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 .
Priority
Receipt is acknowledged of a certified copy of KR 10-2019-0172410 filed December 20, 2019 as required by 37 CFR 1.55. Receipt is also acknowledged of a copy of WO 2021/125435, the WIPO publication of PCT/KR2020/001721 filed February 6, 2020.
Claim Status
This Office Action is in response to Applicant’s Remarks and Claim Amendments filed December 31, 2025.
Claims Filing Date
December 31, 2025
Amended
1
Cancelled
2, 6, 14
Pending
1, 3-5, 7-13
Withdrawn
7-13
Under Examination
1, 3-5
Response to Remarks filed December 31, 2025
Ochi as evidenced by ASTM E112-88 and in view of Kubota; Ochi as evidenced by ASTM E112-88 and in view of Honda
Applicant's arguments filed December 31, 2025 have been fully considered but they are not persuasive.
The applicant argues a microstructure in which the average aspect ratio of cementite remains 2.5 or less even after one softening heat treatment is a structural feature that may emerge when the deformation amount, temperature conditions, control of surface temperature difference before and after rolling, and rapid cooling and subsequent slow cooling conditions defined in the application operate in an integrated manner (Remarks p. 6 para. 8), where applicant’s disclosed manufacturing process controls the dislocation density and subgrain distribution, adjusting HAGBs and LAGBs within the target range and preventing excessive cementite elongation after softening, maintaining an aspect ratio of 2.5 or less in a stable manner (Remarks para. spanning pp. 6-7, p. 7 para. 2), whereas the technical purpose of Ochi suppresses network cementite and facilitates spheroidization annealing is a different concept (Remarks p. 7 para. 3, para. spanning pp. 7-8).
Applicant’s argument that claim 1 lines 10-11 “an average aspect ratio of cementite is 2.5 or less after performing softening heat treatment once” is a structural feature that results from applicant’s disclosed processing is acknowledged. It appears that this feature is a result of the grain boundary features recited in claim 1.
Ochi in view of Kubota discloses the claimed bearing wire rod (Ochi [0002], [0040]) with an overlapping composition (Ochi [0011], [0016]-[0027], Table 1) and prior austenite grain size (Ochi [0039]) that is processed by a substantially similar process, including deformation amount (Ochi [0016]-[0019], [0029]-[0033]), temperature conditions (Ochi [0028]-[0033]), control of surface temperature difference before and after rolling (Kubota [0023]-[0024]), and rapid cooling and subsequent slow cooling conditions (Ochi [0034]-[0036]). Therefore, the resulting structural features of the prior art are substantially similar to the resulting structural features claimed, including the claimed grain boundaries features and the average aspect ratio of cementite being 2.5 or less after performing softening heat treatment once.
Ochi in view of Honda discloses the claimed bearing wire rod (Ochi [0002], [0040]) with an overlapping composition (Ochi [0011], [0016]-[0027], Table 1) and prior austenite grain size (Ochi [0039]) that is processed by a substantially similar process, including deformation amount (Ochi [0016]-[0019], [0029]-[0033], temperature conditions (Ochi [0028]-[0033]), control of surface temperature difference before and after rolling (Honda [0013]-[0015], [0025]-[0027]), and rapid cooling and subsequent slow cooling conditions (Ochi [0034]-[0036]). Therefore, the resulting structural features of the prior art are substantially similar to the resulting structural features claimed, including the claimed grain boundaries features and the average aspect ratio of cementite being 2.5 or less after performing softening heat treatment once.
In response to applicant's argument that applicant’s manufacturing process controls dislocation density and subgrain distribution, adjusting HAGBs and LAGBs within the target range, preventing excessive cementite elongation after softening, and EBSD-measurable grain boundary characteristics that control the final cementite morphology the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
The applicant argues applicant’s inventive and comparative examples demonstrate the claimed features where the comparative examples exclude or alter process conditions and the cementite aspect ratio exceeds 2.5 and tensile properties do not reach the intended performance, supporting the intended microstructure is only formed when all process conditions are satisfied (Remarks p. 8 para. 6).
