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
Applicant’s election of Group I, claims 16-25 in the reply filed on 02/10/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 26-31 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group II, there being no allowable generic or linking claim.
Status of Claims
Claims 16-31 are pending. Claims 16-25 are presented for this examination. Claims 26-31 are withdrawn.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 02/11/2026, 06/06/2023 and is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 20 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Instant claim 20 depends on independent claim 16. Independent claim 16 recites 2-10% ferrite and balance being made of pearlite which suggests range of pearlite is 10-98%. However, claim 20 recites upper limit of pearlite being 99% which is outside of claim 16 required upper limit of 98%. Hence, claim 20 fails to further limit the subject matter of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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.
Claim(s) 16-25 are rejected under 35 U.S.C. 103 as being unpatentable over Namimura (JPH11315348A).
As for claims 16-21, instant claimed “a steel for rail” has been considered, but is not given patentable distinction over prior art because recitation “for rail” is intended use and preamble according to MPEP 2111.02 II. Because the preamble merely states the purpose or intended use of the invention, rather than a claim limitation, no patentable weight would be given. See MPEP 2111.02 II or if a Prior Art structure is capable of performing the intended use as recited in the preamble, then it meets the claim.
Namimura discloses a medium carbon alloy steel [0017] having a tensile strength of 1200 N/mm2 or more which is equivalent to >=1200 MPa) comprising broad ranges of elemental compositions ([0018]-[0033]) all overlapping instant claimed ranges as illustrated in Table 1 below. Area ratio of pearlite is preferably 90% or more. ([0014]) Hence, pro-eutectoid ferrite is expected to be less than 10%.
Table 1
Element
Applicant
(weight %)
Namimura et al.
(weight %)
Overlap
(weight %)
C
0.25-0.8
0.5-1
0.5-0.8
Mn
1-2
0.2-1
1
SI
1.4-2
<=2
1.4-2
Al
0.01-1
0.01-0.05
0.01-0.05
Cr
0.8-2
<=1
0.8-1
P
<=0.09
<=0.03
<=0.03
S
<=0.09
<=0.03
<=0.03
N
<=0.09
<=0.015
<=0.015
Ni
<=1
<=1
<=1
Mo
<=0.5
0.01-0.5
0.01-0.5
V
<=0.2
0.01-0.5
0.02-0.2
Nb
<=0.1
0.01-0.5
0.01-0.1
Ti
<=0.1
0.01-0.5
0.01-0.1
Cu
<=0.5
<=0.5
<=0.5
B
<=0.008
0.0005-0.003
0.0005-0.003
Sn
<=0.1
0
0
Ce
<=0.1
0
0
Mg
<=0.1
0
0
Zr
<=0.1
0
0
Proeutectoid ferrite (%)
2-10
<=10
2-10
pearlite
90-98
>=90
90-98
Interlamellar spacing (nm)
100-250
<=200
100-200
C (Claim 17)
0.25-0.75
0.5-1
0.5-0.75
Al (Claim 18)
0.02-0.9
0.01-0.05
0.02-0.05
Cr(Claim 19)
0.9-1.9
<=1
0.9-1
Pearlite (Claim 20)
93-99
>=90
93-99
Interlamellar spacing (nm)
(Claim 21)
110-230
<=200
110-200
TS (Claim 22)
>=900 MPa
>=1200
>=1200
A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
Hence, based on the teaching of Namimura, it would have been obvious to one skill in the art, to select the amount of each element within the ranges disclosed by Namimura in order to arrive at steel of claimed invention.
As for claims 22-25, they are inherent properties of claimed steel according to MPEP 2112.01.
When the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the prior art products necessarily possess the characteristics of the claimed product. See MPEP 2112.01.
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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)
In the instant case, Namimura discloses a similar steel with similar compositions and microstructure fractions including proeutectoid ferrite and balance being pearlite wherein the pearlite has similar interlamellar spacing as required by instant application as indicated in Table 1 above. Hence, instant claimed properties would be expected absent clear and convincing evidence of the contrary.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNY R WU whose telephone number is (571)270-5515. The examiner can normally be reached on 8:30 AM-5:00 PM.
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/JENNY R WU/Primary Examiner, Art Unit 1733