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
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it is not a single paragraph AND because it may exceed 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).
Claim Objections
Claims 1, 6, 8, and 16-20 are objected to because of the following informalities: Regarding each of Claims 1, 6, and 16-18, there are missing commas after some of the elements in the list of elements of the claimed steel, such as after “Nb”, but not only “Nb”. Regarding each of Claims 8, 19, and 20, a preposition appears to be missing; it could read “for at least a portion thereof”. 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 1-20 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.
Regarding Claim 1, it is unclear what is “Si oxide” and how is it to be measured. The Specification appears to define it both as SiO2 and as being oxide containing area with at least 5 % by mass Si. See Specification (paragraphs 40-44). It is unclear which is claimed. As well, the Specification provides a specific method of measurement (paragraphs 41-43), but it is unclear how these methods relate to or control what is claimed. As well, the Specification distinguishes Si oxide coating (paragraph 40) and Si oxide in surface layer (paragraph 42). It is unclear whether “on the surface” encompasses either of these, only the former, or something else. Analogous rejection applies to Claims 6 and 16-18.
Regarding Claim 2, it is unclear whether these Si oxides are necessarily ascertained by method of Specification (paragraph 42). If not, how are they to be ascertained?
Regarding Claim 3, it is unclear what is relationship between “one field” and “any three fields”. Is an average to be taken of three fields? Is at least one field meeting the requirement from a sample of three required. It is unclear where the field in the thickness direction is to be placed. It is unclear whether the method of the Specification is necessarily to be used (paragraphs 44-45). If not, which method is to be used? This method explains that the field may be placed as close as possible to the surface layer. Does this mean it must be placed there, or not necessarily? Does this include or exclude the 10 microns depth region? Analogous rejection applies to Claims 10.
Regarding Claim 6, at three lines from the end, it begins “to”, meaning “heating and holding to”. Should it read “to and at, respectively,”? It is unclear what percents in “2.0%” and “6 to 15%” refer to. Are these “by volume”, “by mass”, or something else? Analogous rejection applies to Claims 16-18.
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) 1, 5, 8, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kawagoe USPA 2018/0363087 teaches austenitic stainless steel (Abstract; and Claims 1-6) of claimed composition (Table 1, Steel A) except for amounts of Al, P, and S, which steel has an oxide layer containing SiO2 as main component thereon (Abstract; paragraph 111; Table 3, Nos. A-1 through A-6). Kawagoe suggests Al, P, and S ranges that overlap those claimed (paragraphs 72 and 73). It would have been obvious to one of ordinary skill in the art before the time of filing to prepare composition based on Steel A with further modifications of amounts of Al, P, and S, as suggested, since Kawagoe suggests that effective austenitic stainless steel sheets can be formulated with these compositions. The amounts of Steel A with further suggested amounts would include compositions that satisfy formula 1. The oxide layer can be considered Si oxide coating since it contains SiO2 as main component. The area percent of covered portion of substrate is 100%. While the substrate is contemplated for HDD usage (Figure 1; paragraphs 4 and 5), it is structurally encompassed (Claim 4: cold rolled steel sheets) by requirements of Claim 5, which only requires a steel substrate having intended use and requirement of Claim 8, which only requires a part (paragraph 113: cover) and requirement of Claim 9, which only requires part to be used in specific manner without specifying any particular structure and so could include HDD to power such equipment.
Allowable Subject Matter
Claims 2-4, 6, 7, and 10-20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Regarding Claims 2-4, 6, 7, and 10-20, 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 structural features of these claims in combination with the claimed compositional and Si oxide coating on the surface requirements in the claimed context. For example, while Kawagoe USPA 2018/0363087 teaches many features for the reasons set forth above in the section 103 rejection based on Kawagoe, Kawagoe does not expressly teach or suggest or provide basis for establishing inherency of the entire combination of features of these claims. It is remarked that there is no basis for establishing inherency because the steel compositions and treatment conditions are not the same as what applicant has demonstrated lead to these features. See Kawagoe (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.
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, 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.
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.
/MICHAEL E. LA VILLA/Primary Examiner, Art Unit 1784 19 September 2026
