DETAILED ACTION
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 CN 201910699927.1 filed July 31, 2019 as required by 37 CFR 1.55. Receipt is also acknowledged of WO 2021/017520, the WIPO publication of PCT/CN2020/083992 filed April 9, 2020.
Claim Status
This Office Action is in response to Applicant’s Remarks and Claim Amendments filed November 4, 2025.
Claims Filing Date
November 4, 2025
Amended
1-5
Cancelled
6-10
Pending
1-5
Under Examination
1-5
Withdrawn Abstract Objection
The following objection is withdrawn due to abstract amendment:
Being more than 150 words.
Withdrawn Claim Objection
The following objection is withdrawn due to claim amendment:
Claim 1 line 4 “s: ≤ 0.0015%”.
Withdrawn Claim Rejections - 35 USC § 112
The following 112(b) rejections are withdrawn due to claim amendment:
Claim 2 line 2 “the carbon equivalent value CEV”.
Claim 2 lines 4-5 “the welding crack sensitivity coefficient PCM”.
Claim 3 line 2 “the product”.
Claim 3 line 2 “when the product is a steel plate”.
Claim 3 line 2 “the thickness”.
Claim 4 line 2 “the surface quality of the steel is good”.
Claim 4 line 3 “the steel plate”.
Claim 4 line 4 “the depths of surface spots caused by peeling off iron oxide scales”.
Claim 4 lines 3-4 “the steel plate needs not to be polished”.
Claim 5 line 2 “the tensile strength”.
Claim 5 line 2 “the elongation”.
Claim 5 lines 2-3 “the Charpy V-shaped longitudinal impact energy at -40°C”.
The following 112(b) rejection is withdrawn due to argument:
Claim 4 lines 2-4 “there are no surface defects…, and a depth of surface spots…”.
The applicant argues surface spots caused by peeling off of iron oxide scales do not belong to surface defects because they inevitably form as a natural feature of a steel plate with a depth that is significantly less than that of surface defects (Remarks para. spanning pp. 5-6).
Response to Remarks filed November 4, 2025
Li
Applicant’s claim amendments, see amended claim 1 line 2, filed November 4, 2025, with respect to Li have been fully considered and are persuasive. The rejection of Li has been withdrawn.
Amended claim 1 line 2 recites “Si: ≤ 0.05%”. Li discloses 0.10 to 1.00 wt% Si ([0019]).
Ishikawa
Applicant's arguments filed November 4, 2025 with respect to Ishikawa have been fully considered but they are not persuasive.
The applicant argues Ishikawa fails to disclose amended claim 1 of Si ≤ 0.05 and no addition of Ni, Cu, and Mo (Remarks p. 7 para. 3).
Ishikawa discloses 0.01 to 0.5% Si to increase the strength and act as a deoxidizer ([0021]), which overlaps with the claimed range at 0.01 to 0.05% such that a prima facie case of obviousness exists. MPEP 2144.05(I).
Ishikawa also discloses 1% or less Cu, 1% or less Ni, and 0.5% or less Mo ([0030]). 1% or less includes 0% or no addition of Ni and Cu. 0.5% or less includes 0% or no addition of Mo. In Ishikawa Table 1 Nos. 1-3, 5, 7, 8, 10 do not include Cu, Ni, and Mo. MPEP 2144.05(I).
The rejection over Ishikawa is maintained.
Ueda optionally in view of Li
Applicant's arguments filed November 4, 2025 with respect to Ueda optionally in view of Li have been fully considered but they are not persuasive.
The applicant argues Ueda fails to disclose amended claim 1 of Si ≤ 0.05 and no addition of Ni, Cu, and Mo (Remarks p. 7 para. 3).
Ueda discloses 0.05 to 0.5% Si to act as a deoxidizer ([0016]), which overlaps with the claimed range at 0.05% such that a prima facie case of obviousness exists. MPEP 2144.05(I).
Ueda also discloses optionally one or more of Cu, Ni, Cr, Mo, Nb, V, Ti, B, Ca, REMs, and Mg as needed (Abstract, [0012], [0025]), such that it is prima facie obvious to have no addition of Ni, Cu, and Mo as supported by Ueda’s examples (Table 1 Nos. 1 and 8). MPEP 2144.05(I).
The rejection over Ueda optionally in view of Li is maintained.
Claim Objections
Claims 1-5 are objected to because of the following informalities:
According to 37 C.F.R. 1.121(c), amendments to a claim must be made by rewriting the entire claim with all changes (e.g., additions and deletions) as indicated in this subsection. All claims being currently amended in an amendment paper shall be submitted with markings to indicates the changes that have been made relative to the immediate prior version of the claims. The text of any added subject matter must be shown by underlining the added text. The text of any deleted subject matter must be shown by strike-through.
