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 SE2050705-9 filed June 12, 2020 as required by 37 CFR 1.55. Receipt is also acknowledged of a copy of WO 2021/251892, the WIPO publication of PCT/SE2021/050562 filed June 11, 2021.
Claim Status
This Office Action is in response to Applicant’s Remarks and Claim Amendments filed November 6, 2025. Applicant elected Species I-A in the July 14, 2025 restriction election in response to the May 14, 2025 restriction requirement, such that claims 10-12 are withdrawn from consideration. This is acknowledged on p. 8 Section II. of the November 6, 2025 Remarks. The status identifier of claims 10-12 is “(Previously Presented)”. However, for any amendment being filed in response to a restriction or election of species requirement and any subsequent amendment, any claims which are non-elected must have the status identifier (withdrawn). MPEP 714(II)(C).
Claims Filing Date
November 6, 2025
Amended
1-3, 6-9
Cancelled
4, 5
Pending
1-3, 6-12
Withdrawn
10-12
Under Examination
1-3, 6-9
Withdrawn Claim Objection
The following claim objections are withdrawn due to claim amendment:
Claim 3 line 11 “Ni 0.25” as support by applicant’s specification at 5:11-13, which recites an upper limit of nickel may be set to 0.25 %.
Claim 7 not ending in a period.
Withdrawn Claim Rejections - 35 USC § 112
The following 112(b) rejection is withdrawn due to argument:
Claim 7 lines 8-12 directed the cleanliness of the hot work tool steel according to ASTM E45-97, Method A, Plate I-r.
The applicant persuasively argues the terms provided in claim 7 are the same as defined in ASTM E45-97, in particular the inclusion types A, B, C, and D (Remarks p. 9 para. 5) are differentiated as thin and heavy inclusions by their width in microns (Remarks p. 9 paras. 6-7).
Therefore, in the first row of the table, “A”, “B”, “C”, and “D” are interpretated as referring to the ASTM E45-97 defined inclusion types. In the second row of the table, “T” and “H” are interpreted as referring to Thin Series and Heavy Series, respectively, and are differentiated by their width in microns. In the third row of the table, the numbers, 0, 1.0, and 1.5 refer to the respective inclusion type width.
Response to Remarks filed November 6, 2025
Pinnow
Applicant’s arguments, see Remarks p. 10 paras. 4-5, filed November 6, 2025, with respect to Pinnow have been fully considered and are persuasive. The rejection of Pinnow has been withdrawn.
The applicant persuasively argues Pinnow includes 6.0-9.0% Cr and 2.0-3.0% V (Remarks p. 10 para. 4), however amended claim 1 has lower contents of Cr and V (Remarks p. 10 para. 5).
Yoshida
Applicant’s arguments, see Remarks p. 11 para. 3, filed November 6, 2025, with respect to Yoshida have been fully considered and are persuasive. The rejection of Yoshida has been withdrawn.
The applicant persuasively argues amended claim 1 recites a lower limit for Al of 0.001, where Yoshida does not disclose an overlapping range (Remarks p. 11 para. 3).
New Grounds
In light of claim amendment a new grounds of rejection are made over Filimonov in view of Westin and over Yoshida in view of Ozaki. Applicant’s following argument filed November 6, 2025 applies to the new rejection of Yoshida in view of Ozaki. It has been fully considered but it is not persuasive.
The applicant argues the area ratio of carbides in Yoshida after quenching is 5-25% (English Abstract) (Remarks p. 10 para. 1), whereas amended claim 1 incorporates a small and controlled amount of vanadium carbides of 0.5-3 vol% with an upper limit of M6C and M7C3 of 0.5 vol% each (Remarks p. 10 para. 2), such that Yoshida teaches away from the presently claimed invention (Remarks p. 10 para. 3).
Amended claim 1 recites both VC of 0.2 to 4 vol% and of 0.5 to 3 vol%, which, as discussed in the related 112(b) rejection is interpreted as requiring VC of 0.2 to 4 vol%. Yoshida discloses a carbide area ratio of 5 to 25% with an area ratio of MC type carbides mainly composed of V of 2 to 20% ([0004], [0006], [0011], [0013]). This overlaps at 2-4% VC and 4% VC + 0.5% M6C + 0.5% M7C3 (5% total), such that a prima facie case of obviousness exists. MPEP 2144.05(I).
Claim Interpretation
Claim 7 lines 4-7 are given the following interpretation consistent with applicant’s specification at 12:16-25: Rp0.2 is yield strength, Rm is tensile strength, A5 is elongation, and Z is reduction of area.
