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 .
Detail Action
The Applicant has elected Invention I (claims 1-3) drawn to a product of a precipitation hardening martensite stainless steel, C22C38/00 for the further prosecution without travers; Claims 9 and 12 have been cancelled; Claims 4-8 and 10-11 have been withdrawn as non-elected claims; Claims 1-3 remain for Examination, wherein claim 1 is an independent claim.
Claim Objections
Claim 1 is objected to because of the following informalities: the “…” in formula (1) and (2) should be deleted.
Claim 3 is objected to because of the following informalities: the “…” in formula (3) should be deleted.
Proper amendment is necessary.
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 1-3 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. In the instant case, all disclosed elements is in mass% in claim 1. However, in formula (2) dcal has a unit (vol.%), this need clarification and how this unit has been converted? Since claims 2-3 depend on claim 1, these claims are also rejected.
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 2 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. In the instant case, claim 2 depends on claim 1. Claim 1 indicates alloy composition “consisting of” C, Si, Mn, P, S, Ni, Cr, Mo, Cu, Al, Sn, N, Ti, Nb, Ca, Mg, O, and Fe, which exclude adding other element(s) in the alloy since “consisting of” is a “end close” language. Claim 2 indicates adding “B: 0.0010 to 0.0020mass%”, which contrary to the “consisting of” language in independent claim 1. 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. Since claim 2 need further clarification/amendment, this claim is not included in the following examination.
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 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.
Claims 1 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Buck (US-PG-pub 2006/0065327 A1, thereafter PG’327).
Regarding claims 1 and 3, PG’3727 teaches an iron based, fine-grained, martensitic stainless steel made using thermal mechanical treatment and strengthened with a relatively uniform dispersion of coarsening-resistant, MX-type precipitates (par.[0013] of PG’327), which reads on the precipitation hardening martensitic stainless steel as recited in the instant claims. The Alloy comparison ranges between claimed claims and disclosures in PG’327 (claims and table on par.[0069] of PG’327) is listed in the following table. All of the essential alloy composition ranges disclosed by PG’327 overlap the claimed alloy composition ranges, which creates a prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the alloy composition ranges including C, Si, Mn, P, S, Ni, Cr, Mo, Cu, Al, Sn, N, Ti, Nb, Ca, Mg, O, and Fe from the disclosure of PG’327 since PG’327 teaches the same precipitation hardening martensitic stainless steel as claimed the throughout whole disclosing range.
Element
From instant Claim 1 (mass%)
table on par.[0069] of PG’372 (mass %)
Overlapping range
(mass %)
C
0.030-0.065
>0.05 to <0.15
0.05-0.065
Si
1.0-2.0
<1.5
1.0-1.5
Mn
0.51-1.50
<5
0.51-1.50
P
< 0.04
<0.1
< 0.04
S
< 0.020
<0.05
< 0.020
Ni
4.0-10.0
1-7
4.0-7
Cr
11.0-18.0
7.5-15
11.0-15
Mo
0.1-1.5
<4
0.1-1.5
Cu
0.3-6.0
<5
0.3-<5
Al
0.005-0.2
0.2
0.005-0.2
Sn
0.003-0.030
<0.1
0.003-0.030
N
0.001-0.015
<0.1
0.001-0.015
Ti
0.15-0.45
>0 to <0.75
0.15-0.45
Nb
0.15-0.55
0-0.17 (cl.1)
0.15-0.17
Ca
<0.0025
<0.1
<0.0025
Mg
0.0001-0.015
<0.1
0.0001-0.015
O
<0.01
<0.1
<0.01
Fe
Balance + impurities
Balance + impurities
Balance + impurities
Regarding the formula (1)-(2) (cl.1) and formula (3) (cl.3), the claimed formula are considered as a general formula fully depended on the alloy composition ranges. It is well settled that there is no invention in the discovery of a general formula if it covers a composition and dimension described in the prior art. In re Cooper and Foley 1943 C.D.357, 553 O.G.177; 57 USPQ 117, Taklatwalla v. Marburg. 620 O.G.685, 1949 C.D.77, and In re Pilling, 403 O.G.513, 44 F(2) 878, 1931 C.D.75. In the instant case, in the absence of evidence to the contrary, the selection of the proportions of Sn, Cu (formula (1)); Si, Cr, Mo, Al, Ti, Nb, C, N, Ni, Mn, and Cu (formula (2)); and Ni, Ti (formula (3)) from PG’327 in order to meet the claimed equation would appear to require no more than routine investigation by those ordinary skilled in the art. In re Austin, et al., 149 USPQ 685, 688.
Double Patenting
The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a non-statutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1 and 3 are rejected on the ground of non-statutory obviousness type double patenting as being unpatentable over claims 1-12 of co-pending application No. 18/683,529 (US-PG-pub 2024/0376581 A1).
Regarding claims 1 and 3, although the conflicting claims are not identical, they are not patentable distinct from each other with claims 1-12 of co-pending application No. 18/683,529 (US-PG-pub 2024/0376581 A1). All of the alloy composition ranges disclosed in claims 1-12 of co-pending application No. 18/683,529 (US-PG-pub 2024/0376581 A1) overlap the claimed ranges, which is a prima facie case of obviousness. MPEP 2144.05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to include ferrite as claimed from the disclosures claims 1-12 of co-pending application No. 18/683,529 (US-PG-pub 2024/0376581 A1) because claims 1-12 of co-pending application No. 18/683,529 (US-PG-pub 2024/0376581 A1) teaches the same precipitating hardening martensitic stainless steel. Thus, no patentable distinction was found in the instant claims compared with the manufacturing process a grain-oriented electrical steel sheet as disclosed by claims 1-12 of co-pending application No. 18/683,529 (US-PG-pub 2024/0376581 A1).
This is a provisional obvious-type double patenting rejection since the conflict claims in the co-pending application have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIE YANG whose telephone number is (571) 270-1884. The examiner can normally be reached on IFP.
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/JIE YANG/Primary Examiner, Art Unit 1734