Applicant’s new (11/4/2025) claims 1-5 include amendments that are not properly annotated from the original (11/26/2022) claims, such as:
Original claim 1 line 1 “surface quality, characterized in that”. New claim 1 lines 1-2 “surface quality, is characterized in that”.
Original claim 2 line 2 “chemical constituents meet that the carbon equivalent value CEV is”. New claim 2 lines 2-3 “chemical constitution meets carbon equivalent CEV”.
Original claim 3 line 2 “when the product is a steel plate”. New claim 3 line 2 “
Original claim 4 lines 3-4 “the steel plate needs not to be polished”. New claim 4 line 4 “
Original claim 5 line 3 “Brinell hardness meets 360-460HB.” New claim 5 line 4 “Brinell hardness shall meet 360~460HB.”
Claim 1 lines 2-4 uses “~” to denote numerical ranges. The symbol “~” stands for about. To denote ranges either a dash, “-“, or the word “to” should be used.
Claim 3 line 3 uses “~” to denote a numerical range. The symbol “~” stands for about. To denote ranges either a dash, “-“, or the word “to” should be used.
In claim 4 lines 3-4 “no surface defects such as pores, inclusions, pits, and pressed iron oxide scale”, are the surface defects limited to pores, inclusions, pits, and pressed iron oxide scale or are the pores, inclusions, pits, and pressed iron oxide scale non-limiting examples of the surface defects?
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 line 2 “the chemical constitution” renders the claim indefinite. There is insufficient antecedent basis.
Claim 2 line 3 “the formula” renders the claim indefinite. There is insufficient antecedent basis.
Claim 2 line 4 “the formula” renders the claim indefinite. There is insufficient antecedent basis.
Claim 4 line 5 “the peeling off of iron oxide scale” renders the claim indefinite. There is insufficient antecedent basis.
Claim 3 is rejected as depending from claim 1.
Claim 5 is rejected as depending from claims 1 or 2 or 3.
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, 2, and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Ishikawa (JP H10-204584 machine translation).
Regarding claim 1, Ishikawa discloses a steel plate ([0001], [0008]-[0009], [0035]) with excellent surface quality ([0022], [0030]) and an overlapping composition ([0009]-[0010], [0021]-[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).
The limitation of the steel being “wear-resistant” as recited in the preamble has been considered and determined to recite a purpose or intended use of the claimed steel that does not result in a structural difference between the claimed invention and the prior art. The prior art disclose a substantially similar steel (Ishikawa [0009]-[0010], [0021]-[0031]) such that the claimed “wear-resistant” is met by the prior art. MPEP 2111.02(II).
Element
Claim 1
Ishikawa Disclosure
Ishikawa Citation
C
0.12 to 0.20
0.05 to 0.15
[0021]
Si
≤ 0.05
0.01 to 0.5
[0021]
Mn
0.6 to 1.20
0.5 to 2
[0022]
Nb
0.010 to 0.040
0.005 to 0.05
[0028]
V
≤ 0.01
0.005 to 0.1
[0029]
Ti
0.010 to 0.030
0.005 to 0.05
[0022]
Al
≤ 0.04
0.005 to 0.1
[0022]
Cr
0.10 to 0.40
1 or less
[0030]
B
0.001 to 0.005
0.00015 or less
[0022]
Ca
0.0010 to 0.0050
0.0005 to 0.005
[0022]
P
≤ 0.010
Permitted without impairing effects
[0030]
S
≤ 0.0015
0.005 or less
[0023]
O
≤ 0.0012
0.002 or less
[0024]
N
≤ 0.0035
0.0005 to 0.01
[0022]
H
≤ 0.0002
-
-
Fe
Balance
Balance
[0009]
Regarding claim 2, Ishikawa discloses the wear-resistant steel plate with excellent surface quality according to claim 1 ([0009]-[0010], [0021]-[0031], [0035]), characterized in that its chemical constitution meets carbon equivalent CEV ≤ 0.40 according to the formula CEV=C+Mn/6+(Cr+Mo+V)/5+(Ni+Cu)/15 (Ceq as defined by Ishikawa is 0.42 or less) ([0010], [0018], [0026]) (CEV as defined by claim 2 is 0.13 to 0.94) ([0009]-[0010], [0021]-[0031]); and according to the formula PCM=C+Si/30+(Mn+Cu+Cr)/20+Ni/60+Mo/15+V/10+5B, welding crack sensitivity coefficient PCM ≤ 0.25 (Pcm as defined by Ishikawa is ≤ 0.2) ([0010], [0018], [0025]) (Pcm as defined by claim 2 is 0.08 to 0.43) ([0009]-[0010], [0021]-[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 4, Ishikawa discloses the wear-resistant steel with excellent surface quality according to claim 1 or 2 ([0001], [0008]-[0010], [0021]-[0031], [0035]).
