DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 November 7, 2025 has been entered.
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 JP 2020-046818 filed March 17, 2020 as required by 37 CFR 1.55. Receipt is also acknowledged of a copy of the WO 2021/187100, the WIPO publication of PCT/JP2021/008088 filed March 3, 2021.
Claim Status
This Office Action is in response to Applicant’s Remarks and Claim Amendments filed November 7, 2025.
Claims Filing Date
November 7, 2025
Amended
1
New
4-6
Pending
1-6
Withdrawn
2
Under Examination
1, 3-6
The applicant argues support for the claim 1 amendment in [0028] (Remarks p. 4 para. 4) and that the broader range of AlxN≤0.00090 in [0008] and [0026] support the amended related upper limits (Remarks para. spanning pp. 4-5).
Response to Declaration under 37 C.F.R. § 1.132 filed November 7, 2025
Applicant's declaration arguments filed November 7, 2025 have been fully considered but they are not persuasive.
The applicant argues the criticality of AlxN ≤ 0.0084 (para. 9) as presented in Table A (paras. 10-11) and Figure A (para. 15), where inventive Examples 1 and 2 have nonexistence of abnormal grain growth after vacuum carburization, Examples 3 and 4 do not satisfy formula (1) and have abnormal grain growth after vacuum carburization, and Examples 5 and 6 do not satisfy the ferrite-pearlite structure and have abnormal grain growth after vacuum carburization (paras. 12-16), where the nonexistence of abnormal grain growth is a result of formula (1) (para. 17).
To establish unexpected results 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(d)(II).
Regarding AlxN, in the declaration (dec) and specification (spec) applicant has inventive examples at 0.00084 (dec), 0.00082 (dec and spec), and 0.00077 (spec) and the closest comparative examples at 0.00097 (dec and spec), 0.00106 (dec), and 0.00111 (spec). There is a 0.00013 range between 0.00084 and 0.00097 without data, such that the data is insufficient to establish that AlxN of 0.00084 is a critical point.
Applicant’s original claim 1 and specification, such as at [0008] and [0026], recite an AlxN ≤ 0.00090. This indicates an AlxN of more than 0.00084 to 0.00090 is within the scope of applicant’s invention and satisfies the nonexistence (inhibition) of abnormal grain growth ([0005], [0011]). Therefore, the endpoint of 0.00084 is not critical because above the endpoint and up to 0.00090 the argued unexpected property is achieved.
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 in scope 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).
Applicant’s data only provides two inventive examples with similar compositions that do not span the claimed compositional range. Sufficient evidence to support that formula (1) in combination with the claimed compositional ranges unexpectedly results in the nonexistence of abnormal grain growth after vacuum carburization treatment has not been presented.
Further, arguments presented by the applicant cannot take the place of evidence in the record. MPEP 716.01(c)(II). With respect to the characterization of the unexpected property of nonexistence of abnormal grain growth after vacuum carburization treatment, applicant classifies each sample as “nonexistence” or “existence”. Evidence, such as micrographs, to support the characterization has not been presented.
For the above cited reasons the data presented regarding unexpected results over a claimed range does not establish criticality. Therefore, the prior art’s disclosure of an overlapping range of AlxN (0.0002 to 0.00125%, pref. 0.00039 to 0.0008%, Daitoh [0042]-[0043]) renders the claimed AlxN range prima facie obvious. MPEP 2144.05(I).
Response to Remarks filed November 7, 2025
Daitoh (US 2012/0263622)
Applicant's arguments filed November 7, 2025 with respect to Daitoh have been fully considered but they are not persuasive.
The applicant argues Daitoh discloses 0.02 to 0.05% Al and 0.10 to 0.025% N, which has an AlxN range of 0.0002 to 0.00125, but the narrower claimed AlxN range of formula (1) has unexpected improvements in grain growth indicative of nonobviousness and criticality (Remarks p. 6 para. 2) to achieve the nonexistence of abnormal grain growth in combination with a ferrite-pearlite structure as evidenced by the examples in the Declaration and the Specification (Remarks para. spanning pp. 6-7).