Applicant’s specification includes Comparative Examples 1-4. Comparative Examples 1-2 have compositions outside of the claim scope. Comparative Examples 3-4 have compositions within the claim scope, but processing conditions outside of that disclosed by applicant. However, multiple processing conditions are outside of the scope. In Comparative Example 3, at least the heating temperature, average AGS before finish rolling, finish rolling temperature, Tpf-Tf, and cooling rate to 500°C are all outside the scope of applicant’s invention. In Comparative Example 4, at least the average AGS before finish rolling, Tpf-Tf, and cooling rate after 500°C are all outside the scope of applicant’s invention. In contrast, Ochi in view of Kubota and Ochi in view of Honda both disclose processing conditions that are within the scope of applicant’s invention (Ochi [0016]-[0019], [0028]-[0036]; Kubota [0023]-[0024]; Honda [0013]-[0015], [0025]-[0027]).
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate ins cope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. MPEP 716.02(d). Further, the claimed subject matter must be compared with the closest prior art to be effective to rebut a prima facie case of obviousness. MPEP 716.02(e).
Applicant’s specification include two comparative examples outside of the processing scope of applicant’s invention, which is insufficient to establish criticality.
To establish criticality over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. MPEP 716.02(II).
The applicant argues against the combination of Ochi and Kubota because Ochi suppresses network cementite and improves spheroidization annealing behavior, focusing on carbide distribution during annealing and improvement of fatigue characteristics, whereas Kubota suppresses surface defects by maintaining surface temperature during hot rolling, such that internal grain boundary structure and cementite aspect ratio are not controlled (Remarks p. 8 para. 2), such that Ochi and Kubota differ in purpose from the pending application of configuring internal microstructure, including HAGBs and LAGBs, to achieve a specific final cementite morphology (Remarks p. 8 para. 3).
Both Ochi and Kubota produce steel wire (Ochi [0002], [0040]; Kubota [0001]) by hot rolling (Ochi [0028]-[0033]; Kubota [0023]-[0024]). Kubota discloses the same surface temperature before and after hot rolling advantageously prevents the formation of subscale (Kubota [0024]).
Further, in order for a reference to be proper for use in an obviousness rejection under 35 U.S.C. 103, the reference must be analogous art to the claimed invention. A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention.” MPEP 2141.01(a).
Ochi is analogous art to the claimed invention because it is in the same field of endeavor of a bearing wire rod (Ochi [0002], [0040]) with an overlapping composition (Ochi [0011], [0016]-[0027], Table 1) and prior austenite grain size (Ochi [0039]) (applicant’s claim 1) manufactured by a substantially similar process (Ochi [0028]-[0036]; applicant’s specification [00070]-[00088]).
Kubota is analogous art to the claimed invention because it is reasonably pertinent to the problem faced by the inventor of controlling the average surface temperature of the wire rod before and after finish hot rolling, which impacts the surface features of the wire rod (Kubota [0023]-[0024]; applicant’s specification [00082]-[00085]).
The applicant argues Honda prevents decarburization and improves surface quality (Remarks p. 8 para. 4), which is a different technical challenge than Ochi and lacks control of the grain boundaries of the present application (Remarks p. 8 para. 5).
Both Ochi and Honda produce steel wire (Ochi [0002], [0040]; Honda [0001]) by hot rolling (Ochi [0028]-[0033]; Honda [0013]-[0015], [0025]-[0027]). Ochi heats to 900 to 1150°C and final hot rolls at 700 to 800°C (Ochi [0028]-[0033]). Honda hot rolls by heating to 900 to 1250°C and not exposing to 650 to 750°C for more than 60 seconds and finish rolling at 700 to 900°C (Honda [0013]-[0015], [0025]-[0027]). Therefore, the hot rolling heating and finishing temperature of Ochi and Honda overlap. Honda also discloses maintaining the surface temperature during hot rolling advantageously prevents a large amount of ferrite and a decarburized surface layer as well as cracks and achieves a uniform softened structure (Honda [0026]-[0027]).
