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 50-53, 55-56, and 59-64 are rejected under 35 U.S.C. 103 as being unpatentable over Kato (US 5,278,881).
Regarding claims 50-53, 55-56 and 59-62, Kato teaches an alloy containing 5-40 wt% Mn, 7-18 wt% Cr, 2-12 wt% Al and the balance is Fe and impurities (claim 1), which converts about 5-40 at% Mn, about 7-18 at% Cr, about 4-24 at% Al and the balance being Fe and unavoidable impurities (the estimation is based on the fact that the molecular weights of Fe, Mn and Cr are 55.8, 54.94 and 52 respectively and the molecular weight of Al is 27) and overlap the recited composition in claims 50-53, 55-56 and 61-62. 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.
Kato discloses that the alloy has ferritic structure (Claim 1), which is known to have bcc structure. Kato discloses that when Cr content is greater than 18wt%, sigma phase may be formed (Col. 5, Ln 52-64). It would be obvious to one of ordinary skill in the art to limit the amount of Cr to 18 at% or less in order to avoid sigma phase formation. Thus, claims 50-53, 55-56 and 61-62 are obvious over Kato.
Regarding claims 63-64, Kato discloses that the alloy has a single ferrite phase (claims 1-3), which meets the limitation recited in claim 63. Kato does not explicitly disclose that the alloy has 2 bcc phases. However, in view of the fact that Kato teaches a composition that meets the recited composition claim 50, one of ordinary skill in the art would expect that the alloy disclosed by Kato to meet the recited limitation in claim 64. “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.
Allowable Subject Matter
Claims 54 and 57-58 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed 03/02/2026 have been fully considered but they are not persuasive.
First, the applicants argued that Kato does not teach the alloy has a bcc structure and free of sigma phase.
In response, Kato discloses that the alloy has ferritic structure (Claim 1), which is known to have bcc structure. Kato discloses that when Cr content is greater than 18wt%, sigma phase may be formed (Col. 5, Ln 52-64). It would be obvious to one of ordinary skill in the art to limit the amount of Cr to 18 at% or less in order to avoid sigma phase formation. Thus, claims 50-53, 55-56 and 61-62 are obvious over Kato.
Second, the applicants argued that Kato teaches that a Cr content of greater than 12 wt.% is undesirable due to formation of the σ-phase. The Cr content may be 12-18 wt.% but only in the case where the alloy contains the austenite phase. Effectively Kato teaches away from an alloy which contains > 12 wt.% Cr, and is not austenitic (e.g. is ferritic) and free from sigma phase. The above-quoted paragraph, in the context of the Kato document, indicates to the skilled person that to obtain ferritic alloys with a small amount of Mn without forming sigma phase, Cr must be in the range of 5-12 wt.%, and for austenitic-forming, Ni-containing alloys, up to 18% Cr is acceptable without triggering sigma phase formation.
In response, Kato discloses: “In order to maintain an excellent corrosion resistance, the content must be 5% or more. If it exceeds 18%, precipitations may be formed in association with aluminum. Furthermore, sigma phase may be formed, and the alloy thereby become brittle. Therefore, it is determined between 5 and 18%”. Thus, it would be obvious to one of ordinary skill in the art to control the Cr amount in the range of 5 to 18 wt% in order to avoid the formation of sigma phase. Even though, Kato discloses a more preferable range which is 7-12 wt% Cr, the rejection is over prior arts’ broad disclosure instead of preferred embodiments. See MPEP 2123. As Kato discloses a broad range of Cr (7-18 wt.%) to avoid formation of sigma phase, a prima facie case of obviousness is established. See MPEP 2144.05 I.
Claim 1 of Kato discloses that the alloy has a completely ferrite structure when the alloy contains 5-40 wt% Mn, 7-18 wt% Cr, 2-12 wt% Al and the balance is Fe and impurities. Ferrite is known to have bcc structure. Thus, Kato discloses an embodiment containing 7-18 wt% Cr and has a bcc structure.
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 Xiaowei Su whose telephone number is (571)272-3239. The examiner can normally be reached 8:00-5:00.
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/XIAOWEI SU/Primary Examiner, Art Unit 1733
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