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 .
Priority
Applicant’s pending application, 18/355,913 filed July 20, 2023, claims priority to US Provisional Application 63/391,512 filed July 22, 2022.
Restriction Requirement
The following restriction requirement was made with respect to applicant’s claims filed July 20, 2023. Following the October 2, 2025 oral election, applicant filed claim amendments on the same day.
Restriction to one of the following inventions is required under 35 U.S.C. 121:
Group I. Claims 1-9, drawn to a duplex stainless steel alloy, classified in C22C38/58.
If Group I is elected, then a species restriction as detailed below is also required.
Group II. Claims 10-11, drawn to a duplex stainless steel alloy powder, classified in B22F2301/35.
Group III. Claims 12-14, drawn to a method for forming a duplex stainless steel alloy, classified in C21D1/18.
Group IV. Claims 15-17, drawn to a method for forming a duplex stainless steel alloy powder, classified in B22F9/082.
The inventions are independent or distinct, each from the other because:
The inventions of Group I and Group II are directed to related products. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed have a non-overlapping different form, where the alloy of Group I is cast or wrought, while the alloy of Group II is powder. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
The inventions of Group I and Group III are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the alloy product as claimed can be made by melting some, but not all, of the listed elements, or by mixing powders of the listed elements.
The inventions of Group I and Group IV are directed to an unrelated product and process. Product and process inventions are unrelated if it can be shown that the product cannot be used in, or made by, the process. See MPEP § 802.01 and § 806.06. In the instant case, the alloy of Group I is an alloy that is cast or wrought, whereas the method of Group IV forms a powder.
The inventions of Group II and Group III are directed to an unrelated product and process. Product and process inventions are unrelated if it can be shown that the product cannot be used in, or made by, the process. See MPEP § 802.01 and § 806.06. In the instant case, the product of Group II is a powder, whereas the method of Group III forms a metal alloy.
The inventions of Group II and Group IV are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the product as claimed can be made by mixing or ball milling the elemental powders, or by spraying.
The inventions of Group III and Group IV are directed to related processes. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed produce different forms of the composition, either a metal alloy, Group III, or a powder, Group IV. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply: the inventions have acquired a separate status in the art in view of their different classifications, the inventions have acquired a separate status in the art due to their recognized divergent subject matter, and the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
If Group I is elected, then this application contains claims directed to the following patentably distinct species
Species I-Cast: directed a cast steel. (Appears to be claim 3.)
Species I-Wrought: directed to a wrought steel. (Appears to be claim 4.)
The species are independent or distinct because they require different forms of the alloy. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, in Group I claims 1, 2, and 5-9 are generic.
There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reasons apply: the inventions have acquired a separate status in the art due to their recognized divergent subject matter and the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
Restriction Election
During a telephone conversation with Natasha Us on October 2, 2025 a provisional election was made without traverse to prosecute the invention of Group I and Species I-Wrought, claims 1, 2, and 4-9. Affirmation of this election by applicant in replying to this Office action was received on October 2, 2025 following the oral restriction election. Claims 3 and 10-17 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Status
This Office Action is in response to Applicant’s Oral Restriction Election and Claim Amendments filed October 2, 2024.
Claims Filing Date
October 2, 2025
Amended
1, 10, 12, 15
Cancelled
2, 11
Pending
1, 3-10, 12-17
Withdrawn
3, 10, 12-17
Under Examination
1, 4-9
Abstract Objection
The abstract of the disclosure is objected to because
It uses legal phraseology “comprising” in line 2 and “consisting essentially of” line 4.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The form and legal phraseology often used in patent claims should be avoided.
Specification Objections
The disclosure is objected to because of the following informalities:
2:21, 3:18, 4:11, 27 “40 wt% - 60 wt% ferrite and 60 wt% - 40 wt% austenite”, where typically ferrite and austenite units are vol%.
Appropriate correction is required.
Claim Interpretation
Claim 1 lines 14-22 “…the nickel equivalent and the chromium equivalent are defined as one of (i)…(ii)…” are interpreted as referring to two different methods to calculate nickel equivalent and chromium equivalent. Pages 7-8 of applicant’s specification recite a nickel equivalent and chromium equivalent according to the Schaeffler diagram and, alternatively, according to Long and DeLong.
Claim Objection
Claim 1 is objected to because of the following informalities:
Lines 13-14 “40 wt% - 60 wt% ferrite and 60 wt% - 40 wt% austenite”, where typically ferrite and austenite units are vol%.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1 and 4-9 are rejected under 35 U.S.C. 103 as being unpatentable over Abe (JP 2016-204714 machine translation) in view of Yamagishi (JP H08-013094 machine translation).