Further, in order for a reference to be proper for use in an obviousness rejection under 35 U.S.C. 103, the reference must be analogous art to the claimed invention. A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention.” MPEP 2141.01(a).
Ochi is analogous art to the claimed invention because it is in the same field of endeavor of a bearing wire rod (Ochi [0002], [0040]) with an overlapping composition (Ochi [0011], [0016]-[0027], Table 1) and prior austenite grain size (Ochi [0039]) (applicant’s claim 1) manufactured by a substantially similar process (Ochi [0028]-[0036]; applicant’s specification [00070]-[00088]).
Honda is analogous art to the claimed invention because it is reasonably pertinent to the problem faced by the inventor of controlling the average surface temperature of the wire rod before and after finish hot rolling, which impacts the surface features of the wire rod (Honda [0013]-[0015], [0025]-[0027]; applicant’s specification [00082]-[00085]).
For the above cited reasons the rejections of Ochi as evidenced by ASTM E112-88 and in view of Kubota and of Ochi as evidenced by ASTM E112-88 and in view of Honda are maintained.
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.
Claims 1 and 3-5 are 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.
Claim 1 lines 10-11 “wherein an average aspect ratio of cementite is 2.5 or less after performing softening heat treatment once” renders the claim indefinite. Does this limitation require the structure of the bearing rod to have an average aspect ratio of cementite of 2.5 or less or is the feature of an average aspect ratio of cementite of 2.5 or less a property of the bearing wire rod that results after performing softening heat treatment once? Is the claimed bearing wire rod in a state that is prior to or after softening heat treatment once?
In applicant’s specification examples, the claimed grain boundary features are manufactured ([00097]-[000106], Tables 1-3) then spheroidizing heat treatment is performed once ([000107]-[000110], Table 4). For the purpose of examination in light of applicant’s specification claim 1 lines 10-11 will be interpreted as an average aspect ratio of cementite of 2.5 or less being a property of the claimed bearing wire rod that results from performing softening heat treatment once.
Claim 3 line 2 “reticulated proeutectoid cementite in grain boundaries” renders the claim indefinite. How does the cementite in claim 3 relate to the cementite in claim 1 lines 10-11? Is it the same or different? For the purpose of examination claim 3 will be interpreted as the cementite being different, such that the reticulated proeutectoid cementite in the grain boundaries is required as part of the structure of the bearing wire rod.
Claim 4 is rejected as depending from claim 3.
Claim 5 is rejected as depending from claim 1.
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.
Claims 1, 3, and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Ochi (JP H06-299240 machine translation) as evidenced by ASTM E112-88 and in view of Kubota (JP 2011-177775 machine translation).
Regarding claim 1, Ochi discloses a bearing wire rod ([0002], [0040]) composition that overlaps with that claimed ([0011], [0016]-[0027], Table 1),
wherein a prior austenite grain size of a microstructure is from 3 to 10 um (prior austenite grain size is No. 9 or more: average grain diameter of 16 um or less, ASTM E112-88 Table 2) ([0039]).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Element
Claim 1 (wt%)
Ochi Disclosure (wt%)
Ochi Citation
C
0.8 to 1.2
0.80 to 1.20
[0016]
Si
0.01 to 0.6
0.15 to 1.50
[0017]
Mn
0.1 to 0.6
0.15 to 1.50
[0018]
Cr
1.0 to 2.0
0.50 to 1.60
[0019]
Al
0.01 to 0.06
0.015 to 0.05
[0021]
N
0.02 or less (exclusive of 0)
0.004 to 0.015
[0022]
Fe
balance
Balance
[0011]
The limitation of a sum of lengths of high angle grain boundaries having a misorientation angle of 15° or more per unit area being from 1,000 to 4,000 mm/mm2 has been considered and determined to recite a property of the claimed bearing wire rod. Ochi discloses a process ([0028]-[0036]) that is substantially similar to that disclosed in applicant’s invention to make the claimed bearing wire rod (applicant’s specification [00064]-[00088]).
