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 .
Status of Claims
Claims 1-8 are pending.
Claim Objections
Claim 1 is objected to because of the following informalities:
It appears that “braking” should be “breaking”.
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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Omura (US 2014/0017111 A1), as evidenced by ASTM E112 (“Standard Test Methods for Determining Average Grain Size”)
Regarding claims 1, 5, 7, and 8, Omura teaches an austenitic stainless steel with a composition as shown in Table 1 below. The applicant’s claimed composition is also shown for comparison.
Table 1
Composition (wt%)
Element
Omura (Clm. 2)
Applicant Clms. 1 & 5
C
0-0.10
0.005-0.060
Si
0-1.0
0.20-1.20
Mn
3-7
4.0-8.0
Ni
10-17
12-15
Cr
15-30
19-24
Mo
0.3-3.0
1.0-4.0
Nb
0.01-0.50
0.05-0.40
V
0.010-1.0
0.05-0.40
N
0.10-0.50
0.20-0.50
Cu
0.3-5.0
0.01-3.0
Co
0.30-10.0
0.01-0.50
Ca
0.0001-0.0050
0.0001-0.0050
B
0.0001-0.020
0.0001-0.0050
Ta
0.001-0.6
0.001-0.10
Fe
Bal.
Bal.
Omura’s taught composition ranges either fall within or overlap with the claimed composition. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(1).
Additionally, Omura teaches their austenitic stainless steel has a tensile strength of 800 MPa or higher (Abstract) and a rupture elongation of 80% or more [0060], which reads on the claimed tensile strength of not lower than 800 MPa and claimed breaking elongation of not lower than 35%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(1).
Omura is silent an amount of Nb determined through analysis of an electrolytic extraction residue (i.e. [Nb]). However, this is directed to the process of making and even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (MPEP 2113). Further, it is noted that the austenitic steel production method taught by Omura has significant overlap with the claimed production method. Particularly, Omura’s production method comprises the following steps (Clm. 4):
Hot forging and hot rolling the steel, which is shared with the applicant [0057-58].
Subjecting the taught austenitic stainless steel to a solution heat treatment at a temperature of 1000-1200OC, which reads on the claimed primary heat treatment at 1180-1280OC.
A cold rolling step after the solution heat treatment, wherein the steel is subjected to a reduction in area of 20% or higher. This cold rolling step reads on the claimed cold working step and reduction-in-area limitation of 5-20%.
A second heat treatment step after cold rolling, wherein the sheet is treated at a temperature of between 900OC and the temperature used in the above solution heat treatment. This second heat treatment step reads on the claimed secondary heat treatment at 1000-1180OC.
Overall, given the significant overlap between Omura’s taught composition & production method and the applicant’s, Omura’s taught austenitic steel will inherently have a [Nb] value that satisfies applicant’s expression (1), as claimed by the applicant. As a result, Omura’s stainless steel will also inherently satisfy applicant’s expression (2). This is reinforced by the fact the Omura’s taught stainless steel:
Has an overlapping Nb composition with the applicant’s claimed stainless steel (i.e, “Nb” in expressions (1), see Table 1), and
Has a crystal grain diameter range that overlaps the applicant’s taught grain size range (i.e “D” in expression (2)). Particularly, Omura teaches a grain size number of 8.0 or more. According to ASTM standard E112, this corresponds of to a mean grain size diameter of 22.5 µm or less (ASTM Table 4). This range reads on the applicant’s taught grain size of 20-60 µm, as per the specification.
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 (See MPEP 2112.01).
Regarding claims 2, 3, and 4, Omura shapes their steel into a solid round bar [0060]. While Omura does not teach a round bar with a diameter not less than 25 mm, making a round bar with such dimensions based on design choice would be obvious to one of ordinary skill. Furthermore, it would have been obvious for a person skilled in the art to machine the steel bar into a desired diameter minus any evidence showing an unexpected result.
Regarding claim 6, Omura teaches that their austenitic stainless steel is used for storing high-pressure hydrogen gas [0001, 0017]. Additionally, claim 6 is a recitation that is directed towards the intended use of the claimed steel, and not towards the steel itself. It is held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from the prior art apparatus satisfying the claimed structural limitations (MPEP 2114). While intended use recitations and other types of functional language are not entirely disregarded, the intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Hirata (US 2018/0258505 A1) in view of Omura (US 2014/0017111 A1).
Regarding claims 1, 5, 7, and 8, Hirata teaches an austenitic stainless steel with a composition as shown in Table 2 below. The applicant’s claimed composition is also shown for comparison.
Table 2
Composition (wt%)
Element
Hirata (Clm.2)
Applicant Clms. 1 & 5
C
0.005-0.07
0.005-0.060
Si
0.1-1.2
0.20-1.20
Mn
3.2-6.5
4.0-8.0
Ni
9-14
12-15
Cr
19-24
19-24
Mo
1-4
1.0-4.0
Nb
0.05-0.4
0.05-0.40
V
0.001-0.5
0.05-0.40
N
0.15-0.50
0.20-0.50
Cu
---
0.01-3.0
Co
---
0.01-0.50
Cu+Co total
0.005-3
---
Ca
0.0001-0.05
0.0001-0.0050
B
0.0001-0.01
0.0001-0.0050
Fe
Bal.
