DETAILED ACTION
Response to Amendment
The Amendment filed 01/30/2026 has been entered. Claims 1-10 remain pending in the application. Claims 6-10 have been withdrawn due to a restriction requirement. Claims 1-5 are currently amended. Applicant's amendments to the drawings have overcome the objections previously set forth in the Non-Final Rejection mailed 10/31/2025. The Examiner agrees that “LOM” is spelled out in paragraph [0015] of the instant specification and therefore the objections previously set forth in the Non-Final Rejection mailed 10/31/2025 are withdrawn. Applicant's amendments to the claims have overcome the objections previously set forth in the Non-Final Rejection mailed 10/31/2025. Applicant's amendments to the claims have overcome the 112(b) rejections previously set forth in the Non-Final Rejection mailed 10/31/2025 with the exception of the 112(b) rejections recited in this Office action. Applicant's amendments to the claims have overcome the 112(d) rejections previously set forth in the Non-Final Rejection mailed 10/31/2025.
Information Disclosure Statement
One (1) information disclosure statement (IDS) was submitted on 11/25/2025. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS is being considered by the examiner.
Claim Interpretation
Regarding amended claim 1, the limitation “wherein the steel is produced from a pre-alloyed steel melt by Powder Metallurgy (PM)” is considered a product-by-process 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, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113. In this instance, the instant claims are directed to a steel, which is a product, and therefore, any steel with the same or overlapping properties as the instant steel will read on the claimed steel regardless of its method of production.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-5 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.
Claim 1 recites the limitation “wherein the cleanliness fulfils the following maximum requirements with respect to micro-slag according to ASTM E45-97 (1997), Method A:
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
”
in lines 19-23 of claim 1. This limitation renders the claim indefinite since it is unclear whether the claimed “cleanliness” is of the claimed steel, the steel at a specific point in its processing, the “micro-slag” or of something else entirely.
Claims 2-5 depend on claim 1, do not resolve the aforementioned issues, and are thereby also indefinite.
Further regarding the cleanliness limitation of claim 1, the limitation “with respect to micro-slag” renders the claim indefinite since it is unclear whether the term “micro-slag” is referring to a byproduct from the production of the claimed steel, to the claimed steel itself, or something else. If the claimed “cleanliness” is directed to slag from the processing of the claimed steel, the claim would be considered a product-by-process claim. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP § 2113. In this case, the cleanliness of a micro-slag from the processing of the claimed steel would not be relevant to the claimed steel since the patentability of a product does not depend on its method of production.
Claims 2-5 depend on claim 1, do not resolve the aforementioned issues, and are thereby also indefinite.
Further regarding the cleanliness limitation of claim 1, the term “cleanliness” is a relative term which renders the claim indefinite. The term “cleanliness” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear whether the term “cleanliness” is intended to mean a determined number of impurities, a particular surface finish, or a different type of property.
Claims 2-5 depend on claim 1, do not resolve the aforementioned issues, and are thereby also indefinite.
Further regarding the cleanliness limitation of claim 1, the terms A, B, C, D, T, and H and the numerical values provided in the table of the instant claim are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what these terms mean and therefore one of ordinary skill in the art would not understand how to manufacture a steel which meets the claimed cleanliness. It is further unclear whether the “A” of the claimed “Method A” is the same “A” used in the table or if they are different “A” terms.
Claims 2-5 depend on claim 1, do not resolve the aforementioned issues, and are thereby also indefinite.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over DE 2141026 A1 of Oda (as cited in prior Office action).
Regarding claims 1-5, Oda teaches a steel forging of high strength, ductility, and machinability (Title, a steel with high strength ductility, and machinability is considered suitable for hot-work tools and therefore reads on the claimed steel suitable for hot-work tools).