Applicant’s Disclosure
Applicant’s Citation
Ochi Disclosure
Ochi Citation
Heating 950 to 1050°C
[00070]-[00072]
Heating 900 to 1150°C
[0028]
Finish hot rolling between Ae1 to Acm°C with a critical deformation of Expression(1) or more
[00073]-[00080]
Final rolling at 700 to 880°C with 50% or more total area reduction
[0029]-[0033]
Expression (1)= -1.6Ceq2+3.11Ceq-0.48
[00078]
0.01 to 1.0
[0016], [0018], [0019]
Ceq= C+Mn/6+Cr/5
[00079]
0.925 to 1.77
[0016], [0018], [0019]
During hot rolling Tpf-Tf<=50°C
[00082]-[00085]
-
-
Cooling to a range of 500 to 600°C at 3°C/sec or more
[00086]
Quenching to 550 to 700°C at 10°
[0034]-[0035]
Cooling at 1°C/sec or less
[00088]
Cooling at 0.05 to 1.0°C/sec
[0036]
The process of Ochi is silent to controlling the average surface temperature of the wire rod before and after finish hot rolling.
Kubota discloses producing steel wire ([0001]) by hot rolling while maintaining the surface temperature until hot rolling is complete (the surface temperature before and after hot rolling is the same) ([0023]-[0024]).
It would have been obvious to one of ordinary skill in the art in the process of Ochi to maintain the surface temperature during hot rolling to prevent the formation of subscale (Kubota [0024]).
The prior art discloses a composition (Ochi [0011], [0016]-[0027], Table 1) that is substantially similar to that claimed and manufactured by a process (Ochi [0028]-[0036]; Kubota [0023]-[0024]) that is substantially similar to that of applicant’s invention (applicant’s specification [00064]-[00088]). Therefore, the properties of the prior art naturally flow from the disclosure of the prior art, including a sum of lengths of high angle grain boundaries having a misorientation angle of 15° or more per unit area being from 1,000 to 4,000 mm/mm2.
The limitations of a sum of lengths of low angle grain boundaries having a misorientation angle of 15° or less per unit area being from 250 to 800 mm/mm2, a ratio of grain boundaries having a misorientation angle of 5° or less to the low angle grain boundaries being from 40 to 80%, and an average aspect ratio of cementite being 2.5 or less after performing softening heat treatment once have been considered and determined to recite properties of the claimed bearing wire rod. The prior art discloses a composition (Ochi [0011], [0016]-[0027], Table 1) that is substantially similar to that claimed manufactured by a process (Ochi [0028]-[0036]; Kubota [0023]-[0024]) that is substantially similar to that of applicant’s invention (applicant’s specification [00064]-[00088]). Therefore, the properties of the prior art naturally flow from the disclosure of the prior art, including a sum of lengths of low angle grain boundaries having a misorientation angle of 15° or less per unit area being from 250 to 800 mm/mm2, a ratio of grain boundaries having a misorientation angle of 5° or less to the low angle grain boundaries being from 40 to 80%, and an average aspect ratio of cementite of 2.5 or less after performing softening heat treatment once.
Regarding claim 3, Ochi discloses the microstructure comprises reticulated proeutectoid cementite in grain boundaries and pearlite in grains ([0006]).
Regarding claim 5, the limitations of a tensile strength of 1,200 MPa or more and a reduction in area (RA) of 20% or more have been considered and determined to recite properties of the claimed bearing wire rod. The prior art discloses a composition (Ochi [0011], [0016]-[0027], Table 1) that is substantially similar to that claimed manufacturing by a process (Ochi [0028]-[0036]; Kubota [0023]-[0024]) that is substantially similar to that of applicant’s invention (applicant’s specification [00064]-[00088]). Therefore, the properties of the prior art naturally flow from the disclosure of the prior art, including a tensile strength of 1,200 MPa or more and a reduction in area (RA) of 20% or more.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Ochi (JP H06-299240 machine translation) as evidenced by ASTM E112-88 and in view of Kubota (JP 2011-177775 machine translation) as applied to claim 3 above, and further in view of Koizumi (JP 2003-171737 machine translation).
