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 lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claims 1-5, 7-8, 10 and 12 are objected to because of the following informalities:
In reference to claim 1, (1) in line 1, delete “(wt%)” and (2) in lines 9-11 amend “(in Equation (1), [C], [N], [Si], [Mo], and [Cu] represent weight percentages (wt%) of respective elements, d represents an average grain size (pm), and SPM_El represents a difference in elongation (%) before and after skin pass milling)” to “where [C], [N], [Si], [Mo], and [Cu] represent weight percentages of respective elements C, N, Si, Mo, and Cu, d represents an average grain size in µm, and SPM_El represents a difference in elongation, %, before and after skin pass milling”, in order to ensure consistency, clarity and proper antecedent basis in the claim language. Appropriate correction is required.
In reference to claim 2, in line 4-6 amend “(in Equation (2), [Ni], [Cr], [Cu], and [Mn] represent weight percentages (wt%) of respective elements, YS represents yield strength (MPa), and El represents elongation (%))” to “where [Ni], [Cr], [Cu], and [Mn] represent weight percentages of respective elements Ni, Cr, Cu, and Mn, YS represents a yield strength, MPa, and El represents elongation, %”, in order to ensure consistency, clarity and proper antecedent basis in the claim language. Appropriate correction is required.
In reference to claim 3, in lines 5-6 amend “(in Equation (3), [C], [N], [Si], [Mn], [Cr], [Ni], [Cu], and [Mo] represent weight percentages (wt%) of respective elements)” to “where [C], [N], [Si], [Mn], [Cr], [Ni], [Cu], and [Mo] represent weight percentages of respective elements C, N, Si, Mn, Cr, Ni, Cu, and Mo”, in order to ensure consistency, clarity and proper antecedent basis in the claim language. Appropriate correction is required.
In reference to claim 4, (1) in lines 3-4 amend “Π = 100*FCRR (final cold rolling ratio, %)+ 100*ASP (austenitic stability parameter) + CAT (cold annealing temperature, °C)” to “Π = 100*FCRR+100*ASP+CAT” and (2) in lines 5-7, amend “(in Equation (4), FCRR is a reduction ratio by cold rolling before final cold annealing, ASP is a value obtained by Equation (3), and CAT is a value defined by a temperature of a finally cold-annealed steel material)” to “where FCRR is a reduction ratio by cold rolling, %, before final cold annealing, ASP is the austenitic stability parameter, and CAT is a value defined by a temperature, ºC, of a finally cold-annealed steel material”, in order to ensure consistency, clarity and proper antecedent basis in the claim language. Appropriate correction is required.
In reference to claim 5, (1) in line 1 amend “an average” to “the average”; (2) in line 2 amend “size d” to “size, d,”; (3) in line 2 amend “the thickness” to “a thickness”; (4) in line 2, amend “(TD)” to “, TD,” and (4) in line 3 after “3” and before “but not more” insert “µm”, in order to ensure consistency, clarity and proper antecedent basis in the claim language. Appropriate correction is required.
In reference to claim 7, (1) in line 2 amend “(%)” to “, %,” and (2) in line 3 amend “(TD)” to “, TD,”, in order to prevent the use of parentheticals in the claim language. Appropriate correction is required.
In reference to claim 8, (1) in line 1 amend “(%)” to “, %,” and (2) in line 3 amend “(TD)” to “, TD,”, in order to prevent the use of parentheticals in the claim language. Appropriate correction is required.
In reference to claim 10, it is suggest to amend each of “Ra” in lines 2-3 to “, Ra,”. Appropriate correction is required.
In reference to claim 12, (1) in line 2 after “the” and before “stainless steel” insert “austenitic”; (2) in line 4 amend “h” to “, h,”; (3) in line 5 amend “H” to “, H,” and (4) in line 5 amend “the bottom after a drawing process” to “a bottom after the drawing process” , in order to ensure consistency, clarity and proper antecedent basis in the claim language. 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 4, 6 and 7-8 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 reference to claim 4, the limitation “ASP is a value obtained by Equation (3)” is recited in line 6. The claim does not depend on claim 3 which recited an Equation (3) nor does the claim recite what Equation (3) is if the claim is not meant to depend on claim 3, therefore it is unclear how the ASP is calculated. For the purpose of compact prosecution the Equation (3) will be interpreted as the Equation (3) recited in claim 3. However, it is suggested to have claim 4 depend from claim 3, in order to ensure clarity.
