DETAILED ACTION
Claims 1-4, 7-10, and 17-18 are pending, and claims 1-4 and 18 are currently under review.
Claims 5-6 and 11-16 are cancelled.
Claims 7-10 and 17 are withdrawn.
Claim 18 is 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 12/08/2025 has been entered. Claims 1-4, 7-10, and 17, and newly submitted claim(s) 18 remain(s) pending in the application. Applicant’s amendments to the Claims have overcome each and every 112(b) rejection previously set forth in the Non-Final Office Action mailed 9/08/2025.
Claim Interpretation
The examiner interprets the inclusion amounts pertaining to the coefficient of microalloying elements, coefficient of harmful elements, carbon equivalent, and index of atmospheric corrosion resistance in claims 1-4 to be in weight percent.
The examiner interprets the charpy impact work Akv as recited in claim 1 to refer to charpy impact energies at room temperature as disclosed in [p11 instant spec.].
The examiner interprets the recitation of “grade” in claim 18 to refer to an ASTM grain size number such that the claim requires an austenite grain size number of 6 or greater (ie. approximately 45 micrometers or less).
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) 1-4 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakano et al. (US 2022/0063245).
Regarding claim 1, Nakano et al. discloses a steel having a composition as seen in table 1 below [abstract, 0014]. The examiner notes that the overlap between the composition of Nakano et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I). Nakano et al. is silent regarding any inclusions of H, which one of ordinary skill would understand to mean that H is not present, which meets the claim. Although Nakano et al. does not expressly teach that the steel is for a mining chain as claimed, the examiner notes that “for mining chain” is merely an instance of intended use which does not impart any further structure to the claims because the body of the claim sets forth all of the structural limitations of the steel and “for mining chain” merely recites a purpose of the steel. See MPEP 2111.02. Accordingly, the steel of Nakano et al. having an overlapping composition and microstructure (as will be shown below) would be entirely capable of being used for mining chains.
Nakano et al. does not expressly teach a formula for a coefficient of microalloying as claimed. However, the examiner notes that this formula merely further limits the Al, Nb, V, and N amounts, which still overlaps with the composition of Nakano et al. and is prima facie obvious. See MPEP 2144.05(I).
Nakano et al. does not expressly teach a formula for a coefficient of harmful elements as claimed. However, the examiner notes that this formula merely further limits the P, Sn, As, Pb, Sb, Bi, Si, and Mn amounts, which still overlaps with the composition of Nakano et al. and is prima facie obvious. See MPEP 2144.05(I). Specifically, it is noted that Nakano et al. is silent regarding any inclusions of Sn, As, Pb, Sb, or Bi, such that one of ordinary skill would have readily understood the disclosure of Zhang et al. to be absent these elements (ie. zero amounts).
Nakano et al. further teaches a microstructure of 85% or more of tempered martensite, with the remainder being austenite and bainite in an amount of 15% or less, which overlaps with the claimed ranges [0024-0026]. See MPEP 2144.05(I).
Nakano et al. further teaches that the steel achieves a tensile strength of at least 1180 MPa and elongation values of up to approximately 14%, which overlap with the claimed ranges [0079, table4]. See MPEP 2144.05(I). Although the examples of table4 of Nakano et al. are not expressly relied upon in the above rejections, the examiner submits that the disclosure of Nakano et al. reasonably suggests a desired elongation range which is encompassed by the range of exemplary elongations of Nakano et al.
Nakano et al. does not expressly teach a yield strength, cross-sectional shrinkage (ie. reduction of area), charpy impact value, or a coefficient of hydrogen embrittlement as claimed. However, since Nakano et al. discloses an overlapping steel composition and microstructure as stated above, the examiner submits that overlapping properties relative to those above would have naturally flowed, which is prima facie obvious. See MPEP 2112 & MPEP 2144.05(I).
Table 1.
Element (wt.%)
Claim 1
Nakano et al.
C
0.2 – 0.28
0.1 – 0.3
Si
0.01 – 0.4
0.01 – 2.5
Mn
0.5 – 1.5
0.1 – 10
P
0 – 0.015
0 – 0.1
S
0 – 0.005
0 – 0.05
Cr
0.3 – 2
0 – 5
Ni
0.5 – 1.96
0 – 1
Mo
0.1 – 0.8
0 – 1
Cu
0.01 – 0.3
0 – 1
Al
0.01 – 0.05
0 – 2.5
Nb
0.001 – 0.1
0 – 0.3
V
0.001 – 0.1
0 – 0.5
H
0 – 0.00018
0
N
0 – 0.015
0 – 0.01
O
0 – 0.002
0 – 0.006
Fe & Impurities
Ti
Balance
0 – 0.003
Balance
0 – 0.3
Regards 2-3, the aforementioned prior art discloses the steel of claim 1 (see previous). The aforementioned prior art does not expressly teach a range of carbon equivalent or index of atmospheric corrosion resistance as claimed. However, the examiner notes that these formulas merely further limit the C, Mn, Cr, Mo, V, Ni, Cu, Si, and P amounts, which still overlap with the composition of the aforementioned prior art and is prima facie obvious. See MPEP 2144.05(I).
Regarding claim 4, the aforementioned prior art discloses the steel of claim 1 (see previous). Nakano et al. further teaches that B and Ca are limited to be up to 0.01 weight percent and 0.04 weight percent, respectively, which overlaps with the claimed ranges [0014]. See MPEP 2144.05(I).
Regarding claim 18, the aforementioned prior art discloses the steel of claim 1 (see previous). Nakano et al. does not expressly teach an austenite grain size as claimed. However, one of ordinary skill would understand that microstructure is directly affected by steel composition and manufacturing. The examiner notes that the manufacturing of the instant specification and that of Nakano et al. is overlapping and therefore substantially similar as shown in table 2 below. Therefore, since Nakano et al. discloses an overlapping steel composition and method of manufacture, the examiner submits that an overlapping, substantially similar austenite grain size would have naturally flowed from the disclosure of Nakano et al. See MPEP 2112 & MPEP 2144.05(I). The examiner’s position is further bolstered by the overlapping mechanical properties of tensile strength and elongation of Nakano et al. which one of ordinary skill would understand to be directly affected by a similar, overlapping microstructure grain size.
Table 2.
Instant specification manufacturing [p.6-7]
Nakano et al. [0125-0165]
Slab heating at 1025 to 1250 degrees C
Slab heating at 1100 to 1250 degrees C
Hot rolling with finish rolling at greater than 800 degrees C
Hot rolling with finish rolling at Ar3 or more (overlapping)
Quenching by heating to 850 to 1000 degrees C and water cooling
Heating to Ac3-30 to 950 degrees C and cooling at 20 degrees C or faster (overlapping)
Tempering at 250 to 550 degrees C for 60 to 240 minutes
Tempering at 200 to 500 degrees C for 2 seconds or more
Response to Arguments
The previous 103 rejections over Zhang et al. in view of others have been withdrawn in view of applicant’s amendments.
Applicant's arguments filed 12/08/2025 regarding the rejections over Nakano et al. have been fully considered but they are not persuasive.
Applicant argues that Nakano et al. requires more than 15% bainite to achieve high tensile strengths of 1180 MPa or more. The examiner cannot concur. Nakano et al. expressly teaches away from more than 15% bainite as this deteriorates uniformity of the steel [0028]. Nakano et al. expressly teaches achieving high strength of 1180 MPa or more by controlling other steel factors such as C amount as already previously stated [0079].
Conclusion
THIS ACTION IS MADE FINAL. 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