Claim 7 lines 8-12 are given the following interpretation consistent with applicant’s specification at 13:24-25 and Table 2 and ASTM E45-97, Method A, Plate I-r. The first row of the table, “A”, “B”, “C”, and “D” refer to the inclusion type, the second row of the table “T” refers to Thin Series and “H” refers Heavy Series, and the third row of the table, “0”, “1.0”, and “1.5” refer to the respective inclusion type width in microns.
Claim Objection
Claim 1 is objected to because of the following informalities:
Lines 24-25 and 27-28 recite the same claim limitation, “wherein the steel comprises carbides having a size of ≥ 1 µm and fulfills the following requirement(s) concerning the amounts of carbides in vole %:”.
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 1-3 and 6-9 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
Claim 1 lines 24-29 recite broadly “VC 0.2 – 4” and narrowly “VC 0.5 – 3”.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
For the purposes of examination claim 1 will be interpreted as encompassing the broad recitation of “VC 0.2 – 4”.
Claims 2, 3, and 6-9 are rejected as depending from 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 1-3 and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshida (JP 2006-144098 machine translation) in view of Ozaki (US 2004/0187972).
Regarding claim 1, Yoshida discloses a hot work tool steel for hot forging, press hardening, die casting or hot extrusion ([0001]-[0003]) consisting of a composition that overlaps with that claimed ([0004]-[0011], [0014]),
wherein the steel comprises carbides having a size of ≥ 1 um (2 to 10 um) ([0013]) and fulfils the following requirement concerning the amounts of carbides in volume %:
VC 0.2-4 (2 to 20%) ([0013]), and
wherein the steel comprises carbides having a size of ≥ 1 um and fulfills the following requirements concerning the amounts of carbides in volume %:
VC 0.5-3 (2 to 20%) ([0013]),
M6C ≤ 0.5, and
M7C3 ≤ 0.5.
Yoshida discloses a carbide area ratio of 5 to 25% with an area ratio of MC type carbides mainly composed of V of 2 to 20% ([0004], [0006], [0011], [0013]-[0014]). This overlaps at 4% VC + 0.5% M6C + 0.5% M7C3 (5% total).
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).
Yoshida is silent to 0.001 to 0.1 wt% aluminum.
Ozaki discloses a tool steel ([0010]) for hot forging ([0057]) with up to 0.1 wt% aluminum ([0038]-[0039]).
It would have been obvious to one of ordinary skill in the art in the steel of Yoshida to include up to 0.1 wt% aluminum because aluminum is used as a deoxidizing agent at preparation of this kind of steel, where, if it remains in the steel in a large amount of more than 0.1% it forms inclusions that significantly decrease toughness (Ozaki [0038]-[0039]). 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
Claim 2
Claim 3
Claim 8
Claim 9
Yoshida Disclosure
Yoshida Citation
At least one of
At least one of
At least one of
At least one of
C
0.65 – 0.85
0.65 – 0.8
0.65 – 0.75
0.66 – 0.75
0.66 – 0.75
0.6 – 2.5
[0007]
Si
0.03 – 0.8
0.05 – 0.6
0.15 – 0.5
0.15 – 0.25
0.15 – 0.25
0.1 – 1.5
[0007]
Mn
0.1 – 1.8
0.2 – 0.8
0.4 – 0.5
-
-
≤ 0.5
[0008]
Cr
4.5 – 5.4
–
4.9 – 5.1
-
-
3.5 – 5.5
[0008]
Mo
1.8 – 3.5
2.0 – 2.5
2.2 – 2.3
2.2 – 2.3
2.2 – 2.3
0.1 – 10
[0009]
V
1.3 – 2.3
1.5 – 1.9
1.5 – 1.7
1.52 – 1.68
1.52 – 1.68
1.0 – 6.0
[0010]
Al
0.001 – 0.1
≤ 0.05
0.001 – 0.03
0.001 – 0.03
0.005 – 0.03
-
-
N
≤ 0.12
≤ 0.08
≤ 0.05
≤ 0.05
≤ 0.05
-
-
Ni
≤ 1
≤ 0.5
0.25
-
-
≤ 0.3
[0009]
W
≤ 0.1
–
–
–
–
0.1 – 15
[0010]
Co
≤ 2
–
≤ 1
≤ 1
≤ 0.5
0.1 – 15
[0011]
Cu
≤ 1
≤ 0.5
≤ 0.2
≤ 0.15
≤ 0.15
-
-
Nb
≤ 0.1
≤ 0.05
≤ 0.005
≤ 0.005
≤ 0.005
-
-
Ti
≤ 0.05
≤ 0.01
≤ 0.005
≤ 0.005
≤ 0.005
-
-
Zr
≤ 0.05
≤ 0.01
≤ 0.005
≤ 0.005
≤ 0.005
-
-
Ta
≤ 0.05
≤ 0.01
≤ 0.005
-
-
-
-
B
≤ 0.01
≤ 0.006
-
-
-
-
-
Ca
≤ 0.01
≤ 0.005
-
-
-
-
-
Mg
≤ 0.01
≤ 0.005
-
-
-
-
-
REM
≤ 0.2
≤ 0.1
≤ 0.05
-
