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 & Status of Claims
Applicant’s election without traverse of Group I, claims 1-9 and 15-21, drawn to an austenitic stainless steel sheet in the reply filed on 19 August 2025 is acknowledged.
Claims 10-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 19 August 2025.
Specification
The disclosure is objected to because of the following informalities:
Tables 1 to 3 contain illegible characters.
Appropriate correction is required.
Claim Objections
Claim 1 is objected to because of the following informalities:
The term “% by mass” should not be in parenthesis as it is a required unit.
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 6 and 18 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.
Regarding claims 6 and 18, instant claims recite “wherein the number of inclusions is 1000 inclusions/mm2 or less”. The claims which instant claims depend upon recite “the austenitic stainless steel sheet comprises inclusions having an average diameter of 1.5 μm or less”. It is unclear if the instant claims are referring to the specific inclusion of the claims they depend upon or to all of the inclusions that are in the steel sheet.
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.
List 1
Element
Instant Claims
(mass%)
Prior Art
US’388
(mass%)
C
0.04 – 0.11
0.01 – 0.15
Si
2.0 – 3.5
at most 3.0
Mn
1.50 or less
at most 3.0
Ni
6.0 – 10.0
4.0 – 20.0
Cr
12.0 – 15.0
10.0 – 30.0
Mo
1.2 – 3.2
at most 3.0
Cu
1.00 or less
at most 3.0
N
0.03 – 0.15
at most 0.40
O
0.0050 or less
--
Co, Al, V, Ti, B, Nb, Mg, Ca, Sn, Pb, W, Zr, REM
Claim 2: one or more of Co: 0.05 to 0.50, Al: 0.15 or less, V: 0.0001 to 0.5000, Ti: 0.01 to 0.50, B: 0.0001 to 0.0150, Nb: 0.001 to 0.100, Mg: 0.0001 to 0.0030, Ca: 0.0003 to 0.0100, Sn: 0.001 to 0.500, Pb: 0.0001 to 0.0100, W: 0.0001 to 0.5000, Zr: 0.0001 to 0.1000, and REM: 0.0001 to 0.3000
Ti: at most 0.5
Fe + impurities
Balance
Balance
Claims 1-9 and 15-21 are rejected under 35 U.S.C. 103 as being unpatentable over US 2012/0237388 A1 of Sawada (US’388).
Regarding claims 1 and 2, US 2012/0237388 A1 of Sawada (US’388) teaches “[0001] This invention relates to an austenitic stainless steel sheet and a method for its manufacture. More specifically, it relates to an austenitic stainless steel sheet for use as a spring material having both a high strength and excellent formability and to a method for its manufacture.” having specific compositions wherein the claimed ranges of the constituent elements of the instant alloy of the instant claims overlap or lie inside the ranges of various elements of the alloy of the prior art as shown in the List 1 above (Please note that claimed ranges of constituent elements are recited in instant claims 1, 2). As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed composition over the prior art disclosure since the prior art teaches the similar property/utility throughout the disclosed ranges. 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I. (US’388 abstract, [0001]-[0002], [0013]- [0021], [0038]- [0055], claims 1-3).
It is noted that the prior art does not explicitly teach that its steel has “a value of Md30 of −30.0 to 0° C, wherein the value of Md30 is represented by the following equation (1): Md30=551-462(C+N)-9.2Si-8.1Mn-29 (Ni+Cu)-13.7Cr-18.5Mo ... (1)”. However, as the prior art discloses a composition wherein the claimed ranges of the various elements (C, N, Si, Mn, Ni, Cu, Cr and Mo) of the instant alloy overlap or lie inside the ranges of various elements of the alloy of the prior art (see compositional analysis above), the ranges of the formulaic expression of the instant claims would also overlap or lie inside the values of the prior art resulting from the instant formulaic expressions. 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Regarding the recited limitation of “the austenitic stainless steel sheet has a metallographic structure having a content of a strain-induced martensite phase of 30% by volume or more”, the prior art teaches [0059] “By making the average austenite content, which is the average of the austenite content γs in the surface region of the steel sheet and the austenite content γc in the center region of the sheet thickness, at most 55% as shown by Equation (1) and making the remainder primarily high strength strain-induced martensite, a high strength steel is obtained.” [0062] “The remainder of the metallurgical structure other than austenite is primarily a strain-induced martensite phase. This strain-induced martensite is formed by temper rolling of a steel sheet which has been annealed after cold rolling. Therefore, an austenitic stainless steel sheet according to the present invention is a temper rolled material.” [0063] ““Primarily a strain-induced martensite phase” means that strain-induced martensite is at least 50 volume % of the remainder of the structure other than austenite. In an austenitic stainless steel sheet which is manufactured in accordance with the below-described method according to the present invention, the metallurgical structure consists substantially of austenite and strain-induced martensite.” thereby meeting the instant limitation.
