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 16-24) in the reply filed on 05/26/2026 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 Claims 25-31 are withdrawn. Claims 16-24 are examined herein.
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.
Claims 16-24 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 16 recites “an austenitic stainless steel comprising” in line 1. “comprising” is an open-ended transitional phrase which does not exclude other elements. Claim 16 also recites “a remainder to 100% of the weight of the austenitic stainless steel” in the last line. It’s unclear whether this limitation exclude other elements. Appropriate correction is required.
Claim 23 recites the austenitic stainless steel comprises less than 5% of Fe as a percentage by weight based on the weight of the austenitic stainless steel. The major composition of a steel is Fe and thus the Fe content in a steel can’t be less than 5 wt.%. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 24 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 16 recites a metal powder consisting of an austenitic stainless steel. “consisting of” is a closed transitional phrase, which excludes other material. Claim 24 depends from claim 16 and recites that the powder may further comprises chromium nitride, which does not further limit claim 16. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 16-24 are rejected under 35 U.S.C. 103 as being unpatentable over Li (US 2020/0407835).
Regarding claims 16-20 and 22-23, Li teaches a metal powder comprising ≤0.15 wt.% C, 13-21 wt.% Cr, 0.035-2 wt.% N, ≤4.5 wt.% Mn, 5-16 wt.% Ni and the balance is Fe ([0006] to [0016]), which overlaps the recited composition in the instant claims and it would be obvious to one of ordinary skill in the art to select the amount of each element from the ranges disclosed in Li to make a metal powder that meets the recited composition in the instant claims. See MPEP 2144.05 I.
Li discloses that the steel after nitriding has FCC structure and is non-magnetic ([0050]), which meets the limitation that the powder consists of austenitic stainless steel as recited in claim 16.
Regarding claim 21, Li discloses that the alloys include P less than or equal to 0.01 wt. % ([0109]), which meets the limitation recited in claim 21. See MPEP 2144.05 I.
Regarding claim 24, Li does not explicitly disclose the content of chromium nitride. However, “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. In view of the fact that Li teaches a composition that overlaps the recited composition in claim 16, one of ordinary skill in the art would expect that the powder disclosed by Li to meet the recited content of chromium nitride in claim 24.
Conclusion
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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