Regarding claim 1, Abe discloses a duplex (two-phase) stainless steel ([0025], [0066]) with an overlapping composition ([0021]-[0022], [0035]-[0061]), wherein the stainless steel alloy comprises 40 wt% - 60 wt% ferrite and 60 wt% - 40 wt% austenite (two-phase, which reads on having approximately equal proportions of ferrite and austenite) ([0025], [0066]) and has an overlapping nickel equivalent ([0036], [0038], [0042], [0043]) and chromium equivalent ([0037], [0041], [0045], [0047]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Feature
Claim 1
Abe Disclosure
Abe Citation
Cr
12 to 17
10.5 to 30
[0041]
Mo
7.25 to 11
0.1 to 8
[0045]
Ni
0.75 to 5
0.5 to 9
[0042]
Mn
2.5 to 8
0.02 to 4.0
[0038]
Cu
1.75 to 3.5
0.05 to 1.5
[0046]
N
0.1 to 0.3
0.001 to 0.3
[0043]
C
0.075 to 0.2
0.10 or less
[0036]
Co
0.01 to 3
-
-
Si
Less than 1.5
0.02 to 4.0
[0037]
W
Less than 1.5
0.01 to 1.0
[0050]
Fe
Balance
Remainder
[0021]
Nb
-
1.0 or less
[0047]
Ferrite
40 to 60
About 50
[0025], [0066]
Austenite
60 to 40
About 50
[0025], [0066]
One of the following:
(i)Nieq
Creq
>7 to <20
>21 to <38
0.7 to 14
10.6 to 44.5
-
(ii)Nieq
Creq
>10 to <18
>21 to <27
0.7 to 23
10.6 to 44.5
-
Abe discloses 0.05 to 1.5% Cu to improve corrosion resistance ([0046]).
Abe is silent to 1.75 to 3.5% Cu.
Yamagishi discloses a duplex stainless steel ([0001]) with 0.1 to 3% Cu ([0013]).
It would have been obvious to one of ordinary skill in the art in the two-phase stainless steel of Abe to include up to 3% Cu to improve corrosion resistance in a non-oxidizing environment, particularly pitting corrosion resistance (Yamagishi [0013]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Abe is silent to Co.
Yamagishi discloses a duplex stainless steel ([0001]) with 0.01 to 0.27% Co ([0012]).
It would have been obvious to one of ordinary skill in the art in the two-phase stainless steel of Abe to include 0.01 to 0.27% Co to improve crevice corrosion resistance and elongation by concentrating in the austenite phase (Yamagishi [0012]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 4, Abe discloses the stainless steel alloy comprises wrought steel (fastening parts of automobile exhaust systems manufactured from cold-rolled and annealed steel sheets) ([0001], [0025], [0031], [0066], [0078]).
Regarding claim 5, a yield strength of at least 70 ksi has been considered and determined to recite a property that naturally flows from the claimed duplex stainless steel. The prior art discloses an overlapping composition (Abe [0021]-[0022], [0035]-[0061]; Yamagishi [0012], [0013]) and microstructure (Abe [0025], [0066]), such that the claimed property of a yield strength of at least 70 ksi naturally flows from the disclosure of the prior art.
Regarding claim 6, an ultimate tensile strength of at least 115 ksi has been considered and determined to recite a property that naturally flows from the claimed duplex stainless steel. The prior art discloses an overlapping composition (Abe [0021]-[0022], [0035]-[0061]; Yamagishi [0012], [0013]) and microstructure (Abe [0025], [0066]), such that the claimed property of an ultimate tensile strength of at least 115 ksi naturally flows from the disclosure of the prior art.
Regarding claim 7, an elongation >30% has been considered and determined to recite a property that naturally flows from the claimed duplex stainless steel. The prior art discloses an overlapping composition (Abe [0021]-[0022], [0035]-[0061]; Yamagishi [0012], [0013]) and microstructure (Abe [0025], [0066]), such that the claimed property of an elongation >30% naturally flows from the disclosure of the prior art.
Regarding claim 8, a reduction of area >50% has been considered and determined to recite a property that naturally flows from the claimed duplex stainless steel. The prior art discloses an overlapping composition (Abe [0021]-[0022], [0035]-[0061]; Yamagishi [0012], [0013]) and microstructure (Abe [0025], [0066]), such that the claimed property of a reduction of area >50% naturally flows from the disclosure of the prior art.
Regarding claim 9, applicant’s specification discloses at 13:1-3 “pitting resistance equivalent number (PREN)…calculated as %Cr + 3.3(%Mo) + 16(%N) – 1.6(%Mn)”. Abe discloses N is useful for pitting corrosion resistance ([0043]) and a PREN of 4.4 to 61.1 (Abe [0038], [0041], [0043], [0045]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Claims 1 and 4-9 are rejected under 35 U.S.C. 103 as being unpatentable over Adachi (JP 2016-60936 machine translation) in view of Zhang (Zhang et al. Effect of Mo on microstructure and pitting resistance of duplex-phase cast stainless steel, Dalian Ligong Daxue Xuebao (1994), 34(2), 150-155. STN.) and Yamagishi (JP H08-013094 machine translation).
