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 Status
Claims 1-4 are currently pending.
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.
Claim(s) 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Takabe (JP 2003/003243A)(machine translation provided) in view of Matsuo (WO 2020067247)(corresponding US 2021/0238705 cited as English translation).
With respect to Claim 1, Takabe teaches a martensitic stainless steel with a composition, in mass%, as follows (pgs. 1-5 of translation):
Claim 1
Takabe
C
≤ 0.030
0.001-0.04
Si
≤ 1.00
≤ 0.5
Mn
≤ 1.00
0.1-3.0
P
≤ 0.030
≤ 0.04
S
≤ 0.0050
≤ 0.01
Cr
11.0-14.0
10-15
Ni
4.0-7.5
0.7-8
Mo
1.5-4.5
1.5-5.0
Co
0.01-0.50
-
Ti
0.05-0.30
0.005-0.25
V
0.01-1.00
0.005-0.25
Ca
0.0005-0.0050
0.0002-0.005
Mg
0.0005-0.0050
0.0002-0.005
Al
0.001-0.100
0.01-0.10
N
≤ 0.050
≤ 0.07
O
≤ 0.050
-
Cu
0-3.5
0.01-3
Nb
0-0.5
0.005-0.25
Zr
0-0.050
0.005-0.25
W
0-2.00
-
B
0-0.0050
-
Rare earth metal
0-0.0050
Ce: 0.0002-0.005
Fe
Balance with impurities
Balance with impurities
Compositional ranges including zero are interpreted as optional elements. Thus, Takabe teaches a stainless steel with compositional ranges overlapping each of the instantly claimed ranges, with the exception of cobalt, and that does not require any elements outside the instantly claimed closed composition (using the transitional phrase “consisting of”).
With respect to cobalt content, Takabe recognizes the benefit of adding cobalt (see para. 6, pg. 2 of translation), but teaches that the element is preferably not added in substantial quantities (e.g. 0.5-7.0 mass%) due to the high cost of the element.
Matsuo teaches a martensitic stainless steel having substantially overlapping compositional ranges to those of Takabe and the instant claim, further teaching where cobalt is present in a quantity greater than zero and less than 0.30 mass% as an unavoidable impurity, but where if the cobalt content is excessively reduced, the production cost increases, resulting in a preferable lower limit of 0.010 mass%. (para. 25-45, 130-131).
Accordingly, in view of Matsuo, it would have been obvious to one of ordinary skill in the art to include at least 0.010 mass% cobalt as an inevitable impurity, as taught by Matsuo, but less than 0.5 mass% as taught by Takabe, in order to maximize cost savings, while also allowing for the known benefits of cobalt taught by Takabe.
The reference further teaches wherein the martensitic stainless steel exhibits a yield strength of 860 MPa or more, overlapping the instantly claimed range. (pgs. 1, 5 of translation).
It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Additionally, regarding the composition-based formula in the instant claim, the instantly claimed formula 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 the instant case, as the stainless steel of the prior art 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 to have selected any portion of the disclosed ranges which fall within the boundaries of the instantly claimed composition-based formulas because the reference discloses utility throughout the disclosed ranges. See also MPEP § 2144.05.
Finally, Takabe is silent as to a number ratio of Mg oxides having an equivalent circular diameter of 2.0 µm or more with respect to Ca oxides having an equivalent circular diameter of 2.0 µm or more, Ca sulfides having an equivalent circular diameter of 2.0 µm or more, and the Mg oxides having an equivalent circular diameter of 2.0 µm or more is 45.0% or more. However, as Takabe in view of Matsuo teach a stainless steel having substantially the same composition, microstructure, and mechanical properties, and made by a substantially similar method, it would necessarily be expected to result in the same properties, including the claimed number ratio.
"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, 195 USPQ 430, 433 (CCPA 1977). Thus, the burden is shifted to the applicant to prove that the product of the prior art does not necessarily or inherently possess the characteristics attributed to the claimed product. See In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (“When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not."); MPEP 2112.01. Therefore, the prima facie case can only be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product.
With respect to Claim 2, Takabe teaches a stainless steel with compositional ranges of Cu, Nb, Zr, and rare earth metal overlapping the instantly claimed ranges. (see rejection of claim 1 above). Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
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.
Claim 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-5 of copending Application No. 18/838714 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because: the instant and related claims are both drawn to martensitic stainless steels having compositional ranges with the same or substantially overlapping compositional ranges, an overlapping number ratio of Mg oxides having an equivalent circular diameter of 2.0 µm or more with respect to Ca oxides having an equivalent circular diameter of 2.0 µm or more, Ca sulfides having an equivalent circular diameter of 2.0 µm or more, and the Mg oxides having an equivalent circular diameter of 2.0 µm or more is 45.0% or more, and the same “Formula (1)” drawn to Ca+Mg content. The instant and related dependent claims are also drawn to the same or substantially overlapping compositional limitations and number density of Ca, oxides, Ca sulfides, and Mg oxides, and the same “Formula (2)” drawn to a Ca/S ratio.
