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 .
Status of the Claims
Claims 1-14 are pending and are currently under examination.
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 1-14 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.
With respect to the recitation “Low alloy steel based on Chromium-Nickel-Molybdenum” in claims 1-3, steel, especially that which is low alloy, is based on iron and not chromium, nickel and/or molybdenum and the intent of this recitation and the scope one having ordinary skill in the art would associate with this recitation is unclear.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 9-14 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
With respect to the recitation “wherein the mill shafts undergo a quenching treatment, with austenitization temperature of 870 to 910°C” in claim 9, the Examiner notes that the austenitization temperature range according to claim 6, upon which claim 9 depends, is from 860 to 890°C and since the austenitization temperature broadens in claim 9 relative to claim 6, claim 9 fails to further limit claim 6. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Examiner Interpretation
Since the contents of chromium, nickel and molybdenum are all below 1.5 mass percent, the Examiner has considered the claims to be based on iron and not chromium, nickel and molybdenum as stated in claim 1.
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 are rejected under 35 U.S.C. 103 as being unpatentable over Vartanov (US 2009/0291014).
In regard to claims 1-2, Vartanov (‘014) discloses steel alloys that would be used in aircraft landing gears having compositions relative to that of the instant invention as set forth below ([0003] and [0031-0043]).
Element
Instant Claim
(mass percent)
Vartanov (‘014)
(weight percent)
Overlap
C
0.28 – 0.33
0.30 – 0.45
0.30 – 0.33
Mn
0.50 – 0.60
0.1 – 1
0.5 – 0.6
Si
0.15 – 0.35
0.1 – 1
0.15 – 0.35
Cr
0.80 – 1.10
1 – 3
1 – 1.1
Mo
0.50 – 0.60
0.1 – 0.55
0.5 – 0.6
Ni
0.35 – 0.50
0.1 – 3.5
0.35 – 0.50
P
0 – less than 0.025
0
0
S
0 – less than 0.025
0
0
Cu
0 – less than 0.35
0.1 – 0.6
0.1 – less than 0.35
V
0 – less than 0.35
0.1 – 0.55
0.1 – less than 0.35
H
0 – 3 ppm
Removed (0)
0
Fe
Balance
Balance
Balance
The Examiner notes that the amounts of carbon, manganese, silicon, chromium, molybdenum, nickel, phosphorus, sulfur, copper, vanadium and hydrogen for the steel alloys disclosed by Vartanov (‘014) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I.
With respect to the recitation “low alloy steel” in claim 1, the Examiner notes that the alloy disclosed by Vartanov (‘014) would also constitute a low alloy steel because it does not have an alloying element that would exceed 5 weight percent and has substantially similar amounts of carbon, manganese, silicon, chromium, molybdenum, nickel, phosphorus, sulfur, copper, vanadium and hydrogen
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Iwasaki (US 2020/0182286)
In regard to claims 1-3, Iwasaki (‘286) discloses steel alloys that would be used in shafts having compositions relative to that of the instant invention as set forth below ([0017-0036]).
Element
Instant Claim
(mass percent)
Iwasaki (‘286)
(weight percent)
Overlap
C
0.28 – 0.33
0.10 – 0.30
0.28 – 0.30
Mn
0.50 – 0.60
0.4 – 2
0.5 – 0.6
Si
0.15 – 0.35
0.01 – 0.3
0.15 – 0.30
Cr
0.80 – 1.10
0.4 – 3.5
0.8 – 1.1
Mo
0.50 – 0.60
0 – 3
0.5 – 0.6
Ni
0.35 – 0.50
0 – 2.5
0.35 – 0.50
P
0 – less than 0.025
0 – 0.05
0 – less than 0.025
S
0 – less than 0.025
0.005 – 0.02
0.005 – 0.02
Cu
0 – less than 0.35
0 – 0.5
0 – less than 0.35
V
0 – less than 0.35
0 – 0.1
0 – 0.1
H
0 – 3 ppm
0
0
Fe
Balance
Balance
Balance
The Examiner notes that the amounts of carbon, manganese, silicon, chromium, molybdenum, nickel, phosphorus, sulfur, copper, vanadium and hydrogen for the steel alloys disclosed by Iwasaki (‘286) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I.
With respect to the recitation “low alloy steel” in claim 1, the Examiner notes that the alloy disclosed by Iwasaki (‘286) would also constitute a low alloy steel because it does not have an alloying element that would exceed 5 weight percent and has substantially similar amounts of carbon, manganese, silicon, chromium, molybdenum, nickel, phosphorus, sulfur, copper, vanadium and hydrogen
Still regarding claim 3, the recitation “for sugar cane mills” has been considered a recitation of intended use that would not further limit the structure of the shaft set forth in the claim. Since Iwasaki (‘286) discloses a substantially similar alloy that would be used to manufacture shafts, Iwasaki (‘286) would read on the claim. MPEP 2111.02 II.
In regard to claim 4, Iwasaki (‘286) discloses wherein the shafts would be used as a shaft in an industrial machine, which would include a machine in a mill [0002]. The recitation “for sugar mills” has been treated as an intended use that would not further limit the structure of the shaft. MPEP 2111.02 II.
With respect to the recitation “wherein the mill shafts are hot forged, in a 2500 Ton press, with an area reduction ratio greater than 3:1” in claim 5, Iwasaki (‘286) discloses hot forging [0184]. While Iwasaki (‘286) does not specify the tonnage of the press or the area reduction the steel undergoes, the claims are drawn to a product and not a process. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113.
Still regarding claim 5, the recitation “for sugar mills” has been treated as an intended use that would not further limit the structure of the shaft. MPEP 2111.02 II.
