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 .
Election/Restrictions
Applicant’s election of Group I claims 1-3 drawn to an austenitic stainless steel in the reply filed on May 19, 2026 is acknowledged. 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 (MPEP § 818.01(a)).
Claims 4-5 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election made without traverse in the reply filed on May 19, 2026.
Applicant’s remarks regarding claim 5 are noted. As claim 5 refers to “[t]he method according to claim 4”, claim 5 is grouped with the non-elected method invention. Oversight of claim 5 at the time of restriction likely occurred because claim 4 does not conclude with a period “.”, and character recognition did not recognize claim 5 as a separate claim. Claim 4 may be amended to depend on or otherwise incorporate all limitations of elected claim 1, in which case claim 4 may be eligible for rejoinder if claim 1 were found allowable. Applicant is encouraged to add a period “.” to the end of claim 4 in order to prevent delays for informalities.
Specification
The disclosure is objected to because of the following informalities:
In paragraph [00016] of the specification as filed please change “FIG. 3 is a photographs” to “FIG. 3 is a photograph”. Fig. 3 only shows one photograph.
Appropriate correction is required.
Claim Interpretation
Claim 1 claims “a martensite area fraction measured in a bent portion after a 180° bending test is 10% or less”. “The broadest reasonable interpretation of a system (or apparatus or product) claim having structure that performs a function, which only needs to occur if a condition precedent is met, requires structure for performing the function should the condition occur.” (MPEP 2111.04(II)). The limitation “a martensite area fraction measured in a bent portion after a 180° bending test is 10% or less” will therefore be interpreted as limiting the claimed austenitic stainless steel such that should a 180° bending test be performed on the austenitic stainless steel a martensite area fraction measured in a bent portion would be 10% or less. This is different from an austenitic stainless steel which has been subjected to a 180° bending test, as the claim does not encompass an austenitic stainless steel in a bent state following a 180° bending test. Similarly, as the “bent portion” is the result of subjecting the claimed stainless steel to a bending test, the limitations “the bent portion has a center line average height Ra of 0.5 μm or less and a ten point average roughness Rz of 3 μm or less as surface roughness” in claim 2 will be interpreted as limiting the claimed austenitic stainless steel such that should a 180° bending test be performed on the austenitic stainless steel “the bent portion would have a center line average height Ra of 0.5 μm or less and a ten point average roughness Rz of 3 μm or less as surface roughness.
Claim Rejections - 35 USC § 112
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.
Claim 3 is 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 3 claims “a pitting potential value measured by a 3.5% NaCl solution at 30° C. is 250 mV or more”. Pitting potential is measured using a 3-electrode electrochemical cell in which voltage is continuously monitored and controlled relative to a stable reference electrode. The reported value of the potential depends both on the material tested and on the identity of the reference electrode. Different reference electrodes (SCE, Ag/AgCl, SHE, etc.) yield different results for the same material tested. The present disclosure states “[t]he pitting potential is a critical potential at which corrosion occurs in the form of holes in a passivated metal material, and the austenitic stainless steel according to an embodiment of the present disclosure may have a pitting potential of 250 mV or more when measured by immersing the stainless steel in a NaCl solution and applying a potential thereto. In this regard, a temperature of the NaCl may be 30° C. and a concentration thereof may be 3.5%” (paragraph [00046]), and “he pitting potential refers to a potential value at which pits are formed after immersing the sample in a NaCl solution and applying a potential thereto. A NaCl solution maintained at 30° C. and having a concentration of 3.5% was used” (paragraph [00064]). The specification does not indicate against which reference electrode pitting potential value is measured. As whether or not a given sample meets the claimed pitting potential value may differ depending on the reference electrode used in the measurement, the range of structures of the austenitic stainless steel which are or are not encompassed by claim 3 cannot be determined. To envisage why a reference electrode is necessary, consider a hypothetical material which has a pitting potential value of 10 mV vs. SCE under certain conditions. This very same material under the same conditions would have a pitting potential value of 251 mV vs. SHE. Only one of 0 mV and 251 mV is 250 mV or more.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nippon Steel’510 (WO2014038510A1). Nippon Steel’510 is cited in the IDS filed December 6, 2024. References to Nippon Steel’510 are directed to the examiner-supplied English language translation.