The limitation of there being no surface defects such as pores, inclusions, pits, or pressed iron oxide scales and a depth of surface spots caused by peeling off iron oxide scales being ≤ 0.1mm have been considered and determined to recite properties of the claimed steel. The prior art discloses a substantially similar steel (Ishikawa [0001], [0008]-[0010], [0021]-[0031], [0035]), including a Si content that overlaps from 0.01 to 0.05% (Ishikawa [0021]), such that the properties of the prior art are substantially similar to the properties claimed (applicant’s specification 2:24 to 3:4) including no surface defects such as pores, inclusions, pits, or pressed iron oxide scales and a depth of surface spots caused by peeling off iron oxide scales of ≤ 0.1mm.
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Ishikawa (JP H10-204584 machine translation) as applied to claim 1 above, and further in view of either one of Beguinot (US 5,695,576) or Yuan (EP 3225710).
Regarding claim 3, Ishikawa discloses the wear-resistant steel with excellent surface quality according to claim 1 ([0009]-[0010], [0021]-[0031], [0035]).
Ishikawa is silent to the thickness of the steel plate being 4-20 mm.
Beguinot discloses a steel plate, wherein the thickness of the steel plate is 4-20 mm (greater than 8 mm) (2:1-5, 3:66 to 4:5).
It would have been obvious to one of ordinary skill in the art for the plate of Ishikawa to have a thickness greater than 8 mm to manufacture equipment that resists abrasion and resists concentrated and highly energetic shocks (Beguinot 1:8-26). 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).
As an alternative to Beguinot, Yuan discloses a steel plate ([0001]), wherein the thickness of the steel plate is 4-20 mm (up to 100 mm or greater) ([0004], [0006], [0034]).
It would have been obvious to one of ordinary skill in the art for the plate of Ishikawa to have a thickness of up to 100 mm of greater so that it can be used in mechanical devices for engineering, mining, metallurgy, such as parts of bulldozers, excavators, scraper conveyors, etc. and have high strength, high hardness, and high toughness (Yuan [0002]). Similarly, the steel of Ishikawa has high tensile strength (Ishikawa [0001]) and excellent brittle fracture resistance (toughness) under high speed deformation (Ishikawa [0016], [0019]). 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, Ishikawa discloses the wear-resistant steel with excellent surface quality according to claim 3 ([0001], [0008]-[0010], [0021]-[0031], [0035]).
The limitation of there being no surface defects such as pores, inclusions, pits, or pressed iron oxide scales and a depth of surface spots caused by peeling off iron oxide scales being ≤ 0.1mm have been considered and determined to recite properties of the claim steel. The prior art discloses a substantially similar steel (Ishikawa [0001], [0008]-[0010], [0021]-[0031], [0035]), including a Si content that overlaps from 0.01 to 0.1% (Ishikawa [0021]), such that the properties of the prior art are substantially similar to the properties claimed (applicant’s specification 2:24 to 3:4) including no surface defects such as pores, inclusions, pits, or pressed iron oxide scales and a depth of surface spots caused by peeling off of iron oxide scales of ≤ 0.1mm.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Ueda (JP 2010-138421 machine translation) and optionally in view of Li (CN 103194674 machine translation).
Regarding claim 1, Ueda discloses a steel plate ([0010]-[0013]) with excellent surface quality ([0027], [0051]) and an overlapping composition ([0012], [0014]-[0038]) (Opt. stands for optionally). 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 steel being “wear-resistant” as recited in the preamble has been considered and determined to recite a purpose or intended use of the claimed steel that does not result in a structural difference between the claimed invention and the prior art. The prior art disclose a substantially similar steel (Ueda [0012], [0014]-[0038], [0051]) such that the claimed “wear-resistant” is met by the prior art. MPEP 2111.02(II).
Element
Claim 1
Ueda Disclosure
Ueda Citation
C
0.12 to 0.20
0.03 to 0.2
[0015]
Si
≤ 0.05
0.05 to 0.5
[0016]
Mn
0.6 to 1.20
0.8 to 3
[0017]
Nb
0.010 to 0.040
Opt. 0.005 to 0.1
[0025], [0032]
V
≤ 0.01
Opt. 0.01 to 0.2
[0025], [0033]
Ti
0.010 to 0.030
Opt. 0.005 to 0.03
[0025], [0034]
Al
≤ 0.04
0.1 or less
[0020]-[0021]
Cr
0.10 to 0.40
Opt. 0.05 to 2
[0025], [0030]
B
0.001 to 0.005
Opt. 0.005 or less
[0025], [0035]
Ca
0.0010 to 0.0050
Opt. 0.005 or less
[0025], [0036]
P
≤ 0.010
0.02 or less
[0018]
S
≤ 0.0015
0.005 or less
[0019]
O
≤ 0.0012
-
-
N
≤ 0.0035
0.07 or less
[0022]
H
≤ 0.0002
-
-
Fe
Balance
Balance
[0038]
In the event it is determined that Ueda does not read on the claimed O and H, then the below rejection in view of Li is applied.
