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 .
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 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,188,111B2. Although the claims at issue are not identical, they are not patentably distinct from each other. The claims are both directed to austenitic stainless steel alloy and the claimed compositions have overlapping elements and amounts which means that compositions in the reference patent render obvious those of Claim 4 (Claim 1). See MPEP 2144.05(I).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jotoku USPA 2020/0392611. Jotoku teaches weld alloy material having claimed composition (Table 3, Ex. 22). This example is of an austenitic stainless steel weld joint, and so this is weld alloy material and is austenitic in view of description in view of Cr and Ni content.
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jotoku USPA 2020/0392611. Jotoku teaches weld alloy material having range of compositions that overlap and approach claimed composition (Tables 2 and 3; Claim 1; and paragraphs 233-288). It would have been obvious to one of ordinary skill in the art before the time of filing to prepare full range of suggested compositions in Jotoku which would be expected to encompass compositions having the claimed ingredients and amounts. See MPEP 2144.05. These teachings describe forming an austenitic stainless steel weld joint, and so what forms is a weld alloy material that is austenitic in view of its description and in view of Cr and Ni content.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kousu JP 2015-062910. Kousu teaches austenitic weld alloy (paragraph 31) having claimed ingredients (Table 1, Steel B) except that it lacks B. However, Kousu teaches B can be present in claimed range (paragraph 65) and exemplifies steels with such amounts of B (Table 1, Steels E, F, and M). It would have been obvious to one of ordinary skill in the art before the time of filing to further include B in suggested amounts in Kousu since Kousu teaches that effective compositions can be obtained in this manner; such amounts of B would overlap those being claimed. See MPEP 2144.05. Kousu’s composition is characterized as containing O, which Kousu explains is an impurity (paragraph 51). Thus, since the claimed composition can contain impurity, this is permissible. Furthermore, Kousu teaches that minimization of O can be effectuated (paragraphs 47 and 51). Thus, it would have been obvious to one of ordinary skill in the art before the time of filing to purify this composition by eliminating some or all residual O, which would lead to achievement of lesser O amounts to the extent necessary in the case that exemplified amount of O exceeds what claim’s “consisting of” transition phrase could permit. Furthermore, purification of known composition is prima facie obvious when the resulting purified product would be expected to have same structure and function as the unpurified composition, which would be the case where the ingredient being purified is characterized as an impurity. See MPEP 2144.04 (VII).
Claim 4 is/are rejected under 35 U.S.C. 103 as being obvious over Osuki USPA 2022/0411908.
The applied reference has a common inventor and assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
Osuki teaches claims directed to austenitic stainless steel alloy with compositions having same elements and overlapping amounts with respect to those of Claim 4. which means that compositions in the reference patent render obvious those of Claim 4 (Claim 1). See MPEP 2144.05(I).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Osuki WO 2021/141107 (as translated by USPA 2022/0411908). Osuki teaches claims directed to austenitic stainless steel alloy with compositions having same elements and overlapping amounts with respect to those of Claim 4. which means that compositions in the reference patent render obvious those of Claim 4 (Claim 1). See MPEP 2144.05(I).
Allowable Subject Matter
Claims 1-3 and 5 are allowed.
Regarding Claims 1-3 and 5, the reviewed prior art does not teach or suggest the subject matter of these claims. Particularly, the reviewed prior art does not teach or suggest the claimed combination of base metal composition and weld metal composition of austenitic stainless steel alloy welded joint wherein claimed F1 compositional relationship and claimed F2 Mo relationship are obtained, in combination and in the claimed context. For example, Jotoku USPA 2020/0392611 teaches austenitic stainless steel welded joint (Figure 2) having similar compositions for base and weld metals (Tables 1-3) but fails to expressly teach or suggest or other provide basis for establishing inherency of the claimed combination of F1 and F2 relationships, in the claimed context. See Jotoku (entire document).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL E. LA VILLA whose telephone number is (571)272-1539. The examiner can normally be reached Mon. through Fri. from 9:00 a.m. ET to 5:30 p.m. ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera N. 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.
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/MICHAEL E. LA VILLA/Primary Examiner, Art Unit 1784
19 June 2026
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