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 .
Status of Claims
Claims 1-9 are pending where claims 1-9 have been amended. Claim 9 is withdrawn from consideration and claims 1-8 remain for examination on the merits.
Status of Previous Rejections
The previous 35 USC § 112 and § 102/103 rejections of the claims have been withdrawn in view of amendments to the claims.
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.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as obvious over JP 2007284768A to Eto et al (cited by applicant in IDS, an English language machine translation has been relied upon for examination purposes) in view of CN 114774797 to Mo et al (cited by applicant in IDS, an English language machine translation has been relied upon for examination purposes)
Regarding claim 1, Eto discloses an austenitic stainless steel consisting of the following composition (Eto, abstract, para [0001], Table 1, Example 14) which lies close to the instantly claimed composition as follows:
Element
Claimed wt%
Eto 14 wt%
Overlaps?
C
0-0.20
0.011
Yes
Si
0.10-1.00
0.33
Yes
Mn
0.10-2.0
1.83
Yes
P
0-0.050
0.039
Yes
S
0-0.050
0.001
Yes
Cu
2.0-<4.0
3.52
Yes
Ni
8.0-11.5
11.5
Yes
Cr
>17.0-22.0
19.2
Yes
Mo
0-0.20
≤impurity
Yes
N
0-0.050
0.013
Yes
V
0-0.5
≤impurity
Yes
Nb
0-0.5
≤impurity
Yes
Ca
0-0.03
≤impurity
Yes
B
0-0.05
0.0033
Yes
Zr
0-0.5
≤impurity
Yes
W
0-2.0
≤impurity
Yes
Al
0-0.05
≤impurity
Yes
Mg
0-0.01
≤impurity
Yes
Co
0.01-1.0
≤impurity
No
Fe
Balance
Balance
Yes
Nieq
≥24.0
25.739*
Yes
*calculated from composition of Eto example 14
Eto differs from the instant claims in that Eto does not disclose adding 0.01-1.0 wt% Co to the steel of Eto.
Mo discloses that 0.1-0.4 wt% Co, within the claimed range of 0.01-1.0 wt% Co, may be added to an austenitic stainless steel in order to more easily obtain a single austenite phase in the material, thereby improving low-temperature performance of the material (Mo, para [n0045]).
Regarding claim 1, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add 0.1-0.4 wt% Co to the steel of Eto as suggested by Mo. The motivation for doing so would be to more easily obtain a single austenite phase in the material, thereby improving low-temperature performance of the material (Mo, para [n0045]).
Regarding the limitation “having a relative reduction in area represented by the following formula (2) of 0.8 or more: relative reduction in area = A/B (2) here, A is a reduction in area at rupture of a round bar tensile test piece when a slow strain rate test is performed under conditions of a test temperature of -60°C and a test atmosphere of hydrogen gas at 87.5 MPa, and B is a reduction in area at rupture of a round bar tensile test piece when a slow strain rate test is performed under conditions of a test temperature of -60°C and a test atmosphere of helium gas at 87.5 MPa,” the stainless steel of Eto is made by melting and casting a raw ingot which was then hot forged at 1200 °C (Eto, para [0076]), which would necessarily entail solution treatment at 1200 °C. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. 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 (see MPEP 2112.01 [R-3].) In the instant case, the austenitic stainless steel of Eto in view of Mo would be expected to have the same or similar properties as the instantly claimed austenitic stainless steel because the austenitic stainless steel of Eto in view of Mo has the same or substantially the same composition, structure and method of manufacturing.
Regarding claim 2, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. 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 (see MPEP 2112.01 [R-3].) In the instant case, the austenitic stainless steel of Eto in view of Mo would be expected to have the same or similar properties as the instantly claimed austenitic stainless steel because the austenitic stainless steel of Eto in view of Mo has the same or substantially the same composition, structure and method of manufacturing.
Regarding claims 3 and 4, example 14 of Eto contains 0.0033 wt% B, within the instantly claimed range of 0 < B ≤ 0.05 mass%.
Regarding claims 5-8, the disclosed content of Mo of 0.1-0.4 wt% Co overlaps the instantly claimed range of 0.18-1.0 mass% Co. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of Eto in view of Mo including the instantly claimed because a prima facie case of obviousness exists in the case of overlapping ranges.
Response to Arguments
Applicant’s arguments, see page 8, filed 7/31/2026, with respect to the rejection(s) of claim(s) 1-8 under 35 U.S.C. 103 as obvious over JP 2007284768A to Eto et al have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of 35 U.S.C. 103 as obvious over JP 2007284768A to Eto et al in view of CN 114774797 to Mo et al.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN D WALCK whose telephone number is (571)270-5905. The examiner can normally be reached Monday-Friday 10 AM - 6:30 PM.
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/BRIAN D WALCK/ Primary Examiner, Art Unit 1738
