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 .
DETAILED ACTION
Claims 1-21 have been cancelled; Claims 22-33, 37, and 39-40 have been amended; Claims 45-60 are added as new claims.
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
This application contains claims directed to the following patentably distinct species in the instant invention:
Claims 29 and 45-48 depend on independent claim 22 separately.
Species 1: Claim(s) 29, the martensite is between 80-97% by area percent;
Species 2: Claim(s) 45, microstructure consisting of martensite and residual austenite;
Species 3: Claim(s) 46, microstructure consisting of tempered martensite and residual austenite;
Species 4: Claim(s) 47, fresh martensite between 0-10% by area fraction;
Species 5: Claim(s) 48, microstructure consisting of 95-98% tempered martensite and 2-5% residual austenite by area fraction;
The species are independent or distinct because they indicate different microstructure ranges. Since claim 29 has been examined and it includes broadest phase ranges. Therefore, claims 45-48 are withdrawn as non-elected claims.
.Claims 26 and 49 depend on independent claim 22 separately.
Species 6: Claim(s) 26, including 0.6-1.4 wt% Mn.
Species 7: Claim(s) 49, including 0.81-1.5 wt% Mn.
The species are independent or distinct because they indicate different Mn ranges. Since claim 26 has been examined in merit. Therefore, claim 49 is withdrawn as non-elected claims.
Claims 23 and 50 depend on independent claim 22 separately.
Species 8: Claim(s) 23, including 1.2-2.4 wt% Si.
Species 9: Claim(s) 50, including 1-2.3 wt% Si.
The species are independent or distinct because they indicate different Si ranges. Since claim 23 has been examined in merit. Therefore, claim 50 is withdrawn as non-elected claims.
Claims 57 and 58 depend on independent claim 22 separately.
Species 10: Claim(s) 57, including 0-0.095 wt% V.
Species 11: Claim(s) 58, including 0 wt% V.
The species are independent or distinct because they indicate different V ranges. Since claim 57 has broader range. Therefore, claim 58 is withdrawn as non-elected claims.
Claims 59 and 60 depend on independent claim 37 separately.
Species 12: Claim(s) 59, including 0-0.095 wt% V.
Species 13: Claim(s) 60, including 0 wt% V.
The species are independent or distinct because they indicate different V ranges. Since claim 59 has broader range. Therefore, claim 60 is withdrawn as non-elected claims.
Therefore, claims 45-50, 58, and 60 are withdrawn as non-elected claims; claims 22-44, 51-57, and 59 remain for examination, wherein claims 1 and 37 are independent claims.
Previous Rejections/Objections
Previous objection of Claims 23-28 because of the informalities is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 10/21/2025.
Previous objection of Claims 29-32 because of the informalities is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 10/21/2025.
Previous objection of Claim 33 because of the informalities is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 10/21/2025.
Previous objection of Claim 37 because of the informalities is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 10/21/2025.
Previous rejection of Claims(s) 33 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 is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 10/21/2025.
However, in view of the Applicant’s amendment, newly recorded reference(s), and reconsideration, a new ground rejection has been listed as following.
Claim Rejections - 35 USC § 102
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 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 22-36, and 43-44 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Hashimura et al (US-PG-pub 2009/0205753 A1, thereafter PG’753).
PG’753 is applied to the instant claims 22-36 and 43-44 for the same reason as stated in the previous office action dated 6/10/2025.
Regarding the amendments in the instant claims 22-33, the amendments do not change the scope of the instant claims.
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 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.
Claims 37-42, 51-54, 57 and 59 are rejected under 35 U.S.C. 103 as being unpatentable over PG’753 in view of Tarasov et al (RU 2093589 C1, with on-line translation, thereafter RU’589).
PG’753 in view of RU’589 is applied to the instant claims 37-42 for the same reason as stated in the previous office action dated 6/10/2025.
Regarding the amendments in the instant claims 37 and 39-40, the amendments do not change the scope of the instant claims.
Regarding claims 51-52, PG’753 teaches forming basically comprised of a tempered martensite structure with 15 mass% or less residual austenite (par.[0131], [0133] of PG’753), which overlaps the claimed microstructure distributions as claimed in the instant claims. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the martensite and austenite amount from the disclosure of PG’753 in view of RU’589 in order to obtain the desired properties of the spring (abstract, examples, and claims of PG’753).
Regarding claim 53, PG’753 teaches adjusting Mn in range 0.1-2.0wt% (par.[0037]-[0038] of PG’753), which overlaps the claimed 0.81-1.5wt% Mn as claimed in the instant claim. Overlapping in Mn range creates a prima facie case of obviousness. MPEP 2144 05 I. it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize amount of Mn in the steel as claimed from the disclosure of PG’753 in order to deoxidation or immobilization of the S in the steel as MnS and improves the quenching ability to obtain sufficient hardness after heat treatment (par.[0038] of PG’753).
Regarding claim 54, PG’753 teaches adjusting Si in range 1-3wt% (par.[0034]-[0035] of PG’753), which overlaps the claimed 1-2.3wt% Si as claimed in the instant claim. Overlapping in Mn range creates a prima facie case of obviousness. MPEP 2144 05 I. it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize amount of Si in the steel as claimed from the disclosure of PG’753 in order to secure the strength of the spring steel.
