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 without traverse of Group I, claims 1-8, in the reply filed on 10/15/2025 is acknowledged.
Claims 9-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/15/2025.
Drawings
The drawings are objected to because they contain typographical errors such as misspellings of the word ‘fracture’. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claims 1-8 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. In the instant case, the person of ordinary skill in the art would not be able to make and/or use the carbon-doped alloy steel exhibiting a room-temperature uniform elongation of at least 100% without undue experimentation. An analysis of the Wands Factors is as follows:
Breadth of claims: The claims are broad in that the claimed composition is open-ended and directed to a steel composition having four recited elements (i.e., Ni, Si, C, and Fe). Additionally, the feature directed to the carbon-doped alloy steel exhibiting a room-temperature uniform elongation of at least 100% is broad because it embraces all values beyond 100%.
Nature of the invention: The invention is directed to a carbon-doped steel alloy possessing uncharacteristically high uniform elongation of 100% or more at room temperature.
State of the prior art, Level of one of ordinary skill, and Level of predictability in the art: The state of the prior art is what one skilled in the art would have known, and in the instant case, the state of the prior art would not have supported the knowledge that a steel as claimed could possess a room temperature uniform elongation of at least 100%. Steel compositions and property manipulation of such steels are well-known. Further, the relative skill of those artisans in this art is high but well-established because steels are an established technology and are experiencing continued growth and industry interest in part due to the interest in additive manufacturing.
Thus, it would be surprising to achieve the unexpected result of a room temperature uniform elongation of at least 100% based upon the state of the art as well as the level of ordinary skill in the art at the time the invention was effectively filed.
In view of the state of the prior art and level of one of ordinary skill, the level of predictability to achieve a room temperature uniform elongation of at least 100% in a steel would be understood by ordinarily skilled artisans at the effective filing date to be low.
Considering the disclosure itself, Paragraph 0088 of the disclosure states that “[e]specially, the FeNiSiC alloy has a stacking fault energy of 22~27 mJ, which is supposed to be a TWIP alloy. Usually, a hierarchical structure is necessary to unify the two work-hardening mechanisms in metastable alloys, in which the grain-size hierarchy induces a wide variation in phase stability and thereby encourages the concurrent of different deformation mechanisms” (emphasis respectfully added for clarity of the record).
Further, Applicant’s disclosure at Paragraph 0092 states that TWIP and alpha prime “martensite transformation induced plasticity has been extensively studied in many alloys, which, however, could only push the room-temperature uniform elongation to a maximum of 103% and 50%” and that “the total elongation of the present FeNiSiC alloy was utterly beyond various TWIP/TRIP Fe-Ni steel, Fe-Mn steel, and fcc-phase high entropy alloys (HEA)” (emphasis respectfully added for clarity).
Amount of direction provided by the inventor: The amount of direction provided by the inventor is limited because there is only one example that achieves a value satisfying the claimed range of ‘at least 100%’ (see Example 1). Notably, this example does not contain Mn which is expressly required by dependent claim 2. This example does describe a range of values for the Ni, Si, C, and Fe components as well as describing the homogenization, cold rolling, thickness reduction percentage, and recrystallization conditions in a multi-step process. Further, the disclosure, at paragraph 0073, compares the properties of the FeNiSiC alloy of Example 1 to a FeNiSi alloy but does not provide further guidance beyond that already explained in Example 1.
Notably, Paragraph 0088 of the disclosure states that “Especially, the FeNiSiC alloy has a stacking fault energy of 22~27 mJ, which is supposed to be a TWIP alloy. Usually, a hierarchical structure is necessary to unify the two work-hardening mechanisms in metastable alloys, in which the grain-size hierarchy induces a wide variation in phase stability and thereby encourages the concurrent of different deformation mechanisms” (emphasis respectfully added for clarity of the record).
Lastly, Examiner notes that the as-filed disclosure includes at Paragraph 0110 a “References” section that lists 8 NPL documents. If, any of these NPL documents contains essential material to the invention, it cannot be incorporated by reference from NPL. Incorporation by reference is only available to US patent and application publications (37 CFR 1.57(d)).
