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 .
Status of Claims
Claims 1-23 are pending. Claims 1-5 and 21-23 are presented for this examination. Claims 6-20 are withdrawn. Claims 1-3 and 21-23 are amended.
Status of Previous Rejections
All previous art rejections are maintained from previous office action of 11/06/2025 in view of amendment filed on 02/05/2026.
Claim objection is withdrawn.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1-5 and 21-23 are rejected under 35 U.S.C. 103(a) as being unpatentable over Lazzara (US 2009/0252620A1) in view of Nelson’079 (US 5,182,079) and APA (Admitted prior art).
As for claims 1-3, it is noted instant claims are amended to require Cu greater than 0.00% but less than 0.2%.
Lazzara discloses a smart mud pump comprising a power end having a motor, a crankshaft rotationally engaged with the motor and a connecting rod rotationally engaged with the crankshaft and a fluid end operatively connected to the power end and having a piston, a cylinder operatively engaging the piston, a drilling fluid module, a discharge manifold and a strainer wherein all parts (e.g. the piston) are made of stainless steels (abstract, paragraphs [0028]- [0035] and [0041]). Lazzara also discloses mud pumps that use piston displacement produce imposed forces that causes wear and tear on various pump component and there has been a need to provide increased longevity and performance for such pump. (paragraph [0004]) His invention aims for a pump with significant strengthening features that increase the life cycle of pump. (paragraph [0008]. The fact Lazzara does not disclose other end other than the claimed power end and a fluid end meets instant claimed “consisting of”.
Lazzara does not specify the steel composition as claimed.
Nelson’079 discloses a metallic tool steel comprising overlapping elemental compositions as illustrated in Tables 1-3 below respectively. (Abstract) Hence, A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I. The fact Nelson’079 does not disclose any other element other than the one as illustrated in Table 1-3 meets instant claimed “consisting of”.
With respect to amended Cu greater than 0 but less than 0.2%, Nelson’079 disclosed Cu range about 0.2% encompasses both a value above 0.2% and a value slightly lower than 0.2% such as 0.19%. if value is 0.19%, it overlaps amended Cu greater than 0 to less than 0.2%.
A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough (emphasis added) that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
It is well established that a prior art reference that discloses a range that overlaps a claimed range, or encompasses a somewhat narrower claimed range, is sufficient to establish a prima facie case of obviousness. See /n re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Indeed, when the claimed ranges are completely encompassed by the prior art, the obviousness conclusion is even more compelling than in cases of mere overlap. The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages. A prima facie case of obviousness also exists in those cases where the claimed range and the prior art range, though not overlapping, are sufficiently close that one skilled in the art would have expected them to have the same or similar properties. Id.; see also In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997); Titanium Metals Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985); and In re Brandt, 886 F.3d 1171, 1177 (Fed. Cir. 2018) (In response to an argument by an Appellant that there must be an overlap between the claimed range and prior art range to find obviousness, the Court stated “[t]he nonbinding holding in [a previous case], however, does not stand for the proposition advanced by Appellants that a claimed range and prior art range must overlap for an examiner to find a prima facie case.”)
In the instant case, about 0.2% is considered sufficiently close to less than 0.2%.
Nelson’079 expressly discloses the tool steel are generally characterized by high hardness and resistance to abrasion.
Applicant’s admitted prior art (instant application PGPUB paragraph [0005]) discloses manufacturing critical parts out of alloys with high strength and toughness can increase the service life of various mud pump components. High strength and toughness can resist wear, fatigue and fracture in order to maintain constant flow rate of fluid at a specific pressure (paragraph [0004]) Hence, there is a need for a steel which maintains its hardness, strength and toughness as mud pump components.
