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 1-8 are pending where claim 1 has been amended.
Status of Previous Rejections
The previous 35 USC § 103 rejections of the claims have been withdrawn in view of amendments to the claims.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 being unpatentable over JP 2020050929 A to Abe et al (an English language machine translation has been relied upon for examination purposes)
Regarding claims 1-4, Abe discloses a ferritic stainless steel comprising the following composition (Abe, abstract, para [0024-0055]), which overlaps the instantly claimed composition as follows:
Element
Claimed wt%
Abe wt%
Overlaps?
C
0.003-0.030
0.001-0.100
Yes
Si
0.01-1.00
0.01-5.00
Yes
Mn
0.05-0.30
0.01-2.00
Yes
P
0-0.050
0-0.050
Yes
S
0-0.020
0-0.010
Yes
Cr
24.0-30.0
9.0-30.0
Yes
Ni
1.50-3.00
0.01-3.00
Yes
Mo
1.00-3.00
0.01-3.00
Yes
Al
0.001-0.020
0.010-5.000
Yes
Nb
0.20-0.80
0.001-1.000
Yes
N
0-0.030
0.001-0.050
Yes
Cu
Opt 0.01-1.00
0.01-3.00
Yes
Co
Opt 0.01-1.00
0.001-0.500
Yes
W
Opt 0.01-2.00
0.001-1.00
Yes
Ti
Opt 0.01-0.10
0.01-1.00
Yes
V
Opt 0.01-0.20
0.001-1.00
Yes
Zr
Opt 0.01-0.10
0.0001-0.0300
Yes
Mg
Opt 0.0005-0.0050
0.0001-0.0050
Yes
Ca
Opt 0.0005-0.0050
0.0001-0.0050
Yes
B
Opt 0.0005-0.0050
0.0001-0.0100
Yes
REM
Opt 0.01-0.100
0.001-0.100
Yes
Sn
Opt 0.01-0.100
0.001-3.00
Yes
Sb
Opt 0.01-0.100
0.001-0.100
Yes
Fe
Balance
Balance
Yes
Ni-2(Si+Mn)
≥0.00
-13.99-2.96
Yes
Cr + 1.5Mo + Si + 1.5Nb – 2.5Ni
≤25.0
1.5265-40.975
Yes
*calculated from composition ranges of Abe
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 Abe including the instantly claimed because Abe discloses the same utility throughout the disclosed ranges.
Regarding claims 5-8, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the ferritic stainless steel of Abe could be used “for an exhaust heat recovery device or an exhaust gas recirculation device in which at least one joint is assembled by brazing,” insofar as the instant limitation does not appear to imply any structural limitation that the steel of Abe does not possess.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2002/0144756 A1 to Hirata et al.
Regarding claims 1-4, Hirata discloses a ferritic stainless steel comprising the following composition (Hirata, abstract, para [0065]), which overlaps the instantly claimed composition as follows:
Element
Claimed wt%
Hirata wt%
Overlaps/Lies within?
C
0.003-0.030
0-0.1
Yes
Si
0.01-1.00
0-1.5
Yes
Mn
0.05-0.30
0-1.5
Yes
P
0-0.050
0-0.08
Yes
S
0-0.020
0-0.02
Yes
Cr
24.0-30.0
5-50
Yes
Ni
1.50-3.00
0-2.0
Yes
Mo
1.00-3.00
0-2.5
Yes
Al
0.001-0.020
0-0.2
Yes
Nb
0.20-0.80
0-0.5
Yes
N
0-0.030
0-0.1
Yes
Cu
Opt 0.01-1.00
0-2.5
Yes
W
Opt 0.01-2.00
0-2.0
Yes
Ti
Opt 0.01-0.10
0-0.5
Yes
V
Opt 0.01-0.20
0-0.3
Yes
Zr
Opt 0.01-0.10
0-0.3
Yes
Mg
Opt 0.0005-0.0050
0-0.02
Yes
Ca
Opt 0.0005-0.0050
0-0.02
Yes
B
Opt 0.0005-0.0050
0-0.05
Yes
REM
Opt 0.01-0.100
0-0.1
Yes
Fe
Balance
Balance
Yes
Ni-2(Si+Mn)
≥0.00
-6-2*
Yes
Cr + 1.5Mo + Si + 1.5Nb – 2.5Ni
≤25.0
0-56*
Yes
*calculated from composition ranges of Hirata
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 Hirata including the instantly claimed because Hirata discloses the same utility throughout the disclosed ranges.
Regarding claims 5-8, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the ferritic stainless steel of Hirata could be used “for an exhaust heat recovery device or an exhaust gas recirculation device in which at least one joint is assembled by brazing,” insofar as the instant limitation does not appear to imply any structural limitation that the steel of Hirata does not possess.
Claim(s) 1, 3, 5 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2010/0098994 A1 to Schuisky et al.
Regarding claims 1 and 3, Schuisky discloses a ferritic stainless steel comprising the following composition (Schuisky, abstract, para [0019-0035]), which overlaps the instantly claimed composition as follows:
Element
Claimed wt%
Schuisky wt%
Overlaps?
C
0.003-0.030
0-0.1
Yes
Si
0.50-1.00
0.1-1
Yes
Mn
0.05-0.30
0-0.6
Yes
P
0-0.050
0-0.008
Yes
S
0-0.020
0-0.008
Yes
Cr
24.0-30.0
20-25
Yes
Ni
1.50-3.00
0-2
Yes
Mo
1.00-3.00
0.5-2
Yes
Al
0.001-0.020
0-0.05
Yes
Nb
0.20-0.80
0.3-1.5
Yes
N
0-0.030
0-0.03
Yes
Ti
Opt 0.01-0.10
0-0.5
Yes
Zr
Opt 0.01-0.10
0-0.5
Yes
REM
Opt 0.01-0.100
0-0.3
Yes
Fe
Balance
Balance
Yes
Ni-2(Si+Mn)
≥0.00
-3.2-1.8*
Yes
Cr + 1.5Mo + Si + 1.5Nb – 2.5Ni
≤25.0
16.3-31.25*
Yes
*calculated from composition ranges of Schuisky
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 Schuisky including the instantly claimed because Schuisky discloses the same utility throughout the disclosed ranges.
Regarding claims 5 and 7, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the ferritic stainless steel of Schuisky could be used “for an exhaust heat recovery device or an exhaust gas recirculation device in which at least one joint is assembled by brazing,” insofar as the instant limitation does not appear to imply any structural limitation that the steel of Schuisky does not possess.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-8 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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
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