20170073785Notice 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 .
Status of Claims
Claims 16-35 are pending and are presented for this examination. Claims 16-18 are amended.
Status of Previous Rejections
All art rejections are withdrawn from previous office action of 11/10/2025.
Two new grounds of art rejections are rendered in view of amendment of claims 16-18.
Claim Interpretations
Instant claims 19-24 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 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 language 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 Tanaka (US20170096720A1) in view of Tanaka’785 (US20170073785)
As for claims 16-18, it is noted instant claim 16 -18 are amended to require Al greater than 0-0.04%. Hence, scope of claimed invention are changed.
Tanaka discloses age hardening type microalloyed bainitic steel. The steel requires C, Si, Mn, P, S, Cu, Ni, Cr and at least one of Mo, V, Ti and Nb. Hence, Tanaka suggests the steel consists of C, Si, Mn, P, S, Cu, Ni, Cr , Mo and V with overlapping elemental compositions as illustrated in Tables 1-3 below respectively. (Abstract) Hence, A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
Regarding microstructure, Tanaka discloses mixture of bainite and martensite structure with area proportion of martensite 15% or higher is considered undesirable. [0108] Hence, Tanaka suggests mixture of bainite and martensite structure with area proportion of martensite 15% or lower as required by instant claims 16-18.
Hence, instant claim 16 recitation “the steel composition having martensite and bainite” is met.
Tanaka does not explicitly disclose presence of Al to be greater than 0 to 0.04% as amended by instant claims 16-17 and greater than 0 to 0.025% as required by instant claim 18.
Tanaka’785 discloses a similar age hardening type bainitic microalloyed steel and explicitly discloses 0.001-0.1% Al for precipitating AlN to refine crystal grain [0105]-[0106].
Hence, it would have been obvious to one skill in the art, at the time the invention is made to apply Al amount of Tanaka’785 to arrive at claimed steel composition, in the steel of Tanaka for the benefit of refined crystal grain.
Table 1
Element
Applicant
(weight %)
Tanaka
(weight %)
Claim 1
Overlap
(weight %)
C
0.3-0.5
0.1-0.4
0.3-0.4
Mn
0.7-1.5
0.1-3
0.7-1.5
P
<=0.025
0.001-0.15
0.001-0.025
S
<=0.05
0.001-0.2
0.001-0.05
Si
0.6-0.8
0.01-2
0.6-0.8
Ni
0.1-0.8
<=0.4
0.1-0.4
Cr
1.4-2.2
0.1-3
1.4-2.2
Mo
0.1-0.55
0.02-2
0.1-0.55
V
<=0.03
0.02-2
0.02-0.03
Cu
<=0.35
0.001-2
0.001-0.35
Al
Greater 0 to 0.04
Table 2
Element
Applicant
(weight %)
Tanaka
(weight %)
Claim 1
Overlap
C
0.3-0.35
0.1-0.4
0.3-0.35
Mn
1.2-1.45
0.1-3
1.2-1.45
P
<=0.025
0.001-0.15
0.001-0.025
S
<=0.025
0.001-0.2
0.001-0.025
Si
0.6-0.8
0.01-2
0.6-0.8
Ni
0.35-0.7
<=0.4
0.35-0.4
Cr
1.7-2.05
0.1-3
1.7-2.05
Mo
0.35-0.55
0.02-2
0.35-0.55
V
<=0.03
0.02-2
0.02-0.03
Cu
<=0.35
0.001-2
0.001-0.35
Al
Greater 0 to 0.04
Table 3
Element
Applicant
(weight %)
Tanaka
(weight %)
Claim 1
Overlap
(weight %)
C
0.3-0.35
0.1-0.4
0.3-0.35
Mn
1.2-1.35
0.1-3
1.2-1.35
P
<=0.01
0.001-0.15
0.001-0.01
S
<=0.01
0.001-0.2
0.001-0.01
Si
0.6-0.8
0.01-2
0.6-0.8
Ni
0.55-0.65
<=0.4
0.4 is close to 0.55
Cr
1.75-2
0.1-3
1.75-2
Mo
0.4-0.5
0.02-2
0.4-0.5
V
<=0.01
0.02-2
0.02 is close to 0.01
Cu
<=0.2
0.001-2
0.001-0.2
Al
Greater 0 to 0.025
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. Tanaka 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. Tanaka 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 Tanaka comprises similar compositions and microstructure. Tanaka is fully capable of operating in the claimed manner.
Claims 16-35 are rejected under 35 U.S.C. 103(a) as being unpatentable over Tanaka (US20170096720A1).
As for claims 16-35, Tanaka discloses instant claims limitation as indicated in rejection of Tanaka in view of Tanka’785 above.
Regarding amended Al, It is well established that a prior art reference that discloses a range that overlaps a claimed range, or encompasses a somewhat narrower claimed range, is sufficient to establish a prima facie case of obviousness. See /n re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Indeed, when the claimed ranges are completely encompassed by the prior art, the obviousness conclusion is even more compelling than in cases of mere overlap. The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages. A prima facie case of obviousness also exists in those cases where the claimed range and the prior art range, though not overlapping, are sufficiently close that one skilled in the art would have expected them to have the same or similar properties. Id.; see also In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997); Titanium Metals Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985); and In re Brandt, 886 F.3d 1171, 1177 (Fed. Cir. 2018) (In response to an argument by an Appellant that there must be an overlap between the claimed range and prior art range to find obviousness, the Court stated “[t]he nonbinding holding in [a previous case], however, does not stand for the proposition advanced by Appellants that a claimed range and prior art range must overlap for an examiner to find a prima facie case.”). In the instant case, Tanaka’s Al at 0% is considered sufficiently close to amended upper limit of Al being greater than 0 absent criticality of claimed Al range. Hence, prima facie case of obviousness is rendered due to closeness.
Response to Argument
Applicant’s argument filed on 02/10/2026 is considered but are moot because all cited prior art rejections are withdrawn.
In response to argument that none of cited prior art discloses Al greater than 0 and up to 0.02%, argument is moot since all prior art rejections are withdrawn.
In response to argument that present application discloses that there must be some AL within the steel composition, argument completely lacks any evidence support.
Instant application [0032] discloses Al is merely desirable but it is important to minimize the addition of Al due to the detrimental effect on steel quality which suggest Al is not required at all. The most preferably of 0.02% does not necessarily mean Al is required. Second, where is the criticality of Al greater than 0% in the original specification? The answer is NONE. Third, newly cited Tanaka’785 discloses A 0.001-0.1% is well known to achieve grain refinement, which is exactly what applicant intends to achieve by including Al.
Applicant is invited to submit 132 Declaration demonstrating criticality of amended Al range.
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 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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