With respect to the recitation “wherein the mill shafts undergo a normalization treatment, with austenitization temperature of 860 to 890°C” in claim 6, Iwasaki (‘286) discloses normalization at a temperature of 925°C [0185]. While Iwasaki (‘286) does not specify a temperature of 860 to 890°C (processing limitation), the claims are drawn to a product and not a process. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113.
Still regarding claim 6, the recitation “for sugar mills” has been treated as an intended use that would not further limit the structure of the shaft. MPEP 2111.02 II.
With respect to the recitation “wherein the mill shafts undergo a normalization treatment, with an average heating speed of 80°C/h, in electric or natural gas furnaces, being maintained at austenization temperature for a minimum period of 0.5h/inch of shaft thickness” in claim 7, Iwasaki (‘286) discloses normalization at a temperature of 925°C for 2 hours [0185]. While Iwasaki (‘286) does not specify wherein the furnace would be natural gas or electric, it would stand to reason that since these are the two are the most practical for a commercial process and one having ordinary skill in the art would not typically apply a wood/coal burning furnace to make shafts, Iwasaki (‘286) would imply such a furnace. However, still regarding this and the other recitations such as average heating speed and time period (processing limitations), the claims are drawn to a product and not a process. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113.
Still regarding claim 7, the recitation “for sugar mills” has been treated as an intended use that would not further limit the structure of the shaft. MPEP 2111.02 II.
With respect to the recitation “under a normalization treatment, being cooled to room temperature in still air” in claim 8, Iwasaki (‘286) discloses normalization at a temperature of 925°C for 2 hours and cooling to room temperature [0185]. Iwasaki (‘286) does not specify that the air would be still (processing limitation). Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113.
Still regarding claim 8, the recitation “for sugar mills” has been treated as an intended use that would not further limit the structure of the shaft. MPEP 2111.02 II.
With respect to the recitation “wherein the mill shafts undergo a quenching treatment, with austentitization temperature of 870 to 910°C” in claim 9, Iwasaki (‘286) discloses normalization at a temperature of 925°C [0185] and quenching [0002]. While Iwasaki (‘286) does not specify a temperature of 870 to 910°C (processing limitation), the claims are drawn to a product and not a process. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113.
Still regarding claim 9, the recitation “for sugar mills” has been treated as an intended use that would not further limit the structure of the shaft. MPEP 2111.02 II.
With respect to the recitation “wherein the mill shafts undergo a quenching treatment, with an average heating speed of 80°C/h, in electric or natural gas furnaces, being kept at the austenitizing temperature for a minimum period of 0.5 h/inch of shaft thickness” in claim 10, Iwasaki (‘286) discloses normalization at a temperature of 925°C [0185] and quenching [0002]. While Iwasaki (‘286) does not specify wherein the furnace would be natural gas or electric, it would stand to reason that since these are the two are the most practical for a commercial process and one having ordinary skill in the art would not typically apply a wood/coal burning furnace to make shafts, Iwasaki (‘286) would imply such a furnace. However, still regarding this and the other recitations such as average heating speed and time period (processing limitations), the claims are drawn to a product and not a process. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113.
Still regarding claim 10, the recitation “for sugar mills” has been treated as an intended use that would not further limit the structure of the shaft. MPEP 2111.02 II.
With respect to the recitation “wherein the mill shafts undergo a quenching treatment, being cooled down to a temperature below 150°C, with cooling carried out by water in a tank with 130,000 liters and with agitation by pumps and compressed air” in claim 11, Iwasaki (‘286) discloses normalization at a temperature of 925°C and cooling to room temperature [0185], which would be below 150°C, and quenching [0002]. While Iwasaki (‘286) does not specify cooling in water in a tank with 130,000 liters and with agitation by pumps and compressed air, these are processing limitations whereas the claims are directed to a product. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113.
Still regarding claim 11, the recitation “for sugar mills” has been treated as an intended use that would not further limit the structure of the shaft. MPEP 2111.02 II.
With respect to the recitation “wherein the mill shafts undergo a quenching treatment, with heating up to a temperature between 620 and 660°C” in claim 12, while Iwasaki (‘286) does not specify heating to temperature between 620 and 660°C, these are processing limitations whereas the claims are directed to a product. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113.
Still regarding claim 12, the recitation “for sugar mills” has been treated as an intended use that would not further limit the structure of the shaft. MPEP 2111.02 II.
With recitation “wherein the mill shafts undergo a quenching treatment, with an average heating speed of 80°C/h, in electric or natural gas furnaces, being kept at the heating temperature for a minimum time of 0.75 h/inch of shaft thickness” in claim 13, Iwasaki (‘286) discloses normalization at a temperature of 925°C [0185] and quenching [0002]. Additionally, it would stand to reason that since electric heating and natural gas heating are the two are the most practical for a commercial process and one having ordinary skill in the art would not typically apply a wood/coal burning furnace to make shafts, Iwasaki (‘286) would imply such a furnace. While Iwasaki (‘286) does not specify a heating speed of 80°C/h, in electric or natural gas furnaces and being kept at the heating temperature for a minimum of 0.75 h/inch of shaft thickness, the claims are drawn to a product and not a process. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113.
Still regarding claim 13, the recitation “for sugar mills” has been treated as an intended use that would not further limit the structure of the shaft. MPEP 2111.02 II.
With respect to the recitation “wherein the mill shafts undergo a quenching treatment, being cooled to room temperature in still air” in claim 14, Iwasaki (‘286) discloses normalization at a temperature of 925°C for 2 hours and cooling to room temperature [0185]. Iwasaki (‘286) does not specify that the air would be still (processing limitation). Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113.
Still regarding claim 14, the recitation “for sugar mills” has been treated as an intended use that would not further limit the structure of the shaft. MPEP 2111.02 II.
Conclusion
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/JESSEE R ROE/Primary Examiner, Art Unit 1759