As discussed in more detail in the response to the Declaration, the presented data is insufficient to establish the criticality of the claimed AlxN range of ≤ 0.00084. Therefore, the prior art’s disclosure of an overlapping range of AlxN (0.0002 to 0.00125%, pref. 0.00039 to 0.0008%, Daitoh [0042]-[0043]) renders the claimed AlxN range prima facie obvious. MPEP 2144.05(I).
In support of obviousness, Daitoh discloses a preferred Al content of 0.03 to 0.04% ([0042]) and a preferred N content of 0.013 to 0.020% ([0043]). The preferred AlxN of 0.00039 to 0.00080 (0.03*0.013 to 0.04*0.02) is entirely within the scope of the claimed range of AlxN being less than or equal to 0.00084. Daitoh’s inventive compositions (alpha, beta, a, b, f, g, h, and I, Tables 1 and 5) have AlxN content ranges from 0.000342 (a) to 0.000682 (b), which all fall within the scope of the claimed range.
For the above cited reasons, the rejection over Daitoh is maintained.
Ofuji (JP 2011-225897 machine translation)
Applicant’s arguments, see Remarks para. spanning pp. 5-6, filed November 7, 2025, with respect to Ofuji have been fully considered and are persuasive. The rejection of Ofuji has been withdrawn.
The applicant argues amended claim 1 recites a raw blank that “consists of” a ferrite-pearlite structure, but Ofuji discloses ferrite-bainite and ferrite-bainite-pearlite structures (Remarks para. spanning pp. 5-6).
Ofuji discloses ferrite-bainite and ferrite-bainite-pearlite structures in the Abstract, [0020], [0020], and [0058]-[0060].
Sueno (JP 2012-229475 machine translation)
Applicant’s arguments, see Remarks para. spanning pp. 5-6, filed November 7, 2025, with respect to Sueno have been fully considered and are persuasive. The rejection of Sueno has been withdrawn.
The applicant persuasively argues amended claim 1 recites a raw blank that “consists of” a ferrite-pearlite structure, but Sueno discloses ferrite-bainite and ferrite-bainite-pearlite structures (Remarks para. spanning pp. 5-6).
Sueno discloses ferrite-bainite and ferrite-bainite-pearlite structures in the Abstract, [0015], [0058].
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 and 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over Daitoh (US 2012/0263622).
Regarding claim 1, Daitoh discloses a raw blank for carburization ([0002], [0011]), having:
an overlapping chemical composition ([0036]-[0062]),
Element
Claim 1 (mass%)
Daitoh Disclosure
Daitoh Citation
C
0.13 to 0.28
0.1 to 0.3
[0037]
Si
0.01 to 1.20
0.05 to 1.5
[0038]
Mn
0.10 to 1.50
0.4 to 2.0
[0039]
P
0.030 or less
0.025 or less
[0046]
S
0.050 or less
0.003 to 0.05
Pref. 0.01 to 0.03
[0040]
Cr
0.30 to 2.20
0.5 to 3.0
[0041]
Al
0.027 to 0.090
0.02 to 0.05
Pref. 0.03 to 0.04
[0042]
N
0.0060 to less than 0.0140
0.010 to 0.025
Pref. 0.013 to 0.020
[0043]
Mo
0.01 to 0.60
0.8 or less
[0054]
Fe
Balance
Balance
[0044]
Impurities
Unavoidable
Balance, including Ti and O
[0044]-[0045], [0047]-[0048]
and satisfying the following formula (1) (0.0002 to 0.00125%, pref. 0.00039 to 0.0008%) (Al: 0.02 to 0.05%, pref. 0.03 to 0.04%; N: 0.010 to 0.025%, pref. 0.013 to 0.020%) ([0042]-[0043]),
wherein AlN precipitates having an equivalent circle diameter of 100 nm or more exist at 1.5 pieces/100um2 or less in a cross section of the raw blank (number of AlN precipitates having a diameter of 100 nm or larger is 5/100 um2 or less) ([0063]-[0068]):
AlxN≤0.00084 ...(1)
wherein element symbols in the formula (1) denote a value of content (% by mass) of each element (0.0002 to 0.00125%, pref. 0.00039 to 0.0008%) (Al: 0.02 to 0.05%, pref. 0.03 to 0.04%; N: 0.010 to 0.025%, pref. 0.013 to 0.020%) ([0042]-[0043]), and
wherein the raw blank has a ferrite-pearlite structure ([0026], [0033], [0070]).