Thus, while it appears that Applicant has achieved a novel result that proceeds contrary to conventional wisdom/expectation, the disclosure is not sufficient for the ordinarily skilled artisan to make and/or use the claimed invention without undue experimentation. It has been held that “the more one claims, the more one must enable” Amgen Inc. et al. v. Sanofi et al., 594, 611, 2023 USPQ2d 602 (2023).
Existence of working examples: The application contains a single example where the steel achieves a uniform elongation of 174% (Example 1 Paragraphs 0067-0070). Notably, this example does not contain Mn.
Quantity of experimentation needed to make or use the invention based on the content of the disclosure: The amount of experimentation required to make or use the claimed carbon-doped alloy steel having a room temperature uniform elongation of at least 100% would be high and, considering the disclosure as-filed, would be unreasonable to expect from the person having ordinary skill in the art before the effective filing date of the claimed invention. Said person would not know how to achieve the uniform elongation of at least 100% without more guidance from the inventors. Again, there is only one example disclosed that achieves a uniform elongation above 100% at room temperature in the specification.
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 1-8 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 includes the phrase “wherein the carbon-doped alloy steel exhibits a room-temperature uniform elongation of at last 100% attributed to the incorporation of C into a FeNiSi alloy”. The metes and bounds of the claim are indefinite because “attributed to the incorporation of C into a FeNiSi alloy” appears to be an attempt to capture the intent, reasoning, and/or explanation for the room-temperature uniform elongation of at least 100% rather than further structure or product-by-process language that would impact the structure of the alloy itself. Notably, a “FeNiSi alloy” is not presented in the claims but, rather, the steel alloy having Ni, Si, C, and Fe in the amounts claimed (i.e. a FeNiSiC alloy). Thus, it is unclear how to construe this limitation so as to reasonably determine the metes and bounds of the claims.
Claim 4 states in part “the carbon-doped alloy steel after cold rolling has a yield strength of at least 1200 MPa” but the metes and bounds of the claim are indefinite because cold rolling is a process limitation and not accompanied by any details of when, or even if, the cold rolling must be performed. Further, it is known in the art that multiple cold rolling steps may be performed and under particular conditions such as temperature and thickness reduction. Thus, the metes and bounds of the claim are indefinite because it is unclear under what circumstances the steel must possess such a yield strength.
Claim 5 includes the subjective and relative language “…steel is uniformly elongated during the whole tensile testing without obvious necking”. These descriptions are capable of being expressed with quantitative language and should be presented in the claims so that the public would be reasonably informed of when infringement of such a claim would begin. Further, what constitutes ‘obvious necking’ during the ‘whole tensile testing’ is relative. Additionally, the steel’s state of being ‘uniformly elongated’ during the whole tensile testing without obvious necking is unclear because it is not apparent if the steel cannot drop below 100% or if the state of being ‘uniformly elongated’ requires no change in the tensile elongation value during the testing.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3, and 5-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mao et al. “Effective grain size refinement of an Fe-24Ni0.3C metastable austenitic steel…” Non-Patent Literature (attached).
Regarding claim 1, Mao et al. (hereinafter “Mao”) teaches a Fe-24Ni-0.3C metastable austenitic steel (Title) having a composition meeting the claim as follows:
Element
Claimed
Mao
Analysis
Ni
10-30
24.09
Lies Within Claimed Range
Si
0.01-5
0.01
Lies Within Claimed Range
C
0.01-2
0.3
Lies Within Claimed Range
Fe
60-90
Approx. 75.5231
Lies Within Claimed Range
While the composition described in Table 1 of Mao includes additional elements such as Mn, S, P, O, and N, these are permissible 1) due to the open-ended language of the claim and/or 2) that the percentages of such elements are so small as to be interpretable as inevitable impurities.
Mao’s composition, which is anticipatory to the composition instantly claimed, is disclosed to achieve “a large uniform elongation of 70%” (Page 2697 Right Column) which is below the claimed range of “at least 100%” but Mao is silent to the temperature (i.e., room temperature or heated) at which the uniform elongation of 70% was determined.
Examiner notes the claim language “attributed to the incorporation of C into a FeNiSi alloy”. Considering that Mao’s composition includes an anticipatory value of C (i.e., 0.3%) and that the USPTO cannot procure, make, and/or test products of the prior art, there is a sufficient basis to believe that steel of Mao would exhibit a room-temperature uniform elongation of at least 100% absent evidence to the contrary.