Thus, based on the well-known component requirement for mud pump as disclosed by applicant’s own admitted prior art, applicant’s invention would be merely a “new” use of a known material with expected success in the absence of unexpected result. See MPEP 2112 I SOMETHING WHICH IS OLD DOES NOT BECOME PATENTABLE UPON THE DISCOVERY OF A NEW PROPERTY “The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
Hence, it would have been obvious to one skill in the art, at the time the inventions is made to apply tool steel compositions as disclosed by Nelson’079 to make the pump components of Lazzara which are subject to wear and tear, such as the crankshaft, the connecting rod, the piston, and the cylinder for the benefit of ensuring both high hardness and resistance to abrasion at the same time as taught by Nelson’079 with expected success.
Table 1
Element
Applicant
(weight %)
Nelson’079 et al.
(weight %)
(Claim 1)
Overlap
(weight %)
C
0.5-0.55
0.5-0.65
0.5-0.55
Mn
0.7-1.5
0.09-1.45
0.7-1.45
P
<=0.025
<=0.03
<=0.025
S
<=0.05
0.035-0.07
0.03-0.05
Si
0.5-0.8
0.5-0.8
0.5-0.8
Ni
0.1-0.8
0.15-0.4
0.15-0.4
Cr
1.45-2.2
1.1-1.9
1.45-1.7
Mo
0.1-0.55
0.35-0.45
0.1-0.2
V
<=0.03
<=0.01
<=0.01
Cu
Greater than 0-
less than 0.20
About 0.2-0.4
About 0.2
Al
Greater than 0 to 0.04
0-0.05
Greater than 0 to 0.04
Table 2
Element
Applicant
(weight %)
Nelson’079 et al.
(weight %)
Claim 1
Overlap
(weight %)
C
0.5-0.55
0.5-0.65
0.5-0.55
Mn
1.2-1.45
0.09-1.45
1.2-1.45
P
<=0.025
<=0.03
<=0.025
S
<=0.025
0.035-0.07
About 0.03 is close to 0.025
Si
0.5-0.8
0.5-0.8
0.5-0.8
Ni
0.35-0.7
0.15-0.4
0.35-0.4
Cr
1.7-2.05
1.1-1.9
1.7-1.9
Mo
0.35-0.55
0.35-0.45
0.35-0.45
V
<=0.03
<=0.01
<=0.01
Cu
Greater than 0-less than 0.20
About 0.2-0.4
About 0.2
Al
Greater than 0 to 0.04
0-0.05
Greater than 0 to 0.04
Table 3
Element
Applicant
(weight %)
Nelson’079 et al.
(weight %)
Overlap
(weight %)
C
0.5-0.55
0.5-0.65
0.5-0.55
Mn
1.2-1.35
0.09-1.45
1.2-1.35
P
<=0.01
<=0.03
<=0.01
S
<=0.01
0.035-0.07
0.035-0.01
Si
0.5-0.8
0.5-0.8
0.5-0.8
Ni
0.55-0.65
0.15-0.4
0.4 is close to 0.55
Cr
1.75-2
1.1-1.9
1.75-1.9
Mo
0.4-0.5
0.35-0.45
0.4-0.45
V
<=0.01
<=0.01
<=0.01
Cu
Greater than 0-less than 0.20
About 0.2-0.4
About 0.2
Al
Greater than 0 and 0.025
0-0.05
Greater than 0 and 0.025
As for claims 4-5, they are product-by-process claims. Even though claims 4 and 5 are limited by and defined by the process, determination of patentability is based on the product itself. Lazzara in view of Nelson’079 discloses a mud pump part made of a steel as discussed above, which reasonably appears to be only slightly different than the claimed part. Hence, a rejection based on section 103 of the statute is eminently fair and acceptable. See MPEP 2113.
As for claims 21-23, Nelson’079 discloses a mold steel comprising overlapping elemental compositions as illustrated in Tables 7-9 below respectively. (Abstract) Hence, A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
Table 7
Element
Applicant
(weight %)
Nelson’079 et al.
