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
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 the limitation “and the other part composed of Fe and an inevitable impurity.”
There is insufficient antecedent basis for “the other part” in the claim. Furthermore, it is unclear whether “an inevitable impurity” means a single impurity element or multiple impurity elements. For the purposes of examination, claim 1 is given the broadest reasonable interpretation such that the limitation “and the other part composed of Fe and an inevitable impurity” in interpreted as –and a balance of Fe and inevitable impurities–. Claims 2-3 and 5 are dependent on claim 1 and are thus also rejected for the same reasons.
Claim 4 recites the limitation “and the other part composed of Fe and an inevitable impurity.”
There is insufficient antecedent basis for “the other part” in the claim. Furthermore, it is unclear whether “an inevitable impurity” means a single impurity element or multiple impurity elements. For the purposes of examination, claim 4 is given the broadest reasonable interpretation such that the limitation “and the other part composed of Fe and an inevitable impurity” in interpreted as –and a balance of Fe and inevitable impurities–.
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 1-3 and 5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 5 of copending Application No. 18/726,388 (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 teach an austenitic stainless steel with a chemical composition and microstructure that is the same or overlapping with the instantly claimed properties and ranges, with the exception of the C content. The claims of the reference application teach a C content of more than 0.03% and not more than 0.15%, which is just outside of the instantly claimed range of not less than 0.005% and not more than 0.03% C. However, in the case where the claimed ranges and prior art ranges do not overlap but are close enough that one of ordinary skill in the art would have expected them to have the same properties, a prima facie case of obviousness exists. See MPEP §2144.05. Note that the claims of the reference application teach an identical microstructure.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claim 4 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 4, the prior art fails to disclose or fairly suggest the method for producing an austenitic stainless steel as recited. In particular, the closest prior art, Hatano et al. (EP 2508639), as cited in the IDS dated 1/15/2026, hereinafter “Hatano,” teaches a method for producing an austenitic stainless steel, the austenitic stainless steel comprising, in mass%, C: 0.05% or less, Si: 2% or less, Mn: 4% or less, P: 0.05% or less, S: 0.005% or less, Ni: 5-8%, Cr: 14-19%, Cu: 4% or less, N: 0.1% or less, and a balance of Fe and unavoidable impurities (Abstract, [0051]), which satisfies or overlaps with the instantly claimed chemical composition ranges and Md30 range. Hatano further teaches the method comprises a final annealing step, wherein the final annealing may be carried out a temperature of 800⁰C or 10 minutes to 24 hours ([0033]), which meets the instantly claimed ranges. However, Hatano fails to teach or adequately suggest wherein in the finishing annealing step, an average rate of cooling from 700⁰C to 500⁰C after the finishing annealing is not less than 1⁰C/s, as required by claim 4. Thus, claim 4 is distinct over the teachings of the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY M LIANG whose telephone number is (571)272-0483. The examiner can normally be reached M-F: 9:00am-5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at (571)272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY M LIANG/Primary Examiner, Art Unit 1734
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