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 .
Applicants’ Preliminary Amendment, filed on November 26, 2024, has been made of record and entered. In this amendment, the Specification has been amended to include a cross-reference to related applications.
Claims 1-16 are presently pending in this application.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Applicants’ Priority Document was filed on November 26, 2024.
Election/Restrictions
Applicant’s election of Group I, claims 1-8, in the reply filed on March 17, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 9-16 are hereby withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method for manufacturing an austenite stainless steel, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on March 17, 2026.
Claims 1-8 are presently under consideration by the Examiner.
Specification
The abstract of the disclosure is objected to because it is not in the form of a single paragraph, and it exceeds 150 words. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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.
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.
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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Takahiro et al. (JP 2008-038191; Applicants’ submitted art; English translation provided and relied upon by the Examiner).
Regarding claim 1, Takahiro et al. teach an austenitic stainless steel comprising, by mass percent: ≤ 0.10% C, ≤ 1.1% Si, 3.0 to 8.0% Mn, ≤ 0.10% P, ≤ 0.010% S, 2.0 to 5.0% Ni, 16.0 to 20.0% Cr, ≤ 0.40% Mo, 1.0 to 3.0% Cu, and 0.10 to 0.30% N, with the balance being Fe with inevitable impurities. See the Abstract and paragraphs [0008], [0013] and [0031] of Takahiro et al., the last two of which discloses the austenitic stainless steel as having an average grain size of 0.001 to 0.026 mm (1 to 25 micrometers).
Regarding claims 2-4, it is considered that because the austenitic stainless steel disclosed in Takahiro et al. exhibits the components recited in Applicants’ claim 1 in respectively comparable percentage ranges, the skilled artisan would reasonably expect the properties of austenite stability parameter (ASP), strength stability parameter (SSP), and pitting resistance equivalent number (PREN), in values falling within the respectively recited ranges, absent the showing of convincing evidence to the contrary.
Regarding claims 5 and 6, Takahiro et al. teach that the austenitic stainless steel exhibits yield strengths of over 600 N/mm2 (600 MPa), and elongations exceeding 30%; see paragraph [0040] (“good workability (elongation: 38%)”) and Table 3 of Takahiro et al.
Regarding claim 7, it is considered that because Takahiro et al. teach an austenite stainless steel comparable to that instantly claimed, the skilled artisan would have been motivated to reasonably expect the austenite stainless steel disclosed in this reference to exhibit a pitting potential comparable to that instantly claimed, absent the showing of convincing evidence to the contrary.
Where the claimed and prior art compounds possess a close structural relationship and a specific significant property in common which renders the claimed compounds obvious to one skilled in the art, they are effectively placed in the public domain and unpatentable per se, even though the applicant has discovered that they possess an additional activity. In re Mod, et al. (CCPA 1969) 408 F2d 1055, 161 U. S. P. Q. 281.
Moreover, a newly discovered property does not render a compound unobvious, if (1) the claimed compound is structurally obvious from a prior art compound, (2) the claimed compound possesses the same property for which the prior art compounds were useful, and (3) the prior art compound in fact possesses the newly discovered property of the claimed compound. Monsanto Co. v. Rohm & Haas Co. (DC ED Pa 1970) 420 F2d 950, 164 U.S.P.Q 556; see also MPEP 2112.01(I).
Regarding claim 8, Takahiro et al. teach thicknesses of the austenitic stainless steel of 0.8 mm or less, of 0.6 mm, of 1 mm, and of 0.3 mm; see paragraphs [0029], [0036], [0039], and [0040] of Takahiro et al.
Takahiro et al. do not teach the exact same proportions for C, Si, Mn, P, S, Cr, Ni, Cu, and N, as recited in claim 1. However, it is noted that the percentage ranges for C, Si, Mn, P, S, Cr, Ni, Cu, and N disclosed in Takahiro et al. overlap the respectively recited percentage ranges for these components recited in Applicants’ claims; additionally, the average grain size of 0.001 to 0.026 mm (1 to 25 micrometers) overlaps Applicants’ claim limitation “average grain diameter…is 5 µm or less”.
The subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 U.S.P.Q. 549; see also MPEP 2144.05(I).
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (U. S. Patent Publication No. 2022/0228246).
