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 .
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/04/2026 has been entered.
Status of claims
Claim 2 is amended; Claims 1 and 7 are withdrawn from consideration as non-elected claims, Claims 2-6 and remain for examination, wherein claim 2 is an independent claim.
Previous Rejections/Objections
In view of the Applicant’s amendment, newly cited prior art(s), and reconsideration, a new ground rejection has been listed as following.
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 2 is 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. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation “a total content of the carbon and the nitrogen is less than 0.08 mass%”, and the claim also recites “0.02-0.04 mass% C” and “0.02-0.04 mass% N”, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. It is noted that the low limit of C is 0.02 mass% and low limit of N is 0.02 mass%, the total of (C + N) could not less than 0.04 mass%. Proper amendment is necessary.
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.
Claim(s) 2-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Im et al (US-PG-pub 2022/0281038 A1, thereafter PG’038) in view of Lula et al (US 3,152,934, thereafter US’934) and Chen et al (CN 115261725 A, with on-line translation, thereafter CN’725).
Regarding claim 2, PG’038 teaches a manufacturing process for a stainless steel welding wire with austenite structure (Abstract, par.[0004], and examples of PG’038), which reads on the claimed method for preparing a rail welding transition material resistant to stress corrosion damage as claimed in the instant claim. The comparison between the claimed alloy composition ranges and those disclosed by PG’038 (claims and par.[0026]-[0047] of PG’038) has been listed in following table. All of the essential composition ranges disclosed by PG’038 overlap the claimed alloy composition ranges, which creates a prima facie case of obviousness. MPEP 2144 05 I. It would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize composition ranges including C, Si, Mn, Ni, Cr, Mo, N, Nb, P, S, (C + N), and Fe from the disclosing of PG’038 since PG’038 teaches the same manufacturing process for a stainless steel welding wire as claimed throughout whole disclosing range. It is noted that PG’038 does not specify including 0.05-0.15 mass% V in the alloy as claimed in the instant claim. US’934 teaches a manufacturing process of treating austenitic stainless steels (claims of US’934). The alloy composition ranges disclosed by US’934 (table 1, claims, and examples of US’934) overlap all of the essential alloy composition ranges as claimed in the instant claim. MPEP 2144 05 I. US’934 specify including up to 4.0 mass% V in the alloy in order to obtain the desired microstructure of the processed austenite steel (Col.3, line 17 to Col.4, line 28 of US’934). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the V amount as demonstrated by US’934 for the steel of PG’038 since both PG’038 and US’934 teach the same manufacturing process of austenite steel material and US’934 teaches adjusting V amount in order to obtain the desired microstructure of the processed austenite steel (Col.3, line 17 to Col.4, line 28 of US’934). US’038 specify applying the well-known steel-making processes including heat treatment to obtain the desired steel component (Col.3, line 17 to Col.4, line 28 of US’934). It is noted that PG’038 in view of US’934 does not specify detail process steps including smelting, casting, homogenizing, forging, and water cooling as claimed in the instant claim. However, applying smelting, forging, and heat treatment process for austenitic steel is a well-known technique as demonstrated by CN’725. CN’725 teaches a middle transition material with a austenitic stainless phase for welding high manganese steel component and high carbon steel rail and preparation method (Abstract of CN’725). CN’725 specify applying smelting, casting, pre-forging, homogenizing, forging, water cooling, and final extruding (par,[0013]-[0031] and claim 2 of CN’725), which reads on all of the essential process steps as claimed in the instant claim. It would have been obvious to one of ordinary skill in the art at the time the invention was made to apply the well-known manufacturing process as demonstrated by CN’725 for the process of PG’038 in view of US’934 in order to obtain the welding material with fine and stable microstructure and excellent mechanical property (abstract, claims, and examples of CN’725).
