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 without traverse of Group I, claims 1-4 in the reply filed on 6/22/2026 is acknowledged.
Claims 5-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/22/2026.
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 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 limitation “a fraction (%) of grains with a grain size of 5 µm or more is less than 10%” in lines 8-9. It is unclear what the “%” refers to, i.e., volume%, area%, etc. Clarification is required.
Regarding dependent claims 2-4, these claims do not remedy the deficiencies of parent claim 1 noted above, and are rejected for the same rationale.
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.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Sugiura et al. (EP 3862452 A1, hereinafter “Sugiura”). Applicant provided a copy of Sugiura with the IDS filed 12/10/2024.
Regarding claims 1, 2, 3, and 4, Sugiura teaches an austenitic stainless steel comprising the following composition (Sugiura, [0025-0048]):
Element
Present Invention, wt.%
Sugiura, mass%
Overlap preferred range
C
0.005-0.03
0.005-0.15
Preferred: 0.01-0.012
Within
Si
0.1-1.0
1.0 or less
Preferred: 0.1-0.6
Within
Mn
0.1-2.0
1.5 or less
Preferred: 0.1-1.2
Within
Cu
0.01-0.4
0-1.5
Preferred: 0.1-1.0
Encompass
Mo
0.01-0.2
0-2.0
Preferred: 0.1-1.0
Encompass
Ni
6-9
6.0-15.0
Preferred: 6.5-9.0
Within
Cr
16-19
15.0-20.0
Preferred: 16.0-19.0
Same
N
0.01-0.2
0.005-0.15
Preferred: 0.01-0.12
Within
Balance
Fe and impurities
Fe and impurities
The preferred ranges of the austenitic stainless steel of Sugiura fall within, encompass, or are the same as the claimed ranges. Sugiura also teaches the average grain size of the austenite grains is 5.0 µm or less (Sugiura, [0062]). Moreover, Sugiura teaches relational expression Md30, which considers the relation between C, N, Si, Mn, Cr, Ni, Cu, and Mo, which while slightly different than the currently claimed austenitic stability parameter, one of ordinary skill in the art would be able to calculate the claimed values based on the importance of the values within Sugiura.
Regarding the relational expression [100*N]/[Ni +Cu] is 1.4 or more, the calculation based on the preferred values of Sugiura is 0.1-1.8, which overlaps with the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “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 (Fe. Cir. 1990).
Sugiura further teaches the austenitic stainless steel is manufactured by cast and reheated for hot rolling (Present invention, [00050], casting and hot rolling), hot rolling followed by pickling (Present invention, [00050], hot rolling, annealing, and acid pickling), then cold rolling with a final reduction of 50% or more and a final annealing step at a temperature of preferably 700°C or higher and 970°C or less (Present invention, [00050], cold rolling with reduction ratio of 60% or more and annealing in a range of 800-850°C) and (Sugiura, [0091-0111]).
Given that the composition and method of the austenitic stainless steel of Sugiura are substantially identical to the composition and method as used in the present invention, as set forth above, it is clear that the austenitic stainless steel of Sugiura would inherently have a fraction of grains with a grain size of 5µm or more of less than 10%, a tensile strength of 850 MPa or more (claim 2), a yield strength of 500 MPa or more (claim 3), and an elongation of 25% or more (claim 4) as presently claimed.
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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIELLE CARDA whose telephone number is (571)270-1240. The examiner can normally be reached Monday-Friday 8:30-4:00 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIELLE M. CARDA/Primary Examiner, Art Unit 1738
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