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).
The limitation of the raw blank being for vacuum carburizing has been considered and determined to recite the purpose or intended use of the claimed raw blank that does not result in a structural difference between the claimed invention and the prior art. A prior art structure which is capable of performing the intended use as recited in the preamble meets the claim. MPEP 2111.02(II). The prior art discloses a raw blank for carburizing with a composition and structure that fall within the respectively claimed ranges (Daitoh [0002], [0011], [0026], [0033], [0036]-[0068], [0070]), such that it is capable of being used for vacuum carburizing.
Regarding claim 3, Daitoh discloses a content of S of 0.037 % or less by mass (0.003 to 0.05%, pref. 0.01 to 0.03%) ([0040]). 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).
Regarding claim 4, Daitoh discloses the raw blank has a chemical composition satisfying formula (2), AlxN≤0.00082…(2) wherein element symbols in the formula (2) denote a value of content (% by mass) of each element (0.0002 to 0.00125%, pref. 0.00039 to 0.0008%) (Al: 0.02 to 0.05%, pref. 0.03 to 0.04%; N: 0.010 to 0.025%, pref. 0.013 to 0.020%) ([0042]-[0043]). 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).
Regarding claim 5, Daitoh discloses a content of Al is 0.055 to 0.090% by mass (0.02 to 0.05%) ([0042]). Daitoh’s 0.05% Al is close to the claimed range lower limit of 0.0055% such that one of ordinary skill in the art would expect the properties of Daitoh to be the same as the claimed invention. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art, but are close. MPEP 2144.05(I). In support, applicant discloses that Al is used as a deoxidizer and exhibits an effect of suppressing abnormal grain growth at the time of carburization when Al binds to N and exists as fine AlN ([0023]). Similarly, Daitoh describes Al as preventing austenite grains from being coarsened (growing) at the time of heating for carburization by having an action for deoxidation and simultaneously being liable to form AlN by combining with N (Daitoh [0042]).
Regarding claim 6, Daitoh discloses a content of N is 0.0060 to less than 0.0095% by mass (0.010 to 0.025%) ([0043]). Daitoh’s 0.010% Al is close to the claimed range upper limit of 0.0095% such that one of ordinary skill in the art would expect the properties of Daitoh to be the same as the claimed invention. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art, but are close. MPEP 2144.05(I). In support, applicant discloses that N curtails abnormal grain growth during carburization when N exists as AlN in combination with AlN ([0024]). Similarly, Daitoh describes N forms AlN, which has an effect of preventing austenite grains from being coarsened (grown) at the time of heating for carburization (Daitoh [0043]).
Claims 1 and 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over Murakami (JP 2006-124774 machine translation) in view of Daitoh (US 2012/0263622).
Regarding claim 1, Murakami discloses a raw blank ([0001], [0011]) with an overlapping chemical composition ([0012], [0022]-[0033]), and
satisfying the following formula (1), AlxN≤0.00084…(1) (0.008 or less, excld. 0) wherein element symbols in the formula (1) denote a value of content (% by mass) of each element (Al: 0.08 or less, excld. 0; N: 0.100 or less, excld. 0) ([0030]-[0031]), and
where the raw blank consists of a ferrite-pearlite structure (ferrite-pearlite structure including 0% bainite) ([0012], [0018]).