List 1
Element
Instant claims (wt%)
Oda (%)
Oda – Sample C (%)
C
≤ 0.08
≤ 0.07 (claim 2)
≤ 0.06 (claims 3-5)
≤ 0.1
0.01
Si
0.1-0.9
0.2-0.8 (claim 2)
0.2-0.7 (claims 3, 5)
0.3-0.6 (claim 4)
≤ 0.5
0.18
Mn
≤ 2
≤ 1 (claim 2)
≤ 0.6 (claims 3, 5)
≤ 0.4 (claim 4)
≤ 0.7
0.36
Cr
4.0-6.0
4.1-6.0 (claim 2)
4.3-5.7 (claims 3, 5)
4.5-5.5 (claim 4)
5-13
4.86
Ni
2.0-4.0
2.5-4.0 (claim 2)
2.7-4.0 (claims 3, 5)
3.0-4.0 (claim 4)
2-10
4.92
Mo
4.5-6.5
4.5-6.0 (claim 2)
4.5-5.8 (claims 3, 5)
4.5-5.5 (claim 4)
1.5-5
3.16
Co
2.0-5.5
2.5-5.0 (claim 2)
2.7-4.7 (claims 3, 5)
3.0-4.5 (claim 4)
3-8
4.22
Cu
≤ 4.0
≤ 3.0 (claim 2)
≤ 2.5 (claim 3)
-
-
Nb
≤ 0.1
≤ 0.05 (claims 2, 4)
≤ 0.03 (claim 3)
-
-
V
≤ 0.1
≤ 0.05 (claims 2, 4)
≤ 0.03 (claims 3, 5)
-
-
Ti
≤ 0.1
≤ 0.05 (claims 2, 4)
≤ 0.03 (claim 3, 5)
-
-
Al
≤ 0.01 (claims 4, 5)
-
-
Fe and impurities
Balance
Balance (implied)
Balance (implied)
Regarding the composition of claims 1-5, compositional ranges including zero, including the claimed ranges of C, Mn, Cu, Nb, V, Ti, and Al, are interpreted as optional elements.
Oda teaches a steel with a chemical composition (Abstract, Table 1, [0005], [0012]-[0015], claim 1) overlapping with the composition of claims 1-5, as shown in List 1. While Oda does not explicitly disclose whether the compositional percentages are atomic or weight percent, the composition percentages of Oda are considered to be in wt % since those are the most common units used in the steel industry, absent any specific convincing evidence and/or arguments to the contrary. Oda further teaches a steel with a chemical composition lying within the claimed ranges for all elements except Mo (Table 1, Sample C). Oda teaches the lower limit of molybdenum concentration is 1.5% to increase the yield strength of the steel and the upper limit of the concentration is set at 5% because molybdenum is expensive ([0015]). Since Oda teaches a broader Mo content of 1.5-5%, the steel of Sample C of Oda is provided as an example to demonstrate one of ordinary skill in the art would reasonably modify the molybdenum content of the steel of Sample C to increase the steel yield strength while managing production costs and arrive at a steel with a composition within the claimed ranges of the instant invention. 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.
Oda therefore reads on the claimed compositions of claims 1-5.
Regarding the aged condition of claims 1 and 3, Oda teaches the steel is subjected to an ageing treatment (claim 1, Figs. 1-2, [0015], steel subjected to an ageing treatment necessarily results in an aged steel and therefore reads on the claimed steel is in an aged condition).
Oda therefore reads on the limitation wherein the steel is in an aged condition of claims 1 and 3.
Regarding the presence of intermetallic precipitates of claims 1 and 3, Oda teaches molybdenum, tungsten, cobalt, and chromium are added to the steel to improve the precipitation hardening ability of the steel material during the aging treatment ([0013]-[0014]). It is well-known in the art that precipitation hardening achieves hardening by forming intermetallic precipitates and one of ordinary skill in the art understands the steel of Oda will form intermetallic precipitates during its ageing treatment.
Oda therefore reads on the limitation wherein the steel comprises intermetallic precipitates of claims 1 and 3.
Regarding the Ac1 temperature of claims 1 and 3-5, the amount and type of intermetallic precipitates of claims 1 and 3 and the cleanliness of claim 1, Oda does not explicitly disclose these claimed properties.
As best understood given the 112(b) rejections above, since Oda teaches a steel with an overlapping composition, including those of Co and Mo, one of ordinary skill in the art would reasonably expect the steel of Oda to possess the claimed Ac1 temperature, amount and type of intermetallic precipitates, and cleanliness of the instant invention.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP § 2112.01 I. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Therefore, it is expected that the steel of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (see compositional analysis above), b) the claimed and prior art products are produced by identical or substantially identical processes (both Oda and the instant steel are subjected to an ageing treatment). Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
In this case, the steel of Oda has a chemical composition, aged condition, and intermetallic precipitates overlapping with those of the instant invention, and the steel of Oda is therefore expected to necessarily possess the claimed Ac1 temperature of claims 1 and 3-5, the amount and type of intermetallic precipitates of claims 1 and 3 and the cleanliness of claim 1.