Regarding claim 4, Ochi discloses the pearlite has lamellar spacing ([0006]) that is controlled by cooling ([0009], [0036]).
Ochi is silent to lamellar spacing value.
Koizumi discloses a bearing steel wire rod ([0001]) with an interlamellar spacing in the pearlite of from 0.05 to 0.2 um (0.15 um or less) ([0014], [0017], [0026]-[0029], [0034]).
It would have been obvious to one of ordinary skill in the art for the pearlite lamellar spacing of Ochi to be 0.15 um or less so that the cementite plates are thinner, making the pearlite more easily deformable, improving ductility (Koizumi [0027]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Ochi (JP H06-299240 machine translation) as evidenced by ASTM E112-88 and in view of Kubota (JP 2011-177775 machine translation) as applied to claim 3 above, and further in view of Kochi (JP 2010-132943 machine translation).
Regarding claim 4, Ochi discloses the pearlite has lamellar spacing ([0006]) that is controlled by cooling ([0009], [0036]).
Ochi is silent to lamellar spacing value.
Kochi discloses a hot-rolled wire rod ([0001]) with an interlamellar spacing in the pearlite is from 0.05 to 0.2 um (160 to 250 nm, 0.160 to 0.250 um) ([0008], [0030], [0032]-[0035]).
It would have been obvious to one of ordinary skill in the art for the pearlite lamellar spacing of Ochi to be 160 to 250 nm (0.160 to 0.250 um) because the larger the pearlite lamellar spacing, the lower the wire strength and the lower the temperature rise (processing heat) during wire drawing (Kochi [0033]), but too large pearlite lamellar spacing deteriorates wire drawability because ductility is reduced, making voids more likely to occur (Kochi [0034]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Ochi (JP H06-299240 machine translation) as evidenced by ASTM E112-88 and in view of Kubota (JP 2011-177775 machine translation) as applied to claim 1 above and further in view of Aihara (JP S57-057837 machine translation).
In the event it is determined that the claimed tensile strength and reduction in area do not naturally flow from the disclosure of Ochi in view of Kubota, then the below rejection in view of Aihara is applied.
Regarding claim 5, Ochi does not recite the tensile strength and reduction in area of the bearing wire rod.
Aihara discloses a high carbon wire rod (p. 1 paras. 1-2) with a tensile strength of 120 kgf/mm2 (1180 MPa) or more (p. 1 para. 3, p. 2 para. 1, Fig. 1) and a reduction in area of about 30 to 55% (Fig. 1).
It would have been obvious to one of ordinary skill in the art for the steel of Ochi to have a tensile strength of 120 kgf/mm2 (1180 MPa) or more and a reduction in area of about 30 to 50% to advantageously improve tensile strength and ductility (Aihara p. 2 para. 1). Further, Aihara discloses tensile strength and reduction in area are influenced by pearlite transformation temperature, where lower pearlite transformation temperature improves strength and ductility (p. 2 para. 1). One of ordinary skill in the art would understand how to modify the pearlite transformation temperature to achieve the desired properties of tensile strength and reduction in area. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Ochi (JP H06-299240 machine translation) as evidenced by ASTM E112-88 and in view of Kubota (JP 2011-177775 machine translation) as applied to claim 1 above and further in view of Murai (US 4,775,429).
In the event it is determined that the claimed tensile strength and reduction in area do not naturally flow from the disclosure of Ochi in view of either one of Kubota, then the below rejection in view of Murai is applied.
Regarding claim 5, Ochi does not recite the tensile strength and reduction in area of the bearing wire rod.
Murai discloses a hot rolled steel bar (1:11-15) with a tensile strength of at least 120 kg/mm2 (1180 MPa) and a reduction in area of at least 20% (2:68 to 3:1).
