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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/20/2025 has been entered.
Status of Claims
Claims 1-2 are amended. Claim 8 is cancelled. Claims 10-13 are new. Claims 1-7 and 9-13 are examined herein.
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.
Claims 1-7 and 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Horiuchi (ISIJ International, Vol 42 (2002), Supplement, Page S67-S71), and further in view of JP’063 (JP2009-293063), as evidenced by Hardness to tensile strength conversion table.
Regarding claims 1, 3 and 5, Horiuchi teaches (Abstract; Table 1, Steel 0.0139B) a ferritic heat-resistant steel that has composition as shown in Table 1 below:
Element
Claim 1
(mass %)
Horiuchi
(mass %)
JP’063
(mass %)
C
0.06-0.11
0.078
0.05-0.12
Si
0.15-0.35
0.3
0.2-0.5
Mn
0.35-0.65
0.51
0.3-0.6
P
≤0.02
<0.001
≤0.02
S
≤0.003
<0.001
≤0.005
Ni
0.005-0.25
----
≤0.5
Cu
0.005-0.25
----
≤1.5
Co
2.7-3.3
3.01
0-5
Cr
8.3-9.7
8.99
8-12
W
2.5-3.5
2.91
1.5-3.5
V
0.15 – 0.25
0.19
0.15-0.25
Nb
0.03-0.08
0.05
0.03-0.08
Ta
0.002-0.04
---
≤0.05
Nd
0.01-0.06
---
≤0.05
B
0.006-0.016
0.0139
0-0.015
N
0.005-0.015
0.0034 (close)
0.005-0.07
Al
0-0.02
0
0-0.015
O
0-0.02
0.002
Fe + Impurities
Balance
Balance
Balance
The composition disclosed by Horiuchi meets the recited amount of C, Si, Mn, P, S, Co, Cr, W, V, Nb, B, Al, O and close to the recited amount of N in claim 1. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Thus, the recited C, Si, Mn, P, S, Co, Cr, W, V, Nb, B, Al, O and N composition is a prima facie case of obviousness over Horiuchi. See MPEP 2144.05 I.
Horiuchi does not teach the amount of Ni, Cu, Ta, Nd and Ti as recited in claims 1, 3 and 5.
JP’063 teaches a ferritic heat-resistant steel that is analogous to the steel of Horiuchi (Abstract). JP’063 further discloses that 0.5 mass% or less Ni reduces creep, 1.5 mass% or less Cu stabilized austenite, and 0.05 mass% or less Ta, 0.05 mass% or less Nd and 0.05 mass% or less Ti all improve creep strength (Page 8-9). Thus, it would be obvious to one of ordinary skill in the art to add 0.5 mass% or less Ni, 1.5 mass% or less Cu, 0.05 mass% or less Ta, 0.05 mass% or less Nd, and 0.05 mass% or less Ti as taught by JP’063 in the steel of Horiuchi in order to reduce creep, stabilize austenite and improve creep strength of the steel as disclosed by JP’063. The amount of Ni, Cu, Ta, Nd and Ti overlap the recited ranges in claims 1, 3 and 5. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Thus, the recited amounts of Ni, Cu, Ta, Nd and Ti in claims 1, 3 and 5 are obvious over Horiuchi in view of JP’063. See MPEP 2144.05 I.
Further, JP’063 discloses that 0.005-0.07 mass% N increases high temperature strength (Page 8). Thus, it would be obvious to one of ordinary skill in the art to incorporate 0.005-0.07 mass% N as taught by JP’063 in the steel of Horiuchi in order to improve the high temperature strength as disclosed by JP’063. The amount of N disclosed by JP’063 overlaps the recited N amount in claim 1. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Thus the recited amount of N is a prima facie case of obviousness over Horiuchi in view of JP’063. See MPEP 2144.05 I.
Horiuchi discloses that [%WER ] =0.27 (Estimated by the Examiner based on Fig. 1 of Horiuchi, Steel 0.0139B). -10x[%B]+0.26=0.121; 10x[%B]+0.54=0.679. Thus, the steel disclosed by Horiuchi meets the recited Formula (1) and Formula (2) in claim 1. Horiuchi discloses that the steel has Hv of 221 (Table 2, Steel 0.0139B), which converts to tensile strength of 715 MPa based on the attached hardness to tensile strength conversion table. The tensile strength of Steel 0.0139B in Horiuchi meets the recited tensile strength in claim 1.
