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 .
Election/Restrictions & Status of Claims
Claims 6-8, 11 and 18-19 are examined of which claim 6 was amended and claims 18-19 were newly added in Applicant’s reply.
Claims 9-10 and 12-17 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 03 June 2025.
Claim Objections
Claim 19 is objected to because of the following informalities: Claim 19 does not end with a period. Appropriate correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
List 1
Element
Instant Claims
(mass%)
Prior Art
US’247
(mass%)
Prior Art
US’724
(mass%)
C
C: 0.80 to 1.30
C: 0.80 to 1.15
0.2 – 0.85
Si
Si: 0.10 to 1.20
Si: 0.45% or less
0 – 1.5
Mn
Mn: 0.20 to 1.80
Mn: 0.10 to 0.85
0.5 – 2.5
P
P: not more than 0.035
P: 0.050 or less
0.06 maximum
S
S: 0.0005 to 0.012
S: 0.030 or less
0.06 maximum
Cr
Cr: 0.20 to 2.50
Cr: 0.40 – 2.50 Claim 19
Cr: 0 to 0.25
0 – 1.5
V, Cu, Ni, Nb, Mo
Claim 7: at least one selected from V: not more than 0.30 mass %, Cu: not more than 1.0 mass %, Ni: not more than 1.0 mass %, Nb: not more than 0.05 mass %, and Mo: not more than 2.0 mass %
Nb: 0.005 to 0.050
V: 0.05 – 0.2
Al, W, B, Ti, Sb
Claims 8, 11: at least one selected from Al: not more than 0.07 mass %, W: not more than 1.0 mass %, B: not more than 0.005 mass %, Ti: not more than 0.05 mass %, and Sb: not more than 0.05 mass %
Al: not more than 0.07 Claim 18
Al: 0.200 to 1.500
Al: 0.015 – 0.1
Fe +
impurities
Balance
Balance
Balance
Claims 6-8 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/067520 A1 via its US English equivalent US 2022/0024247 A1 of Maejima (US’247).
Regarding claims 6-8 and 11, WO 2020/067520 A1 via its US English equivalent US 2022/0024247 A1 of Maejima (US’247) teaches “a railway wheel” “The microstructure of the rim part, the web part, and the hub part of the railway wheel of the present embodiment is substantially composed of pearlite. Here, the phrase “substantially composed of pearlite” means that the area fraction of pearlite in the microstructure is 95.0% or more.” with a composition wherein the claimed ranges of the constituent elements of the instant alloy of the instant claims overlap or lie inside the ranges of various elements of the alloy of the prior art as shown in the List 1 above. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed composition over the prior art disclosure since the prior art teaches the similar property/utility throughout the disclosed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I. {abstract, [0001], [0017]-[0033], [0060], [0088]-[0149], [0161]-[0164], [0188]-[0192], [0065]-[0185]}.
It is noted that the prior art is silent regarding the CP equation, its definition and ranges as recited in instant claim 1. However, the prior art teaches refinement of prior austenite grains and teaches “Furthermore, the prior-austenite grain size was 40 μm or less, and it was expected that excellent toughness could be obtained” indicating that the prior art prefers a prior-austenite grain size of 40 μm or less. Further, the prior art discloses a composition wherein the claimed ranges of the various elements of the instant alloy overlap or lie inside the ranges of various elements of the alloy of the prior art (see compositional analysis above). Therefore, the ranges of the formulaic expression of the instant claims would also overlap or lie inside the values of the prior art resulting from the instant formulaic expressions. In addition, it is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art, In re Cooper and Foley 1943 C.D. 357, 553 O.G. 177; 57 USPQ 117, Saklatwalla v. Marburg, 620 O.G. 685, 1949 C.D. 77, and In re Pilling, 403 O.G. 513, 44 F(2) 878, 1931 C.D. 75.
Claims 6-8, 11 and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over US 3726724 A of Davies (US’724).
Regarding claims 6-8, 11 and 18-19, US 3726724 A of Davies (US’724) teaches “A steel rail section which contains a grain refining element and which has been subjected to normalising or controlled rolling to produce a ferrite grain size finer than A.S.T.M. 8 has a greater resistance to brittle fracture than current rail sections especially at low temperatures while retaining good tensile properties.” “This invention relates to steel, and more particularly to rail steel and rail sections fabricated therefrom.” with a composition wherein the claimed ranges of the constituent elements of the instant alloy of the instant claims overlap or lie inside the ranges of various elements of the alloy of the prior art as shown in the List 1 above. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed composition over the prior art disclosure since the prior art teaches the similar property/utility throughout the disclosed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I. {abstract, col 1:14 – col 4:68, claims 1-9}.
It is noted that the prior art is silent regarding the CP equation, its definition and ranges as recited in instant claim 1. However, the prior art teaches {col 2:23-33} “By the practice of the present invention using grain refining elements and a normalising or controlled rolling process, a prior austenite grain size finer than A.S.T.M. 6, and a ferrite grain size finer than A.S.T.M. 8, can be produced.” and points out some examples with PAGS ASTM No of 7-10 in Table 1 meaning that the PAGS in the prior art would correlate to an average diameter of 3.17 mm, 2.25 mm, 1.59 mm and 1.12 mm for ASTM grain size numbers of 7, 8, 9 and 10 respectively based on the accepted ASTM grain size standards. Further, as noted above, the prior art discloses a composition wherein the claimed ranges of the various elements of the instant alloy overlap or lie inside the ranges of various elements of the alloy of the prior art (see compositional analysis above). Therefore, the ranges of the formulaic expression of the instant claims would also overlap or lie inside the values of the prior art resulting from the instant formulaic expressions. In addition, it is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art, In re Cooper and Foley 1943 C.D. 357, 553 O.G. 177; 57 USPQ 117, Saklatwalla v. Marburg, 620 O.G. 685, 1949 C.D. 77, and In re Pilling, 403 O.G. 513, 44 F(2) 878, 1931 C.D. 75.
Response to Arguments
Applicant's arguments filed 09/23/2025 with respect to the rejection of record “Claims 6-8 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/067520 A1 via its US English equivalent US 2022/0024247 A1 of Maejima (US’247)” have been fully considered but they are not persuasive.
Instant claims do not require a “railway wheel” rather a rail which according to the standard meaning includes a bar. The prior art teaches bars throughout the disclosure and how it is made into the wheel for example in [0151]-[0170] thereby reading on the rail of the instant claims.
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 JOPHY S. KOSHY whose telephone number is (571)272-0030. The examiner can normally be reached M-F 8:30 AM- 5:00 PM.
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/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733