Regarding claim 1, Nippon Steel’510 discloses a stainless steel in which strain induced martensite is transformed to recrystallized austenite [0007], [0030], [0050], [0060-61], [0063-64], thereby disclosing an austenitic stainless steel. Paragraph [0030] of Nippon Steel’510 identifies the product stainless steel sheet as austenitic [0030], and the present disclosure obtains the austenitic microstructure of the present stainless steel through recrystallization annealing (paragraph [00054] of the disclosure as filed). The composition ranges disclosed by Nippon Steel’510, the composition of alloy A in Table 5 of Nippon Steel’510 (composition provided in Table 1), and the presently claimed composition are compared in the table below in percent by weight (wt %):
Alloying Element
Nippon Steel’510
Present Invention
(claim 1)
Ranges
Alloy A (Tables 1 and 5)
C
≤
0.030 [0034-35]
0.020
0.005 to 0.03
Si
≤
0.80
[0036]
0.45
0.1 to 1
Mn
≤
1.20
[0037]
0.80
0.1 to 2
Ni
8.0 to 9.0 [0042]
8.1
6 to 12
Cr
18.0 to 19.0 [0041]
18.2
16 to 20
N
0.02 to 0.1 [0046]
0.050
0.01 to 0.2
Nb
0.03 to 0.12 [0044-45]
0.08
0.25 or less
Fe and impurities
Remainder ([0030], claim 1)
Remainder
balance
The composition of alloy A disclosed by Nippon Steel’510 (Tables 1 and 5) directly meets the composition limitations recited in claim 1, and the ranges disclosed by Nippon Steel’510 significantly overlap the claimed ranges.
Nippon Steel’510 discloses an average grain size in a thickness direction is 5 μm or less [0053-54], and inventive examples formed from alloy A disclosed by Nippon Steel’510 have grain sizes of 1.6 µm, 1.7 µm, 1.8 µm, and 2.7 µm after recrystallization annealing (Table 5, [0096-98]). The thickness direction necessarily includes any central portion of the thickness direction.
Nippon Steel’510 is silent on a martensite area fraction in a bend portion should the stainless steel be subjected to a 180° bending test. The proportion of a martensite phase in a bent portion following a bending test is a material property that is inseparable from the chemical composition of the material and the process of making the material. See MPEP2112.01(II). When 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(I). The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer. See MPEP2112(I).
Nippon Steel’510 discloses cold rolling alloy A at a reduction rate of 75%, and the embodiment which yields an average grain size of 1.6 µm was recrystallization annealed at 800
°
C for 3600 seconds ([0096-98], Table 5). The present disclosure states “[b]y adjusting the composition of the alloying elements of the austenitic stainless steel according to an embodiment of the present disclosure, the average grain size (d) of a central portion in a thickness direction may be 5 μm or less, and a martensite area fraction measured in the bent portion after a 180° bending test may be 10% or less” (paragraph [00041]), and “[w]hen the cold annealing temperature is below 700° C, recrystallization does not sufficiently occur to decrease elongation. On the contrary, when the cold annealing temperature is above 850° C, crystal grains coarsen making it difficult to form ultra-fine grains with a size of 5 μm or less, thereby causing problems of occurrence of surface cracks and deterioration of surface roughness in a bent portion of the austenitic stainless steel” (paragraph [00054]). The present disclosure controls the effects of composition and cold annealing temperature by limiting values of
Equation (1): Ω = 406 -2127*[C] -26.2*[Mn] -31.5*[Ni] -127*[N] -48.2*[Nb] -0.108*Temp;
to at least -10 and not more than 10 (paragraphs [00048-50), and the present disclosure states “in Comparative Examples 1 to 11, the 22 values of Equation (1) did not satisfy the range of at least −10 but not more than 10 and the martensite area fraction (%) measured in the bent portion after the 180° bending test exceeded 10%. Accordingly, surface cracks occurred in the bent portion of Comparative Examples 1 to 11” (paragraph [00072]). Every example in the present disclosure which meets both the presently claimed composition limitations and the conditions of Equation (1) meets the presently claimed limitations on martensite in a bent portion following a bending test. When the composition of alloy A disclosed by Nippon Steel’510 (Tables 1 and 5) and the cold rolling annealing temperature of 800
