 12), martensitic start temperature range (claim 13), or a martensite 90% temperature range (claim 14). However, Minami teaches a substantially identical composition to the claimed range and properties such as freeze range and martensitic start and Ms90% would depend on the composition and as such, there is a reasonable expectation to an ordinarily skilled artisan that the preferred composition of Minami would possess property ranges that met the claimed ranges.
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, in this case composition, a prima facie case of obviousness is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (MPEP 2112.01 I). Furthermore, products of identical chemical composition cannot have mutually exclusive properties. (In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)) (MPEP 2112.01 II).
Regarding claim 15, Minami in view of Jablonski teaches the invention as applied in claim 1. The examiner notes that the “patentability of a product does not depend on its method of production.” (MPEP 2113 I). Given that claim 1 is directed to a composition and Minami teaches a composition that meets the claimed compositional ranges, the composition is identical to the compositional scope claimed and therefore, meets the “structure” implied by the limitations.
For purposes of compact prosecution, Minami teaches that the composition can be casted and hot worked (i.e., wrought) [Col 5, line 30 – 32; Col 5, line 14 – 16].
Regarding claim 19, Minami in view of Jablonski teaches the invention as applied claim 16.
Element
Claimed Invention (wt%)
Minami (mass%)
Relation
Chromium (Cr)
10.25 – 11%
10.45 – 11%
Falls within
Aluminum (Al)
0.005 – 0.015%
0 – 0.025%
Overlaps
Carbon (C)
0.12 – 0.18%
0.08 – 0.13%
[Table 1, Range]
Falls within
Silicon (Si)
0.2 – 0.4%
0.15 – 0.35%
Overlaps
Vanadium (V)
0.1 – 0.3%
0.15 – 0.25%
Falls within
Titanium (Ti)
0.015 – 0.06%
0.05 – 0.15%
[Col 9, line 24, Jablonski]
Overlaps
Sum of Mn, P, S, Mo, W, Ni, Nb, N, Cu, B, Zr, As, Sn, Sb, Pb, H, and Co
No more than 5 wt%
0.937 – 1.816
Falls within
Iron (Fe) and impurities
Balance
Balance
Meets
“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)”
Regarding claim 20, Minami in view of Jablonski teaches the invention as applied in claim 16. Minami teaches that the composition has a manganese content of 0.4 – 0.6 mass %, which falls within the claimed range, and a molybdenum content of 0.45 – 0.55 mass%, which falls within the claimed range [Table 1, preferred range]. “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)”
Claims 17 – 18 are rejected under 35 U.S.C. 103 as being unpatentable over Minami (US 11,105,501) in view of Jablonski (US 8,246,767), as applied to claim 16, in further view of Yamada (US2012/0160376, cited with the previous OA of 04/14/26)
Regarding claims 17 – 18, Minami in view of Jablonski teaches the invention as applied in claim 16. Minami discloses that the steel composition has various beneficial properties including creep rupture strength and oxidation resistance [Col 2, line 16 – 17] for use in power generation such as piping, tubes, and drums [Col 3, line 15 – 18]. Minami also describes that the class of steel can be used in boiler components [Col 2, line 14 – 15]. Minami does not expressly teach that the composition can be used as part of a turbine.
Yamada teaches a martensitic cast steel composition with a similar composition to Minami [0002, 0013 – 0029]. Yamada teaches that the steel can be used in a steam turbine such as a turbine casing, (meeting the claimed limitation of turbine component casing), and nozzle boxes (meeting the claimed turbine component nozzles) because high temperature resistance including creep and toughness [0059, 0005, 0052, 0053, 0055].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have combined the teachings of Minami and Yamada to use the composition of Minami in the applications/components of Yamada to achieve predictable results. Both Minami and Yamada are directed to high chromium martensitic steel for high temperature applications (i.e., same field of endeavor). Moreover, Minami and Yamada teach similar compositions and Minami expressly notes that the composition can be used in applications with steam contact and has beneficial properties of creep rupture strength and oxidation resistance that are important for the application of Yamada. Therefore, an ordinarily skilled artisan would have had a reasonable expectation of success in achieving predictable results.
Response to Arguments
Applicant's amendments and arguments thereto have overcome the previous rejections of:
Claims 1 – 3, 6, 9 – 16, and 20 under 35 U.S.C. 102(a)(1) as being anticipated by Hackett (US2017/0292179)
Claims 17 – 18 under 35 U.S.C. 103 as being unpatentable over Hackett (US2017/0292179), as applied to claim 16, in further view of Yamada (US2012/0160376)
Claims 4 – 5, 7 – 8, 10, and 19 under 35 U.S.C. 103 as being unpatentable over Hackett (US2017/0292179), as applied to claims 1 and 16.
However, upon further consideration, a new rejection is made of:
Claims 1 – 16 and 19 – 20 under 35 U.S.C. 103 as being unpatentable over Fuchsman (US2019/0203313).
Claims 17 – 18 under 35 U.S.C. 103 as being unpatentable over Fuchsman (US2019/0203313), as applied to claim 16, in further view of Yamada (US2012/0160376)
Claims 1 – 16 and 19 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over Minami (US 11,105,501) in view of Jablonski (US 8,246,767)
Claims 17 – 18 under 35 U.S.C. 103 as being unpatentable over Minami (US 11,105,501) in view of Jablonski (US 8,246,767), as applied to claim 16, in further view of Yamada (US2012/0160376)
Applicant’s arguments regarding the claim warning to claims 1 and 16 as being substantial duplicates have been fully considered and are persuasive. In particular, MPEP 2106.03 I states “For all categories except process claims, the eligible subject matter must exist in some physical or tangible form.". However, it is also stated that “As the courts have explained, manufactures are articles that result from the process of manufacturing, i.e., they were produced "from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery.".
As such, after reconsideration the article and the composition of matter would have a difference in scope and thus not be substantial duplicates.
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US2019/0127829 – martensitic stainless steel with overlapping composition
US 10,519,524 – heat-resistant steel with overlapping composition
CN102260826 – martensitic stainless steel with highly overlapping composition, no disclosure of titanium
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Austin M Pollock whose telephone number is (571)272-5602. The examiner can normally be reached M - F (11 - 8 ET).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738