Regarding claim 1, Adachi discloses a duplex (austenite and ferrite two-phase) stainless steel ([0001], [0021]-[0022]) with a composition ([0022], [0025]-[0025], [0032]-[0039]), microstructure ([0022], [0041]), and nickel equivalent ([0022], [0032], [0034], [0036]-[0037]) that overlap with that claimed as presented in the following table. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Adachi is silent to 7.25 to 11 wt% Mo.
Zhang discloses duplex stainless steel with 2.6 to 7.4 wt% Mo (STN Abstract and Composition).
It would have been obvious to one of ordinary skill in the art in the duplex stainless steel of Adachi to include 2.6 to 7.4 wt% Mo to improve the pitting resistance (Zhang STN Abstract). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Adachi in view of Zhang discloses a composition with a Creq that overlaps with that claimed (Adachi [0033], [0035], [0037]-[0038]; Zhang STN composition). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Feature
Claim 1
Adachi Disclosure
Adachi Disclosure- Mo Modified
Adachi Citation
Cr
12 to 17 wt%
10.0 to 28.0
10.0 to 28.0
[0035]
Mo
7.25 to 11 wt%
-
2.6 to 7.4
-
Ni
0.75 to 5 wt%
2.0 or less
2.0 or less
[0037]
Mn
2.5 to 8 wt%
0.1 to 6.0
0.1 to 6.0
[0034]
Cu
1.75 to 3.5 wt%
2.0 or less
2.0 or less
[0037]
N
0.1 to 0.3 wt%
0.17 or less
0.17 or less
[0036]
C
0.075 to 0.2 wt%
0.1 to 0.4
0.1 to 0.4
[0032]
Co
0.01 to 3 wt%
-
-
-
Si
Less than 1.5 wt%
2.0 or less
2.0 or less
[0033]
W
Less than 1.5 wt%
-
-
-
Fe
Balance
Balance
Balance
[0039]
Nb
-
0.5 or less
0.5 or less
[0038]
Ferrite
40 to 60 %
Remainder
Remainder
[0041]
Austenite
60 to 40 %
10 to 90%
10 to 90%
[0041]
One of the following:
(i)Nieq
Creq
>7 to <20
>21 to <38
3.0 to 17
-
3.0 to 17
12.6 to 38.7
-
(ii)Nieq
Creq
>10 to <18
>21 to <27
3.0 to 22
-
3.0 to 22.1
12.6 to 38.7
-
Adachi is silent to Co.
Yamagishi discloses a duplex stainless steel ([0001]) with 0.01 to 0.27% Co ([0012]).
It would have been obvious to one of ordinary skill in the art in the two-phase stainless steel of Adachi to include 0.01 to 0.27% Co to improve crevice corrosion resistance and elongation by concentrating in the austenite phase (Yamagishi [0012]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 4, Adachi discloses the stainless steel alloy comprises wrought steel (springs manufactured by hot and cold working and heat treatment) ([0001], [0013]-[0016], [0026]-[0029], [0049]-[0058]).
Regarding claim 5, Adachi discloses a yield strength of at least 70 ksi (450 MPa or more, 65 ksi or more) ([0014]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 6, Adachi discloses an ultimate tensile strength of at least 115 ksi (1 GPa or more, 145 ksi or more) ([0014]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 7, Adachi discloses an elongation >30% (25% or more) ([0015]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 8, a reduction of area >50% has been considered and determined to recite a property that naturally flows from the claimed duplex stainless steel. The prior art discloses an overlapping composition (Adachi [0022], [0025]-[0025], [0032]-[0039]; Zhang STN Abstract and Composition; Yamagishi [0012]) and microstructure (Adachi [0022], [0041]), such that the claimed property of a reduction of area >50% naturally flows from the disclosure of the prior art.
Regarding claim 9, applicant’s specification discloses at 13:1-3 “pitting resistance equivalent number (PREN)…calculated as %Cr + 3.3(%Mo) + 16(%N) – 1.6(%Mn)”. Adachi in view of Zhang discloses an PREN of 9.0 to 55 (Adachi [0034]-[0036]; Zhang STN composition). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 4-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 19/365,534 (App ‘534) (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because they recite an overlapping duplex stainless steel alloy composition, microstructure, Nieq, Creq (App ‘534 claims 1, 2, 10-12, 15), mechanical properties (App ‘534 claims 5-9), and form (App ‘534 claim 4). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANI HILL whose telephone number is (571)272-2523. The examiner can normally be reached Monday-Friday 7am-12pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KEITH WALKER can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/STEPHANI HILL/Examiner, Art Unit 1735