It would have been obvious to one of ordinary skill in the art for the steel of Ochi to have a tensile strength of 120 kg/mm2 (1180 MPa) or more and a reduction of area of 20% or more to obtain both high strength and high toughness (Murai 5:9-10). Further, Murai discloses the tensile strength is obtained by effecting controlled cooling for pearlite transformation (4:48-68) and the combination of higher strength and higher toughness is achieved through smaller crystal grain size, which is dependent upon lowering the finish rolling temperature (5:1-17). One of ordinary skill in the art would understand how to control the cooling and finish rolling temperature to achieve the desired properties. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Claims 1, 3, and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Ochi (JP H06-299240 machine translation) as evidenced by ASTM E112-88 and in view of Honda (JP 2000-256740 machine translation).
Regarding claim 1, Ochi discloses a bearing wire rod ([0002], [0040]) composition that overlaps with that claimed ([0011], [0016]-[0027], Table 1),
wherein a prior austenite grain size of a microstructure is from 3 to 10 um (prior austenite grain size is No. 9 or more: average grain diameter of 16 um or less, ASTM E112-88 Table 2) ([0039]).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Element
Claim 1 (wt%)
Ochi Disclosure (wt%)
Ochi Citation
C
0.8 to 1.2
0.80 to 1.20
[0016]
Si
0.01 to 0.6
0.15 to 1.50
[0017]
Mn
0.1 to 0.6
0.15 to 1.50
[0018]
Cr
1.0 to 2.0
0.50 to 1.60
[0019]
Al
0.01 to 0.06
0.015 to 0.05
[0021]
N
0.02 or less (exclusive of 0)
0.004 to 0.015
[0022]
Fe
balance
Balance
[0011]
The limitation of a sum of lengths of high angle grain boundaries having a misorientation angle of 15° or more per unit area being from 1,000 to 4,000 mm/mm2 has been considered and determined to recite a property of the claimed bearing wire rod. Ochi discloses a process ([0028]-[0036]) that is substantially similar to that disclosed in applicant’s invention to make the claimed bearing wire rod (applicant’s specification [00064]-[00088]).
Applicant’s Disclosure
Applicant’s Citation
Ochi Disclosure
Ochi Citation
Heating 950 to 1050°C
[00070]-[00072]
Heating 900 to 1150°C
[0028]
Finish hot rolling between Ae1 to Acm°C with a critical deformation of Expression(1) or more
[00073]-[00080]
Final rolling at 700 to 880°C with 50% or more total area reduction
[0029]-[0033]
Expression (1)= -1.6Ceq2+3.11Ceq-0.48
[00078]
0.01 to 1.0
[0016], [0018], [0019]
Ceq= C+Mn/6+Cr/5
[00079]
0.925 to 1.77
[0016], [0018], [0019]
During hot rolling Tpf-Tf<=50°C
[00082]-[00085]
-
-
Cooling to a range of 500 to 600°C at 3°C/sec or more
[00086]
Quenching to 550 to 700°C at 10°
[0034]-[0035]
Cooling at 1°C/sec or less
[00088]
Cooling at 0.05 to 1.0°C/sec
[0036]
The process of Ochi is silent to controlling the average surface temperature of the wire rod before and after finish hot rolling.
Honda discloses producing a wire by hot rolling ([0001]) in which the steel is heated to 900 to 1250°C, during rolling the surface temperature is not exposed to 650 to 750°C for more than 60 seconds, and the final finish rolling surface temperature is 700 to 900°C ([0013]-[0015], [0025]-[0027]).
It would have been obvious to one of ordinary skill in the art in the hot rolling process of Ochi to maintain the surface temperature of the steel during hot rolling to prevent formation of a large amount of ferrite phase and a decarburized surface layer (Honda [0026]) and also to prevent cracks from occurring, to prevent formation of a hard low-temperature transformation phase, and to stably obtain a uniform softened structure (Honda [0027]).
The prior art discloses a composition (Ochi [0011], [0016]-[0027], Table 1) that is substantially similar to that claimed and manufactured by a process (Ochi [0028]-[0036]; Honda [0013]-[0015], [0025]-[0027]) that is substantially similar to that of applicant’s invention (applicant’s specification [00064]-[00088]). Therefore, the properties of the prior art naturally flow from the disclosure of the prior art, including a sum of lengths of high angle grain boundaries having a misorientation angle of 15° or more per unit area being from 1,000 to 4,000 mm/mm2.