-
-
-
Fe
Balance
-
-
-
-
-
-
Impurities
Present
-
-
-
-
-
-
Regarding claim 2, Yoshida in view of Ozaki discloses the hot work steel according to claim 1 (Yoshida [0001]-[0014]), wherein the steel overlaps with that claimed (Yoshida [0004]-[0011], [0014]; Ozaki [0038]-[0039]). 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, Yoshida in view of Ozaki discloses the hot work tool steel according to claim 1, wherein the steel overlaps with that claimed (Yoshida [0004]-[0011], [0014]; Ozaki [0038]-[0039]). 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 7, Yoshida discloses the hot work tool steel according to claim 1 ([0001]-[0014), wherein the steel after hardening and tempering has a hardness of 55-57 HRC (55 to 72 HRC) ([0012]) and wherein the steel fulfils at least one of the following requirements:
Rp0.2 ≥ 1750 MPa
Rm ≥ 2100 Mpa
A5 ≥ 6 %
Z ≥ 20 %, and
a cleanliness fulfilling the following maximum requirements with respect to micro-slag according to ASTM E45-97, Methods A, Plate I-r:
A
A
B
B
C
C
D
D
T
H
T
H
T
H
T
H
1.0
0
1.5
1.0
0
0
1.5
1.0
.
The limitations of hot work tool steel fulfilling at least one of Rp0.2, Rm, A5, Z, and cleanliness have been considered and determined to recite properties of the claimed hot work tool steel. The prior art discloses a composition (Yoshida [0004]-[0011], [0014]; Ozaki [0038]-[0039]) and structure (carbide size and VC amount) (Yoshida [0013]) that overlap with that claimed, such that the clamed properties naturally flow from the disclosure of the prior art, including Rp0.2 ≥ 1750 MPa, Rm ≥ 2100 MPa, A5 ≥ 6 %, Z ≥ 20 %, and a cleanliness fulfilling the following maximum requirements with respect to micro-slag according to ASTM E45-97, Methods A, Plate I-r according to the claimed table.
Regarding claim 8, Yoshida in view of Ozaki discloses the hot work tool steel according to claim 1 (Yoshida [0001]-[0014]), wherein the steel overlaps with that claimed (Yoshida [0004]-[0011], [0014]; Ozaki [0038]-[0039]). 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 9, Yoshida in view of Ozaki discloses the hot work tool steel according to claim 1 (Yoshida [0001]-[0014]), wherein the steel overlaps with that claimed (Yoshida [0004]-[0011], [0014]; Ozaki [0038]-[0039]). 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).
Claims 1-3 and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Filimonov (SU 1700092 machine translation and STN) in view of Westin (US 6,547,846).
Regarding claim 1, Filimonov discloses a hot work tool steel for hot forging, press hardening, die casting or hot extrusion ([0001]-[0002], [0013], STN) with an overlapping composition ([0013]-[0031], STN). 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
Claim 2
Claim 3
Claim 8
Claim 9
Filimonov STN
At least one of
At least one of
At least one of
At least one of
C
0.65 – 0.85
0.65 – 0.8
0.65 – 0.75
0.66 – 0.75
0.66 – 0.75
0.45 – 0.80
Si
0.03 – 0.8
0.05 – 0.6
0.15 – 0.5
0.15 – 0.25
0.15 – 0.25
0.15 – 1.50
Mn
0.1 – 1.8
0.2 – 0.8
0.4 – 0.5
-
-
0.2 – 1.5
Cr
4.5 – 5.4
–
4.9 – 5.1
-
-
3 – 9
Mo
1.8 – 3.5
2.0 – 2.5
2.2 – 2.3
2.2 – 2.3
2.2 – 2.3
0.4 – 3.2
V
1.3 – 2.3
1.5 – 1.9
1.5 – 1.7
1.52 – 1.68
1.52 – 1.68
1.0 – 2.8
Al
0.001 – 0.1
≤ 0.05
0.001 – 0.03
0.001 – 0.03
0.005 – 0.03
0.02 – 1.0
N
≤ 0.12
≤ 0.08
≤ 0.05
≤ 0.05
≤ 0.05
-
Ni
≤ 1
≤ 0.5
0.25
-
-
0.2 – 2.0
W
≤ 0.1
–
–
–
–
-
Co
≤ 2
–
≤ 1
≤ 1
≤ 0.5
-
Cu
≤ 1
≤ 0.5
≤ 0.2
≤ 0.15
≤ 0.15
-
Nb
≤ 0.1
≤ 0.05
≤ 0.005
≤ 0.005
≤ 0.005
Opt. 0.01-0.80
Ti
≤ 0.05
≤ 0.01
≤ 0.005
≤ 0.005
≤ 0.005
Opt. 0.001-0.50
Zr
≤ 0.05
≤ 0.01
≤ 0.005
≤ 0.005
≤ 0.005
Opt. 0.01-0.50
Ta
≤ 0.05
≤ 0.01
≤ 0.005
-
-
-
B
≤ 0.01
≤ 0.006
-
-
-
-
Ca
≤ 0.01
≤ 0.005
-
-
-
0.003-0.10
Mg
≤ 0.01
≤ 0.005
-
-
-
-
REM
≤ 0.2
≤ 0.1
≤ 0.05
-
-
Opt. 0.003-0.30
Fe
Balance
-
-
-
-
Rest
Impurities
Present
-
-
-
-
-
Filimonov discloses the V content is related to the C content (STN).
