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 II claims 20-23 in the reply filed on June 2, 2026 is acknowledged.
Claims 1-19 and 24-32 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 June 2, 2026.
Claim Objections
Claim 21 is objected to because of the following informalities:
In claim 21 please change “1.15% nitrogen” to “1.15 wt % of nitrogen” for consistency with all other claimed percentages.
Appropriate correction is required.
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 20-23 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 20 recites the limitation "the composition" in the first line of the claim. There is insufficient antecedent basis for this limitation in the claim. Considering the preambles of each of claims 21-23 recite “the composition of claim 20”, claim 20 appears intended to recite a stainless steel composition comprising the following components instead of the presently “A stainless steel alloy, the composition comprising the following components”.
Claims 21-23 are rejected under 35 USC 112(b) because they depend on claim 20, and because each recitation of “the composition” lacks antecedent basis.
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 23 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 23 claims “the composition comprises at least 0.5 wt % of boron”. Claim 23 depends on claim 20. Claim 20 claims a composition comprising “about 0.1 wt % to about 2.0 wt % of boron”. In reciting a range for boron without an upper limit, claim 23, as worded, encompasses amounts of boron which claim 20 does not encompass. For example, claim 23 encompasses a composition comprising 10% boron, whereas claim 20 does not encompass a composition comprising 10% boron. 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. Please claim an upper limit for the amount of boron in claim 23.
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) 20 and 23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nazarko (RU2752057C1). References to Nazarko are directed to the examiner-supplied English language translation.
Regarding claims 20 and 23, Nazarko discloses a composition (abstract, claims 1-2, [0013-14]), which Nazarko discloses is an alloy [0016-17], [0019], [0024], [0027]. Ranges of the composition disclosed by Nazarko [0013-14], and the composition of an example disclosed by Nazarko (Пример 1) are compared with the presently claimed composition in the table below with amounts in wt%:
Alloying element
Nazarko
Present Invention
Пример 1 (Table 1)
Ranges [0013-14]
Carbon (Углерод)
1.0
1.0-2.5
about 0.2 to about 1.5 (claim 20)
about 0.4 to 1.15 (claim 21)
Nitrogen (Азот)
0.1
0.1-0.3
about 0.2 to about 1.5 (claim 20)
0.3 to 1.15 (claim 21)
Chromium (Хром)
14.0
14.0-17.0
about 10.0 to about 35.0 (claim 20)
Nickel (Никель)
1.0
1.0-2.0
about 0.0 to about 35.0 (claim 20)
about 2.0 to about 25.0 (claim 22)
Silicon (Кремний)
1.0
1.0-2.0
about 0.0 to about 3.0 (claim 20)
Molybdenum (Молибден)
0.5
0.5-1.0
about 0.0 to about 7.5 (claim 20)
Copper (Медь)
1.0
1.0-2.0
about 0.0 to about 8.0 (claim 20)
Boron (Бор)
1.0
1.0-2.0
about 0.1 to about 2.0 (claim 20)
at least 0.5 (claim 23)
Iron (Железо)
Rest (остальное)
rest
principal remaining (claim 20)
The amounts of carbon, chromium, nickel, silicon, molybdenum, copper, boron, and iron of Пример 1 disclosed by Nazarko (Table 1) directly meet the numerical proportions recited in claims 20 and 23. A value of 0.1 wt % nitrogen disclosed by Nazarko for Пример 1 (Table 1) meets a range of about [emphasis added] 0.2 wt % to about 1.5 wt %, as recited in present claim 20 for nitrogen. The composition of Пример 1 disclosed by Nazarko (Table 1), therefore meets the composition ranges recited in claims 20 and 23. An alloy with 14.0 wt% chromium and a balance (rest) of iron, such as Пример 1 disclosed by Nazarko (Table 1) is a stainless steel alloy.
Claim(s) 20 and 22 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Radon (US20040258554).
Regarding claims 20 and 22 Radon discloses an alloy (title, [0003]). Ranges of the composition disclosed by Radon [0018], and the composition of an example 7 disclosed by Radon (Table within paragraph [0060]) are compared with the presently claimed composition in the table below with amounts in wt%:
Alloying element
Radon
Present Invention
Example 7 [0060]
Ranges [0018]
Carbon (C)
1.26
about 0.3 to about 2.5
about 0.2 to about 1.5 (claim 20)
about 0.4 to 1.15 (claim 21)
Nitrogen (N)
0.42
about 0.01 to about 0.7
about 0.2 to about 1.5 (claim 20)
0.3 to 1.15 (claim 21)
Chromium (Cr)
35.8
about 31 to about 48
about 10.0 to about 35.0 (claim 20)
Nickel (Ni)
3.25
0 to about 4 cobalt and 0 to about 25 nickel plus cobalt
about 0.0 to about 35.0 (claim 20)
about 2.0 to about 25.0 (claim 22)
Silicon (Si)
0.9
0 to about 5
about 0.0 to about 3.0 (claim 20)
Molybdenum (Mo)
3
0 to about 6
about 0.0 to about 7.5 (claim 20)
Copper (Cu)
1.5
0 to about 8
about 0.0 to about 8.0 (claim 20)
Boron (B)
0.2
0 to about 5
about 0.1 to about 2.0 (claim 20)
at least 0.5 (claim 23)
Iron (Fe)
Balance
the balance
principal remaining (claim 20)
The amounts of carbon, nitrogen, nickel, silicon, molybdenum, copper, boron, and iron of example 7 disclosed by Radon [0060] directly meet the numerical proportions recited in claims 20 and 22. An amount of 35.8 wt% Cr disclosed in example 7 of Radon [0060] meets a range of about 10.0 wt% to about [emphasis added] 35.0 wt%, recited in present claim 20. The composition of example 7 disclosed by Radon [0060], therefore, meets the composition recited in claim 20, as worded. As example 7 is an iron-based alloy with 35.8 wt% chromium [0060], example 7 meets the preamble limitation of a stainless steel alloy.