The limitations of a sum of lengths of low angle grain boundaries having a misorientation angle of 15° or less per unit area being from 250 to 800 mm/mm2, a ratio of grain boundaries having a misorientation angle of 5° or less to the low angle grain boundaries being from 40 to 80%, and an average aspect ratio of cementite being 2.5 or less after performing softening heat treatment once have been considered and determined to recite properties of the claimed bearing wire rod. The prior art discloses a composition (Ochi [0011], [0016]-[0027], Table 1) that is substantially similar to that claimed manufactured by a process (Ochi [0028]-[0036]; Honda [0013]-[0015], [0025]-[0027]) that is substantially similar to that of applicant’s invention (applicant’s specification [00064]-[00088]). Therefore, the properties of the prior art naturally flow from the disclosure of the prior art, including a sum of lengths of low angle grain boundaries having a misorientation angle of 15° or less per unit area being from 250 to 800 mm/mm2, a ratio of grain boundaries having a misorientation angle of 5° or less to the low angle grain boundaries being from 40 to 80%, and an average aspect ratio of cementite being 2.5 or less after performing softening heat treatment once.
Regarding claim 3, Ochi discloses the microstructure comprises reticulated proeutectoid cementite in grain boundaries and pearlite in grains ([0006]).
Regarding claim 5, the limitations of a tensile strength of 1,200 MPa or more and a reduction in area (RA) of 20% or more have been considered and determined to recite properties of the claimed bearing wire rod. The prior art discloses a composition (Ochi [0011], [0016]-[0027], Table 1) that is substantially similar to that claimed manufacturing by a process (Ochi [0028]-[0036]; Honda [0013]-[0015], [0025]-[0027]) that is substantially similar to that of applicant’s invention (applicant’s specification [00064]-[00088]). Therefore, the properties of the prior art naturally flow from the disclosure of the prior art, including a tensile strength of 1,200 MPa or more and a reduction in area (RA) of 20% or more.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Ochi (JP H06-299240 machine translation) as evidenced by ASTM E112-88 and in view of Honda (JP 2000-256740 machine translation) as applied to claim 3 above, and further in view of Koizumi (JP 2003-171737 machine translation).
Regarding claim 4, Ochi discloses the pearlite has lamellar spacing ([0006]) that is controlled by cooling ([0009], [0036]).
Ochi is silent to lamellar spacing value.
Koizumi discloses a bearing steel wire rod ([0001]) with an interlamellar spacing in the pearlite of from 0.05 to 0.2 um (0.15 um or less) ([0014], [0017], [0026]-[0029], [0034]).
It would have been obvious to one of ordinary skill in the art for the pearlite lamellar spacing of Ochi to be 0.15 um or less so that the cementite plates are thinner, making the pearlite more easily deformable, improving ductility (Koizumi [0027]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Ochi (JP H06-299240 machine translation) as evidenced by ASTM E112-88 and in view of Honda (JP 2000-256740 machine translation) as applied to claim 3 above, and further in view of Kochi (JP 2010-132943 machine translation).
Regarding claim 4, Ochi discloses the pearlite has lamellar spacing ([0006]) that is controlled by cooling ([0009], [0036]).
Ochi is silent to lamellar spacing value.
Kochi discloses a hot-rolled wire rod ([0001]) with an interlamellar spacing in the pearlite is from 0.05 to 0.2 um (160 to 250 nm, 0.160 to 0.250 um) ([0008], [0030], [0032]-[0035]).
It would have been obvious to one of ordinary skill in the art for the pearlite lamellar spacing of Ochi to be 160 to 250 nm (0.160 to 0.250 um) because the larger the pearlite lamellar spacing, the lower the wire strength and the lower the temperature rise (processing heat) during wire drawing (Kochi [0033]), but too large pearlite lamellar spacing deteriorates wire drawability because ductility is reduced, making voids more likely to occur (Kochi [0034]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Ochi (JP H06-299240 machine translation) as evidenced by ASTM E112-88 and in view of Honda (JP 2000-256740 machine translation) as applied to claim 1 above and further in view of Aihara (JP S57-057837 machine translation).
