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 1-2) in the reply filed on 07/20/2026 is acknowledged.
Claim 3 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 07/20/2026.
The applicant is reminded that per MPEP 821.04, in order to be eligible for rejoinder, a claim to a nonelected invention must depend from or otherwise require all the limitations of an allowable claim. A withdrawn claim that does not require all the limitations of an allowable claim will not be rejoined. In order to retain the right to rejoinder, applicant is advised that the claims to the nonelected invention(s) should be amended during prosecution to require the limitations of the elected invention. Failure to do so may result in a loss of the right to rejoinder.
Status of Claims
Pending: claims 1-3
Under examination: claims 1-2
Withdrawn: claim 3
Rejected: claims 1-2
Objected to: claim 1
Claim Objections
Claim 1 is objected to because of the following informalities:
In claim 1, the parentheses around “(where average R-bar value refers to R0 + 2R45 + R90)/4)” (underlined) should be removed.
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 1-2 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 “respective directions”, but does not make any other mention to any directions, so it is unclear what respect the directions have to one another, or if they are with respect to something else, which is also unspecified.
Claim 1 recites “after clad plate processing”; it is unclear if the respective limitation is attempting to define a property of the ferritic stainless steel (i.e., the ferritic stainless steel being claimed alone), or if the limitation is a product-by-process limitation where the claimed product is a cladded product (i.e., the ferritic stainless steel being claimed in combination with a cladding material).
Claim 2 recites “a hardness difference from Al after the clad bonding is 50 to 150 Hv”. The limitation lacks any antecedent basis of Al, and further, it is unclear what is meant by “a hardness difference from Al”. It is unclear if Al is in the composition and if so, if the Al changes the hardness, or if the hardness difference is a difference in the hardness of the ferritic stainless steel in comparison to Al or an Al alloy, or if the hardness difference from Al means that when clad to the ferritic stainless steel, the Al increases or decreases the hardness of the ferritic stainless steel, thereby improving or deteriorating the hardness of the ferritic stainless steel.
Claim 2 recites “after the clad bonding”. There is insufficient antecedent basis for this limitation in the claim.
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 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Shiotsuki et al. (JP 2019137893 A; Espacenet English machine translation cited and attached).
Regarding claim 1, with regard to the claimed “A ferritic stainless steel with superior clad plate workability”, Shiotsuki teaches a stainless clad steel 1 containing a base material 2 and a laminated material 3 (Abstract), wherein the laminated material 3 is composed of a multiphase stainless steel containing a ferrite phase and a martensite phase (Abstract).
Shiotsuki teaches that the multiphase stainless steel has the following composition, which overlaps with the claimed ranges:
Element
Instant claim 1(wt. %)
Shiotsuki
Location in reference
Fe
Balance
Balance
[0020]
C
0.0005-0.02
0.01-0.2
[0020]
N
0.005-0.02
0-0.1
[0020]
Si
0.01-1.0
0-2.0
[0020]
Mn
0.01-1.0
0-2.0
[0020]
P
0.001-0.05
0-0.04
[0020]
Cr
10.0-25.0
10.0-20.0
[0020]
Nb
0.01-0.5
0-0.5
[0020]
Ti
0.01-0.5
0-0.5
[0020]
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 I.). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05 I.).
With regard to the claimed “wherein an average R-bar value of R values for respective directions is at least 1.5 (where average R-bar value refers to (R0+2R45+R90)/4) and height of bends after clad plate processing is 25 μm or less”, although Shiotsuki does not explicitly teach this limitation, Shiotsuki teaches substantially similar processing conditions to those in the paragraphs [00036]-[00038] of instant specification, such as heating at 1230°C and hot rolling [0030], annealed at 800°C [0030], and cold rolled [0030], with a reduction from 45 mm [0028] to 2 mm [0030] which is a reduction rate of about 95.6%. As such, it is prima facie expected for Shiotsuki to meet the claimed property, absent an indication of the specifics of “after clad plate processing”.
Furthermore, in the interest of clarity of the record and compact prosecution, the Examiner notes that under BRI, the limitation “wherein an average R-bar value of R values for respective directions is at least 1.5 (where average R-bar value refers to (R0+2R45+R90)/4) and height of bends after clad plate processing is 25 μm or less” appears to be attempting to define a property when subjected to further processing, rather than being part of the product as-claimed. However, absent a clear indication of what “after clad plate processing” specifically entails, Shiotsuki is understood to meet the limitation based on the substantially identical composition and processing.
Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." The burden of proof is similar to that required with respect to product-by-process claims. (MPEP 2112 V).
When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01 I.). 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 (MPEP 2112.01 I.).
Regarding claim 2, the limitation appears to be limiting an optional limitation of claim 1, and is therefore not positively required (see claim interpretation in rejection of claim 1 above). Furthermore, because steel and aluminum inherently have different general hardness levels, it is prima facie expected for the steel of Shiosuki to have the same or substantially similar hardness levels and hardness difference from Al as the claimed invention.
When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01 I.). 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 (MPEP 2112.01 I.).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adil Siddiqui whose telephone number is (571)272-8047. The examiner can normally be reached M-F 10AM-6PM CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADIL A. SIDDIQUI/Primary Examiner, Art Unit 1735
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