In reference to claim 6, the limitation “the t” is recited in line 1. There is insufficient antecedent basis for the limitation in the claim. It is suggested to have claim 6 depend from claim 5 which defines “t”.
In reference to claims 7 and 8, the limitation “the central portion in the thickness direction of the transverse direction (TD)” is recited in lines 2-3. There is insufficient antecedent basis for the limitation in the claim. It is suggested to have claims 7 and 8 depend from claim 5.
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 1-9 and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Hatano et al. (EP 2 508 639) (Hatano) in view of Suehiro et al. (US 5,045,124) (Suehiro).
In reference to claim 1, Hatano teaches an austenitic stainless steel sheet ([0001]) (corresponding to an austenitic stainless steel). The steel sheet comprising, in terms of percent by mass, C: 0.05% or less Cr: 14 to 19%; Si: 2% or less; Mn: 4% or less; Ni: 5 to 8%; Cu: 4% or less; N: 0.1% or less; optionally one or more selected from a group consisting of Mo: 1% or less, V: 1% or less, B: 0.010% or less, Nb: 0.5% or less, Ti: 0.5% or less, rare earth elements: 0.5% or less, Al: 0.5% or less, Mg: 0.005% or less, and Ca: 0.005% or less; and with the remainder being Fe and unavoidable impurities (claim 1) (corresponding to in percent by weight (wt%), 0.04 to 0.07 of C, 0.3 to 0.6 of Si, 0.5 to 1.5% of Mn, 0.1 to 0.4% of Cu, 0.05 to 0.2% of Mo, 8.0 to 9.0% of Ni, 18.0 to 19.0% of Cr, .02 to 0.05% of N, and the remainder of Fe and inevitable impurities).
Hatano teaches ranges for each element C, Si, Mn, Cu, Mo, Ni, Cr and N which overlap the presently claimed ranges.
Hatano differs from the claims by failing to teach an anticipatory example or a range that is sufficiently specific to anticipate the claimed range. However, it has been held that overlapping ranges are sufficient to establish prima facie obviousness.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have selected from the overlapping portion of the range taught by the reference, because overlapping ranges have been held to establish prima facie obviousness. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Hatano further teaches an average grain size of austenitic stainless steel is 10 µm or less, preferably in the average grain size is 1 µm to 5 µm ([0090]) (corresponding to d represents an average grain size (µm)).
Hatano does not explicitly teach a Σ value represented by Equation (1) is at least 180 but not more than 240, wherein Equation (1) is Σ = 105 + 146d-1/2+7.36SP--M_El+ 102[C] + 154[N] + 51.8[Si] + 1.4[Mo]-17.7[Cu], as presently claimed.
Suehiro teaches a process for producing a cold-rolled sheet of an austenitic stainless steel (Abstract). Suehiro teaches skin-pass rolling is carried out after cold-rolling followed by a final annealing (col. 2, lines 62-66). The skin pass rolling is at an elongation within the range from 0.5 to 2.5% (col. 3, lines 41-68). When the skin pass rolling is within the range of 0.5 to 2.5% roping is eliminated without causing problems with mechanical properties (col. 4, lines 4-6).
In light of the motivation of Suehiro, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the austenitic steel sheet of Hatano be skin pass rolled with an elongation from 0.5 to 2.5% after cold rolling and final annealing, in order to ensure the surface of the sheet is free of fine wrinkles or crepe-like undulations (i.e., roping), and thereby arriving at the presently claimed invention.
