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 .
Information Disclosure Statement
The IDS filed on 12/31/2025 is after the final rejection mailed on 07/31/2025. The submission is in compliance with the provisions of 37 CFR 1.97 (No IDS size fee is required). Accordingly, the IDS has been considered by the examiner.
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 l.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and the fee set forth in 37 CFR l.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/31/2025 has been entered.
Response to Amendments / Status of Claims
An amendment, filed 12/31/2025, is acknowledged.
Claims 1-10 and 13-17 are currently pending.
Claims 1 is amended, incorporating the limitation from claim 11 into claim 1. Therefore, no new mater.
Claims 11-12, are cancelled.
Claims 13-15, and 17 are withdrawn.
Claims 16 is newly added by incorporating the limitations of claim 1 and previous claim 12. The newly presented claim 16 is in the Group I drawn to a spring wire manufactured from steel in the original requirement of restriction/election dated 09/13/2024, and will be treated as the original election made on 11/13/2024.
Claims 17, newly added and withdrawn by the applicant.
Therefore, claims 1-10 and 16 are currently under examination on the merits.
Status of Previous Rejections
The previous 35 USC § 103 rejections of the claims have been withdrawn.
Claim Rejections - 35 USC § 103
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.
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 1-10 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Iwanaga, Kengo, et.al. [EP3330399B1] and in view of Ollilainen, Vesa et.al. [EP1700925B1].
Regarding claims 1, Kengo discloses a spring wire made of steel [Section 0009-0011] and are being compared with those recited in the instant claim 1 are being listed in the following table.
Element
Instant Claim 1
(wt.%)
EP333039981 (wt.%) [Section 00010, claim 1]
EP1700925B1 (wt.%)
[claim 1]
Within the range/Overlapping
C
0.35-0.42
0.4 - 0.7
0.15 – 0.6
Overlapping
Si
1.5-1.8
0.8 – 2.2
1.25 – 2.0
Overlapping
Mn
0.5-0.8
0.05 -1.5
0.5 – 1.6
Overlapping
Cr
0.05-0.25
0.05 -1.0
0 – 1.5
Overlapping
Nb
0.02 – 0.1
0.1 or less
0 – 0.1
Overlapping
V
0.02 – 0.1
0.05 or less
0.04 – 0.2
Overlapping
N
0.004-0.012
Precipitate of AlN, NbN etc.
0.012 – 0.04
Overlapping
Al
≤ 0.03
0.5 or less
0 – 0.1
Overlapping
P
Upto 0.025
0.02 or less
Overlapping
S
Upto 0.025
0.02 or less
0 – 0.2
Overlapping
Fe and impurities
Balance
Balance
Fe and impurities
Overlapping
Properties
Reduction of area
At least 55%
At least 55%
40% or more, preferably 55% or more [Section 0041]
Within
Kengo’s alloy composition, except nitrogen content is overlapping with the as recited in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have composition selected from Kengo, because “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)” [See MPEP § 2144.05.I].
Kengo’s reduction of area in tensile test is overlapping with the as recited in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have reduction of area in tensile test selected from Kengo, because “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)” [See MPEP § 2144.05.I].
Kengo teaches both Al and Nb are effective for suppressing coarsening of the austenite grains due to precipitates of AIN, NbN etc. on the other hand, coarse inclusions forming the initiation points of fracture are easily formed, therefore, from the viewpoint of lowering the amount of solute N for these elements need to be within the limit [Section 0030, 0032]. Given this teaching, it would have been obvious to one of ordinary skill in the art, that Kengo’s steel product would comprise nitrogen and nitrogen would have expected to be in a limit, but Kengo is silent about the amount.
However, Vesa teaches similar steel composition as shown above table, with an overlapping content of N. Vesa teaches vanadium is an effective precipitation hardener and is functional as a grain-size growth inhibitor [Section 0028]. Nitrogen is an effective hardener, either as such or together with vanadium. Niobium also functions as a precipitation hardener the same way as vanadium. Vesa also teaches, the amount of nitrogen should be lower, as high concentrations of nitrogen make larger precipitation and may degrade the surface quality of the steel [Section 0028-0031].
