DETAILED ACTION
Claims 1-20 are pending, and claims 1-6, 11-13, and 17-20 are currently under review.
Claims 7-10 and 14-16 are withdrawn.
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 the species in the reply filed on 8/07/2026 is acknowledged.
Claims 7-10 and 14-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8/07/2026.
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 2 and 13 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 2 recites that N is equal to or greater than about 0.12 weight percent. However, claim 2 is dependent upon claim 1 which already recites a N inclusion range of about 0.03 to about 0.16 weight percent. Therefore, it is unclear as to whether claim 2 intends to either: 1) further limit the claimed N range to about 0.12 to about 0.16, or 2) broaden the claimed N range to include N amounts above 0.12 percent including above 0.16 percent. The examiner interprets the claim to be met by the former interpretation to avoid 112(d) issues.
Claims 3 and 13 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 3 recites that N is equal to or greater than about 0.16, which is indefinite because claim 3 is dependent upon claim 1 which limits N to have a maximum range of about 0.16 weight percent. It is unclear as to how N can be both greater than 0.16 weight percent (as recited in claim 3) and also below about 0.16 weight percent (as recited in claim 1).
Claims 4-5 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. Claims 4-5 recite that Mo is equal to or greater than about 2 weight percent and 6 weight percent, respectively. However, claims 4-5 are dependent upon claim 1 which already recites a Mo inclusion range of about 2 to about 7 weight percent. Therefore, it is unclear as to whether claims 4-5 intend to either: 1) further limit the claimed Mo range to about 2 to about 7 percent and about 6 to about 6 percent, or 2) broaden the claimed Mo range to include Mo amounts above 7 percent. The examiner interprets the claim to be met by the former interpretation to avoid 112(d) issues.
Claim 20 is 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 20 recites that ranges of Ni and C which are indefinite because claim 20 is dependent upon claim 1 which recites narrower ranges of Ni and C. Therefore, it is unclear as to what amount of Ni and C are allowed for in the claim scope.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3 and 13 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 3 recites a N amount of equal to or greater than 0.16 weight percent, which broadens the scope of independent claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 20 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 20 recites ranges of Ni and C which broaden the scope of independent claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1-6, 11-13, and 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Leinonen (US 2014/0338800).
Regarding claim 1, Leinonen discloses a stainless steel having a composition as seen in table 1 below [claim1]. Leinonen further teaches limiting ferrite to be at most 1 percent [0077]. The examiner notes that the overlap between the steel composition and microstructure of Leinonen relative to that as claimed is prima facie obvious. See MPEP 2144.05(I). The examiner notes that any particular means of measuring ferrite (ie. by Feritscope as claimed) is not considered to impart any further structure other than the ferrite range as already claimed. See MPEP 2113. Accordingly, the steel of Leinonen which includes at most 1 percent ferrite (including zero ferrite) meets the claimed ferrite amount.
Table 1.
Element (wt.%)
Claim 1 (wt.%)
Leinonen (wt.%)
Cr
About 20
15 – 28
Mo
About 2 – about 7
0 – 8
Si
About 1 – about 1.3
0 – 3
Ni
About 8 – about 14
0 – 26
Mn
At least About 1.25
0 – 21
C
About 0.03
0 – 0.3
N
About 0.03 – 0.16
0 – 0.8
Fe & Impurities
Balance
Balance
Regarding claims 2-5, 11, and 18-20, Leinonen discloses the steel of claim 1 (see previous). The examiner notes that the aforementioned composition of Leinonen further overlaps with the claimed ranges. See MPEP 2144.05(I).
Regarding claims 6, 12-13, and 17, Leinonen discloses the steel of claims 1-3 and 11 (see previous). The examiner notes that the aforementioned ferrite range of Leinonen further overlaps with the claimed ranges. See MPEP 2144.05(I).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS A WANG whose telephone number is (408)918-7576. The examiner can normally be reached usually M-Th: 7-5.
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, Jonathan Johnson can be reached at 5712721177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734