Although the prior art teaches embodiments of “a thin sheet with a thickness of 0.4 mm”, it does not explicitly teach the recited limitation that it steel sheet has “a thickness of 0.15 mm or less”. The prior art teaches how to make thickness modifications by teaching “manufactured by carrying out hot rolling of a steel material having the above-described chemical is composition, then subjecting the resulting hot rolled steel sheet to cold rolling and annealing to obtain an annealed cold rolled steel sheet, and subjecting the annealed cold rolled steel sheet to temper rolling with the number of passes being at least the rolling reduction (%)/10” “Hot rolling, cold rolling, and annealing may each be carried out in a conventional manner. Cold rolling is preferably performed one to three times so that the overall rolling reduction is around 30-90%, and after a predetermined overall reduction has been obtained, annealing is then carried out. It is also possible to repeat multiple passes of cold rolling and annealing. There is no particular limit on the number of passes of cold rolling which are carried out prior to temper rolling.” “In the present invention, temper rolling is carried out in a strong manner in order to make the most use of strengthening achieved by strain-induced martensitic transformation. The overall reduction of temper rolling is preferably at least 40%, more preferably at least 50%, and most preferably at least 60%. There is no particular upper limit on the overall reduction of temper rolling, but normally it is less than 100% and preferably at most 90%.” In addition, MPEP provides that with regard to the shape/size/proportion, merely changing the shape/size/proportion of a prior art product would not be sufficient to distinguish from that prior art product as it has been held that changing the shape/size/proportion would require only ordinary skill in the art and hence are considered routine expedients. See MPEP § 2144.04 (IV). Therefore, making the specific thickness as claimed in the instant claims would require only ordinary skill in the art since thickness modification using rolling is well known in the art of steel making and is taught by the prior art.
Regarding claims 3 and 15, the prior art teaches “[0020] In the above-described method, the average grain diameter of austenite grains in the annealed cold rolled steel sheet before temper rolling is preferably at most 5 μm.” thereby meeting the instant claimed range. 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Regarding claims 7 and 19, the prior art teaches [0054]-[0085] “a CIRCLE (acceptable) for specimens having a tensile strength exceeding 1500 N/mm2” meaning that it considers that an acceptable value of tensile strength for its steel exceeds 1500 N/mm2” thereby meeting the instant claimed range. 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Regarding claims 4-6, 8-9, 16-18 and 20-21, the prior art is silent regarding its steel having steel sheet having a) dislocation density of retained austenite phases, b) inclusions having an average diameter of 1.5 μm or less, c) number of inclusions, d) elongation at break and d) folder number as recited in the instant claims.
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. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II.
Therefore, it is expected that the alloy of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (see compositional analysis above), b) the claimed and prior art products are identical or substantially identical in structure (see microstructure analysis above), and c) the claimed and prior art products are produced by identical or substantially identical processes. {Instant specification: “The method for producing the austenitic stainless steel sheet according to the embodiment of the present invention is not particularly limited as long as it is a method that can provide an austenitic stainless steel sheet having the above features. For example, a typical method for producing an austenitic stainless steel sheet according to the embodiment of the present invention includes an intermediate rolling annealing step, a temper rolling step, and an aging treatment step.” Prior Art: “In accordance with the present invention, the above-described austenitic stainless steel sheet according to the present invention can be manufactured by carrying out hot rolling of a steel material having the above-described chemical is composition, then subjecting the resulting hot rolled steel sheet to cold rolling and annealing to obtain an annealed cold rolled steel sheet, and subjecting the annealed cold rolled steel sheet to temper rolling with the number of passes being at least the rolling reduction (%)/10” “Hot rolling, cold rolling, and annealing may each be carried out in a conventional manner. Cold rolling is preferably performed one to three times so that the overall rolling reduction is around 30-90%, and after a predetermined overall reduction has been obtained, annealing is then carried out. It is also possible to repeat multiple passes of cold rolling and annealing. There is no particular limit on the number of passes of cold rolling which are carried out prior to temper rolling.” “In the present invention, temper rolling is carried out in a strong manner in order to make the most use of strengthening achieved by strain-induced martensitic transformation. The overall reduction of temper rolling is preferably at least 40%, more preferably at least 50%, and most preferably at least 60%. There is no particular upper limit on the overall reduction of temper rolling, but normally it is less than 100% and preferably at most 90%.”} Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
Double Patenting
The nonstatutory 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 nonstatutory 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-9 and 15-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 17/924,573 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application teaches an austenitic stainless steel material with substantially identical composition, microstructure and properties.
Regarding those properties that are recited in the instant claims but claims of the reference application is silent regarding, it is expected that the alloy of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (see compositional analysis above), b) the claimed and prior art products are identical or substantially identical in structure (see microstructure analysis above), and c) the claimed and prior art products are produced by identical or substantially identical processes. {Instant specification: “The method for producing the austenitic stainless steel sheet according to the embodiment of the present invention is not particularly limited as long as it is a method that can provide an austenitic stainless steel sheet having the above features. For example, a typical method for producing an austenitic stainless steel sheet according to the embodiment of the present invention includes an intermediate rolling annealing step, a temper rolling step, and an aging treatment step.” Reference Application: See method claims 6-8, 19} Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-9 and 15-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 10-13 of copending Application No. 18/250,278 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application teaches an austenitic stainless steel material with substantially identical composition, microstructure and properties.
Regarding those properties that are recited in the instant claims but claims of the reference application is silent regarding, it is expected that the alloy of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (see compositional analysis above), b) the claimed and prior art products are identical or substantially identical in structure (see microstructure analysis above), and c) the claimed and prior art products are produced by identical or substantially identical processes. {Instant specification: “The method for producing the austenitic stainless steel sheet according to the embodiment of the present invention is not particularly limited as long as it is a method that can provide an austenitic stainless steel sheet having the above features. For example, a typical method for producing an austenitic stainless steel sheet according to the embodiment of the present invention includes an intermediate rolling annealing step, a temper rolling step, and an aging treatment step.” Reference Application: See method claims 6-8} Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOPHY S. KOSHY whose telephone number is (571)272-0030. The examiner can normally be reached M-F 8:30 AM- 5:00 PM.
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/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733