°
C disclosed by Nippon Steel’510 ([0096-98], Table 5) are input into Equation (1), the calculated value is -9.26, which lies within a range of at least −10 but not more than 10. Considering the chemical composition of alloy A disclosed by Nippon Steel’510 (Tables 1 and 5), the average grain size of 1.6 µm and annealing temperature of 800
°
C of alloy A when recrystallized at 800
°
C for 3600 seconds (Table 5, [0096-98]), and considering the composition and annealing conditions of alloy A, annealed at 800
°
C as disclosed by Nippon Steel’510 ([0096-98], Tables 1 and 5) yield a value of -9.26 in Equation (1), Nippon Steel’510 establishes a sound basis for believing that if the austenitic stainless steel of alloy A annealed at 800
°
C for 3600 seconds, disclosed by Nippon Steel’510 (Tables 1, 5, [0096-98]) were subjected to a 180° bending test, a resulting bent portion would have a martensite area fraction of 10% or less.
Regarding claim 2, Nippon Steel’510 discloses that the stainless steel can achieve an average roughness Ra of 0.1 µm or less [0056], and Nippon Steel’510 discloses post-processing to achieve roughness of about 0.01 µm or less [0056]. Nippon Steel’510 is silent on the center line roughness and ten point average roughness a bent portion of the stainless steel would attain following a 180
°
bending test. Surface roughness is a material property that is inseparable from the chemical composition of the material and the process of making the material. See MPEP2112.01(II). When 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(I). The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer. See MPEP2112(I).
Nippon Steel’510 discloses cold rolling alloy A at a reduction rate of 75%, and the embodiment which yields an average grain size of 1.6 µm was recrystallization annealed at 800
°
C for 3600 seconds ([0096-98], Table 5). The present disclosure states “[w]hen the cold annealing temperature is below 700° C., recrystallization does not sufficiently occur to decrease elongation. On the contrary, when the cold annealing temperature is above 850° C., crystal grains coarsen making it difficult to form ultra-fine grains with a size of 5 μm or less, thereby causing problems of occurrence of surface cracks and deterioration of surface roughness in a bent portion of the austenitic stainless steel” (paragraph [00054]); “no surface cracks occurred in the bent portion in all of Inventive Examples 1 to 13, and as the surface roughness, the center line average height Ra of 0.5 μm or less and the ten point average roughness Rz of 3 μm or less were obtained, indicating excellent surface properties” (paragraph [00071]); “no surface cracks occurred in the bent portion in all of Inventive Examples 1 to 13, and as the surface roughness, the center line average height Ra of 0.5 μm or less and the ten point average roughness Rz of 3 μm or less were obtained, indicating excellent surface properties” (paragraph [00073]). Considering the chemical composition of alloy A disclosed by Nippon Steel’510 (Tables 1 and 5), the average grain size of 1.6 µm of alloy A when recrystallized at 800
°
C for 3600 seconds, and considering Nippon Steel’510 anneals at a temperature of
800
°
C (Table 5, [0096-98]), Nippon Steel’510 establishes a sound basis for believing that if the austenitic stainless steel of alloy A annealed at 800
°
C for 3600 seconds, disclosed by Nippon Steel’510 (Tables 1, 5, [0096-98]) were subjected to a 180° bending test, a resulting bent portion would have a center line average height Ra of 0.5 μm or less and a ten point average roughness Rz of 3 μm or less as surface roughness.