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have nitrogen composition selected from Vesa, because “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)” [See MPEP § 2144.05.I].
Vesa’s is directed to steel product having similar steel composition and therefore, is analogous to Kengo as well as the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have Vesa’s teaching of nitrogen to modify Kengo for having a steel product with suppressing coarsening of the austenite grains by controlling the nitride precipitates.
Regarding claims 2-9, all the above discussion regarding claim 1 is applicable to claim 2-9, wherein as shown in the table Kengo’s alloy composition for each and every element [Section 0010, and claim1] is overlapping with the as recited in the corresponding instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have composition selected from Kengo, because “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)” [See MPEP § 2144.05.I].
Regarding claims 10, all the above discussion regarding claim 1 is applicable to claim 10, wherein, Kengo teaches both Al and Nb are effective for suppressing coarsening of the austenite grains due to precipitates of AIN, NbN etc. on the other hand, coarse inclusions forming the initiation points of fracture are easily formed, therefore, from the viewpoint of lowering the amount of solute N for these elements need to be within the limit [Section 0030, 0032]. Given this teaching, it would have been obvious to one of ordinary skill in the art, that Kengo’s steel product would comprise nitrogen, but Kengo is silent about the percentage amount.
However, Vesa teaches similar steel composition as shown above table, with an overlapping value of N. Vesa teaches vanadium is an effective precipitation hardener and is functional as a grain-size growth inhibitor [Section 0028]. Nitrogen is an effective hardener, either as such or together with vanadium. Niobium also functions as a precipitation hardener the same way as vanadium. Vesa also teaches, high concentrations of nitrogen thus make larger precipitation and may nevertheless degrade the surface quality of the steel [Section 0028-0031].
Vesa’s nitrogen content is overlapping with as recited in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have nitrogen composition selected from Vesa, because “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)” [See MPEP § 2144.05.I].
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have Vesa’s teaching of nitrogen to modify Kengo for having a steel product with suppressing coarsening of the austenite grains by controlling the nitride precipitates.
Regarding claims 16, Kengo discloses a spring wire made of steel [Section 0009-0011] and are being compared with those recited in the instant claim 16 are being listed in the following table.
Element
Instant Claim 16
(wt.%)
EP333039981 (wt.%) [Section 00010, claim 1]
EP1700925B1 (wt.%)
[claim 1]
Within the range/Overlapping
C
0.35-0.42
0.4 - 0.7
0.15 – 0.6
Overlapping
Si
1.5-1.8
0.8 – 2.2
1.25 – 2.0
Overlapping
Mn
0.5-0.8
0.05 -1.5
0.5 – 1.6
Overlapping
Cr
0.05-0.25
0.05 -1.0
0 – 1.5
Overlapping
Nb
0.02 – 0.1
0.1 or less
0 – 0.1
Overlapping
V
0.02 – 0.1
0.05 or less
0.04 – 0.2
Overlapping
N
0.004-0.012
Precipitate of AlN, NbN etc.
0.012 – 0.04
Overlapping
Al
≤ 0.03
0.5 or less
0 – 0.1
Overlapping
P
Upto 0.025
0.02 or less
Overlapping
S
Upto 0.025
0.02 or less
0 – 0.2
Overlapping
Fe and impurities
Balance
Balance
Fe and impurities
Overlapping
Kengo’s alloy composition, except nitrogen is overlapping with the as recited in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have composition selected from Kengo, because “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)” [See MPEP § 2144.05.I].
Kengo teaches both Al and Nb are effective for suppressing coarsening of the austenite grains due to precipitates of AIN, NbN etc. on the other hand, coarse inclusions forming the initiation points of fracture are easily formed, therefore, from the viewpoint of lowering the amount of solute N for these elements need to be within the limit [Section 0030, 0032]. Given this teaching, it would have been obvious to one of ordinary skill in the art, that Kengo’s steel product would comprise nitrogen, but Kengo is silent about the percentage amount.