Since the steel of Oda reads on the claimed composition and properties, the steel of Oda therefore reads on the claimed wherein the steel is produced from a pre-alloyed steel melt by Powder Metallurgy (PM) of claim 1. See Claim Interpretation in this Office action regarding product-by-process claims.
Oda therefore reads on all the limitations of claims 1-5.
Response to Arguments
Applicant's arguments filed 01/30/2026 have been fully considered but they are not persuasive.
112(b) rejections
Regarding the term “micro-slag”, Applicant argues that the claim is directed to the steel and not a byproduct and that the cleanliness of the steel is defined, in part, by the micro-slag (remarks, page 11).
In response, one of ordinary skill in the art understands that “slag” is a byproduct of steel and not the steel itself. The “cleanliness” of the steel being defined in part by the micro-slag, as argued by Applicant, does not measure the “cleanliness” of the claimed steel directly. If the claimed “cleanliness” is directed to slag from the processing of the claimed steel, the claim would be considered a product-by-process claim. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP § 2113. In this case, the cleanliness of a micro-slag from the processing of the claimed steel would not be relevant to the claimed steel since the patentability of a product does not depend on its method of production.
Furthermore, the cited “ASTM E45-18a Standard Test Methods for Determining the Inclusion Content of Steel” by ASTM explicitly recites the microscopic methods are not intended for assessing the content of exogenous inclusions from entrapped slag (Section 4.4, emphasis added) and does not mention or define the term “micro-slag”. The Examiner acknowledges this standard is the 2018 edition instead of the cited 1997 version and encourages Applicant to provide the 1997 version if it provides the definitions being discussed in this Office action, including for the terms “micro-slag”, “cleanliness”, and claimed table with relevant variables and numbers.
Applicant further argues that the term “cleanliness” and the variables A, B, C, D, T, and H are defined by ASTM E45-97 and would be understood by those skilled in the art (remarks, pages 11-12).
In response, the term “cleanliness” is not defined in the cited ASTM E45 standard and there is no table comparable to the one recited at the end of amended claim 1. The term “cleanliness” only appears in reference to standards for aerospace materials different to ASTM E45 (Section 2.3). Therefore, one of ordinary skill in the art would not readily understand, as argued by Applicant, the definition of “cleanliness”, the variables and numbers of the table, and consequently the metes and bounds of the instant claims even when consulting the cited ASTM E45 standard.
Ac1 temperature
Applicant argues that Oda does not discuss any martensite to austenite transformation, let alone a martensite-to-austenite transformation temperature (Ac1) higher than 680 °C. (remarks, page 17). Applicant argues that it is not a foregone conclusion that a steel, even one with the compositional properties of Oda, will possess a martensite-to-austenite transformation temperature (Ac1) higher than 680 °C (remarks, page 17).
In response, one of ordinary skill in the art understands that Ac1 temperatures of steels are determined from chemical composition and empirical formulas based on the composition are typically used to determine Ac1 temperatures in steels. Therefore, one of ordinary skill in the art understands that steels with overlapping composition will necessarily have overlapping Ac1 temperatures.
Applicant argues that there is a genuine question if the steel described by Oda is a martensitic steel and, therefore, would undergo a martensite-to-austenite transformation at any temperature (remarks, page 17).
In response, it is noted that the features upon which applicant relies (i.e., martensitic steel) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). In this case, the instant claim recites a steel with a specific composition and Ac1 temperature range, but does not claim a martensitic structure at any point, as argued by Applicant. The claimed Ac1 temperature is merely a property of the claimed steel and the instant claim does not recite the claimed steel is “martensitic”. One of ordinary skill in the art understands that steel transformation temperatures, such as Ac1, depend on the steel’s chemical composition and are used as guidelines to determine appropriate processing parameters depending on the desired microstructures and properties. Steels inherently have these transformation temperatures and the temperatures themselves should not be interpreted as a steel having a specific microstructure, as argued by Applicant. In this case, the steel of Oda has overlapping chemical composition and Ac1 temperatures, as described in the 35 U.S.C. 103 rejections in this Office action.
Intermetallic precipitates
Applicant argues that Oda does not suggest that the steel include intermetallic precipitates of (Fe,Ni,Co)7Mo6 (remarks, page 18). Applicant argues that many different types of precipitates may be formed other than the claimed intermetallic precipitates of (Fe,Ni,Co)7Mo6 (remarks, page 18). Applicant further argues that there is nothing to suggest a quantity of at least 50 vol.% of the intermetallic precipitates (remarks, page 18).
