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 .
Claim Rejections - 35 USC § 112(b)
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 1-8 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 Formula (1) which includes (0.4×Al + 0.5×Zr + 0.1×Ti) / O ≥12.0, however, claim 1 also allows for 0 mass% oxygen to be in the ferritic stainless-steel sheet. Therefore, it is unclear how the lower limit of oxygen can be zero and still satisfy the requirements of Formula (1). Clarification is required.
Regarding dependent claims 2-8, these claims do not remedy the deficiencies of parent claim 1 noted above, and are rejected for the same rationale.
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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Yuji et al. (JP2020-164956A, hereinafter “Yuji”).
The Examiner has provided a machine translation of JP 2020-164956A.
Regarding claims 1, 2, 3, and 5, Yuji teaches a ferritic stainless steel sheet comprising the following composition (Yuji, [0001], [0013], and [0019-0042]):
Element
Present Invention, mass%
Yuji, mass%
Overlap
C
0-0.0200
0.001-0.010
Preferred: 0.002-0.008
Within
Si
0-0.70
0.01-1.0
Preferred: 0.05-0.30
Preferred within
Mn
0-1.00
0.01-1.0
Preferred:0.05-0.30
Within
P
0-0.030
0.010-0.040
Preferred:0.015-0.035
0.01-0.030
S
0-0.005
0-0.01
Preferred: 0.0004-0.0030
Preferred within
Cr
11.0-19.5
11.0-25.0
Preferred: 16.0-21.0
11.0-19.5
N
0-0.020
0.002-0.020
Preferred: 0.005-0.015
Within
Al
0.005-0.100
0.003-1.0
Preferred:0.01-0.07
Preferred within
O
0-0.0050
0
0
Ti
0.03-0.20
0.05-0.30
Preferred: 0.10-0.20
Preferred within
Nb
0.010-0.300
0.03-0.30
Preferred:0.05-0.15
Within
Sn
0.001-0.300
0-0.50
Preferred: 0.005-0.10
Preferred within
Zr
0.001-0.080
0-0.50
Preferred: 0.1-0.5
Encompass
Claim 2: one or more of:
Mo
0.05-0.50
0-2.0
Preferred: 0.1-2.0
Encompass
Ni
0.05-0.50
0-1.0
Preferred: 0.1-1.0
Encompass
Cu
0.01-1.00
0-1.00
Preferred: 0.1-1.0
Encompass
Claims 3 and 5: one or more of:
B
0.0003-0.0050
0-0.0025
Preferred: 0.0001-0.0012
0.0003-0.0012
Ga
0.0001-0.2
0
0
W
0.001-0.300
0-1.0
Preferred: 0.1-1.0
Encompass
Balance
Fe and impurities
Fe and impurities
Fe and impurities
The ranges of Yuji fall within, encompass, or overlap with the compositional ranges of claims 1, 2, 3, and 5 of the present invention. Yuji further teaches the thickness of the ferritic stainless steel sheet is not particularly limited but it is desirable to be 0.5mm or more (Yuji, 0051]), which overlaps with the range of the present invention. Yuji teaches the cylindrical deep drawing test was performed and when the ear height was 5 mm or less, then the samples were marked as passing (Yuji, [0066]), the 5mm or less overlaps with the range of claim 1.
As set forth in MPEP 2144.05, in the case where the claimed range “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 (Fe. Cir. 1990).
Regarding the composition based equations in the instant claims, the instantly claimed equations fully depends on the composition of the alloy. It is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art, In re Cooper and Foley 1943 C.D.357, 553 O.G.177; 57 USPQ 117, Taklatwalla v.Marburg. 620 O.G.685, 1949 C.D.77, and In re Pilling, 403 O.G.513, 44 F(2) 878, 1931 C.D.75. In the instant case, as the ferritic stainless steel of Yuji is capable of falling within the boundaries of the instantly claimed composition formulas, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected any portion of the disclosed ranges of each element of Formulas (1) and (2) including those which fall within the boundaries of the instantly claimed composition based formulas because Yuji discloses the same utility throughout the disclosed ranges.
Regarding claims 4, 6, 7, and 8, Yuji teaches the average plastic strain ratio, i.e., Lankford value, is preferably 1.7 or higher (Yuji, [0045]). Yuji further teaches a smaller in-plane anisotropy Δr of -0.4 to 0.1, i.e., a range of 0.5 (Yuji, [0045]). The average plastic strain ratio and Δr of Yuji overlap with the ranges of claims 4, 6, 7, and 8. As set forth in MPEP 2144.05, in the case where the claimed range “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 (Fe. Cir. 1990).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIELLE CARDA whose telephone number is (571)270-1240. The examiner can normally be reached Monday-Friday 8:30-4:00 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DANIELLE M. CARDA/Primary Examiner, Art Unit 1738
Prosecution Insights