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 .
Priority
Applicant’s claim to foreign priority in application no. DE10 2022 109 883.4, filed April 25, 2022, and application no. DE10 2023 104 526.1, filed February 24, 2026, is acknowledged.
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.
Claim 1, and dependent Claims 2-7, 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 limitation "the rest" in line 6. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the form" in line 7. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the hot condition" in line 10. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "air/oil/water". The use of “/” causes the claim to be unclear. It is unclear if only one of the three conditions, or all three, are required for cooling.
Claims 2-4 recite the limitation "the elements" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 recites the limitation "the following elements" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation "the element Zr" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation "hot/cold-rolling processes to strip as well as foil”. It is unclear if both hot rolling and cold rolling, or only one of the two processes is required. Further, it is unclear whether the claim requires both forming a strip and a foil, or either a strip or a foil. It is unclear which step of rolling is forming which product.
Claim 7 recites “if necessary, at least one process of heat treatment of the strip or respectively foil is carried out”. It is unclear if heat treatment is required in the claims due to the use of the limitation “if necessary”. Further, the language “of the strip or respectively foil” causes the claim to be unclear on whether a strip or foil is being manufactured, and which one is being heat treated. It is unclear if “respectively foil” refers to the “as well as foil” recited previously in the claim. Examiner suggests rewording.
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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Mizutani (US 20160160328 A1) and Maeda (JP 2000178649 A, English Machine Translation provided).
Regarding Claims 1-4, Mizutani discloses a method for the manufacture of a support foil for catalytic converters with application temperatures ≤900C (para. [0002]-[0003], Abstract), comprising an iron-chromium-aluminum alloy with contents (in wt%) of:
Element
Claim 1
Claim 2
Claim 3
Claim 4
Mizutani, Abstract
Table 1, ex. 1
Cr
8-14
9-13
10-13
9-12
10.5-20
11.3
Al
1-4
1-3.5
2-3.5
1.5-3
1.5-3
2.1
Fe+imp.
Bal.
Bal.
Bal.
Bal.
Bal.
Bal.
In the case where the claimed ranges “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). See MPEP § 2144.05.I.
Mizutani further discloses wherein the alloy is formed into a 200-300mm slab, which reads on the claimed 150-400mm, by ingot casting-slabbing. One of ordinary skill in the art would appreciate that ingot casting-slabbing involves casting an ingot and (hot) rolling the ingot in a slabbing mill to obtain a slab, as claimed.
Mizutani is silent towards the details of cooling after slabbing, however, one of ordinary skill in the art would appreciate the cooling to occur in one of air, water or oil, as claimed, because these cooling mediums are conventionally known and cooling is otherwise not specified (i.e., Mizutani does not disclose an inert or vacuum atmosphere and one would appreciate cooling to occur in air/normal atmosphere).
Further, Maeda teaches air cooling to room temperature after ferritic stainless steel slab formation, reheating to Ac1-200 to Ac1+100 (Ac1 about 630C for ferritic stainless steels – see para. [0027]) and holding for up to about 4-5 hours, and further cooling in air (atmosphere) to room temperature, thereby preventing surface cracking of the slab due to thermal stress or transformation stress (Abstract; Fig. 1 cooling regime; para. [0018]-[0021]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have air cooled the slab to room temperature after slab formation, and further to have heated to Ac1-200 to Ac1+100 (i.e., 430-730C) and then cooled to room temperature by air cooling, as taught by Maeda, for the invention disclosed by Mizutani, in order to prevent surface cracking due to thermal or transformation stresses.
The invention of Mizutani and Maeda therefore reads on cooling in air to room temperature from a hot condition of the slab, as claimed.
Regarding Claim 5, Mizutani further discloses optionally adding 0-0.3 Y, 0-0.3 Hf, 0-0.3% La and/or 0-0.3% Ce (para. [0069]; para. [0074]). Examiner notes that Y, Hf, La and/o Ce are not required to meet the claim limitations because the elements are recited as optional in the claim
Regarding Claim 6, Mizutani further discloses optionally adding >0 and up to 0.5% Zr (para. [0068]). Examiner notes that Zr is not required to meet the claim limitations because the element is recited as optional in the claim.
Regarding Claim 7, Mizutani and Maeda disclose hot rolling and cold rolling to a strip and a foil, with optional annealing of the hot rolled sheet (strip) and annealing of the foil after cold rolling (para. [0093]-[0094]). Examiner notes that heat treatment is not required by the claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
McCune (US 4798634 A): teaches wherein stainless steel ingots are formed into billets and then air cooled (Col. 10, lines 59-67).
Lee (US 5733387 A): teaches wherein the general cooling method after stainless steel slab formation occurs by air cooling or water cooling, wherein the slab is cooled to room temperature prior to reheating for further hot rolling (Col. 3, lines 60-62; Col. 8, lines 49-53 and line 66-Col. 9, line 3). Lee further teaches this method helps limit the precipitation of intermetallic compounds.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE P SMITH whose telephone number is (303)297-4428. The examiner can normally be reached Monday - Friday 9:00-4:00 MT.
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.
CATHERINE P. SMITH
Patent Examiner
Art Unit 1735
/CATHERINE P SMITH/ Examiner, Art Unit 1735
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735
Prosecution Insights