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 1-5) in the reply filed on 07/02/2026 is acknowledged. Claims 6-12 are withdrawn. Claims 1-5 are examined herein.
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 1-5 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 “REM” in line 5. Please define the meaning of “REM” to improve claim clarity. Appropriate correction is required. See MPEP 2144.05 I.
Claim 2 recites “in a case where the ferritic stainless steel is heated at 1050°C for 50 hours”, which is conditional and it’s unclear whether the limitations recited in claim 2 should be treated as positive limitations. Appropriate correction is required.
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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Hatano (US 2013/0319583).
Regarding claims 1-3, Hatano discloses (Abstract; [0019] to [0031]) a ferritic stainless steel sheet with a composition that overlaps with the instant claimed composition and therefore it would have been obvious to one of ordinary skill in the art to have selected amounts of each element from the ranges disclosed in Hatano to produce a ferritic stainless steel sheet that meets the recited composition in claim 1. See MPEP 2144.05 I.
Element
Claim 1
(mass %)
Hatano
(mass %)
Overlap
(mass %)
C
≤0.03
0.001-0.03
0.001-0.03
Si
0.01-1.5
0.01-2.0
0.01-1.5
Mn
0.01-1
0.01-1.5
0.01-1
P
≤0.05
0.005-0.05
0.005-0.05
S
≤0.005
0.0001-0.01
0.0001-0.005
Cr
15-25
16-30
16-25
Al
2-4
0.05-3
2-3
Ni
≤1
0-0.5
0.0-0.5
Nb
0.01-0.7
0.0-0.5
0.01-0.5
N
≤0.03
0.001-0.03
0.001-0.03
B
0.0003-0.01
0.0-0.005
0.0003-0.005
REM
0.01-0.2
0.0-0.1
0.01-0.1
Fe + Impurities
Balance
Balance
Balance
Hatano does not explicitly disclose that the ferritic stainless steel has a dislocation density p of not less than 0.91 x1014 [m-2] and that an average number of carbides each having (i) a Nb concentration of not less than 5 wt% and (ii) a particle diameter of not less than 0.1 µm is 2 to 15 as recited in claim 1 and the structure limitations as recited in claims 2-3. However, these characteristics depend on the steel composition and a method of making the steel.
Hatano discloses a method making the steel comprising: hot rolling the steel after heating to 1100-1200 ºC, annealing the hot rolled sheet at 900-1050 ºC, cooling the annealed hot-rolled steel sheet at a cooling rate of 10 ºC/s or less (preferably 5 ºC/s or less) over a temperature range of 550-850 ºC, cold rolling the steel sheet ([[0057] to [0062]), which meets the slab heating temperature and annealing temperature after hot rolling as disclosed in instant Specification (See Paragraphs [0062] to [0070] of instant Specification). Hatano discloses that the cooling rate over a temperature range of 550-850 ºC is 10 ºC/s or less ([0061]), thus the cooling time from 850 ºC to 550 ºC is 30 seconds or longer and meets the cooling time from annealing temperature to 400 ºC being not less than 30 seconds as disclosed in instant Specification (See Paragraph [0065] of instant Specification). Hatano further discloses that the hot rolled steel has a thickness of 3-6 mm andwhich is cold-rolled steel to a thickness of 1-2 mm ([0064]). When the cold-rolled steel sheet has a thickness of 1 mm, the cold rolling reduction ratio is calculated to be 67% to 83%, which meets the cold rolling reduction ratio disclosed in instant Specification (See Paragraph [0067] of instant Specification). In view of the fact that Hatano teaches a steel composition that meets the recited steel composition in claim 1 and a method of making the steel that meets the disclosed processing conditions in instant Specification, one of ordinary skill in the art would expect that the cold-rolled steel sheet prior to final annealing disclosed by Hatano to meet the limitation that that the ferritic stainless steel has a dislocation density p of not less than 0.91 x1014 [m-2] and that an average number of carbides each having (i) a Nb concentration of not less than 5 wt% and (ii) a particle diameter of not less than 0.1 µm is 2 to 15 as recited in claim 1 and the structure limitations as recited in claims 2-3. “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). See MPEP 2112.01 I.
Regarding claim 4, Hatano discloses that the steel contains 0.5 wt.% or less Ti ([0030]), which overlaps the recited Ti amount in claim 4. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05 I. Thus, claim 4 is obvious over Hatano.
Regarding claim 5, Hatano discloses examples that meet the recited amount of C, Si, Mn, P, S, Cr, N, Al and Nb in claim 1 (Table 1, Examples 2H and 2K). Example 2H in Table 1 of Hatano has 100x[C]/[Nb]=3.53 and Example 2K in Table 1 of Hatano has 100x[C]/[Nb]=16.15, which meets the recited limitations in claim 5.
Conclusion
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/XIAOWEI SU/Primary Examiner, Art Unit 1733
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