Regarding claim 3, Nippon Steel’510 discloses measuring a pitting potential value for an example of alloy A in a NaCl solution vs. a saturated calomel electrode at 60
°
C [0102]. Nippon Steel’510 discloses that a pitting potential above 300 mV is considered passing, and that alloy A passed [0102-103]. Nippon Steel’510 is silent on a pitting potential value measured with a 3.5% NaCl solution at 30° C. The pitting potential value under specific conditions measured against a particular reference electrode is a material property that is inseparable from the chemical composition and microstructure of the material. See MPEP2112.01(II). When 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(I). The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer. See MPEP2112(I). Considering Nippon Steel’510 discloses that alloy A has a pitting potential value above 300 mV in NaCl solution at 60
°
C, and considering the composition of alloy A disclosed by Nippon Steel’510 (Table 1), Nippon Steel’510 establishes a sound basis for believing that if the pitting potential value of alloy A were measured by a 3.5% NaCl solution at 30° C, the pitting potential value would be 250 mV or more at least vs. some reference electrode.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nippon Steel’244 (JP2017122244A). Nippon Steel’244 is cited in the IDS filed December 7, 2023. References to Nippon Steel’244 are directed to the examiner-supplied English language translation.
Regarding claim 1, Nippon Steel’244 discloses an austenitic stainless steel (Title, [0001], [0012]), wherein the austenite phase is obtained through recrystallization annealing ([0012-13], [0025-26], [029-30], claims 1, 3). The present disclosure obtains the austenite of the present stainless steel through recrystallization annealing (paragraph [00054] of the disclosure as filed). The composition ranges disclosed by Nippon Steel’244, the composition of Sample 3 formed from alloy b of Tables 1 and 2 of Nippon Steel’244 (composition provided in Table 1), and the presently claimed composition are compared in the table below in percent by weight (wt %):
Alloying Element
Nippon Steel’244
Present Invention
(claim 1)
ranges
Sample no. 3 (Tables 1 and 2)
C
0.01 to 0.1 [0018]
0.022
0.005 to 0.03
Si
2.0 or Less [0019]
0.62
0.1 to 1
Mn
3.0 or Less [0020]
1.42
0.1 to 2
Ni
5.0 to 10.0 [0022]
6.88
6 to 12
Cr
10.0 to 20.0 [0021]
17.13
16 to 20
N
0.01 to 0.2 [0023]
0.123
0.01 to 0.2
Nb
0.5 or less of at least one of Nb, Ti, V [0024]
0.008
0.25 or less
Fe and impurities
Balance [0012]
remainder
balance
The composition of Sample no. 3 disclosed by Nippon Steel’244 (Tables 1 and 2) directly meets the composition limitations recited in claim 1, and the ranges disclosed by Nippon Steel’244 significantly overlap the claimed ranges.
Nippon Steel’244 discloses an average grain size is 5 μm or less [0025], and sample no. 3 of Nippon Steel’244 has a grain size of 3 µm after recrystallization annealing ([0034], Table 2). Nippon Steel’244 is silent on the average grain size specifically in some central portion of a thickness direction; however, considering the broadest range for overall average crystal size disclosed by Nippon Steel’244 of 5 µm or less [0025] meets the grain size range recited in claim 1, the chemical composition of Sample no. 3 of Nippon Steel’244 (Table 1), and Sample no. 3 of Nippon Steel’244 has an average grain size of 3 µm (Table 2), Nippon Steel’244 establishes a sound basis for believing that the average grain size of some central portion in a thickness direction of Sample no. 3 would be less than 5 µm.
Nippon Steel’244 discloses subjecting Sample no. 3 to a bending test [0032-34] and Nippon Steel’244 discloses that sample no. 3 did not exhibit cracking in the bending test (Table 2, with reference to [0032]). Nippon Steel’244 is silent on a martensite area fraction in a bend portion should the stainless steel be subjected to a 180° bending test. The proportion of a martensite phase in a bent portion following a 180° bending test is a material property that is inseparable from the chemical composition of the material and the process of making the material. See MPEP2112.01(II). When 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(I). The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer. See MPEP2112(I).