Filimonov is silent to carbides.
Westin discloses a tool steel (1:7-15), wherein the steel comprises carbides having a size of ≥ 1 um (longest length is 2.0 um) (2:8-38) and fulfils the following requirement concerning the amounts of the carbides in volume %:
VC 0.2 -4 (1.5-2.5) (2:8-31), and
wherein the steel comprises carbides having a size of ≥ 1 um (longest length is 2.0 um) (2:8-38) and fulfills the following requirements concerning the amounts of carbides in volume %:
VC 0.5 – 3 (1.5-2.5) (2:8-31),
M6C ≤ 0.5 (does not contain any notable content) (2:49-52), and
M7C3 ≤ 0.5 (does not contain any notable content) (2:49-52).
It would have been obvious to one of ordinary skill in the art to harden and temper the tool steel of Filimonov to form the carbides as disclosed in Westin for better wear resistance and high hot hardness and toughness (Westin 1:32-56, 3:42-4:23).
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, Filimonov discloses a composition that overlaps with that claimed ([0013]-[0031], STN). 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, Filimonov discloses a composition that overlaps with that claimed ([0013]-[0031], STN). 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, Filimonov in view of Westin discloses the steel comprises carbides having a size of ≥ 1 um (longest length is 2.0 um) (2:8-38) and fulfils at least one of the following requirements concerning the amounts of said carbides in volume %:
VC 1.5 - 2.3 (1.5-2.5) (2:8-31),
M6C ≤ 0.1 (does not contain any notable content) (2:49-52), and
M7C3 ≤ 0.1 (does not contain any notable content) (2:49-52).
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 7, Filimonov in view of Westin discloses the steel after hardening and tempering has a hardness of 55-57 HRC (50-59 HRC) (Westin 3:42 to 4:23). 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).
Claim 7 recites that the steel fulfils at least one of the following requirements:
Rp0.2 ≥ 1750 MPa
Rm ≥ 2100 MPa
A5 ≥ 6%
Z ≥ 20%, and
a cleanliness fulfilling the following maximum requirements with respect to micro-slag according to ASTM E45-97, Method A, Plate I-r:
PNG
media_image1.png
118
844
media_image1.png
Greyscale
.
The limitations of the hot work tool steel fulfilling at least one of Rp0.2, Rm, A5, Z, and cleanliness have been considered and determined to recite properties of the claimed hot work tool steel. The prior art discloses a composition (Filimonov [0013]-[0031], STN) and structure (carbide size and VC amount) (Westin 2:8-38, 49-52) that overlap with that claimed, such that the clamed properties naturally flow from the disclosure of the prior art, including Rp0.2 ≥ 1750 MPa, Rm ≥ 2100 MPa, A5 ≥ 6 %, Z ≥ 20 %, and a cleanliness fulfilling the following maximum requirements with respect to micro-slag according to ASTM E45-97, Methods A, Plate I-r according to the claimed table.
Regarding claim 8, Filimonov discloses a composition that overlaps with that claimed ([0013]-[0031], STN). 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 9, Filimonov discloses a composition that overlaps with that claimed ([0013]-[0031], STN). 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
The following prior art reference relates to the claimed composition: SU 1225875.
The following prior art reference is related to the claimed carbides: US 6,162,275.
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.
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/STEPHANI HILL/Examiner, Art Unit 1735