(weight %)
Claim 1
Overlap
(weight %)
C
0.5-0.55
0.5-0.65
0.5-0.55
Mn
0.7-1.5
0.09-1.45
0.7-1.45
P
<=0.025
<=0.03
<=0.025
S
<=0.025
0.035-0.07
0.025 is close to 0.035
Si
0.5-0.8
0.5-0.8
0.5-0.8
Ni
0.1-0.8
0.15-0.4
0.15-0.4
Cr
1.45-2.2
1.1-1.9
1.45-1.9
Mo
0.1-0.51
0.35-0.45
0.35-0.45
V
<=0.03
<=0.01
<=0.01
Cu
Greater than 0-less than 0.20
About 0.2-0.4
About 0.2
Al
Greater than 0 and up to 0.04
0-0.05
Greater than 0 and up to 0.04
Table 8
Element
Applicant
(weight %)
Nelson’079 et al.
(weight %)
Claim 1
overlap
C
0.5-0.55
0.5-0.65
0.5-0.55
Mn
0.7-1.5
0.09-1.45
0.7-1.45
P
<=0.025
<=0.03
<=0.025
S
<=0.05
0.035-0.07
0.035-0.05
Si
0.5-0.8
0.5-0.8
0.5-0.8
Ni
0.1-0.8
0.15-0.4
0.15-0.4
Cr
1.45-2.2
1.1-1.9
1.45-1.9
Mo
0.1-0.51
0.35-0.45
0.35-0.45
V
<=0.03
<=0.01
<=0.01
Cu
Greater than 0-less than 0.2
About 0.2-0.4
About 0.2
Al
Greater than 0 up to 0.04
0-0.05
Greater than 0 and up to 0.04
Table 9
Element
Applicant
(weight %)
Nelson’079 et al.
(weight %)
Claim 1
Overlap
C
0.5-0.55
0.5-0.65
0.5-0.55
Mn
1.2-1.45
0.09-1.45
1.2-1.45
P
<=0.025
<=0.03
<=0.025
S
<=0.025
0.035-0.07
0.025 is close to 0.035
Si
0.5-0.8
0.5-0.8
0.5-0.8
Ni
0.35-0.7
0.15-0.4
0.35-0.4
Cr
1.7-2.05
1.1-1.9
1.7-1.9
Mo
0.35-0.55
0.35-0.45
0.35-0.45
V
<=0.03
<=0.01
<=0.01
Cu
Greater than 0-less than 0.2
About 0.2-0.4
About 0.2
Al
Greater than 0 and up to 0.04
0-0.05
Greater than 0 and up to 0.04
Response to Argument
In response to applicant’s argument filed on 02/05/2026 that Nelson makes clear that copper is desirable at an amount at least 0.2%, which is outside of amended Cu range. Argument is not persuasive because Nelson repeatedly discloses “about 0.2%” (Abstract line 11, Col 3 line 43, Col 5 line 22 and claim 2) without “at least” in front of “about”. Hence, “about 0.2%” encompasses a value lower than 0.2%. That is, applicant’s statement is merely allegation.
In response to argument that applicant makes clear that a preferable Cu is lower than 0.02%, such statement is in clear error as cited [0031] of instant application merely discloses preferably lower than 0.2% by weight of Cu, not lower than 0.02% of Cu as alleged by application.
In response to argument that APA fails to include Cu, argument is not persuasive because APA is not used to disclose claimed Cu range. Nelson’s about 0.2% Cu is sufficiently close to amended Cu “greater than 0% to less than 0.2%” because about 0.2% encompasses a value below 0.2% such as 0.19%. Second, there is no teaching away in Nelson’079 about amended Cu range because Nelson’079 does not (emphasis added) criticize, discredit or otherwise discourage the claimed Cu range.
Applicant is invited to submit criticality of Cu range.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNY R WU whose telephone number is (571)270-5515. The examiner can normally be reached on 8:30 AM-5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached on (571)272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNY R WU/Primary Examiner, Art Unit 1733
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