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.
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) 20-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nazarko (RU2752057C1).
Regarding claims 20-23, Nazarko discloses a composition (abstract, claims 1-2, [0013-14]), which Nazarko discloses is an alloy [0016-17], [0019], [0024], [0027]. Ranges of the composition disclosed by Nazarko [0013-14], and the composition of an example disclosed by Nazarko (Пример 1) are compared with the presently claimed composition in the table below with amounts in wt%:
Alloying element
Nazarko
Present Invention
Пример 1 (Table 1)
Ranges [0013-14]
Carbon (Углерод)
1.0
1.0-2.5
about 0.2 to about 1.5 (claim 20)
about 0.4 to 1.15 (claim 21)
Nitrogen (Азот)
0.1
0.1-0.3
about 0.2 to about 1.5 (claim 20)
0.3 to 1.15 (claim 21)
Chromium (Хром)
14.0
14.0-17.0
about 10.0 to about 35.0 (claim 20)
Nickel (Никель)
1.0
1.0-2.0
about 0.0 to about 35.0 (claim 20)
about 2.0 to about 25.0 (claim 22)
Silicon (Кремний)
1.0
1.0-2.0
about 0.0 to about 3.0 (claim 20)
Molybdenum (Молибден)
0.5
0.5-1.0
about 0.0 to about 7.5 (claim 20)
Copper (Медь)
1.0
1.0-2.0
about 0.0 to about 8.0 (claim 20)
Boron (Бор)
1.0
1.0-2.0
about 0.1 to about 2.0 (claim 20)
at least 0.5 (claim 23)
Iron (Железо)
Rest (остальное)
rest
principal remaining (claim 20)
The composition ranges disclosed by Nazarko [0013-14], meet, overlap, or approach each of the ranges recited in claims 20-23. When claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists, and generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See MPEP 2144.05(I-II). An alloy with 14.0-17 wt% chromium and a balance (rest) of iron, such as the composition disclosed by Nazarko [0013-17], [0024], [0027], is a stainless steel alloy.
Claim(s) 20-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Radon (US20040258554).
Regarding claim 20-23, Regarding claims Radon discloses an alloy (title, [0003]). Ranges of the composition disclosed by Radon [0018], and the composition of an example 7 disclosed by (Table within paragraph [0060]) are compared with the presently claimed composition in the table below with amounts in wt%:
Alloying element
Radon
Present Invention
Example 7 [0060]
Ranges [0018]
Carbon (C)
1.26
about 0.3 to about 2.5
about 0.2 to about 1.5 (claim 20)
about 0.4 to 1.15 (claim 21)
Nitrogen (N)
0.42
about 0.01 to about 0.7
about 0.2 to about 1.5 (claim 20)
0.3 to 1.15 (claim 21)
Chromium (Cr)
35.8
about 31 to about 48
about 10.0 to about 35.0 (claim 20)
Nickel (Ni)
3.25
0 to about 4 cobalt and 0 to about 25 nickel plus cobalt (indirectly disclosing 0 to about 25 nickel)
about 0.0 to about 35.0 (claim 20)
about 2.0 to about 25.0 (claim 22)
Silicon (Si)
0.9
0 to about 5
about 0.0 to about 3.0 (claim 20)
Molybdenum (Mo)
3
0 to about 6
about 0.0 to about 7.5 (claim 20)
Copper (Cu)
1.5
0 to about 8
about 0.0 to about 8.0 (claim 20)
Boron (B)
0.2
0 to about 5
about 0.1 to about 2.0 (claim 20)
at least 0.5 (claim 23)
Iron (Fe)
Balance
the balance
principal remaining (claim 20)
The composition ranges disclosed by Radon [0018], meet, overlap, or approach each of the ranges recited in claims 20-23. When claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists, and generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See MPEP 2144.05(I-II). As the alloy disclosed by Radon is an iron-based alloy comprising about 31 wt% to about 48 wt% chromium [0018], the composition range of alloys disclosed by Radon [0018] encompass stainless steel alloys.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN P O'KEEFE whose telephone number is (571)272-7647. The examiner can normally be reached MR 8:00-6:30.
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/SEAN P. O'KEEFE/ Examiner, Art Unit 1738
/DANIELLE M. CARDA/ Primary Examiner, Art Unit 1738
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