Within the overlapping portions of each of C, N, Si, Mo and Cu taught by Hatano in view of Suehiro, a value Σ can be calculated falling within the presently claimed range. Specific examples are shown in the table below. Therefore, it is clear Hatano in view of Suehiro meets the presently claimed value Σ.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
C (wt%)
Si (wt%)
Mn (wt%)
Cu (wt%)
Mo (wt%)
Ni (wt%)
Cr (wt%)
N (wt%)
d (µm)
SPM_El (%)
Σ
overlapping portion taught by Hatano in view of Suehiro
0.04-0.05
0.3-0.6
0.5-1.5
0.1-0.4
0.05-0.2
8
18-19
0.02-0.05
1-10
0.5-2.5
0.04
0.3
0.5
0.1
0.05
8
18
0.02
1
0.5
203
0.05
0.6
1.5
0.4
0.2
8
19
0.05
3
1.9
180
0.04
0.6
0.5
0.1
0.5
8
18
0.02
3
2
181
0.05
0.6
1.5
0.4
0.2
8
19
0.05
3
2.5
185
0.04
0.3
1.5
0.1
0.05
8
19
0.02
1
0.5
203
0.04
0.6
0.5
0.1
0.05
8
19
0.02
3
2
181
0.05
0.3
0.5
0.1
0.05
8
19
0.02
3
2.5
170
0.05
0.6
0.5
0.4
0.2
8
18
0.05
3
2.5
185
In reference to claim 2, Hatano in view of Suehiro teaches the limitations of claim 1, as discussed above. Hatano further teaches the austenitic stainless steel has a 0.2% proof stress (i.e., yield strength) in a range of less than 400 MPa and uniform elongation in a range of more than 30% ([0021]). Within the overlapping portions of each of Ni, Cr, Cu and Mn taught by Hatano in view of Suehiro, a value Ω can be calculated falling within the presently claimed range. Specific examples are shown in the table below. Therefore, it is clear Hatano in view of Suehiro meets the presently claimed value Ω.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
C (wt%)
Si (wt%)
Mn (wt%)
Cu (wt%)
Mo (wt%)
Ni (wt%)
Cr (wt%)
N (wt%)
YS (MPa)
El (%)
Ω
overlapping portion taught by Hatano in view of Suehiro
0.04-0.05
0.3-0.6
0.5-1.5
0.1-0.4
0.05-0.2
8
18-19
0.02-0.05
less than 400
more than 30
0.04
0.3
0.5
0.1
0.05
8
18
0.02
380
42
2660
0.05
0.6
1.5
0.4
0.2
8
19
0.05
370
49
3680
0.04
0.6
0.5
0.1
0.5
8
18
0.02
340
50
3700
0.04
0.6
1.5
0.4
0.2
8
19
0.02
399
50
5500
0.04
0.3
1.5
0.1
0.05
8
19
0.02
380
45
2800
0.04
0.6
0.5
0.1
0.05
8
19
0.02
370
49
4330
0.05
0.3
0.5
0.1
0.05
8
19
0.02
340
50
3200
0.05
0.6
0.5
0.4
0.2
8
18
0.05
399
50
6500
In reference to claim 3, Hatano in view of Suehiro teaches the limitations of claim 1, as discussed above. Within the overlapping portions of each of C, N, Si, Mn, Cr, Ni and Cu taught by Hatano in view of Suehiro, an austenitic stability parameter (ASP) value can be calculated falling within the presently claimed range. Specific examples are shown in the table below. Therefore, it is clear Hatano in view of Suehiro meets the presently claimed ASP.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
C (wt%)
Si (wt%)
Mn (wt%)
Cu (wt%)
Mo (wt%)
Ni (wt%)
Cr (wt%)
N (wt%)
ASP
overlapping portion taught by Hatano in view of Suehiro
0.04-0.05
0.3-0.6
0.5-1.5
0.1-0.4
0.05-0.2
8
18-19
0.02-0.05
0.04
0.3
1.5
0.1
0.05
8
19
0.02
12
0.04
0.6
0.5
0.1
0.05
8
19
0.02
18
0.05
0.3
0.5
0.1
0.05
8
19
0.02
16
0.05
0.6
0.5
0.4
0.2
8
18
0.05
1
In reference to claim 4, Hatano in view of Suehiro teaches the limitations of claim 1, as discussed above. Hatano further teaches in cold rolling a rolling reduction ratio is set to be in a range of 70% or more and a temperature of a final annealing is set to be in a range of 700 to 1050ºC ([0084]; [0087]). Using the ASP values calculated above, it is clear the austenitic steel sheet of Hatano in view of Suehiro will have a value Π overlapping the presently claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
C (wt%)
Si (wt%)
Mn (wt%)
Cu (wt%)
Mo (wt%)
Ni (wt%)
Cr (wt%)
N (wt%)
ASP
FCRR (%)
CAT (ºC)
Π
overlapping portion taught by Hatano in view of Suehiro
0.04-0.05
0.3-0.6
0.5-1.5
0.1-0.4
0.05-0.2
8
18-19
0.02-0.05
0.04
0.3
1.5
0.1
0.05
8
19
0.02
12
85
800
10525
0.04
0.6
0.5
0.1
0.05
8
19
0.02
18
85
800
11059
0.05
0.3
0.5
0.1
0.05
8
19
0.02
16
85
800
10873
0.05
0.6
0.5
0.4
0.2
8
18
0.05
1
85
800
9433
