DETAILED ACTION
Claims 1, 3-5, 7, and 9-20 are pending, and claims 1, 3, and 10-20 are currently under review.
Claims 2, 6, and 8 are cancelled.
Claims 4-5, 7, and 9 are withdrawn.
Claims 10-20 are newly added.
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 .
Response to Amendment
The amendment filed 2/11/2026 has been entered. Claims 1, 3-5, 7, and 9, and newly submitted claim(s) 10-20 remain(s) pending in the application.
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.
Claim(s) 1, 3, and 10-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hara et al. (WO2019058422, machine translation referred to herein) alone or alternatively further in view of Shinohara et al. (WO2015012317, machine translation referred to herein).
Regarding claim 1, Hara et al. discloses a steel having a composition as seen in table 1 below [0031-0049]. The examiner notes that the overlap between the steel composition of Hara et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I). Hara et al. does not expressly teach a Ca/S range as claimed. However, the examiner notes that the claimed Ca/S limitation merely further limits the Ca and S amounts, which still overlaps with the disclosed Ca and S ranges of Hara et al. See MPEP 2144.05(I). Hara et al. further teaches that the microstructure of the steel surface can include ferrite and pearlite, and that the microstructure of the body (ie. center) of the steel is acicular ferrite [0057-0062]. Hara et al. further teaches that the surface has a hardness of less than 250 hv, which overlaps with the claimed range [0058]. See MPEP 2144.05(I).
Alternatively, Hara et al. does not expressly teach the claimed Ca/S ratio. Shinohara et al. discloses that it is known to control Ca/S to be between 0.9 to 2.7 to obtain desirable corrosion properties in steel [p.8]. Therefore, it would have been obvious to one of ordinary skill to modify the steel of Hara et al. by specifying a ratio of Ca/s to improve corrosion properties as taught by Shinohara et al.
Table 1.
Element (wt.%)
Claim 1 (wt.%)
Hara et al. (wt.%)
C
0.02 – 0.06
0.03 – 0.08
Si
0.1 – 0.5
0 – 0.5
Mn
0.8 – 1.8
0.8 – 1.6
Cr
0 – 0.05
0 – 1
P
0 – 0.03
0 – 0.02
S
0 – 0.003
0 – 0.003
Al
0 – 0.06
0 – 0.06
N
0 – 0.01
0.001 – 0.008
Nb
0.005 – 0.08
0.006 – 0.1
Ti
0.005 – 0.05
0.001 – 0.03
Ca
0.0005 – 0.005
0.0005 – 0.005
One of Ni, Mo, V
Ni: 0.05 – 0.3
Mo: 0.02 – 0.2
V: 0.005 – 0.1
0 – 1
0 – 0.5
0 – 0.1
Fe & Impurities
Balance
Balance
Regarding claim 3, the aforementioned prior art discloses the steel of claim 1 (see previous). Hara et al. further teaches that the steel has a yield strength of 400 to 630 MPa, which overlaps with the claimed range [0074]. See MPEP 2144.05(I).
Regarding claims 10-20, the aforementioned prior art discloses the steel of claim 1 (see previous). The examiner notes that the above composition of Hara et al. further overlaps with the claimed ranges. See MPEP 2144.05(I).
Claim(s) 1, 3, and 10-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakata et al. (US 2014/0216609) alone or alternatively further in view of Shinohara et al. (WO2015012317, machine translation referred to herein).
Regarding claim 1, Nakata et al. discloses a steel having a composition as seen in table 2 below [0016]. The examiner notes that the overlap between the steel composition of Nakata et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I). Nakata et al. does not expressly teach a Ca/S range as claimed. However, the examiner notes that the claimed Ca/S limitation merely further limits the Ca and S amounts, which still overlaps with the disclosed Ca and S ranges of Nakata et al. See MPEP 2144.05(I). Nakata et al. further teaches that the entire microstructure is made of bainitic ferrite, which one of ordinary skill would understand to be synonymous with acicular ferrite, which meets the claimed limitations of a surface portion of generally ferrite and a center portion acicular ferrite [0048]. Nakata et al. further teaches that the surface has a hardness of less than 220 hv, which overlaps with the claimed range [0014]. See MPEP 2144.05(I).