In response, the possible formation of other precipitates, as argued by Applicant, does not exclude formation of the claimed (Fe,Ni,Co)7Mo6. Absent any clear and convincing evidence and/or arguments to the contrary, since the steel of Oda has overlapping chemical composition and aging process with the instant invention, one of ordinary skill in the art would reasonably expect the steel of Oda to necessarily possess the claimed precipitates despite not explicitly measuring or disclosing them. A prima facie case of obviousness has been properly established herein. As the Patent Office does not possess the laboratory facilities to test any differences in the claimed invention versus that of the reference, the burden shifts to applicant to demonstrate otherwise.
Cleanliness of steels
Applicant argues that Oda says nothing about the cleanliness of the steels that is describes (remarks, page 18).
In response, the claimed cleanliness is still indefinite since neither the claim nor ASTM E45 provide an appropriate definition of the term “cleanliness”. See Response to Arguments for 112(b) rejections above.
Furthermore, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP § 2113. In this case, the cleanliness of a micro-slag from the processing of the claimed steel would not be relevant to the claimed steel since the patentability of a product does not depend on its method of production. As best understood given the 112(b) rejections, since the steel of Oda teaches chemical composition and properties overlapping with the claimed steel, as described in the 35 U.S.C. 103 rejections in this Office action, one of ordinary skill in the art would reasonably expect the steel of Oda to necessarily meet the claimed cleanliness. A prima facie case of obviousness has been properly established herein. As the Patent Office does not possess the laboratory facilities to test any differences in the claimed invention versus that of the reference, the burden shifts to applicant to demonstrate otherwise.
Processing
Applicant argues that Oda is directed to big forging blocks while the steel that of the claimed invention, is produced by gas atomizing (Powder Metallurgy (PM) (remarks, pages 19-20). Applicant further argues that the steel described by Oda would be understood by those skilled in the art to have an inhomogeneous structure with large inclusions (remarks, page 20).
In response, it is noted that the features upon which applicant relies (i.e., homogeneity and size of the inclusions) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). In this case, the claim recites the presence and amount of intermetallic precipitates, but does not recite any limitations regarding the homogeneity or size of the claimed intermetallic precipitates. Since the steel of Oda teaches chemical composition and properties overlapping with the claimed steel, as described in the 35 U.S.C. 103 rejections in this Office action, one of ordinary skill in the art would reasonably expect the steel of Oda to necessarily meet the claimed cleanliness. A prima facie case of obviousness has been properly established herein. As the Patent Office does not possess the laboratory facilities to test any differences in the claimed invention versus that of the reference, the burden shifts to applicant to demonstrate otherwise.
B and Mo content
Applicant argues that the cited example also comprises a deliberate addition of B and the example cannot assist with a rejection for obviousness (remarks, page 20). Applicant further argues that Oda teaches against high amounts of Mo, because Mo is expensive and leads to deteriorated properties, which may render the forged block useless as set out in paragraph [0015] of Oda (remarks, page 20).
In response, examples and preferred embodiments are not evidence of teaching away when acceptable broader ranges are taught by the prior art. See MPEP 2123(II). In other words, Oda's invention is not limited in scope to the specific examples in its tables. The full scope of Oda's invention covers whole ranges of chemical alloying components. Regarding the B content, the broad disclosure of Oda does not teach the explicit addition of B and examples E-G do not include B. Regarding the Mo content, Oda teaches the lower limit of molybdenum concentration is 1.5% to increase the yield strength of the steel and the upper limit of the concentration is set at 5% because molybdenum is expensive ([0015]). The chemical composition of Oda’s steels overlaps with the claimed composition and the upper limit of 5% Mo lies within the claimed Mo content of claims 1-5. A prima facie case of obviousness has been properly established herein. See 35 U.S.C. 103 rejections in this Office action.
Conclusion
THIS ACTION IS MADE FINAL. 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 mailing date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAYELA ALDAZ whose telephone number is (571)270-0309. The examiner can normally be reached Monday -Thursday: 10 am - 7 pm and alternate Friday: 10 am - 6 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached at (571) 272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/M.A./Examiner, Art Unit 1733
/REBECCA JANSSEN/Primary Examiner, Art Unit 1733
Prosecution Insights