Steel 0.0092B-H disclosed by Horiuchi also meets the recited Formula (1) and Formula (2) and the tensile strength recited in claim 1 as shown below:
-10x[%B]+0.26=0.168; 10x[%B]+0.54=0.632. [%WER] = 0.255. And Hv=219, which converts to tensile strength of 705 MPa.
Regarding the amended feature in claim 1, JP’063 discloses that adding 0.005-0.05 wt. % Ta improves creep strength (Page 9). When 0.005-0.05 wt% Ta is added to Steel 0.0139B of Horiuchi, the steel contains 0.05 wt% Nb and 0.005-0.05 wt% Ta. The mass ratio of Ta to Nb is 0.1-1, which overlaps the recited mass ratio of Ta to Nb in claim 1. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Thus, claim 1 is a prima facie case of obviousness over Horiuchi in view of JP’063. See MPEP 2144.05 I.
Regarding claim 2, JP’063 discloses that adding 0.005-0.05 wt% Ta improves creep strength (Page 9). When 0.005-0.05 wt.% Ta is added to Steel 0.0139B of Horiuchi, the steel contains 0.05 wt.% Nb and 0.005-0.05 wt.% Ta. Ta+Nb is 0.055-0.1 wt.%, which meets the recited limitation in claim 2.
Regarding claims 4, 6, 7 and 9, Horiuchi in view of JP’063 is silent on the fracture toughness as recited in claims 4, 6, 7 and 9. However, this limitation depends on the steel composition and the method of making the steel. Horiuchi discloses that the steel is normalized at 1423 K (i.e. 1150 ºC) for 0.5 hour followed by tempering at 1063K (i.e. 790 ºC) for 1 hour (Table 2, Steel 0.0092B-H), which meets the processing condition disclosed in instant Specification.
In view of the fact that Horiuchi in view of JP’063 teaches a steel composition that meets the recited composition in claim 1 and a normalizing and tempering heat treatment parameters that meet the processing conditions disclosed in instant Specification, one of ordinary skill in the art would expect that the steel disclosed by Horiuchi in view of JP’063 to meet the property limitation recited in claims 4, 6, 7 and 9. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 I.
Regarding claims 10-12, Horiuchi teaches (Abstract; Table 1, Steel 0.0139B) a ferritic heat-resistant steel that has composition as shown in Table 1 below:
Element
Claim 10
(mass %)
Horiuchi
(mass %)
JP’063
(mass %)
C
0.06-0.11
0.078
0.05-0.12
Si
0.15-0.35
0.3
0.2-0.5
Mn
0.35-0.65
0.51
0.3-0.6
P
≤0.02
<0.001
≤0.02
S
≤0.003
<0.001
≤0.005
Ni
0.005-0.25
----
≤0.5
Cu
0.005-0.25
----
≤1.5
Co
2.7-3.3
3.01
0-5
Cr
8.3-9.7
8.99
8-12
W
2.5-3.5
2.91
1.5-3.5
V
0.15 – 0.25
0.19
0.15-0.25
Nb
0.036-0.08
0.05
0.03-0.08
Ta
0.002-0.04
---
≤0.05
Nd
0.01-0.06
---
≤0.05
B
0.006-0.016
0.0139
0-0.015
N
0.005-0.015
0.0034 (close)
0.005-0.07
Al
0-0.02
0
0-0.015
O
0-0.02
0.002
Fe + Impurities
Balance
Balance
Balance
The composition disclosed by Horiuchi meets the recited amount of C, Si, Mn, P, S, Co, Cr, W, V, Nb, B, Al, O and close to the recited amount of N in claim 10. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Thus, the recited C, Si, Mn, P, S, Co, Cr, W, V, Nb, B, Al, O and N composition is a prima facie case of obviousness over Horiuchi. See MPEP 2144.05 I.
Horiuchi does not teach the amount of Ni, Cu, Ta, Nd and Ti as recited in claims 1, 3 and 5.
JP’063 teaches a ferritic heat-resistant steel that is analogous to the steel of Horiuchi (Abstract). JP’063 further discloses that 0.5 mass% or less Ni reduces creep, 1.5 mass% or less Cu stabilized austenite, and 0.05 mass% or less Ta, 0.05 mass% or less Nd and 0.05 mass% or less Ti all improve creep strength (Page 8-9). Thus, it would be obvious to one of ordinary skill in the art to add 0.5 mass% or less Ni, 1.5 mass% or less Cu, 0.05 mass% or less Ta, 0.05 mass% or less Nd, and 0.05 mass% or less Ti as taught by JP’063 in the steel of Horiuchi in order to reduce creep, stabilize austenite and improve creep strength of the steel as disclosed by JP’063. The amount of Ni, Cu, Ta, Nd and Ti overlap the recited ranges in claims 10 and 12. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Thus, the recited amounts of Ni, Cu, Ta, Nd and Ti in claims 10 and 12 are obvious over Horiuchi in view of JP’063. See MPEP 2144.05 I.
