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 .
Response to Amendment
The amendment filed on 08/25/2026 has been entered. Claim(s) 1, 3, 5-13 is/are pending in the application.
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 and 5-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Masayuki et al. (JPH11302739A)
Regarding Claims 1, Masayuki teaches a ferritic stainless-steel comprising:
Element
Claimed Range (wt%)
Prior art Range (wt%)
C
0-0.02
0.0005-0.01 (Claim 4)
N
0-0.02
0.0005-0.02(Claim 4)
Si
0.5-2.0
0.07-0.76 (Table 1)
Mn
0.18-0.20
0.12-0.39 (Claim 4)
Cr
16.0-20.1
10-20(Claim 4)
Mo
1.0-2.0
0.05-2.0(Claim 4)
Ti
0.1-0.4
0.12-0.25 (Table 1)
Balance
Balance
Balance
Formula (1)
130 or less
47.2-197.95 (calculated from ranges above)
Formula (2)
50 or less
24.54-73.58 (calculated from ranges above)
The prior art elements overlap with or lies inside of their respective claimed elements, in the case where a claimed range overlaps or lies inside of a range taught by the prior art, a prima facie case of obviousness exists. (See MPEP 2144.05(I))
Regarding Claims 5-8 and 11-12, and the claim 1 limitation of a maximum magnetic permeability is 1000 or more, as the steel of the prior art is considered substantially identical to that of the claimed invention, one of ordinary skill in the art would expect similar properties as those claimed in the prior art products under the expectations that similar products have similar properties (See MPEP 2112.01(I))
Regarding Claims 9-10, the steel is made by hot rolling after reheating to 1000 C or higher [0021], than cold rolling with a reduction rate of 80% [0042]and annealing [0012] at 800-1070 C [0042] overlapping with the claimed hot rolling range of 1050-1150 C and the claimed annealing temperature of 1050-1150 C, in the case where a claimed range overlaps or lies inside of a range taught by the prior art, a prima facie case of obviousness exists. (See MPEP 2144.05(I))
Regarding claim 13, Ti in the range of 0.12-0.25% overlaps with the claimed range of 0.25-0.4%. in the case where a claimed range overlaps or lies inside of a range taught by the prior art, a prima facie case of obviousness exists. (See MPEP 2144.05(I))
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Masayuki et al. (JPH11302739A) in view of Yukihiro et al. (JP2019073783A).
Regarding Claim 3, while Masayuki teaches Nb may be added in a range of 0.05-2% (See Claim 4), overlapping with the claimed range of 0-0.1 (See MPEP 2144.05(I)) but is silent regarding Sn in the claimed range of 0-0.1%. However, Yukihiro teaches a Nb-containing ferritic stainless-steel similar to that of Yukiro (see Abstract) where Nb is added as 0.2-0.8% [0016] to improve corrosion resistance and Sn in a range of 0.05-0.5% to improve corrosion resistance [0025]; therefore, one of ordinary skill in the art would have been motivated to use Sn and Nb in the claimed ranges for the purpose of improving corrosion resistance of the ferritic steel.
Response to Arguments
Applicant's arguments filed 05/26/2026 have been fully considered but they are not persuasive.
Regarding Claim 1, applicant argues that the prior art requires S in a range of 0.001-0.04% and is an important element for improving processability and ridging characteristics; and that there is no evidence that a product would exhibit the claimed permeability as the concentration of S is different from the prior art and the analysis of the rejection fails to address how S in this range would affect the magnetic properties of the resulting steel.
This is not persuasive. Even with S present in the prior art in the disclosed range, the prior art composition still reads on or overlaps with the claimed element ranges; the claim uses open “comprising” language, which allows for additional elements including “S”. Secondly, the only teaching regarding this range of S is that it improves machining properties. Once the examiner presents evidence or reasoning the show inherency, the burden of proof shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product. However, arguments present by the applicant cannot take the place of evidence in the record. In this case, there is no evidence in the prior art disclosure or the inventive disclosure that S in the range present in the prior art would reduce with any significance the magnetic permeability of the prior art product.
The current rejection relies on the prior art composition having significantly similar compositions for the recited elements; applicant teaches elements critical for the claimed magnetic properties are elements such as C [00033], Si [00036], Cr [00041], Mo [00043], Ti [00045] (Tables 1-2) and the prior art teaches a composition substantially identical to these elements; therefore, an ordinary artisan would expect the prior art product and claimed product to be similar despite a teaching of the prior art of S.
Further applicant’s arguments regarding Mo as being optional is not persuasive as the prior art is relevant for all that it teaches including optional embodiments.
Regarding applicant’s arguments that range of Mn in now narrower, this is not persuasive as the prior art still teaches this range of Mn in its broad recitation.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/RICARDO D MORALES/Primary Examiner, Art Unit 1738
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