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 (mass%)
Murakami Disclosure
Murakami Citation
C
0.13 to 0.28
0.25 or less, excld. 0
[0025]
Si
0.01 to 1.20
0.3 or less, excld. 0
[0026]
Mn
0.10 to 1.50
1.5 or less, excld. 0
[0027]
P
0.030 or less
0.02 or less, excld. 0
[0028]
S
0.050 or less
0.02 or less, excld. 0
[0029]
Cr
0.30 to 2.20
1.5 or less, excld. 0
[0032]
Al
0.027 to 0.090
0.08 or less, excld. 0
[0030]
N
0.0060 to less than 0.0140
0.100 or less, excld. 0
[0031]
Mo
0.01 to 0.60
0.4 or less, excld. 0
[0033]
Fe
Balance
Balance
[0012]
Impurities
Unavoidable
Unavoidable
[0012]
Murakami discloses AlN precipitates ([0030]).
Murakami is silent to the AlN precipitates having an equivalent diameter of 100 nm or more existing at 1.5 pieces/100 um2 or less in a cross section of the raw blank.
Daitoh discloses a raw blank ([0002], [0011]) wherein AlN precipitates having an equivalent diameter of 100 nm or more exist at 1.5 pieces/100 um2 or less in a cross section of the raw blank (number of AlN precipitates having a diameter of 100 nm or larger is 5/100 um2 or less) ([0063]-[0068]).
It would have been obvious to one of ordinary skill in the art to control the AlN precipitates of Murakami having a diameter of 100 nm or larger to be 5/100 um2 or less to restrain austenite grains at the time of heating from being coarsened (Daitoh [0064]). 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).
The limitation of the raw blank being for vacuum carburizing has been considered and determined to recite the purpose or intended use of the claimed raw blank that does not result in a structural difference between the claimed invention and the prior art. A prior art structure which is capable of performing the intended use as recited in the preamble meets the claim. MPEP 2111.02(II). The prior art discloses a raw blank with a composition and structure that fall within the respectively claimed ranges (Murakami [0001], [0011]-[0012], [0018], [0022]-[0033]; Daitoh [0063]-[0068]), such that it is capable of being used for vacuum carburizing.
Regarding claim 3, Murakami discloses a content of S of 0.037% or less by mass (0.02% or less, excld. 0), based on a total mass of the raw blank for vacuum carburization ([0029]). 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).
Regarding claim 4, Murakami discloses the raw blank has a chemical composition satisfying formula (2), AlxN≤0.00082…(2) (0.008 or less, excld. 0) wherein element symbols in the formula (2) denote a value of content (% by mass) of each element (Al: 0.08 or less, excld. 0; N: 0.100 or less, excld. 0) ([0030]-[0031]). 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).
Regarding claim 5, Murakami discloses a content of Al is 0.055 to 0.090% by mass (0.08% or less, excld. 0) ([0030]). 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).
Regarding claim 6, Murakami discloses a content of N is 0.0060 to less than 0.0095% by mass (0.100% or less, excld. 0) ([0031]). 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
Kamata (JP S59-159928 machine translation)
Kamata discloses a carburizing steel (p. 1 para. 1) with an overlapping composition (p. 2) and AlN precipitates that suppress the growth of austenite grains while inhibiting coarsening (pp. 2-3).
Hata (JP 2001-254140 machine translation)
Hata discloses steel ([0001], [0008]) with an overlapping composition ([0004], [0016]-[0021]) and AlN particles having a grain size of 0.01 um or more of 5x10^2 particles/mm2 or less ([0004], [0014], [0025]).
Fujita (JP 2007-254828 machine translation)
Fujita discloses steel ([0001]) with an overlapping composition ([0008]-[0009], [0018]-[0032]) and AlN with an equivalent circle diameter of 50 nm or less of 140 per 1 um of grain boundary ([0010], [0017], [0033]).
Hashino (WO 2018/061396 machine translation)
Hashino discloses steel for case hardening ([0001]), such as carburizing ([0011]), with an overlapping composition ([0009]-[0010], [0017]-[0019]) and 20 to 10,000 AlN precipitates having a particle size of 1 to 100 nm per 1 um2 ([0009], [0014]-[0016]) manufactured by heating to 1100°C or higher then cooling in the range of 0.10 to 2°C/s ([0022]).
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/STEPHANI HILL/Examiner, Art Unit 1735