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 .
Specification
The disclosure is objected to because of the following informalities:
[0039], it appears that the sentence, “However, Mo is an expensiveness element” should read, “However, Mo is an expensive element”. 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, requires the specification to be written in “full, clear, concise, and exact terms.” The specification should be revised carefully in order to comply with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112.
Appropriate correction is required.
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 1-16 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 following: “A ferritic stainless steel sheet comprising a chemical composition that consists of...”. The applicant uses both open-ended, comprising language and closed-ended, consisting language. It is unclear if the claim is meant to be interpreted as an open-ended steel/chemical composition or a closed-ended steel/chemical composition. Therefore, claim 1 is rejected. For the purpose of examination, claim 1 will be interpreted as using comprising language.
Claims 2-16 are rejected on virtue of their dependency on claim 1.
Claims 3 and 4 recite the following: “wherein a maximum length of TiN is 15 µm or less”. An issue arises if claim 1 is meant to be interpreted with closed-ended, consisting language. If claim 1 is closed-ended, it is unclear if TiN is included in the taught steel, as claim 1 excludes it from its steel/chemical composition. Therefore, claims 3 and 4 are rejected. Additionally, there is insufficient antecedent basis for this limitation in the claim. While the correct terminology is used to establish the limitation antecedence, due to the above-discussed issues, it has not been established if the claimed stainless steel sheet already includes TiN.
Claims 9, 10, 12, and 13 are also rejected on virtue of their dependencies on claims 3 and 4.
Claims 5 and 8-10 recite the following: “wherein an amount of precipitating Nb is 0.1% or less in mass%”. An issue arises if claim 1 is meant to be interpreted with closed-ended, consisting language. If claim 1 is closed-ended, it is unclear if precipitated Nb is included in the taught steel, as claim 1 excludes it from its steel/chemical composition. Therefore, claims 5 and 8-10 are rejected. Additionally, there is insufficient antecedent basis for this limitation in the claim. While the correct terminology is used to establish the limitation antecedence, due to the above-discussed issues, it has not been established if the claimed stainless steel sheet already includes precipitating Nb.
Claims 7 and 14-16 are also rejected on virtue of their dependencies on claims 4 and 8-10.
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 3-16 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.
Claims 3 and 4 recite the following: “wherein a maximum length of TiN is 15 µm or less”. If claim 1 is closed-ended, then TiN is excluded from the taught steel. Therefore, claims 3 and 4 are rejected, as they fail to place further limits on the metes and bounds set forth by claim 1.
Claims 9, 10, 12, and 13 are also rejected on virtue of their dependencies on claims 3 and 4.
Claims 5 and 8-10 recite the following: “wherein an amount of precipitating Nb is 0.1% or less in mass%”. If claim 1 is closed-ended, then precipitated Nb is excluded in the taught steel. Therefore, claims 4 and 8-10 are rejected, as they fail to place further limits on the metes and bounds set forth by the claims in which they are ultimately dependents of.
Claims 7 and 14-16 are also rejected on virtue of their dependencies on claims 4 and 8-10.
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
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 1-2, 5, 8, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Ishii (JP 2017206725 A).
Regarding claims 1, 2, and 17, Ishii teaches a ferritic stainless steel with a composition as shown in Table 1 (Clms. 1-3, Isshi Table 1 Ex. I).
Table 1
Composition (wt.%)
Element
Ishii Clms. 1-3
Ishii Ex. I
Applicant Clms. 1-2
C
0.001-0.050
0.015
0-0.02
Si
0.01-1.0
0.28
0-1.0
Mn
0.01-2.0
0.23
0-1.0
P
0-0.05
0.02
0.01-0.10
S
0-0.01
0.001
0.0001-0.005
N
0.001-0.050
0.015
0-0.02
Cr
11.0-32.0
17.6
17.0-20.0
Cu
0.4-4.0
1.42
1.0-1.5
Ti
0.10-0.60
0.25
0.05-0.3
Nb
0.1-0.60
0.2
0.005-0.2
Mo
0-3.0
---
0.02-0.5
B
0-0.005
---
0.0001-0.0030
Al
0.001-1.0
0.027
0.005-0.5
Ni
0-4.0
---
0.01-0.2
V
0-0.5
0.1
0.01-0.2
W
0-2.0
---
0.05-2.0
Fe
Bal.
