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 .
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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over EP’355 (EP 3392355, IDS dated 10/26/2023), and further in view of Yoshino (US 2020/0002779).
Regarding claims 1 and 2, EP’355 discloses (Abstract; [0010] to [0017]) a ferritic free-cutting stainless sheet with a composition that meet the recited amounts of Cr, Mn, Al, Si, S, Pb, Bi, and Fe in claim 1. EP’355 also discloses ([0010] to [0017]) that the steel contains amount of C, P, Cu, Ni, Mo, B, Mg and Ca that meets the recited amount of optional elements in claim 1 and the recited amount of B, Mg and Ca in claim 2.
Element
Claim 1
(mass %)
EP’355
(mass %)
Overlap
(mass %)
Cr
10-25
10-25
10-25
Mn
0.2-2.0
0.2-2.0
0.2-2.0
Al
0.3-2.5
0.3-2.5
0.3-2.5
Si
0.02-0.6
0.02-0.6
0.02-0.6
S
0.1-0.45
0.1-0.45
0.1-0.45
Pb
0.03-0.4
0.03-0.4
0.03-0.4
Bi
0.03-0.4
0.03-0.4
0.03-0.4
Te
0.01-0.1
0.01-0.1
0.01-0.1
Fe + Impurities
Balance
Balance
Balance
EP’355 discloses formula (1) and formula (2) that meet the recited formula (1) and formula (2) in claim 1 (see [0014] to [0016]). EP’355 further discloses that the Vickers hardness in 131-169 HV ([0033]), which meets the recited hardness in claim 1.
EP’355 is silent on the size, aspect ratio and area ratio of sulfide as recited in claim 1. However, these limitations depend on the steel composition and a method of making the steel sheet.
EP’355 discloses ([0094] to [0114]) a method for making the steel comprising making a steel ingot, hot rolling the steel ingot, annealing the hot-rolled steel at 740-800 ºC followed by air cooling. The difference between the method disclosed by EP’355 and the method disclosed in instant Specification is that EP’355 is silent on the hot rolling conditions.
Yoshino teaches ([0035] to [0093]) a method of making a ferritic stainless steel that is analogous to the method of EP’355. EP’355 discloses that the method comprises heating the steel ingot at 1100-1250 ºC for 1-24 hours, performing hot rolling at 800-1100 ºC at a reduction ratio of more than 65% for rough rolling and 25% or more for finish rolling, coiling the steel sheet and annealing the steel sheet ([0082] to [0093]). Yoshino further discloses that the steel produced has excellent workability ([0002]). Thus, it would be obvious to one of ordinary skill in the art to heat the steel at 1100-1250 ºC for 1-24 hours, performing hot rolling at 800-1100 ºC at a reduction ratio of more than 65% for rough rolling and 25% or more for finish rolling as taught by Yoshino in the process of EP’355 in order to make a steel having excellent workability as disclosed by Yoshino. The slab heating temperature disclosed by Yoshino overlaps the homogenization temperature disclosed in instant Specification and the hot rolling condition disclosed by Yoshino meets the hot rolling conditions disclosed in instant Specification.
In view of the fact that UEP’355 in view of Yoshino teaches a composition that meets the recited composition in claim 1 and a method of making the steel that meets the processing conditions disclosed in instant Specification, one of ordinary skill in the art would expect that the steel disclosed by UEP’355 in view of Yoshino to meet the sulfide limitations recited in claim 1. “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). See MPEP 2112.01 I.
Regarding claim 3, EP’355 discloses that the N content is ≤0.035 wt% and the O content is 0.003-0.04 wt% ([0065] to [0066]), which meets the recited amount of N and overlaps the recited amount of O in claim 3. 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). See MPEP 2144.05 I. Thus, claim 3 is obvious over UEP’355 in view of Yoshino.
Regarding claims 4 and 6, UEP’355 in view of Yoshino does not explicitly teach the limitations as recited in claims 4 and 6. However, these structure and property limitations depend on the steel composition and a method of making the steel. In view of the fact that UEP’355 in view of Yoshino teaches a composition that meets the recited composition in claim 1 and a method of making the steel that meets the processing conditions disclosed in instant Specification, one of ordinary skill in the art would expect that the steel disclosed by UEP’355 in view of Yoshino to meet the structure and property limitations recited in claims 4 and 6. “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). See MPEP 2112.01 I.
Regarding claim 5, EP’355 discloses that the hot-rolled product is a bar ([0027]), which meets the limitation recited in claim 5.
Conclusion
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/XIAOWEI SU/Primary Examiner, Art Unit 1733