PRE-HARDENED STEEL COMPOSITION AND MACHINE PARTS MADE THEREWITH

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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/04/2026 has been entered. Status of Claims Claims 6-14 and 21-30 are pending and are presented for this examination. Claim 6 is amended. Claim 15-20 are cancelled. Status of Previous Rejections Art rejections of Kimura in view of Lazzara are maintained from previous office action of 04/28/2026. Art rejections of Tanaka in view of Lazzara and Tanaka in view of Tananka’785 and Lazzara are both withdrawn from previous office action of 04/28/2026. Claim Interpretations Instant claim 6 amended “mixture of martensite, bainite and perlite forming more than 25% of a thickness of a block” is interpreted as area proportion of martensite, bainite and perlite forming more than 25%. Since claim 6 does not recite % of each martensite, bainite and perlite respectively, it is interpreted as summation of martensite, bainite and perlite greater than 25%. Hence, examiner takes the position that as long as prior art suggests summation of martensite, bainite and perlite greater than 25%, it meets the claim amendment. Instant claims 9-10 and 30 are product by process limitation in a product claim. According to MPEP 2113, determination of patentability of product is based on the product itself. That is, the patentability of product does not depend on its method of production unless the process of making the claimed product imparts any structural and/or functional limitation and characteristic on the claimed product. Hence, instant claims 9-10 and 30 are not given patentable distinction over prior art. Claim Rejections - 35 USC § 103 The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action: (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made. Claims 6-14 and 21-30 are rejected under 35 U.S.C. 103(a) as being unpatentable over Kimura (US20090277539) in view of Lazzara (US 2009/0252620A1). As for claims 6-8, 11-14 and 21-29, Kimura discloses a steel for warm working comprising overlapping composition as illustrated in Tables 7-9 below. Regarding microstructure, Kimura discloses in addition to a mixed structure of bainite and martensite is 80% or more ([0048]) , 20% or less of any other structure such as ferrite, perlite or austenite ([0111]) as illustrated in screen shot below. PNG media_image1.png 403 610 media_image1.png Greyscale Hence, Kimura suggests mixture of martensite, bainite and perlite forming more than 25% of a thickness of a block as required by instant claim 16 amendment according to claim interpretation above. Hence, Kimura suggests summation of bainite and martensite and perlite greater than 25% as instant claim 6 amendment recites according to claim interpretation above. Hence, Kimura suggests mixture of martensite, bainite and perlite forming more than 25% of a thickness of a block as required by instant claim 16 amendment. Table 7 Element Applicant (weight %) Kimura (weight %) Claims 22-24 Overlap (weight %) C 0.3-0.5 0.15-0.7 0.3-0.5 Mn 0.7-1.5 0.05-3 0.7-1.5 P <=0.025 <=0.03 <=0.025 S <=0.05 <=0.03 <=0.03 Si 0.6-0.8 0.05-2.5 0.6-0.8 Ni 0.1-0.8 0.2-9 0.2-0.8 Cr 1.4-2.2 >=0.8 1.4-2.2 Mo 0.1-0.55 0.5-2 0.5-0.55 V <=0.03 <=5 <=0.03 Cu <=0.35 <=2 <=0.35 Al Greater 0 to 0.04 <=0.01 Greater 0 to 0.01 Table 8 Element Applicant (weight %) Kimura (weight %) Claim 1 Overlap C 0.3-0.35 0.15-0.7 0.3-0.35 Mn 1.2-1.45 0.05-3 1.2-1.45 P <=0.025 <=0.03 <=0.025 S <=0.025 <=0.03 <=0.025 Si 0.6-0.8 0.05-2.5 0.6-0.8 Ni 0.35-0.7 0.2-9 0.35-0.7 Cr 1.7-2.05 >=0.8 1.7-2.05 Mo 0.35-0.55 <=5 0.35-0.55 V <=0.03 <=5 <=0.03 Cu <=0.35 <=2 <=0.35 Al Greater 0 to 0.04 <=0.01 Greater 0 to 0.01 Table 9 Element Applicant (weight %) Kimura (weight %) Claim 1 Overlap (weight %) C 0.3-0.35 0.15-0.7 0.3-0.35 Mn 1.2-1.35 0.05-3 1.2-1.35 P <=0.01 <=0.03 <=0.01 S <=0.01 <=0.03 <=0.01 Si 0.6-0.8 0.05-2.5 0.6-0.8 Ni 0.55-0.65 0.2-9 0.55-0.65 Cr 1.75-2 >=0.8 1.75-2 Mo 0.4-0.5 <=5 0.4-0.5 V <=0.01 <=5 <=0.01 Cu <=0.2 <=2 <=0.2 Al Greater 0 to 