Bal.
Bal.
Overall, Ishii’s composition ranges overlap or are within the claimed composition ranges. 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, it is noted that Ishii exemplifies a ferritic stainless steel composition, also shown in Table 1 (Isshi Table 1 Ex. I). Barring Mo, B, Ni, and W, this example composition falls within the claimed composition ranges. While this example does not include Mo, B, Ni, and W, it is noted that that Ishii also teaches and exemplifies the inclusion of Mo, B, Ni, and W in other ferritic stainless steel examples (Clms. 1-3, Table 1). Ishii also teaches the following motivations for including these elements within their steel (pg. 4-5 of machine translation):
Adding Mo in an amount between 0.01 and 3.0 wt.% promotes repassivation of a passive film and improves the corrosion resistance of stainless steel. This taught Mo range overlaps with the claimed Mo range of 0.02-0.5 wt.%.
Adding B in an amount between 0.0003 and 0.005 wt.% strengthens crystal grain boundaries and suppresses secondary work embrittlement. This taught B range overlaps with the claimed B range of 0.0001-0.0030 wt.%.
Adding Ni in an amount between 0.01 and 4.0 wt.% improves the corrosion resistance of the stainless steel. This taught Ni range overlaps with the claimed Ni range of 0.01-0.2 wt.%.
Adding W in an amount between 0.01 and 2.0 wt.% improves corrosion resistance. This taught W range overlaps with the claimed W range of 0.05-2.0 wt.%.
Additionally, Ishii teaches that their stainless steel comprises ε-Cu phase particles with a preferable particle size of 25 nm or less, which reads on the claimed Cu particle diameter of 20 nm or less (pg. 5 of machine translation). These ε-Cu phase particles comprise 0.1 vol. % or more of the stainless steel. Taking a 20-nm particle diameter and 0.1 % volume fraction (as taught by Ishii), Ishii’s area fraction range would be about 1.56%, which reads on the claimed area fraction of 2.0% or less (Abstract, pg. 5 of machine translation). 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).
Also, based on Ishii’s taught composition ranges, their ferritic stainless steel would have a Formula (i) value of 3.3-31.1, which reads on the claimed Formula (i) range of ≥5.0. 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 claims 5 and 8, While Ishii is silent on an amount of precipitating Nb, it is noted that Ishii’s taught production method has relevant overlap with the applicant’s disclosed production method. Particularly, the applicant teaches that, to achieve their desired precipitated Nb amounts, cooling rates after a post-cold rolling heat treatment are set at 1.5OC/s or more (as per the specification, [0086]). In contrast, Ishii teaches that their ferritic stainless steel is subjected to a cooling rate of 10O C/s or more after a post-cold rolling heat treatment (pg. 5-6 of machine translation). As the cooling rate of the post-cold rolling treatment of Ishii overlaps with the cooling rate of the claimed invention, Ishii’s ferritic stainless steel will inherently have a precipitated Nb amount that overlaps with the claimed limitation of 0.1 wt.% or less. 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).
Claims 3, 4, 9, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Ishii (JP 2017206725 A) as applied to claims 1 and 2 above, and further in view of Kaneko (WO 2019/189858 A1).
Regarding claims 3 and 4, Ishii is silent on a maximum length of TiN. Additionally, it is noted that, to achieve the claimed TiN length limitations, the applicant adds Al2O3 and MgO in a (Al2O3/ MgO) ratio of 15.0 or less during the melting step of their taught production method, as per the specification, [0078].