Nippon Steel’244 discloses that sample no. 3 was cold rolled and then recrystallization annealed at 800
°
C ([0032], Table 2). The present disclosure states “[b]y adjusting the composition of the alloying elements of the austenitic stainless steel according to an embodiment of the present disclosure, the average grain size (d) of a central portion in a thickness direction may be 5 μm or less, and a martensite area fraction measured in the bent portion after a 180° bending test may be 10% or less” (paragraph [00041]), and “[w]hen the cold annealing temperature is below 700° C, recrystallization does not sufficiently occur to decrease elongation. On the contrary, when the cold annealing temperature is above 850° C, crystal grains coarsen making it difficult to form ultra-fine grains with a size of 5 μm or less, thereby causing problems of occurrence of surface cracks and deterioration of surface roughness in a bent portion of the austenitic stainless steel” (paragraph [00054]). The present disclosure controls the effects of composition and cold annealing temperature by limiting values of
Equation (1): Ω = 406 -2127*[C] -26.2*[Mn] -31.5*[Ni] -127*[N] -48.2*[Nb] -0.108*Temp;
to at least -10 and not more than 10 (paragraphs [00048-50) and the present disclosure states “in Comparative Examples 1 to 11, the 22 values of Equation (1) did not satisfy the range of at least −10 but not more than 10 and the martensite area fraction (%) measured in the bent portion after the 180° bending test exceeded 10%. Accordingly, surface cracks occurred in the bent portion of Comparative Examples 1 to 11” (paragraph [00072]). Every example in the present disclosure which meets both the presently claimed composition limitations and the conditions of Equation (1) between -10 and 10 meets the presently claimed limitations on martensite in a bent portion following a bending test. When the composition of sample no. 3 disclosed by Nippon Steel’244 (Tables 1 and 2) and the cold rolling annealing temperature of 800
°
C disclosed by Nippon Steel’244 ([0032], Table 2) are input into Equation (1), the calculated value is 2.88, which lies within a range of at least −10 but not more than 10. Considering the chemical composition of sample no. 3 disclosed by Nippon Steel’244 (Tables 1 and 2), that Nippon Steel’244 discloses that the sample no. 3 passes at least some bending test ([0032-34], Table 2), the average grain size of 3 µm and cold rolled annealing temperature of 800
°
C of sample no. 3 when recrystallized at 800
°
C (Table 2, [0032]), and considering the composition and annealing conditions of sample no. 3 as disclosed by Nippon Steel’244 ([0032], Tables 1 and 2) yield a value of 2.88 in Equation (1), Nippon Steel’244 establishes a sound basis for believing that if the austenitic stainless steel of sample no. 3, disclosed by Nippon Steel’244 (Tables 1, 2, [0032]) were subjected to a 180° bending test, a resulting bent portion would have a martensite area fraction of 10% or less.
Regarding claim 2, Nippon Steel’244 discloses subjecting Sample no. 3 to a bending test [0032-34] and Nippon Steel’244 discloses that sample no. 3 did not exhibit cracking in the bending test (Table 2, with reference to [0032]). Nippon Steel’244 is silent on the center line roughness and ten point average roughness a bent portion of the stainless steel would attain following a 180
°
bending test. Surface roughness is a material property that is inseparable from the chemical composition of the material and the process of making the material. See MPEP2112.01(II). When 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(I). The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer. See MPEP2112(I).
Nippon Steel’244 discloses an average grain size is 5 μm or less [0025], that sample no. 3 has an average grain size of 3 µm, and that sample no. 3 was cold rolled and then recrystallization annealed at 800°C ([0032], Table 2). The present disclosure states “[w]hen the cold annealing temperature is below 700° C., recrystallization does not sufficiently occur to decrease elongation. On the contrary, when the cold annealing temperature is above 850° C., crystal grains coarsen making it difficult to form ultra-fine grains with a size of 5 μm or less, thereby causing problems of occurrence of surface cracks and deterioration of surface roughness in a bent portion of the austenitic stainless steel” (paragraph [00054]); “no surface cracks occurred in the bent portion in all of Inventive Examples 1 to 13, and as the surface roughness, the center line average height Ra of 0.5 μm or less and the ten point average roughness Rz of 3 μm or less were obtained, indicating excellent surface properties” (paragraph [00071]); “no surface cracks occurred in the bent portion in all of Inventive Examples 1 to 13, and as the surface roughness, the center line average height Ra of 0.5 μm or less and the ten point average roughness Rz of 3 μm or less were obtained, indicating excellent surface properties” (paragraph [00073]). Considering sample no. 3 of Nippon Steel’244 did not exhibit cracking in some bending test (Table 2, with reference to [0032]), the chemical composition of sample no. 3 disclosed by Nippon Steel’244 (Tables 1 and 2), the average grain size of 3 µm of sample no. 3 (Table 2), and considering Nippon Steel’244 anneals sample no. 3 at a temperature of
800
°
C (Table 2), Nippon Steel’244 establishes a sound basis for believing that if sample no. 3 disclosed by Nippon Steel’244 (Tables 1, 2, [00032]) were subjected to a 180° bending test, a resulting bent portion would have a center line average height Ra of 0.5 μm or less and a ten point average roughness Rz of 3 μm or less as surface roughness.