Bal.
Hirata’s taught composition ranges either fall within or overlap with the claimed composition. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(1).
Additionally, Hirata teaches that their austenitic stainless steel has a tensile strength of 690 MPa or higher (Clm. 3) and a breaking elongation of 35% or more (Clm. 3), which read on the claimed tensile strength of not lower than 800 MPa and claimed breaking elongation of not lower than 35%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(1).
Regarding the use of expression (1) and (2) to determine the amount of Nb, this is a product-by-process limitation and even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (MPEP 2113).
Hirata also teaches that their austenitic stainless steel has an “amount of Nb analyzed as a residue after electrolytic extraction” (i.e. [Nb]) of 0.01 to 0.3 mass %. Using Hirata’s taught Nb composition values (see Table 2), values within their [Nb] range would satisfy the applicant’s claimed expression (1). An analysis is shown in Table 3. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(1).
Table 3
Value
Lower range (wt%)
Upper range (wt%)
Nb
0.05
0.4
0.7*Nb
0.035
0.28
[Nb]
0.1
0.3
Max. Value
0.3
0.3
However, Hirata is silent on the grain size of their austenitic stainless steel, which is used in expression (2). Additionally, it is noted that while Hirata teaches a solution heat treatment step in their steel production process (i.e. treating at a temperature of 950-1300OC) (Clm. 5) that reads on the claimed primary heat treatment, they do not teach a subsequent cold working step or a secondary heat treatment step.
Omura teaches an austenitic stainless steel for use in storing high-pressure hydrogen gas with a composition that overlaps with both Hirata’s and the applicant’s composition (Omura Clm. 2; Hirata Clm. 2). Omura also teaches a production method for their steel, which comprises the following steps (Clm. 4):
Hot forging and hot rolling the steel, which is shared with both Hirata and the applicant (Omura [0057-58], Hirata [0074]).
Subjecting the taught austenitic stainless steel to a solution heat treatment at a temperature of 1000-1200OC, which reads on the claimed primary heat treatment at 1180-1280OC. The solution heat treatment temperature also reads on Hirata’s solution heat treatment range of 950-1300OC (Hirata Clm. 5).
A cold rolling step after the solution heat treatment, wherein the steel is subjected to a reduction in area of 20% or higher. This cold rolling step reads on the claimed cold working step and reduction-in-area limitation of 5-20%.
A second heat treatment step after cold rolling, wherein the sheet is treated at a temperature of between 900OC and the temperature used in the solution heat treatment (i.e. a temperature range of 900-1200OC). This second heat treatment step reads on the claimed secondary heat treatment at 1000-1180OC.
Particularly, conducts their cold rolling step to promote precipitation of carbo-nitrides [0054]. Omura teaches that the presence of these carbo-nitrides ultimately enhances the tensile strength of their steel [0047-48]. Omura’s second heat treatment step is conducted to remove distortion caused by the cold-rolling step [0054]. Overall, Omura’s method produces an austenitic stainless steel with a tensile strength of 800 MPa or higher (Abstract) and a rupture elongation of 80% or more [0060], which is within both Hirata’s and the applicant’s tensile strength and break elongation ranges.
Therefore, it would be obvious for a person having ordinary skill in the art before the effective filing date of the application to incorporate Omura’s cold roll and second heat treatment steps into Hirata’s steel production method because doing so ultimately increases the resultant steel’s tensile strength while removing any distortions caused by the added cold-rolling process.
Additionally, the combination of Hirata and Omura results in an austenitic stainless steel made with a composition and production method that has significant overlap with the claimed austenitic stainless steel. Given the overlap, the combination of Omura and Hirata will inherently fulfill the limitations associated with the applicant’s claimed expressions (1) and (2). 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 (See MPEP 2112.01).
Regarding claims 2, 3, and 4, both Hirata and Omura shape their steel into a solid round bar (Omura [0060], Hirata [0090]). While neither Hirata nor Omura teach a round bar with a diameter not less than 25 mm, it would have been obvious for a person skilled in the art to machine the steel bar into a desired diameter minus any evidence showing an unexpected result.
Regarding claim 6, both Hirata and Omura teach that their austenitic stainless steel is used for storing high-pressure hydrogen gas (Omura [0001, 0017], Hirata Clm. 4). Additionally, claim 6 is a recitation that is directed towards the intended use of the claimed steel, and not towards the steel itself. It is held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from the prior art apparatus satisfying the claimed structural limitations (MPEP 2114). While intended use recitations and other types of functional language are not entirely disregarded, the intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function (MPEP 2114).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAVIER FLORES whose telephone number is 571-272-9130. The examiner can normally be reached Mon-Fri 7:30AM-5:00PM.
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/J.F./ Examiner, Art Unit 1735
/KEITH WALKER/ Supervisory Patent Examiner, Art Unit 1735
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