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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/08/2026 has been entered.
Status of Claims
Claims 16-35 are pending and are presented for this examination. Claim 16 is amended.
Status of Previous Rejections
Art rejections of Tanaka and Tanaka in view of Tananka’785 and Lazzara are both withdrawn from previous office action of 04/28/2026.
A new ground of art rejection is rendered as follows in view of amendment.
Claim Interpretations
Instant claim 16 amended “mixture of martensite, bainite and perlite forming more than 25% of a thickness of a block” is interpreted as volume 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 19-24 are product by process limitations 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 19-24 are not given patentable distinction over prior art.
Instant claims 25-35 are directed to how the claimed steel is operated due to wherein clause “the steel is further worked to form”. How the steel is further worked to form is a recitation with respect to the manner in which the claimed product is intended to be functioning according to MPE 2114. Hence, they are functional languages of product claim which merely requires what the product does, not what the product is.
If a prior art article teaches all of the structural and compositions limitations of an article claim, then, a recitation with respect to the manner in which the claimed article is intended to be employed does not differentiate the claimed article from the prior art article. See MPEP 2114.
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 16-35 are rejected under 35 U.S.C. 103(a) as being unpatentable over Kimura (US20090277539).
As for claims 16-18, Kimura discloses a steel for warm working comprising overlapping composition as illustrated in Tables 7-9 below.
Regarding microstructure, Kimura discloses mixed structure of bainite and martensite is 80% or more ([0048]) and 20% or less of any 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.
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
As for claims 19-24, 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 steel. Hence, a rejection based on section 103 of the statute is eminently fair and acceptable. See MPEP 2113. Kimura discloses the steel used to make connecting rod which reads on claimed block and final structure of blocks are martensitic bainitic.
As for claims 25-35, they are interpreted as operating mode of claimed product according to claim interpretation above. Hence, examiner takes the positions that since Kimura comprises similar compositions and microstructure, Kimura is fully capable of operating in the claimed manner.
Response to Argument
Applicant’s argument filed on 08/26/2026 is considered but are moot because Tanaka and Tanaka’785 are both withdrawn.
Applicant then argues instant invention is designed for a much more demanding environment of a mud pump by provides a deep martensite-bainite-perlite structure, argument is incommensurate in scope of current invention which is directed to a steel, not a mud pump.
Newly cited Kimura suggests deep martensite-bainite-perlite structure as claimed.
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.
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/JENNY R WU/Primary Examiner, Art Unit 1733
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