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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 3 September 2024 was considered by the examiner.
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 2-4 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.
In regards to claim 2, this claim sets forth the transitional phrase “containing” in the second line of the claim. The transitional term “containing” is synonymous with the term “comprising” and is open-ended and does not exclude additional, unrecited elements or method steps. MPEP 2111.03,I. Claim 2 depends from claim 1, which utilizes the transitional phrase “consisting of” in the first line of the claim. The transitional phrase “consisting of” excludes any element, step, or ingredient not specified in the claim. Therefore, the utilization of the transitional phrase of containing in the dependent claim allows for elements that would otherwise be excluded by the independent claim. For the purposes of examination the Office is interpreting this to mean that the austenitic stainless steel material according to claim 1 has one or more elements present that is selected from the group recited in this claim.
As to claim 4, this claim depends from claim 2 and incorporates the limitations therein. Accordingly, claim 4 is rejected for the reasons set forth above in regards to claim 2.
In regards to claims 3 and 4, these claims set forth a ratio of residual oxide scale on the surface of the austenitic stainless steel material. The metes and bounds of this particular limitation cannot be determined since it is not clear what methodology is utilized to determine the ratio. For example, it is not clear if it is an area ratio, volume ratio, weight ratio, or other type of ratio. For the purposes of examination the Office is interpreting this to refer to an area ratio.
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 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication Number 2019/0177808 (Kurihara).
In regards to independent claim 1 and dependent claims 2-4, Kurihara is directed to an austenitic stainless steel, in particular to an austenitic stainless steel excellent in acid resistance. (¶1)
The austenitic stainless steel has the following composition:
Claim 1
Kurihara
(¶19-44)
Carbon
0.030 or less
0.05 or less
Silicon
0.01 to 1.00
1.0 or less
Manganese
0.01 to 2.00
2.0 or less
Phosphorus
0.04% or less
0.04 or less
Sulphur
0.0100% or less
0.010 or less
Oxygen
-
0.02 or less
Nitrogen
0.06-0.250
Less than 0.05
Nickel
8.0 to 18.00
12 to 27%
Chromium
15 to 25%
15 to 20%
Copper
2 to 4%
3.5 to 8.0
Molybdenum
0.10 to 5%
2 to 5.0
Cobalt
0 to 1.0%
0.05 or less
Tin
-
0.05 or less
Vanadium
0 to 1.0%
0 to 0.5%
Niobium
0.20 to 1.0%
0 to 1.0%
Titanium
0 to 0.50%
0 to 0.5%
Tungsten
0 to 5%
0 to 5.0%
Zirconium
0 to 0.10%
0 to 1.0%
Aluminum
0 to 0.100%
0 to 0.5%
Calcium
0 to 0.0200%
0 to 0.01%
Boron
0.0010 to 0.0100%
0 to 0.01%
Rare Earth Metals
0 to 0.100%
0 to 0.01%
Iron
Balance
Balance
The ranges of the prior art overlap the claimed ranges. Regarding the nitrogen value, the ranges are sufficiently close that one skilled in the art would have expected them to have the same properties. MPEP 2144.05,I. Therefore, a prima facie case of obviousness is established regarding the overall compositions.
Regarding the claimed niobium properties, residual oxide scale ratio, and roughness Ra, where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the Office can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. Whether the rejection is based on “inherency” under 35 USC 102, on “prima facie obviousness” under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the Office’s inability to manufacture products or to obtain and compare prior art products. In re Best, Bolton and Shaw, 195 USPQ 430 (CCPA 1977).
The instant application sets forth a solution treatment in which the austenite grains in the steel material are adjusted. (¶86 of Specification) The solution treatment is performed by a method utilizing the conditions of Formula (2) as set forth in the instant specification. (¶87-88 of Specification) Due to the conditions of the solution treatment, the concentration of niobium at the outer layer of the austenitic stainless steel material is suppressed. (¶89 of Specification) This results in the claimed ratio to satisfy the conditions of Formula (1). (¶89 of Specification) The steel is then subjected to a pickling treatment. (¶93 of Specification) The pickling treatment utilizes nitric acid and/or hydrofluoric acid with the concentrations not being particularly limited. (¶94 of Specification) The preferred range of nitric acid and/or hydrofluoric acid is 5.0 to 15.0%. (¶94)
Kurihara sets forth a heat treatment process in which the steel material is subjected to a heat treatment in which the material is held at a temperature within a range of 1060 to 1140 C for 60 to 600 seconds. (¶126) On the surface of the starting material an oxide film is formed. (¶126) The material is then subjected to an acid treatment utilizing hydrofluoric and nitric acid for 1 to 5 hours. (¶128) Kurihara sets forth utilizing 5 to 8 vol. % of nitric acid and 5 to 8% of hydrofluoric acid. (¶128) These conditions call within the formulas and teachings of the prior art for achieving the claimed properties.
Consequently, absent a showing to the contrary, it appears that the product in the prior art necessarily or inherently possesses the characteristics of the claimed product, including the claimed niobium concentrations as set forth in Formula (1), the ratio of residual oxide scale, and the roughness Ra as set forth in the instant claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Daniel Schleis whose telephone number is (571)270-5636. The examiner can normally be reached 10 AM to 4 PM Monday through Friday.
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, Humera Sheikh can be reached at (571) 272-0604. 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.
Daniel J. Schleis
Primary Examiner
Art Unit 1784
/Daniel J. Schleis/ Primary Examiner, Art Unit 1784