Kengo also teaches it is possible to realize both the shape of prior austenite grains at the surface layer part of the spring steel and optimization of the texture at the inside of the spring steel, after the steel is tempered to obtain spring steel with a tensile strength of 1800 MPa or more, a reduction of area in tensile test of 40% or more [0016], but Kengo is silent about the grain size.
However, Vesa teaches similar steel composition as shown above table, with an overlapping value of N. Vesa teaches vanadium is an effective precipitation hardener and is functional as a grain-size growth inhibitor [Section 0028]. Nitrogen is an effective hardener, either as such or together with vanadium. Niobium also functions as a precipitation hardener the same way as vanadium. Vesa also teaches, high concentrations of nitrogen thus make larger precipitation and may nevertheless degrade the surface quality of the steel [Section 0028-0031].
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have nitrogen composition selected from Vesa, because “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)” [See MPEP § 2144.05.I].
Vesa further teaches the grain size is at least ASTM 10 (greater than ASTM 10) [Claim 1], which is within as recited in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have grain size selected from Vesa, because “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)” [See MPEP § 2144.05.I].
Vesa’s is directed to steel product having similar steel composition and therefore, is analogous to Kengo as well as the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have Vesa’s teaching of nitrogen to modify Kengo for having a steel product with suppressing coarsening of the austenite grains by controlling the nitride precipitates.
Claim 16 is alternatively rejected under 35 U.S.C. 103 as being unpatentable over Ollilainen, Vesa et.al. [EP1700925B1].
Regarding claims 16, Vesa discloses a steel composition and is being compared with those recited in the instant claim 16 are being listed in the following table.
Element
Instant Claim 16
(wt.%)
EP1700925B1 (wt.%)
[claim 1]
Within the range/Overlapping
C
0.35-0.42
0.15 – 0.6
Overlapping
Si
1.5-1.8
1.25 – 2.0
Overlapping
Mn
0.5-0.8
0.5 – 1.6
Overlapping
Cr
0.05-0.25
0 – 1.5
Overlapping
Nb
0.02 – 0.1
0 – 0.1
Overlapping
V
0.02 – 0.1
0.04 – 0.2
Overlapping
N
0.004-0.012
0.012 – 0.04
Overlapping
Al
≤ 0.03
0 – 0.1
Overlapping
P
Upto 0.025
Overlapping
S
Upto 0.025
0 – 0.2
Overlapping
Fe and impurities
Balance
Fe and impurities
Overlapping
Vesa’s alloy composition, is overlapping with the as recited in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have composition selected from Vesa because “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)” [See MPEP § 2144.05.I].
Vesa further teaches the austenite grain size greater than ASTM 10 [Claim 1], which is within as recited in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have grain size selected from Vesa, because “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)” [See MPEP § 2144.05.I].
Vesa teaches vanadium is an effective precipitation hardener and is functional as a grain-size growth inhibitor [Section 0028]. Nitrogen is an effective hardener, either as such or together with vanadium. Niobium also functions as a precipitation hardener the same way as vanadium. Vesa also teaches, high concentrations of nitrogen thus make larger precipitation and may nevertheless degrade the surface quality of the steel [Section 0028-0031].
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have Vesa’s teaching for having a steel product with suppressing coarsening of the austenite grains by controlling the nitride precipitates.
Response to Arguments
Applicant’s arguments with respect to claim 1 filed 12/31/2025, have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
A new 35 USC § 103 rejections of the claims 1-10 and 16 have been associated with this office action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NAZMUN NAHAR SHAMS whose telephone number is (571)272-5421. The examiner can normally be reached M-F 11:00 AM-7:00PM (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached on (571)2726297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NAZMUN NAHAR SHAMS/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738