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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 15, 2026 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 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 April 15, 2026. The status identifier of claims 10-12 “(Withdrawn)” is acknowledged. MPEP 714(II)(C).
Claims Filing Date
April 15, 2026
Amended
1-3
Cancelled
4, 5
Pending
1-3, 6-12
Withdrawn
10-12
Under Examination
1-3, 6-9
Withdrawn Claim Objection
The following objection is withdrawn due to claim amendment:
Claim 1 lines 24-25 and 27-28 both reciting “wherein the steel comprises carbides having a size of ≥ 1 µm and fulfills the following requirement(s) concerning the amounts of carbides in volume %:”.
Withdrawn Claim Rejections - 35 USC § 112
The following rejection is withdrawn due to claim amendment:
Claim 1 lines 24-29 broadly “VC 0.2 – 4” and narrowly “VC 0.5 – 3”.
Response to Remarks filed November April 15, 2026
Claim Objection
The applicant argues the applicant has removed Ni from the claims because the specification describes the upper limit for Ni as 0.25 wt% (p. 7 paras. 9-10) and that claim 7 ends with a period (p. 7 paras. 11-12).
These claim objections were made in the August 6, 2025 Non-Final Rejection (p. 3) and they were withdrawn in the February 6, 2026 Final Rejection (pp. 2-3).
Yoshida in view of Ozaki
Applicant’s arguments, see Remarks pp. 10-11, filed April 15, 2026, with respect to Yoshida in view of Ozaki have been fully considered and are persuasive. The rejection of Yoshida in view of Ozaki has been withdrawn.
The applicant persuasively argues tungsten is not essential and the claims exclude reference to intentionally add tungsten, whereas Yoshida requires 0.1-15 wt% tungsten (p. 10 para. 2-3).
The transitional phase “consisting of” excluded any element not specified in the claim. MPEP 2111.03(II). Pending claim 1 lines 1-2 recite a “hot work tool steel…consisting of”. Tungsten is excluded from the composition. In contrast, Yoshida discloses 0.1 to 15% W ([0010]).
Filimonov in view of Westin
Applicant’s arguments, see Remarks p. 12, filed April 15, 2026, with respect to Filimonov in view of Westin have been fully considered and are persuasive. The rejection of Filimonov in view of Westin has been withdrawn.
The applicant persuasively argues the amended claims remove nickel and calcium, which are both required by Filimonov (p. 12 para. 2).
The transitional phase “consisting of” excluded any element not specified in the claim. MPEP 2111.03(II). Pending claim 1 lines 1-2 recite a “hot work tool steel…consisting of”. Nickel and calcium are excluded from the composition. In contrast, Filimonov discloses 0.2-2.0% Ni and 0.003-0.10% Ca (STN Abstract and Composition).
New Grounds
In light of claim amendment and upon further consideration new grounds of rejection are made over Yokoi in view of Ozaki and Westin and over Shimizu in view of Ozaki and Westin.
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 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 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Yokoi (JP 2005-194563 machine translation) in view of Ozaki (US 2004/0187972) and Westin ( 6,547,846).
Regarding claim 1, Yokoi discloses a hot work tool steel ([0006]) for hot forging, press hardening, die casting or hot extrusion ([0001]) consisting of an overlapping composition ([0007]-[0013]). 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
Yokoi
Yokoi Cite
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
0.5 – 1.2
[0009]
Si
0.03 – 0.6
0.05 – 0.6
0.15 – 0.5
0.15 – 0.25
0.15 – 0.25
0.1 – 2.0
[0010]
Mn
0.1 – 1.8
0.2 – 0.8
0.4 – 0.5
-
-
0.1 – 0.8
[0010]
Cr
4.5 – 5.4
–
4.9 – 5.1
-
-
4.5 – 10.0
[0011]
Mo
1.8 – 3.5
2.0 – 2.5
2.2 – 2.3
2.2 – 2.3
2.2 – 2.3
1.0 – 5.0
[0012]
V
1.3 – 2.3
1.5 – 1.9
1.5 – 1.7
1.52 – 1.68
1.52 – 1.68
0.1 – 2.0
[0013]
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
-
-
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
-
-
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
-
-
-
-
-
Mg
≤ 0.01
≤ 0.005
-
-
-
-
-
REM
≤ 0.2
≤ 0.1
≤ 0.05
-
-
-
-
Fe
Balance
-
-
-
-
Remainder
[0007]
Impurities
Present
-
-
-
-
Unavoidable
[0007]
Yokoi 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 Yokoi to include up to 0.1 wt% aluminum because aluminum is used as a deoxidizing agent for 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).
Yokoi discloses V forms hard carbides ([0013]) and the carbides must have an average particle size of 5 um or less and an area ratio of 15% or less ([0014]).
Westin discloses a tool steel (1:7-15) wherein the steel comprises carbides having a size of ≥ 1 um (longest length is 2 um) (2:8-38) and fulfills the following requirements concerning the amounts of carbides in volume %:
VC 0.5 – 3 (1.5 – 2.5) (2:8-21),
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 for the carbides of Yokoi to be VC that have a longest length of 2 um and be 1.5 – 2.5 volume% while not containing any notable content of M6C and M7C2 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, Yokoi discloses a composition that overlaps with that claimed ([0007]-[0013]). 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, Yokoi discloses a composition that overlaps with that claimed ([0007]-[0013]). 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, Yokoi in view of Westin discloses the steel comprises carbides having a size of ≥ 1 um (longest length is 2.0 um) (Yokoi [0014]; Westin 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) (Yokoi [0013]-[0014]; Westin 2:8-31),
M6C ≤ 0.1 (does not contain any notable content) (Westin 2:49-52), and
M7C3 ≤ 0.1 (does not contain any notable content) (Westin 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, Yokoi discloses the steel after hardening and tempering has a hardness of 55-57 HRC (60 HRC or higher) ([0006]-[0008], [0015]). 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).