Alternatively, Nakata et al. does not expressly teach the claimed Ca/S ratio. Shinohara et al. discloses that it is known to control Ca/S to be between 0.9 to 2.7 to obtain desirable corrosion properties in steel [p.8]. Therefore, it would have been obvious to one of ordinary skill to modify the steel of Nakata et al. by specifying a ratio of Ca/s to improve corrosion properties as taught by Shinohara et al.
Table 2.
Element (wt.%)
Claim 1 (wt.%)
Nakata et al. (wt.%)
C
0.02 – 0.06
0.01 – 0.07
Si
0.1 – 0.5
0 – 0.4
Mn
0.8 – 1.8
0.5 – 1.4
Cr
0 – 0.05
0 – 0.6
P
0 – 0.03
0 – 0.015
S
0 – 0.003
0 – 0.003
Al
0 – 0.06
0 – 0.1
N
0 – 0.01
0 – 0.008
Nb
0.005 – 0.08
0.01 – 0.15
Ti
0.005 – 0.05
0 – 0.03
Ca
0.0005 – 0.005
0 – 0.005
One of Ni, Mo, V
Ni: 0.05 – 0.3
Mo: 0.02 – 0.2
V: 0.005 – 0.1
0 – 0.5
0 – 0.3
0 – 0.1
Fe & Impurities
Balance
Balance
Regarding claim 3, the aforementioned prior art discloses the steel of claim 1 (see previous). Nakata et al. further teaches that the steel has a yield strength of 450 MPa or more [0013].
Regarding claims 10-20, the aforementioned prior art discloses the steel of claim 1 (see previous). The examiner notes that the above composition of Nakata et al. further overlaps with the claimed ranges. See MPEP 2144.05(I).
Response to Arguments
Applicant's arguments, filed 2/11/2026, regarding the rejections over Hara et al. have been fully considered but they are not persuasive.
Applicant argues that Hara et al. requires other microstructural phases and only teaches ferrite and/or pearlite as a residual structure in the surface, which is different from the claims which “consist” of ferrite or ferrite and pearlite. In response, the examiner notes that the instant claims do not recite “consists” and therefore do not omit other microstructures from the surface. Therefore, applicant’s arguments are moot. The claims merely recite “ferrite or ferrite and pearlite” in the surface, which is met by the disclosure of Hara et al. because Hara et al. discloses a remainder of ferrite and pearlite in the surface among other phases. If applicant is of the position that non-recited microstructure should be omitted from the claim scope, the examiner invites applicant to amend the claims accordingly.
Applicant again argues that the manufacturing of Hara et al. is different than that of the instant application. In response, the examiner notes that the instant claims are directed to a product, not a process, such that applicant’s arguments are moot. Since the prior art already meets all of the claimed limitations as stated above, the examiner notes that any difference in processing is irrelevant.
Applicant argues that Shinohara et al. requires a microstructure that is different from the instant application. The examiner cannot concur. Shinohara et al. includes ferrite, which meets the instantly claimed microstructure of “a surface portion composed of ferrite”. Nonetheless, it is noted that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). As stated above, the reliance upon Shinohara et al. is merely to demonstrate obviousness of the claimed Ca and S formula.
Applicant's arguments, filed 2/11/2026, regarding the rejections over Nakata et al. have been fully considered but they are not persuasive.
Applicant argues that Nakata et al. does not teach that the center and surface have different microstructures as required by the claims. The examiner cannot concur. The claims do not require different microstructures in the center and surface. Rather, the claimed merely recite a center of acicular ferrite and a surface of ferrite or ferrite and pearlite, wherein one of ordinary skill would readily understand that acicular ferrite is a type of ferrite. Therefore, the microstructure of Nakata et al. reasonably meets all of the claimed limitations.
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 NICHOLAS A WANG whose telephone number is (408)918-7576. The examiner can normally be reached usually M-Th: 7-5.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734
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