In the event it is determined that the claimed tensile strength and reduction in area do not naturally flow from the disclosure of Ochi in view of Honda, then the below rejection in view of Aihara is applied.
Regarding claim 5, Ochi does not recite the tensile strength and reduction in area of the bearing wire rod.
Aihara discloses a high carbon wire rod (p. 1 paras. 1-2) with a tensile strength of 120 kgf/mm2 (1180 MPa) or more (p. 1 para. 3, p. 2 para. 1, Fig. 1) and a reduction in area of about 30 to 55% (Fig. 1).
It would have been obvious to one of ordinary skill in the art for the steel of Ochi to have a tensile strength of 120 kgf/mm2 (1180 MPa) or more and a reduction in area of about 30 to 50% to advantageously improve tensile strength and ductility (Aihara p. 2 para. 1). Further, Aihara discloses tensile strength and reduction in area are influenced by pearlite transformation temperature, where lower pearlite transformation temperature improves strength and ductility (p. 2 para. 1). One of ordinary skill in the art would understand how to modify the pearlite transformation temperature to achieve the desired properties of tensile strength and reduction in area. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Ochi (JP H06-299240 machine translation) as evidenced by ASTM E112-88 and in view of Honda (JP 2000-256740 machine translation) as applied to claim 1 above and further in view of Murai (US 4,775,429).
In the event it is determined that the claimed tensile strength and reduction in area do not naturally flow from the disclosure of Ochi in view of Honda, then the below rejection in view of Murai is applied.
Regarding claim 5, Ochi does not recite the tensile strength and reduction in area of the bearing wire rod.
Murai discloses a hot rolled steel bar (1:11-15) with a tensile strength of at least 120 kg/mm2 (1180 MPa) and a reduction in area of at least 20% (2:68 to 3:1).
It would have been obvious to one of ordinary skill in the art for the steel of Ochi to have a tensile strength of 120 kg/mm2 (1180 MPa) or more and a reduction of area of 20% or more to obtain both high strength and high toughness (Murai 5:9-10). Further, Murai discloses the tensile strength is obtained by effecting controlled cooling for pearlite transformation (4:48-68) and the combination of higher strength and higher toughness is achieved through smaller crystal grain size, which is dependent upon lowering the finish rolling temperature (5:1-17). One of ordinary skill in the art would understand how to control the cooling and finish rolling temperature to achieve the desired properties. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Related Art
Karimine (JP 2004-043865 machine translation)
Karimine discloses a pearlitic high-strength steel with an overlapping composition and controlled cooling after hot rolling (Remarks para. spanning pp. 1-2) in which the precipitation of pro-eutectoid cementite is suppressed to prevent deterioration of ductility and toughness (Remarks p. 2 para. 2).
Li (Li et al. Microstructure of Hot Rolled 1.0C-1.5Cr Bearing Steel and Subsequent Spheroidization Annealing. Metallurgical and Materials Transactions A, Volume 47A, July 2016, 3607- 3621.)
Li discloses the effects of hot rolling and cooling on bearing steel (II. Experimental Procedures, Figs. 1 and 2, Table 1) on the microstructure (III. Results and Discussion A. Microstructure After Hot Rolling, Figs. 3 and 4).
Sakamoto (US 2016/0333438)
Sakamoto discloses a bearing part ([0001]) with an overlapping composition ([0014]-[0015], [0040]-[0071]) and an average grain size of the prior-austenite of 8.0 um or less ([0030]).
Tsunekage (JP 2008-291341 machine translation)
Tsunekage discloses a bearing ([0001]) with an overlapping composition ([0008], [0013]-[0025]) and a prior austenite grain size of No. 11 or more ([0008]).
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.
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/STEPHANI HILL/Examiner, Art Unit 1735