0.025 <=0.01 Greater 0 to 0.01 Kimura does not disclose the steel used as critical parts of mud pump such as the fluid module, the discharge manifold, the strainer cross , the adapter spool or the discharge and suction module as required by instant claims 11-14 and 21-29. Lazzara discloses a smart mud pump comprising a power end having a motor, a crankshaft rotationally engaged with the motor and a connecting rod rotationally engaged with the crankshaft and a fluid end operatively connected to the power end and having a piston, a cylinder operatively engaging the piston, a drilling fluid module, a discharge manifold and a strainer, a discharge and suction module wherein all parts are made of stainless steels (abstract, paragraphs [0028]- [0035] and [0041]). Lazzara expressly discloses mud pump produces imposed forces that cause wear and tear on various pump components. (paragraph [0004]) The mud pump is a component of oil field exploration machinery. (paragraph [0004]) Thus, based on the well-known material requirement for mud pump, applicant’s invention would be merely a “new” use of a known material with expected success in the absence of unexpected result. See MPEP 2112 I SOMETHING WHICH IS OLD DOES NOT BECOME PATENTABLE UPON THE DISCOVERY OF A NEW PROPERTY “The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). Hence, it would have been obvious to one skill in the art, at the time the invention is made to apply steel of Kimura as starting steel composition to make various mud pump components of Lazzara which are subject to wear and tear such as the fluid module, the discharge manifold, the strainer cross , the adapter spool or the discharge and suction module for the benefit of ensuring both high hardness and toughness at the same time as required by Lazzara. As for claims 9-10 and 30, they are product-by-process claims. Even though instant claims are limited by and defined by the process, determination of patentability is based on the product itself. Kimura discloses a steel as discussed above, which reasonably appears to be only slightly different than the claimed machine part. Hence, a rejection based on section 103 of the statute is eminently fair and acceptable. See MPEP 2113. Response to Argument Applicant’s argument filed on 08/26/2026 is considered but are moot because Tanaka and Tanaka’785 are both withdrawn. In response to argument that Kimura is related to steel used in automotive application, not the harsh environment of fracking pump. Argument is not persuasive because Kimura discloses the steel used in various structures or components of cars and the like for the use. Second, the harsh environment of fracking pump is intended use of a known steel. Applicant’s inventive is merely new use of a known steel material, which is disclosed in Kimura. In response to argument that Kimura relates to the warm working stage of steel, argument is incommensurate in scope of claimed invention which is directed to a product, not a process of using the steel. Warm working is merely intended use of claimed steel, which is not given patentable distinction in a product claim. In response to argument that [0048] of Kimura does not disclose mixture of martensite, bainite and perlite, it should be noted in addition to [0048] discloses 80% or more martensite and bainite, [0111] of Kimura also discloses 20% or less of any structure such as ferrite, perlite or austenite. Hence, Kimura suggests mixture of martensite, bainite and perlite forming more than 25% of a thickness of a block as required by instant claim 16 amendment according to claim interpretation above. Applicant is invited to submit evidence of unexpected result of using claimed steel in the mud pump. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNY R WU whose telephone number is (571)270-5515. The examiner can normally be reached on 8:30 AM-5:00 PM. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached on (571)272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /JENNY R WU/Primary Examiner, Art Unit 1733