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 07/20/2026 is acknowledged.
Claims 5-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group II, there being no allowable generic or linking claim.
Status of Claims
Claims 1-8 are pending. Claims 1-4 are presented for this examination. Claims 5-8 are withdrawn.
Priority
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 03/20/2024 and is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claim(s) 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Mizutani (IS20170029916A1) in view of Hatano (EP3342895A1).
As for claims 1-4, Mizutani discloses a ferritic stainless steel foil having Table 1 (Steel No 9) comprising every elemental composition within presently claimed ranges as illustrated in Table 1 below, and the balance being Fe and inevitable impurities. A thickness of an Al-based oxide layer is formed on the surface of the stainless steel foil. [0074] All inventive examples in Table 3 have the thickness of Al-based oxide layer <0.01 micron which is equivalent to <10 nm, hence overlapping claimed 8-20 nm.
Table 1
Element
Applicant
(weight %)
Mizutani et al.
(weight %)
Steel No 9 of Table 1
Within
(weight %)
C
<=0.03
0.011
0.011
Si
0.01-1.5
0.13
0.13
Mn
0.01-1
0.08
0.08
P
<=0.05
0.038
0.038
S
<=0.005
0.0022
0.0022
Cr
15-25
18
18
Al
2-4
3.5
3.5
Ni
<=1
0.16
0.16
Nb
0.01-0.7
0.06
0.06
N
<=0.03
0.007
0.007
B
0.0003-0.01
REM
0.01-0.2
0.069
0.069
Cu
(Claim 3)
<=1
0.05
0.05
Al/(10xNb)
(Claim 4)
<8
5.833
5.833
Mizutani does not disclose presence of B.
Hatano discloses an Al-containing surface film on a ferritic stainless steel. Hatano explicitly discloses B is 0.0001-0.005% as element for improving the hot workability and secondary workability. [0028]
Hence, it would have been obvious to one skill in the art, at the time the invention is made to add B in the amount suggested by Hatano, in the ferritic stainless steel of Mizutani as Hatano discloses B improves the hot workability and secondary workability of ferritic stainless steel.
With respect to claim 2, it is an inherent characteristic as a result of similar ferritic stainless steel produced by similar process of making
Since the ferritic stainless steel sheet product of Mizutani in view of Hatano has compositions that meet the instant application composition and is made from a similar process steps of cold rolling, final annealing ([0024]-[0025]) at 800-1100 degree C in an inert atmosphere under a dew point of -20 Degree C or less ([0033]) which overlaps instant application required final annealing parameters, it is therefore reasonable to believe that the claimed characteristic limitations would have naturally flowed following the suggestion of Mizutani in view of Hatano. See MPEP 2112.01 I.
Claim(s) 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Hatano (EP3342895A1).
As for claims 1-4, Hatano discloses an Al-containing ferritic stainless steel comprising broad ranges of elemental compositions overlapping instant claimed ranges as illustrated in Table 2 below. The steel has a film of thickness of 100 nm or less containing Al over 60% (claim 1) and is expected to be Al-based oxide film. Table 2 (Page 1) all Inv. Ex. have thickness of Al-based film between 7-25 nm. Table 1 Steel N has Al/(10xNb)=0.6 which is expected to be less than 8 as required by instant claim 4.
Table 2
Element
Applicant
(weight %)
Hatano et al.
(weight %)
Overlapping
(weight %)
C
<=0.03
<=0.03
<=0.03
Si
0.01-1.5
<=2
0.01-1.5
Mn
0.01-1
<=2
0.01-1
P
<=0.05
<=0.05
<=0.05
S
<=0.005
<=0.01
<=0.005
Cr
15-25
13-21
15-21
Al
2-4
1.5-2.5
2-2.5
Ni
<=1
<=1
<=1
Nb
0.01-0.7
<=0.5
0.01-0.5
N
<=0.03
<=0.03
<=0.03
B
0.0003-0.01
<=0.005
0.0003-0.005
REM
0.01-0.2
<=0.1
0.01-0.1
Cu
(Claim 3)
<=1
<=1
<=1
Al/(10xNb)
(Claim 4)
<8
0.6
0.6
With respect to claim 2, it is an inherent characteristic as a result of similar ferritic stainless steel produced by similar process of making.
Since the ferritic stainless steel sheet product of Hatano has compositions that meet the instant application composition and is made from a similar process steps of cold rolling, final annealing at 700-1100 degree C in an inert atmosphere under a dew point of -40 Degree C or less which overlaps instant application required final annealing parameters, it is therefore reasonable to believe that the claimed characteristic limitations would have naturally flowed following the suggestion of Hatano. See MPEP 2112.01 I.
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, the prior art products necessarily possess the characteristics of the claimed product. See MPEP 2112.01.
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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)
When a claimed process along with its resultant product reasonably appears to be substantially the same as, or an obvious variant of, a product disclosed by the prior art, the burden is on the applicant to prove that the prior art process and its resultant product does not necessarily or inherently possess characteristics attributed to the claimed product, and that it is of no moment whether the rejection is based on § 102 or § 103 since the burden on the applicant is the same. Cf. In re Spada, 911 F.2d 705, 708 (Fed Cir. 1990); In re Best,562 F.2d 1252, 1255 (CCPA 1977).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNY R WU whose telephone number is (571)270-5515. The examiner can normally be reached on 8:30 AM-5:00 PM.
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/JENNY R WU/Primary Examiner, Art Unit 1733
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