Li discloses a wear-resistant steel ([0002], [0012]) with excellent surface quality ([0023], [0031], [0035]) with O ≤ 0.0012 (≤ 0.0080) and H ≤ 0.0002 (≤ 0.004) ([0026]).
It would have been obvious to one of ordinary skill in the art in the steel of Ueda to include O ≤ 0.0080 and H ≤ 0.004 because oxygen and hydrogen are very detrimental to the performance of steel, especially weldability, impact toughness, and crack resistance, and they reduce the quality and service life of the steel, without greatly increasing product cost by too strict control (Li [0026]). 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 2, Ueda discloses the wear-resistant steel with excellent surface quality according to claim 1, characterized in that its chemical constitution meets carbon equivalent CEV ≤ 0.40 according to the formula CEV=C+Mn/6+(Cr+Mo+V)/5+(Ni+Cu)/15 (Ceq as defined by Ueda is 0.38 to 0.60) ([0023]-[0024]) (CEV as defined by claim 2 is 0.16 to 1.61) ([0012], [0014]-[0038]); and according to the formula PCM=C+Si/30+(Mn+Cu+Cr)/20+Ni/60+Mo/15+V/10+5B, welding crack sensitivity coefficient PCM < 0.25 (PCM as defined by claim 2 is 0.07 to 0.68) ([0012], [0014]-[0038]). 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 3, Ueda discloses the wear-resistant steel with excellent surface quality according to claim 1 ([0010]-[0013], [0024]-[0038], [0051]), characterized in that a thickness of the steel plate is 4-20 mm (12 to 50 mm) ([0063], Table 2). 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, Ueda discloses the wear-resistant steel with excellent surface quality according to claim 1 or 2 or 3 ([0012], [0014]-[0038], [0051]).
The limitation of there being no surface defects such as pores, inclusions, pits, or pressed iron oxide scales and a depth of surface spots caused by peeling off of iron oxide scales being ≤ 0.1mm have been considered and determined to recite properties of the claim steel. The prior art discloses a substantially similar steel (Ueda [0012], [0014]-[0038], [0051]), including a Si content that overlaps from 0.05 to 0.1% (Ueda [0016]), such that the properties of the prior art are substantially similar to the properties claimed (applicant’s specification 2:24 to 3:4) including no surface defects such as pores, inclusions, pits, or pressed iron oxide scales and a depth of surface spots caused by peeling off of iron oxide scales of ≤ 0.1mm.
Regarding claim 5, Ueda discloses the wear-resistant steel plate with excellent surface quality according to claim 1 or 2 or 3 ([0010]-[0038], [0051]), characterized in that the tensile strength is ≥ 1200MPa (1000 MPa or more) ([0006]-[0007], [0010]-[0013], [0042]),
The limitations of the elongation being ≥ 12%, and the Charpy V-shaped longitudinal impact energy at -40°C being ≥ 30J and Brinell hardness meets 360-460HB have been considered and determined to recite properties of the claimed steel. The prior art disclose a substantially similar steel (Ueda [0010]-[0038], [0051]) such that the properties of the prior art are substantially similar to the properties claimed including the elongation being ≥ 12%, and the Charpy V-shaped longitudinal impact energy at -40°C being ≥ 30J and Brinell hardness meets 360-460HB.
Further, mechanical properties, such as elongation, Charpy V-shaped longitudinal impact energy at -40°C, and Brinell hardness, are dependent on both the composition and microstructure of the steel. Applicant’s specification discloses the microstructure of the inventive steel is “tempered martensite” (applicant’s specification 1:3). Similarly, the steel of Ueda has a microstructure of tempered martensite to adjust the strength-toughness balance and increase yield strength (Ueda [0007], [0043]-[0044]), supporting the mechanical properties of the prior art being substantially similar to the properties claimed including the elongation being ≥ 12%, and the Charpy V-shaped longitudinal impact energy at -40°C being ≥ 30J and Brinell hardness meets 360-460HB.
Related Art
Nagao (US 2016/0060721); Nagao (US 2016/0076118)
The cited prior art discloses overlapping compositions with a minimum of 0.05% Si, Brinell hardness, thickness, and Charpy impact energy with a martensitic structure.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANI HILL whose telephone number is (571)272-2523. The examiner can normally be reached Monday-Friday 7am-12pm.
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 WALKER can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/STEPHANI HILL/Examiner, Art Unit 1735
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735