It has been held that ‘[p]roducts of identical chemical composition cannot have mutually exclusive properties’. In re Spada, 911 F.2d 705, 709, 15 USPQ 2d 1655, 1658 (Fed. Cir. 1998).
It has been held that ‘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).
Additionally, it has been held that ‘when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F. 2d 67, 205 USPQ 594, (CCPA 1980).
Thus, there is sufficient basis to presume that the composition of Mao would have a uniform elongation of at least 100% at room temperature attributed to the incorporation of C into a FeNiSi alloy absent evidence to the contrary.
Regarding claim 3, Mao teaches the composition as applied to claim 1 above and further teaches that the alloy experiences a transformation in the phase composition shifting from single martensite to single austenite (bottom of page 2696 to page 2697 all of the column at left describing the intermediate microstructure achieved from the first cold rolling and annealing and then the final fully austenitic alloy achieved after the second cold-rolling and annealing; see also “fully recrystallized UFG austenitic specimen” at “4. Summary” on page 2698).
Regarding claim 5, Mao teaches the composition as applied to claim 1 above and is silent to the steel being uniformly elongated during the whole tensile testing without obvious necking. However, in view of the anticipatory composition, there is a reasonable prima facie basis to presume that the alloy of Mao would perform in the same manner as claimed such that the steel, when subject to tensile testing, would remain uniformly elongated during the whole tensile testing without obvious necking absent evidence to the contrary.
It has been held that ‘[p]roducts of identical chemical composition cannot have mutually exclusive properties’. In re Spada, 911 F.2d 705, 709, 15 USPQ 2d 1655, 1658 (Fed. Cir. 1998).
It has been held that ‘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).
Additionally, it has been held that ‘when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F. 2d 67, 205 USPQ 594, (CCPA 1980).
Regarding claim 6, Mao teaches the composition as applied to claim 1 above and further teaches that the steel shows a single face-centered cubic (fcc) structure with a fully recrystallized morphology (Figures 2 and 4 as well as “4. Summary” fully recrystallized UFG austenitic specimen).
Regarding claim 7, Mao teaches the composition as applied to claim 1 above and is silent to the steel having an increased engineering strength of at least 30%. However, in view of the anticipatory composition, there is a reasonable prima facie basis to presume that the alloy of Mao would perform in the same manner as claimed such that the steel, would have an increased engineering strength of at least 30% absent evidence to the contrary.
It has been held that ‘[p]roducts of identical chemical composition cannot have mutually exclusive properties’. In re Spada, 911 F.2d 705, 709, 15 USPQ 2d 1655, 1658 (Fed. Cir. 1998).
It has been held that ‘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).
Additionally, it has been held that ‘when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F. 2d 67, 205 USPQ 594, (CCPA 1980).
Regarding claim 8, Mao teaches the composition as applied to claim 1 above and is silent to the steel exhibiting a true stress in a range of 1500-2200 MPa at a true strain ranging from 80-100%. However, in view of the anticipatory composition, there is a reasonable prima facie basis to presume that the alloy of Mao would perform in the same manner as claimed such that the steel, would exhibit a true stress in a range of 1500-2200 MPa absent evidence to the contrary.
It has been held that ‘[p]roducts of identical chemical composition cannot have mutually exclusive properties’. In re Spada, 911 F.2d 705, 709, 15 USPQ 2d 1655, 1658 (Fed. Cir. 1998).
It has been held that ‘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).
Additionally, it has been held that ‘when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F. 2d 67, 205 USPQ 594, (CCPA 1980).
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.
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Mao as applied to claim 1 above.
Regarding claim 2, Mao teaches the composition as applied to claim 1 above and reports Mn 0.07% in Table 1 which is reasonably close to the claimed lower bound of 0.1 wt%. Notably, the difference between the reported value and the claimed lower bound is 0.03%.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRA M MOORE whose telephone number is (571)272-8502. The examiner can normally be reached M-F 8am-5pm, EST.
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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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ALEXANDRA M MOORE
Primary Examiner
Art Unit 1738
/ALEXANDRA M MOORE/Primary Examiner, Art Unit 1738