Regarding claim 1, Lee et al. teach an austenitic stainless steel including, in percent (%) by weight, 0.02 to 0.07% of carbon (C), 0.2 to 0.7% of silicon (Si), 2.5 to 4.0% of manganese (Mn), 2.5 to 4.0% of nickel (Ni), 17.0 to 19.0% of chromium (Cr), less than 0.1% of phosphorus (P), less than 0.01 % of sulfur (S), 1.0 to 3.0% of copper (Cu), 0.1 to 0.2% of nitrogen (N), and the remainder of iron (Fe) and other inevitable impurities (paragraph [0020], [0024]-[0043]; Table 1, Examples 1-3).
It is noted that the percentage ranges for C, Si, Mn, P, S, Cr, Ni, Cu, and N disclosed in Lee et al., where applicable, fall within, overlap, or are the same as the respectively recited percentage ranges for these components recited in Applicants’ claim 1.
The subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 U.S.P.Q. 549; see also MPEP 2144.05(I).
Regarding claims 2 and 3, it is considered that because Lee et al. teach percentage ranges for C, Si, Mn, P, S, Cr, Ni, Cu, and N that read upon that respectively claimed, the skilled artisan would reasonably expect the austenitic stainless steel disclosed in this reference to exhibit the properties of austenite stability and strength stability parameter, respectively calculated by Expressions (1) and (2) as recited in these claims, in values falling within the ranges of -30 to 30 (Expression (1)) and of 0 or more (Expression (2)), absent the showing of convincing evidence to the contrary.
Regarding claims 4 and 7, Lee et al. teach that the aforementioned austenitic stainless steel exhibits a pitting resistance equivalent number (PREN) of 18.7, 19.5, or 18.2, and a pitting potential of 342 mV, 392 mV, or 324 mV. See Table 2, Examples 1-3 of Lee et al.
Lee et al. do not explicitly teach or suggest that the aforementioned austenitic stainless steel exhibits (a) an average grain diameter of the thickness center of 5 µm or less, as recited in claim 1, (b) a yield strength of 600 MPa or more, as recited in claim 5, or (c) an elongation of 30% or more, as recited in claim 6.
However, because Lee et al. teach an austenitic stainless steel comparable to that instantly claimed, it would have been obvious to one of ordinary skill in the art before the effective filing date of Applicants’ invention to reasonably expect the austenitic stainless steel disclosed in Lee et al. to exhibit an average grain diameter, yield strength, and elongation comparable to that respectively claimed, absent the showing of convincing evidence to the contrary.
Where the claimed and prior art compounds possess a close structural relationship and a specific significant property in common which renders the claimed compounds obvious to one skilled in the art, they are effectively placed in the public domain and unpatentable per se, even though the applicant has discovered that they possess an additional activity. In re Mod, et al. (CCPA 1969) 408 F2d 1055, 161 U. S. P. Q. 281.
Moreover, a newly discovered property does not render a compound unobvious, if (1) the claimed compound is structurally obvious from a prior art compound, (2) the claimed compound possesses the same property for which the prior art compounds were useful, and (3) the prior art compound in fact possesses the newly discovered property of the claimed compound. Monsanto Co. v. Rohm & Haas Co. (DC ED Pa 1970) 420 F2d 950, 164 U.S.P.Q 556; see also MPEP 2112.01(I).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The following references teach austenite/austenitic stainless steels comprising the components recited in Applicants’ claims; however, these references do not teach or suggest the claimed amount of Mn in the respective steels:
Saller et al. (U. S. Patent Publication No. 2005/0145308), which teaches the presence of Mn in amounts of from about 19.0% by weight and up to about 30.0% by weight (paragraphs [0069], [0093]);
Degerbeck (U. S. Patent No. 4,222,773), which teaches the presence of Mn in amounts of between 0.10 and 0.30% (col. 1, line 55 to col. 2, line 4; Table A); and
Mertz et al. (U. S. Patent No. 3,904,401), which teaches the presence of Mn ranging from 15-20 weight percent (col. 3, lines 7-19).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICIA L HAILEY whose telephone number is (571)272-1369. The examiner can normally be reached Monday-Friday, 7 a.m. to 3:30 p.m.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ching-Yiu (Coris) Fung, can be reached at 571-270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Patricia L. Hailey/Primary Examiner, Art Unit 1732 April 17, 2026
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