Element
From instant Claim 2 (mass%)
From PG’038 (mass %)
overlapping range
(mass%)
C
0.02-0.04
0.5 or less
0.02-0.04
Si
≤ 0.20
0.05-1.0
0.05-0.20
Mn
6.5-7.0
1.0-10.0
6.5-7.0
Ni
11.0-11.5
6.0-15.0
11.0-11.5
Cr
17.6-18.0
13.0-25.0
17.6-18.0
Mo
2.1-2.4
5.0 or less
2.1-2.4
N
0.02-0.04
0.01-0.2 (combine with C, Cl.3 of PG’038)
0.02-0.04
Total of C and N
0.08 or less
0.01-0.2 (combine with C, Cl.3 of PG’038)
0.01-0.08
Nb
0.05-0.15
0.1-5.0
0.1-0.15
V
0.05-0.15
--
--
P
≤ 0.015
0.1 or less
≤ 0.015
S
≤ 0.010
0.1 or less
≤ 0.010
Fe
Balance
Balance
Balance
Regarding claim 3, CN’725 teaches that homogenizing treatment temperature is 1200oC and the time is 10h (par.[0016] of CN’725), which reads on the claimed homogenizing process and parameters as claimed in the instant claim. It would have been obvious to one of ordinary skill in the art at the time the invention was made to apply the homogenizing process with proper parameter as demonstrated by CN’725 for the process of PG’038 in view of US’934 in order to obtain the welding material with fine and stable microstructure and excellent mechanical property (abstract, claims, and examples of CN’725).
Regarding claim 4, CN’725 teaches that the diameter of the forging blank is 364 to 365mm, the forging ratio is more than 4 (par.[0017] of CN’725), which reads on the claimed forging with the proper forging ratio as claimed in the instant claim. It would have been obvious to one of ordinary skill in the art at the time the invention was made to apply the forging with the proper forging ratio as demonstrated by CN’725 for the process of PG’038 in view of US’934 in order to obtain the welding material with fine and stable microstructure and excellent mechanical property (abstract, claims, and examples of CN’725).
Regarding claims 5-6, CN’725 teaches applying extruding with the extrusion ingot temperature to 1080 to 1120°C (par.[0019] of CN’725), which reads on the claimed extruding process and parameters as claimed in the instant claims. It would have been obvious to one of ordinary skill in the art at the time the invention was made to apply the extruding with the proper extruding parameters as demonstrated by CN’725 for the process of PG’038 in view of US’934 in order to obtain the welding material with fine and stable microstructure and excellent mechanical property (abstract, claims, and examples of CN’725).
Notes: Hirata et al (US 9,211,601 B2) is cited as a reference only.
Response to Arguments
Applicant’s arguments to the art rejection to Claims 2-6 have been considered but they are moot in view of the new ground rejection as stated above. Regarding the Applicant’s arguments related to the amended feature in the instant claims, the Examiner’s position has stated as above.
The Examiner’s position has been listed as following:
1, Applicant submits that the cited combination of PG'038, US'934, and CN'725 fails to render the claimed invention obvious because, even when considered together, the references do not teach, suggest, or motivate the skilled person to the specific combination of composition and process claimed, nor do they provide any guidance to achieve the observed resistance to stress corrosion cracking. The cited combination of PG'038, US'934, and CN'725 fails to teach or suggest at least the following aspects of the claimed invention.
2, The cited prior art(s) does not specify the (C + N) amount to prevent carbide formation at grain boundaries under welding thermal cycles.
3, The same scope has been accepted and granted under patent number CN 118875570 B.
In response,
Regarding the argument 1, as pointed out in the rejections above, PG'038 in view of US'934 and CN'725 teaches the same manufacturing process for a stainless steel welding wire with austenite structure having all of the alloy composition ranges overlapping the claimed alloy composition ranges, manufacturing by all of the essential process steps. It is noted that there is no detail stress corrosion cracking resistance data has been included in the instant claims and there is no evidence (proper 132 Declaration) to show the criticality of the claimed composition ranges in term of the argued properties. Actually, it is noted that the Applicant's arguments are against the combined prior arts individually, one should not show non-obviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the instant case, PG'038 in view of US'934 and CN'725 is applied to the instant claims 2-6. The reason and motivation for the combination can further refer to the rejection for in the office action above.
Regarding the argument 2, it is noted that the argued carbide distribution at grain boundaries is not included in the instant claims and there is no evidence to show the argued carbide distribution related to the claimed stress corrosion cracking resistance.
Regarding the argument 3, the granted CN patent does not affected the instant examination.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIE YANG whose telephone number is (571)270-1884. The examiner can normally be reached on IFP.
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/JIE YANG/Primary Examiner, Art Unit 1734
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