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
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d).
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/07/2023, 12/06/2024, are being considered by the examiner.
The information disclosure statement (IDS) submitted on 06/05/2025, 11/04/2025, 02/04/2026 and 04/20/2026, are marked with “No IDS size fee is required”, accordingly, are being considered by the examiner.
Election/Restrictions
Applicant’s election of Group I: claim 1-4 in the reply filed on 05/27/2026 is acknowledged.
However, Applicant did not specify whether the election is made with or without traverse. As because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse as per [See, MPEP § 818.01(a)].
Claims 5-6 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, directed to a method for manufacturing an austenitic stainless steel, there being no allowable generic or linking claim.
Therefore, claims 1-4 are currently under examination on the merits in this office action.
Specification Objections
Abstract of the disclosure is objected to because of the following informalities:
in line 1 of the abstract describes “a” before “ultrafine”, which will be “an ultrafine”,
in line 1 of the abstract describes “a” before “unrecrystallized area”, which will be “an unrecrystallized area”.
Appropriate correction is required. Applicant also advised to check the specification and make the similar correction wherever applicable if there is any.
Claim Objections
Claims 1 is objected to because of the following informalities:
claim recites “a” before “unrecrystallized area” in line 6, which will be “an unrecrystallized area”. Appropriate correction is required.
Claim Rejections - 35 USC § 112 (b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the following term,
"(wt%)" in line 1,
"(C)", “(Si)”, (Mn) in line 2,
“(Ni)”, “(Cr)”, “(N)” in line 3, and
“(Nb)” and “(Fe)” in line 4,
in parenthesis, renders the claim indefinite, because it is not clear whether the term in the parenthesis is optional or required by the claim. It is advised that the parentheses are removed.
Appropriate correction is required.
Claims 2-4 are being dependent on claim 1 and are also rejected for the same reason applied to claim 1.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Adachi, Kazuhiko et.al. [EP2048256A1] (Adachi hereafter).
Regarding claim 1, Adachi discloses an austenitic stainless steel (example stainless steel, see Adachi’s Examples [0062], and austenite phase ratio, see Adachi’s Steel in (Table 3))), comprising a chemical composition by mass % (see Adachi’s Steel b in (Table 1)) in following table,
Element
Instant Claim 1 (mass %)
Adachi's composition (mass %) (Steel b in Table 1)
Within/Overlapping with as recited Range
C
0.005 to 0.03
0.025
Within
Si
0.10 to 1.0
0.048
Within
Mn
0.10 to 2.0
1.28
Within
Ni
6.0 to 12.0
6.83
Within
Cr
16.0 to 20.0
17.08
Within
N
0.01 to 0.2
0.118
Within
Nb
0.25 or less
< 0.001
Within
Fe and inevitable impurities
Balance
Balance
Within
Adachi’s composition of the steel including all elements fall within the range as recited in the instant claim.
Adachi teaches a thickness central region has an average grain size of 2 µm (the microstructure is observed and measured at a cross section parallel to the rolling direction (see Adachi’s [0073]), and an average grain size is 2 µm (see Adachi’s No 5, Steel b in (Table 3)), and a fraction of an unrecrystallized phase is 1% (as Adachi’s crystallized austenite phase ratio is 99%, therefore, calculated unrecrystallized area is (100-99)= 1%, see Adachi’s No 5, Steel b in (Table 3)).
Although, Adachi is silent about “a band form”, however, according to the FIG.3 of the instant specification of the discloser, there is no band formed in claimed invention, while band is formed in FIG.4 for comparative example, when unrecrystallized fraction is higher than the claimed range, therefore, no band formation also meet the claimed limitation. As Adachi’s unrecrystallized fraction is 1% which falls within claimed range, and very low amount, it would expect that Adachi’s unrecrystallized fraction would have no band as well and would meet the limitation.
Adachi’s average grain size and unrecrystallized phase percentage, both fall within the range as recited in the instant claim.
Therefore, it is anticipatory when the prior art is within a claimed range. [See MPEP § 2131.03].
Regarding claim 2, all the above discussions regarding claim 1 are applicable to claim 2, in addition, Adachi discloses a yield strength is 1000 MPa (see Adachi’s Figure 2, when no temperature applied), which fall within the range as recited in the instant claim.
Therefore, it is anticipatory when the prior art is within a claimed range. [See MPEP § 2131.03].
Regarding claim 3, all the above discussions regarding claim 1 are applicable to claim 3, in addition, Adachi discloses an elongation of 38.2% (see Adachi’s No 5, Steel b in (Table 4)), which fall within the range as recited in the instant claim.
Therefore, it is anticipatory when the prior art is within a claimed range. [See MPEP § 2131.03].
Regarding claim 4, all the above discussions regarding claim 1 are applicable to claim 4, although Adachi is silent about the claimed yield ratio, Adachi teaches the following method steps to produce the austenite stainless steel sheet (below table includes citations to the present specification and Adachi):
Process steps
Present Invention [paragraph]
Adachi’s process [section]
Comparison
Cold rolling
cold rolling the hot-rolled slab with a reduction ratio of 40% or more [0048]
cold rolling the hot-worked steel and rolling reduction is 60% or more (see Adachi’s [0055]), and rolling reduction is 70% for No. 5, Steel B (see Adachi’s (Table 2)).
Rolling Reduction falls within the invention and analogous process
Annealing after cold rolling
cold-rolled steel may be annealed, and the cold annealing temperature range of 700 to 850°C to satisfy the Ω value represented by Equation (1) above to be 0.8 or more [0054].
annealing after cold rolling temperature is 800°C for No. 5, Steel B (see Adachi’s (Table 2)).
Adachi is silent about the Equation (1)
Annealing temperature is within the invention and analogous process
As shown above, prior art Adachi teaches the similar steps with a reduction ratio and an annealing temperature both falls within the range as claimed, except the Equation (1) and the Ω value represented by Equation (1).
However, according to the paragraph [0050]-[0054] of instant specification of the disclosure, and as shown above, the Equation (1) is based on the composition of the austenitic steel and a annealing temperature range of 700 to 850°C satisfies the Ω value represented by Equation (1) above to be 0.8 or more, as Adachi’s composition of the austenitic steel and the annealing temperature falls within the range of the invention, therefore, Adachi’s Ω value would be similar and thus Adachi’s process is also similar to the instant invention.
Given the composition, grain size, fraction of uncrystallized area, yield strength, elongation as well as the process of making the austenitic stainless steel of Adachi, are substantially identical to the grain size, fraction of uncrystallized area, yield strength, elongation as well as the process of making the austenitic stainless steel as used in the present invention, as set forth above, therefore, the austenitic stainless steel of Adachi would inherently possesses a yield ratio as presently claimed, because, “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)]”.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kazuhiko Adachi et.al. [US20180265954A1] (Adachi’954 hereafter) teaches an overlapping composition for an austenitic stainless steel, an overlapping average grain size of 10.0 µm or less, and austenite phase 95% or more [Abstract].
JP5843019B2 (machine translation, original provided in the IDS) (JP’019B2 hereafter) teaches an overlapping composition for an austenitic stainless steel [0016] and the average crystal grain size is 5 μm or less [0037], and the average grain size is calculated at the center of the plate thickness [0038]). JP’019B2 further teaches a fine γ-grain structure with minimal unrecrystallized areas may be obtained ([0051]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NAZMUN NAHAR SHAMS whose telephone number is (571)272-5421. The examiner can normally be reached M-F 11:00 AM - 7:00PM (EST).
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/NAZMUN NAHAR SHAMS/Examiner, Art Unit 1738
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