The instant and related claims only differ in that the instant claim 1 recites “a yield strength is 862 MPa or more” and the related claim 1 recites “a yield strength is 758 to less than 862 MPa.” This range is deemed sufficiently close to the claimed range to establish a prima facie case of obviousness. See MPEP 2144.05. (“Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of ‘having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium’ as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. ‘The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.’”).
In other words, there is no patentable difference between two stainless steels, consisting of identical composition and structure, where one steel exhibits a yield strength of 862 MPa and the other exhibits a yield strength an infinitesimally small amount less than 862 MPa.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. It is noted, however, that App. No. 18/838714 has been issued a notice of allowance and thus, the rejection will not be provisional at the time the patent is issued.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US Patent No. 12522904, drawn to a related patent comprising a martensitic steel having overlapping compositional ranges and yield strength, but failing to a number ratio of Mg oxides having an equivalent circular diameter of 2.0 µm or more with respect to Ca oxides having an equivalent circular diameter of 2.0 µm or more, Ca sulfides having an equivalent circular diameter of 2.0 µm or more, and the Mg oxides having an equivalent circular diameter of 2.0 µm or more is 45.0% or more.
US Patent No. 12428712, drawn to a related patent comprising a martensitic steel having overlapping compositional ranges and yield strength, but failing to teach a number ratio of Mg oxides having an equivalent circular diameter of 2.0 µm or more with respect to Ca oxides having an equivalent circular diameter of 2.0 µm or more, Ca sulfides having an equivalent circular diameter of 2.0 µm or more, and the Mg oxides having an equivalent circular diameter of 2.0 µm or more is 45.0% or more.
US 20245/0215546, drawn to a related application comprising a martensitic steel having overlapping compositional ranges and yield strength, but failing to teach a number ratio of Mg oxides having an equivalent circular diameter of 2.0 µm or more with respect to Ca oxides having an equivalent circular diameter of 2.0 µm or more, Ca sulfides having an equivalent circular diameter of 2.0 µm or more, and the Mg oxides having an equivalent circular diameter of 2.0 µm or more is 45.0% or more.
US 2024/0417835, drawn to a related application comprising a martensitic steel having overlapping compositional ranges and yield strength, but failing to teach a number ratio of Mg oxides having an equivalent circular diameter of 2.0 µm or more with respect to Ca oxides having an equivalent circular diameter of 2.0 µm or more, Ca sulfides having an equivalent circular diameter of 2.0 µm or more, and the Mg oxides having an equivalent circular diameter of 2.0 µm or more is 45.0% or more.
US 2024/0401722, drawn to a related application comprising a martensitic steel having overlapping compositional ranges and yield strength, but failing to teach a number ratio of Mg oxides having an equivalent circular diameter of 2.0 µm or more with respect to Ca oxides having an equivalent circular diameter of 2.0 µm or more, Ca sulfides having an equivalent circular diameter of 2.0 µm or more, and the Mg oxides having an equivalent circular diameter of 2.0 µm or more is 45.0% or more.
US 2024/0401178, drawn to a related application comprising a martensitic steel having overlapping compositional ranges and yield strength, but failing to teach a number ratio of Mg oxides having an equivalent circular diameter of 2.0 µm or more with respect to Ca oxides having an equivalent circular diameter of 2.0 µm or more, Ca sulfides having an equivalent circular diameter of 2.0 µm or more, and the Mg oxides having an equivalent circular diameter of 2.0 µm or more is 45.0% or more.
US 2023/0366071, drawn to a related application comprising a martensitic steel having overlapping compositional ranges and yield strength, but failing to teach a number ratio of Mg oxides having an equivalent circular diameter of 2.0 µm or more with respect to Ca oxides having an equivalent circular diameter of 2.0 µm or more, Ca sulfides having an equivalent circular diameter of 2.0 µm or more, and the Mg oxides having an equivalent circular diameter of 2.0 µm or more is 45.0% or more.
US 2021/0238705, drawn to a related application having substantially overlapping composition but failing to teach the required content of Mg and teaching away from the required yield strength.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN A HEVEY whose telephone number is (571)270-0361. The examiner can normally be reached Monday-Friday 9:00-5:30.
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, Keith Walker can be reached at 571-272-3458. 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.
/JOHN A HEVEY/Primary Examiner, Art Unit 1735
Prosecution Insights