Regarding claim 3, Nippon Steel’244 discloses selecting amounts of Cr to impart corrosion resistance [0021]. Nippon Steel’244 is silent on a pitting potential value measured with a 3.5% NaCl solution at 30° C. The pitting potential value under specific conditions measured against a particular reference electrode is a material property that is inseparable from the chemical composition and microstructure of the material. See MPEP2112.01(II). When 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(I). The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer. See MPEP2112(I). In view of the chemical composition of sample no. 3 disclosed by Nippon Steel’244 (Table 1) for which Nippon Steel’244 at least considers corrosion resistance in determining stainless steel structure [0021], Nippon Steel’244 establishes a sound basis for believing that if the pitting potential value of sample no. 3 were measured by a 3.5% NaCl solution at 30° C, the pitting potential value would be 250 mV or more at least vs. some reference electrode.
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) 2-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nippon Steel’510 (WO 2014038510A1), as applied to claim 1 above.
Regarding claim 2, Nippon Steel’510 discloses that the stainless steel can achieve an average roughness Ra of 0.1 µm or less [0056], and Nippon Steel’510 discloses post-processing to achieve roughness of about 0.01 µm or less [0056]. Nippon Steel’510 is silent on the center line roughness and ten point average roughness a bent portion of the stainless following a 180
°
bending test would attain; however, considering Nippon Steel’510 discloses that surface roughness is the result of degree of processing and suggests lower surface roughness may be desired [0056], it would have been obvious to one of ordinary skill in the art, at the time of filing to process the stainless steel disclosed by Nippon Steel’510 to reduce the roughness. Processing to reduce the roughness would meet or approach a center line average height Ra of 0.5 μm or less and a ten point average roughness Rz of 3 μm or less as surface roughness.
Regarding claim 3, Nippon Steel’510 discloses selecting alloy compositions specifically to prevent corrosion [0029], [0031], [0035], [0037], [0041-43]. Nippon Steel’510 discloses measuring a pitting potential value for an example of alloy A in a NaCl solution vs. a saturated calomel electrode at 60
°
C, which Nippon Steel’510 considers a metric of corrosion resistance [0102]. Nippon Steel’510 discloses that a pitting potential above 300 mV is considered passing, and that alloy A passed [0102-103]. Nippon Steel’510 is silent on a pitting potential value measured with a 3.5% NaCl solution at 30° C; however, in view of the significant disclosure by Nippon Steel’510 to formulate a stainless steel with corrosion resistance [0029], [0031], [0035], [0037], [0041-43], and the teachings by Nippon Steel’510 to evaluate corrosion resistance by a pitting potential value in NaCl solution [0102-103], it would have been obvious to one of ordinary skill in the art at the time of filing, to formulate the stainless steel disclosed by Nippon Steel’510, applied above, to have a good pitting potential value in NaCl solution. As Nippon Steel’510 discloses a pitting potential value above 300 mV as passing [0102-103], it would have been obvious to one of ordinary skill in the art, at the time of filing, that the stainless steel disclosed by Nippon Steel’510 formulated to have a good pitting potential value would have a pitting potential value measured by a 3.5% NaCl solution at 30° C. which me meets or approaches a range of 250 mV or more.
Conclusion
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/SEAN P. O'KEEFE/ Examiner, Art Unit 1738
/SALLY A MERKLING/ SPE, Art Unit 1738
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