In reference to claim 5, Hatano in view of Suehiro teaches the limitations of claim 1, as discussed above. Hatano teaches average grain size of austenitic stainless steel is 10 µm or less, preferably in the average grain size is 1 µm to 5 µm ([0090]) (corresponding to an average grain size d at a central portion in the thickness direction of a transverse direction (TD) said is at least 3 but not more than 10 µm assuming that a total thickness of a steel material is t).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
In reference to claim 6, Hatano in view of Suehiro teaches the limitations of claim 1, as discussed above. Hatano further teaches a thickness of the cold-rolled sheet is 0.5 mm ([0026]) (corresponding to the t is from 0.4 to 2.0 mm).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
In reference to claim 7, Hatano in view of Suehiro teaches the limitations of claim 1, as discussed above. Hatano further teaches a volume ratio of strain-induced martensite is in a range of more than 60% after the cold rolling ([0081]) (corresponding to a martensite fraction (%) at the central portion in the thickness direction of the transverse direction (TD) side is 60% or more after cold rolling).
In reference to claim 8, Hatano in view of Suehiro teaches the limitations of claim 1, as discussed above. Hatano further teaches an occupancy ratio of high angle grain boundaries having angles of 15º or more is in a range of more than 80% ([0078]) (corresponding to a fraction (%) of misorientation angles of 15º or more is 95% or more at the central portion in the thickness direction of the transverse direction (TD) side after cold annealing).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
In reference to claims 9 and 11-13, Hatano in view of Suehiro teaches the limitations of claim 1, as discussed above. Given that the austenitic stainless steel of Hatano in view of Suehiro is substantially identical to the present claimed austenitic stainless steel in composition, structure and produced by a substantially identical method, it is clear that the austenitic stainless steel of Hatano in view of Suehiro would intrinsically have a pitting potential measured by immersing the austenitic stainless steel in a 3.5% NaCl solution at 30ºC of 250 mV or more, an ageing crack limit drawing ratio of 2.0 or more, an average earring height of 2.2 mm or less after a drawing process and surface cracks do not occur in a bent portion after a 180º bending test.
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, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Hatano in view of Suehiro as applied to claim 1 above, and further in view of Conrad et al. (US 2009/0202380) (Conrad).
In reference to claim 10, Hatano in view of Suehiro teaches the limitations of claim 1, as discussed above.
Hatano in view of Suehiro does not explicitly teach a surface roughness, Ra, when stretched by 30% is 0.50 µm or less, a Ra when stretched by 20% is 0.36 µm and a Ra when stretched by 10% or less is 0.25 µm or less, as presently claimed.
Conrad teaches an austenitic stainless steel strip having an average surface roughness Ra of between 0.07 and 0.12 µm exhibits smooth surface topography free of micro-defects ([0057]).
In light of the motivation of Conrad, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have a surface roughness, Ra, of the austenitic stainless steel sheet of Hatano in view of Suehiro be between 0.07 µm and 0.12 µm, in order to have the smooth surface topography free of micro-defects.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Further, claim 10 defines the product by how the product was made. Thus, claim 10 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having a surface roughness Ra of 0.50 µm or less. Hatano in view of Suehiro and Conrad suggests such a product.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mary I Omori whose telephone number is (571)270-1203. The examiner can normally be reached M-F 8am-4pm.
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/MARY I OMORI/Primary Examiner, Art Unit 1784
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