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 (Yokoi [0007]-[0013]) and structure (carbide size and VC amount) (Yokoi [0013]-[0014]; 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 at least one of 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, Yokoi discloses a composition that overlaps with that claimed ([0007]-[0013]). 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, Yokoi discloses a composition that overlaps with that claimed ([0007]-[0013]). 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 Shimizu (JP 2002-167644 machine translation) in view of Ozaki (US 2004/0187972) and Westin ( 6,547,846).
Regarding claim 1, Shimizu discloses a hot work tool steel for hot forging, press hardening, die casting or hot extrusion ([0001]) consisting of an overlapping composition ([0010]-[0011], [0026]-[0036]). 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
Shimizu
Shimizu Cite
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
0.4 – 1.2
[0026]
Si
0.03 – 0.6
0.05 – 0.6
0.15 – 0.5
0.15 – 0.25
0.15 – 0.25
0.1 – 1.2
[0027]
Mn
0.1 – 1.8
0.2 – 0.8
0.4 – 0.5
-
-
0.3 – 2.0
[0028]
Cr
4.5 – 5.4
–
4.9 – 5.1
-
-
3.0 – 10.0
[0029]
Mo
1.8 – 3.5
2.0 – 2.5
2.2 – 2.3
2.2 – 2.3
2.2 – 2.3
0.5 – 3.0
[0030]
V
1.3 – 2.3
1.5 – 1.9
1.5 – 1.7
1.52 – 1.68
1.52 – 1.68
≤ 3
[0031]
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
-
-
Co
≤ 2
–
≤ 1
≤ 1
≤ 0.5
≤ 3
[0035]
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
≤ 2
[0036]
Zr
≤ 0.05
≤ 0.01
≤ 0.005
≤ 0.005
≤ 0.005
-
-
Ta
≤ 0.05
≤ 0.01
≤ 0.005
-
-
-
-
B
≤ 0.01
≤ 0.006
-
-
-
-
-
Mg
≤ 0.01
≤ 0.005
-
-
-
-
-
REM
≤ 0.2
≤ 0.1
≤ 0.05
-
-
-
-
Fe
Balance
-
-
-
-
Remainder
[0010]
Impurities
Present
-
-
-
-
Present
[0010]
Shimizu 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 Shimizu to include up to 0.1 wt% aluminum because aluminum is used as a deoxidizing agent for 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).
Shimizu discloses V prevents grain coarsening and improves wear resistance through the formation of hard carbides ([0031]).
Westin discloses a tool steel (1:7-15) wherein the steel comprises carbides having a size of ≥ 1 um (longest length is 2 um) (2:8-38) and fulfills the following requirements concerning the amounts of carbides in volume %:
VC 0.5 – 3 (1.5 – 2.5) (2:8-21),
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 for the carbides of Shimizu to be VC that have a longest length of 2 um and be 1.5 – 2.5 volume% while not containing any notable content of M6C and M7C2 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, Shimizu discloses a composition that overlaps with that claimed ([0010]-[0011], [0026]-[0036]). 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, Shimizu discloses a composition that overlaps with that claimed ([0010]-[0011], [0026]-[0036]). 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, Shimizu in view of Westin discloses the steel comprises carbides having a size of ≥ 1 um (longest length is 2.0 um) (Shimizu [0031]; Westin 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) (Yokoi [0013]-[0014]; Westin 2:8-31),
M6C ≤ 0.1 (does not contain any notable content) (Westin 2:49-52), and
M7C3 ≤ 0.1 (does not contain any notable content) (Westin 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, Shimizu discloses the steel after hardening and tempering has a hardness of 55-57 HRC (55 HRC or higher) ([0016]-[0017], [0020], [0040]). 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).
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 (Shimizu [0010]-[0011], [0026]-[0036]) and structure (carbide size and VC amount) (Shimizu [0031]; 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 at least one of 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, Shimizu discloses a composition that overlaps with that claimed ([0010]-[0011], [0026]-[0036]). 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, Shimizu discloses a composition that overlaps with that claimed ([0010]-[0011], [0026]-[0036]). 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
Jonsson (US 6,162,275)
Jonsson discloses a steel for tools (1:8-21) with MC-carbides and secondary M2C-carbides while being void of chromium carbides and M6C carbides (4:25 to 5:12), where vanadium contributes to a high content of MC-carbides (3:8-14).
Ozaki ‘874 (JP 2004-323874 machine translation)
Ozaki ‘874 discloses a tool steel (p. 1) including Fe, 0.7-0.9 wt% C, 0.15-0.35 wt% Si, 2 wt% or less Mn, 5-6 wt% Cr, 2.5-3.5 wt% Mo, 1.8-2.3 wt% V with primary carbides of MC and M6C with the proportion of M6C smaller than the proportion of MC (p. 2-4), where the MC carbides of 5-40 um are 20 or more per 0.01 mm2 of cross-sectional microstructure (p. 3).
Contact Information
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/STEPHANI HILL/Examiner, Art Unit 1735
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