Further, JP’063 discloses that 0.005-0.07 mass% N increases high temperature strength (Page 8). Thus, it would be obvious to one of ordinary skill in the art to incorporate 0.005-0.07 mass% N as taught by JP’063 in the steel of Horiuchi in order to improve the high temperature strength as disclosed by JP’063. The amount of N disclosed by JP’063 overlaps the recited N amount in claim 1. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Thus, the recited amount of N is a prima facie case of obviousness over Horiuchi in view of JP’063. See MPEP 2144.05 I.
Horiuchi discloses that [%WER ] =0.27 (Estimated by the Examiner based on Fig. 1 of Horiuchi, Steel 0.0139B). -10x[%B]+0.26=0.121; 10x[%B]+0.54=0.679. Thus, the steel disclosed by Horiuchi meets the recited Formula (1) and Formula (2) in claim 1. Horiuchi discloses that the steel has Hv of 221 (Table 2, Steel 0.0139B), which converts to tensile strength of 715 MPa based on the attached hardness to tensile strength conversion table. The tensile strength of Steel 0.0139B in Horiuchi meets the recited tensile strength in claim 1.
Steel 0.0092B-H disclosed by Horiuchi also meets the recited Formula (1) and Formula (2) and the tensile strength recited in claim 1 as shown below:
-10x[%B]+0.26=0.168; 10x[%B]+0.54=0.632. [%WER] = 0.255. And Hv=219, which converts to tensile strength of 705 MPa.
JP’063 discloses that Steel No. 4 contains 0.021 wt% Ta and 0.035 wt% Nb (Table 5), which meet the recited amount of Ta and close to the recited amount of Nb in claim 10. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Ta+Nb=0.056 wt% and Ta/Nb=0.6, which meets the recited limitation in claim 11. Thus, claims 10-13 are obvious over Horiuchi in view of JP’063.
Regarding claim 13, Horiuchi in view of JP’063 is silent on the fracture toughness as recited in claim 13. However, this limitation depends on the steel composition and the method of making the steel. Horiuchi discloses that the steel is normalized at 1423 K (i.e. 1150 ºC) for 0.5 hour followed by tempering at 1063K (i.e. 790 ºC) for 1 hour (Table 2, Steel 0.0092B-H), which meets the processing condition disclosed in instant Specification.
In view of the fact that Horiuchi in view of JP’063 teaches a steel composition that overlap or close to the recited composition in claim 10 and normalizing and tempering heat treatment parameters that meet the processing conditions disclosed in instant Specification, one of ordinary skill in the art would expect that the steel disclosed by Horiuchi in view of JP’063 to meet the property limitation recited in claim 13. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 I.
Response to Arguments
Applicant's arguments filed 11/20/2025 have been fully considered but they are not persuasive.
First, the applicants argued that amended claim 1 requires that Ta/Nb be 0.10 to 0.46. Among the steels shown in Table 5 of JP '063, only steel No. 4 contains both Ta and Nb, and aside from the fact that its Ta/Nb is 0.6, JP '063 provides no teaching regarding Ta/Nb. Thus, even if the Ta and Nb values of steel No. 4 of JP '063 were applied to the steel of Horiuchi, the combination does not disclose the elements of claim 1.
In response, JP’063 discloses that adding 0.005-0.05 wt. % Ta improves creep strength (Page 9). When 0.005-0.05 wt% Ta is added to Steel 0.0139B of Horiuchi, the steel contains 0.05 wt% Nb and 0.005-0.05 wt% Ta. The mass ratio of Ta to Nb is 0.1-1, which overlaps the recited mass ratio of Ta to Nb in claim 1. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Thus, claim 1 is a prima facie case of obviousness over Horiuchi in view of JP’063. See MPEP 2144.05 I.
Second, the applicants argued that steel No. 4 of JP '063 is the only example that contains both Ta and Nb, but its Nb content is 0.035%. In contrast, claim 10 requires an Nb content of 0.036 to 0.080%.
In response, JP’063 discloses that Steel No. 4 contains 0.021 wt% Ta and 0.035 wt% Nb (Table 5), which meet the recited amount of Ta and close to the recited amount of Nb in claim 10. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Thus, claim 10 is obvious over Horiuchi in view of JP’063.
Conclusion
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/XIAOWEI SU/Primary Examiner, Art Unit 1733