Regarding newly added claims 57 and 59, claim 57 depends on independent claim 22 and claim 57 depends on independent claim 37. Since vanadium is an optional element in the independent claims 22 and 37, the claimed V in the instant claims 57 and 59 is still considered as an optional element. Furthermore, PG’753 teaches adjusting V in range over 0.1-1.0wt% ([0039] of PG’753). The over 0.1 wt%V disclose by PG’753 is very close to the claimed up limit 0.95wt% V in the instant claim. Being close to the claimed range of V amount creates a prima facie case of obviousness. MPEP 2144 05 I. it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize amount of V in the steel as claimed from the disclosure of PG’753 in order to hardening the steel wire (par.[0039]-[0040] of PG’753).
Claims 55-56 are rejected under 35 U.S.C. 103 as being unpatentable over PG’753 in view of RU’589, and further in view of Riley et al (US-PG-pub 2015/0151187 A1, thereafter PG’187).
Regarding claims 55-56, PG’753 in view of RU’589 does not specify the claimed dimension of the steel spring leaf (cl.55) and the bar form semi-finished product (cl.56). PG’187 teaches manufacturing process of spring steel bar-spring comprises two or more separate leaves of spring steel (claim 1 of PG’187), which reads on the bar form product (cl.56). PG’187 indicates that the dimensions of the spring are: a thickness of 5 mm to 10 mm; a width of 25 mm to 38 mm (par.[0058] of PG’187), which is within the claimed leaf dimension as claimed in claim 55). it would have been obvious to one of ordinary skill in the art at the time the invention was made to adjusting the leaf dimensions and including bar for product as claimed from the disclosure of PG’187 in the process PG’753 in view of RU’589 in order to obtain the desired spring application (Abstract, figs, and par.[0058] of PG’187).
Response to Arguments
Applicant’s arguments to the art rejection to Claims 22-44, 51-57, and 59 have been considered but they are not persuasive. Regarding the arguments related to the amended features in the instant claims, the Examiner’s position has stated as above.
The Applicant’s arguments are summarized as following:
1, PG’753 does not specify the claimed microstructure as claimed in the instant claim 22 since PG’753 desired to provide “ferrite-pearlite structure” and “to suppress the formation of a martensite structure” (par.[0087] of PG’753).
2, PG’753 teaches forming a nitride layer for improve the surface hardness of the spring steel, which different to the instant application, since the present specification does not describe any nitridation process.
3, regarding the rejection of the instant claim 35, since there is different microstructure as discussed in the argument 1, the inherency rejection should be withdrawn,
4, PG’753 in view of RU’589 does not teach or suggest a method of production a leaf of a leaf spring of steel as claimed in the instant claim 37 since coil process in PG’753 is contrary to the manufacturing of a leaf of leaf spring of steel.
5, regarding the rejection of claims 41-42, the leaf of a leaf spring of steel is not a coiled spring as disclosed in PG’753 in view of RU’589.
In response,
Regarding the Applicant’s arguments 1 and 3, as noted by the Applicant, the “ferrite-pearlite structure” and “to suppress the formation of a martensite structure” (par.[0087] of PG’753) is for the process of rolling and drawing process. PG’735 specify heat treatment after patenting, drawing, including quenching and tempering (part.[0155] of PG’753). And PG’753 specify the forming martensite and residual austenite in the steel (par.[0131], [0134], and [0139] of PG’735). More specifically, PG’753 indicates that “Specifically, control becomes necessary to maintain the cooling medium at a low temperature, maintain an extremely low temperature even after cooling, secure a long transformation time to martensite”. Therefore, there is no evidence to show the PG’753 teaches away to form martensite in the spring steel. Actually, the high TS (1835 MPa) high hardness (530HV), and drawing-ability (45%) (as showing in the comparison table of the previous office action dated 6/10/2025) should corresponding to the alloy’s composition and microstructures.
Regarding the argument 2, there is no evidence in the instant specification to intendedly avoid further nitridation or other treatment.
Regarding the argument 4-5, Firstly, applying proper techniques to manufacture a known spring steel for different type of spring would have been obvious to one of ordinary skill in the art at the time the invention was made. ). There is no disclosure in PG’753 to teach away forming a leaf of leaf spring from the spring steel. Secondly, as pointed out in the rejection for the instant claim 37 in the previous office action dated 6/10/2025, RU’589 teaches that “A known method of quenching and tempering of ring-shaped leaf springs, including laying the spring in a special matrix, heating together with a matrix of heat-resistant alloy or steel” (Page 3, left Col., lins.20-24 of RU’589. It is noted that the Applicant’s arguments are against the combined prior arts individually, one should not show non-obviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the instant case, rejected under 35 U.S.C. 103 as being unpatentable over PG’753 in view of RU’589 is applied to the instant claims 37-42. The reason and motivation for the combination can further refer to the rejection for in the office action above and previous office action dated 6/10/2025.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIE YANG whose telephone number is (571)270-1884. The examiner can normally be reached on IFP.
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/JIE YANG/Primary Examiner, Art Unit 1734