Kaneko teaches a ferritic stainless steel and its associated production method (Abstract). Particularly, Kaneko includes Al2O3 and MgO in a (Al2O3/ MgO) ratio of 4.0 or less during their melting step (Abstract, pg. 7 & 9 of machine translation). Kaneko teaches that the inclusion of Al2O3 and MgO at their taught ratio during the melting step promotes TiN generation, which ultimately promotes the solidification of the steel (pg. 2 & 7 of machine translation). Kaneko’s taught (Al2O3/ MgO) ratio of 4.0 or less is within the applicant’s (Al2O3/ MgO) ratio of 15.0 or less.
Ishii and Kaneko are analogous arts in the same field of endeavor.
Therefore, it would be obvious for a person having ordinary skill in the art before the effective filing date of the application to incorporate Al2O3 and MgO in a (Al2O3/ MgO) ratio of 4.0 or less (as taught by Kaneko) into the Ishii’s taught melting step (pg. 5 of machine translation) because doing so would enable the advantageous result of TiN generation, which ultimately promotes steel solidification.
The resultant ferritic stainless steel of Ishii in view of Kaneko was produced by incorporating Al2O3 and MgO in a (Al2O3/ MgO) ratio of 4.0 or less during the melting step. For comparison, to achieve the claimed TiN length limitations, the applicant adds Al2O3 and MgO in a (Al2O3/ MgO) ratio of 15.0 or less during the melting step of their production method. The resultant steel’s (Al2O3/ MgO) ratio is within the applicant’s (Al2O3/ MgO) ratio. Therefore, given the overlapping production methods and ratios, the resultant steel comprises TiN with maximum lengths that fulfill the claimed TiN length limitations. 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 9 and 10, While Ishii is silent on an amount of precipitating Nb, it is noted that Ishii’s taught production method has relevant overlap with the applicant’s disclosed production method. Particularly, the applicant teaches that, to achieve their desired precipitated Nb amounts, cooling rates after a post-cold rolling heat treatment are set at 1.5OC/s or more (as per the specification, [0086]). In contrast, Ishii teaches that their ferritic stainless steel is subjected to a cooling rate of 10O C/s or more after a post-cold rolling heat treatment (pg. 5-6 of machine translation). As the cooling rate of the post-cold rolling treatment of Ishii overlaps with the cooling rate of the claimed invention, Ishii’s ferritic stainless steel will inherently have a precipitated Nb amount that fulfills the claimed limitation of 0.1 wt.% or less. 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).
Claims 6, 7, 11, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Ishii (JP 2017206725 A), as applied to claims 1, 2, 5, and 8 above, and in further view of Hamada (EP 2412837 A1).
Regarding claims 6, 7, 11, and 14, Ishii is silent on an exhaust member produced with their steel.
Hamada teaches a ferritic stainless steel for use in making an exhaust system member [0001].
Ishii and Hamada are analogous arts in the same field of endeavor.
Given the state of the art, it would be obvious for a person having ordinary skill in the art before the effective filing date of the application to produce an exhaust member with Ishii’s taught steel because the use of ferritic stainless steel in the production of exhaust members was already known. Combining prior art elements according to known methods to yield predictable results and using known techniques to improve similar devices in the same way are considered obvious to one of ordinary skill in the art (KSR, MPEP 2141 (III)).
Claims 12-13 and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Ishii (JP 2017206725 A) in view of Kaneko (WO 2019/189858 A1), as applied to claims 3, 4, 9, and 10 above, and in further view of Hamada (EP 2412837 A1).
Regarding claims 12-13 and 15-16, Ishii and Kaneko are silent on an exhaust member produced with their steel.
Hamada teaches a ferritic stainless steel for use in making an exhaust system member [0001].
Ishii and Hamada are analogous arts in the same field of endeavor.
Given the state of the art, it would be obvious for a person having ordinary skill in the art before the effective filing date of the application to produce an exhaust member with the steel as taught by Ishii in view of Kaneko because the use of ferritic stainless steel in the production of exhaust members was already known. Combining prior art elements according to known methods to yield predictable results and using known techniques to improve similar devices in the same way are considered obvious to one of ordinary skill in the art (KSR, MPEP 2141 (III)).
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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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.
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/J.F./Examiner, Art Unit 1735
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735
