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 .
Status of Claims
Claims 1 and 4 are amended. Claims 7-11 are withdrawn. Claims 1-6 are examined herein.
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.
Claims 1 and 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over JP’366 (JP 11-172366A).
Regarding claim 1, JP’366 teaches (Page 1) a steel material for a seismic damper with a composition that overlaps with the instant claimed composition and therefore it would have been obvious to one of ordinary skill in the art to have selected amounts of each element from the ranges disclosed in JP’366 to produce a steel material that meets the recited composition in claim 1. See MPEP 2144.05 I.
Element
Claim 1
(mass %)
JP’366
(mass %)
Overlap
(mass %)
C
≤0.006
≤0.02
≤0.006
Si
≤0.05
≤0.05
≤0.05
Mn
≤0.3
≤0.4
≤0.3
P
≤0.02
≤0.02
≤0.02
S
≤0.01
≤0.02
≤0.01
Al
0.005-0.05
≤0.06
0.005-0.05
N
≤0.005
≤0.004
≤0.004
Ti
48/14x[N] to 0.05
0.003-0.1
At least at 0.05
Nb
0.04-0.15
0.003-0.1
0.04-0.1
Fe + Impurities
Balance
Balance
Balance
JP’366 discloses an example having composition that meet the recited composition range of C, Si, Mn, P, S, Al, and N in claim 1 (Table 1, Sample No. 10). Sample No. 10 of JP’366 contains 0.023 wt% Ti and 0.0023 wt% N (Table 1, Sample No. 10). 48/14x[N]=0.0072. Thus, the Ti amount in Sample No. 10 of JP’366 meets the recited Ti range in claim 1. Sample No. 10 of JP’366 contains Nb that is less than the recited Nb amount in claim 1. However, JP’366 discloses 0.003-0.1 wt% Nb has an effect of reducing solid solution of C and N in Fe and suppressing yield strength (Page 4). It would be obvious to one of ordinary skill in the art to add more Nb to Sample No. 10 of JP’366 in order to more effectively suppress the steel yield strength. The Nb amount disclosed by JP’366 overlaps the recited Nb in claim 1. 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). Thus, the recited composition in claim 1 is a prima facie case of obviousness over JP’366. See MPEP 2144.05 I.
JP’366 discloses that the steel has ferrite single structure (Page 5-6) and the average grain size of ferrite in the steel is 20 to 200 µm (Page 6, 3rd paragraph). Since no treatment is performed to alter the grain size in the surface region in JP’366, it would be obvious to one of ordinary skill in the art that the ferrite grain size at the surface layer portion from a surface to 30% of the total thickness is 20 to 200 µm as well. The grain size disclosed by JP’366 overlaps the recited grain size in claim 1. 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). Thus, the recited grain size is a prima facie case of obviousness over JP’366. See MPEP 2144.05 I.
Claim 1 recites that the average ferrite grain size in the surface layer portion is greater than an average ferrite grain size in an inner region, which encompasses an embodiment that the grain size difference between surface layer and the inner region is close to zero such as 0.00001µm. JP’366 discloses that the average grain size of ferrite in the steel is 20 to 200 µm (Page 6, 3rd paragraph). Since no treatment is performed to alter the grain size in the surface region in JP’366, it would be obvious to one of ordinary skill in the art that the ferrite grain size at the surface layer portion is the same as the ferrite grain size in an inner region, that is, the grain size difference between the surface regions and the inner region is 0µm. Thus, the grain size difference between the surface region and the inner region in the steel disclosed by JP’366 is close to the recited grain size difference in claim 1. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). See MPEP 2144.05 I. Thus, claim 1 is obvious over JP’366.
Regarding claim 3, JP’366 discloses an example having composition that meet the recited composition range of C, Si, Mn, P, S, Al, N, and Ti in claim 1 (Table 1, Sample No. 10). Sample No. 10 of JP’366 contains 0.004 wt% Si and 0.008 wt% Nb (Table 1, Sample No. 10). [Nb]/[Si]=2, which meets the recited R1 in claim 3. Sample No. 10 of JP’366 contains Nb that is less than the recited Nb amount in claim 1. However, JP’366 discloses 0.003-0.1 wt% Nb has an effect of reducing solid solution of C and N in Fe and suppressing yield strength (Page 4). It would be obvious to one of ordinary skill in the art to add more Nb to Sample No. 10 of JP’366 in order to more effectively suppress the yield strength. The Nb amount disclosed by JP’366 overlaps the recited Nb in claim 1. 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). Thus, the recited R1 is a prima facie case of obviousness over JP’366. See MPEP 2144.05 I.
Regarding claim 4, JP’366 discloses an example having composition that meet the recited composition range of C, Si, Mn, P, S, Al, N, and Ti in claim 1 (Table 1, Sample No. 10). Sample No. 10 of JP’366 contains 0.023 wt% Ti, 0.004 wt% Si and 0.008 wt% Nb (Table 1, Sample No. 10). ([Ti]+[Nb])/[Si]=7.75, which meets the recited R2 in claim 4. Sample No. 10 of JP’366 contains Nb that is less than the recited Nb amount in claim 1. However, JP’366 discloses 0.003-0.1 wt% Nb has an effect of reducing solid solution of C and N in Fe and suppressing yield strength (Page 4). It would be obvious to one of ordinary skill in the art to add more Nb to Sample No. 10. of JP’366 in order to more effectively suppress the yield strength. The Nb amount disclosed by JP’366 overlaps the recited Nb in claim 1. 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). Thus, the recited R2 in claim 4 is a prima facie case of obviousness over JP’366. See MPEP 2144.05 I.
Regarding claim 5, claim 1 recites that the surface layer is defined as a layer from the steel surface to 30% of the steel thickness. Thus, Ds/Dt=0.3 and meets the recited limitation in claim 5.
Regarding claim 6, JP’366 discloses that the steel has yield strength of 50-200 MPa (Abstract), which overlap the recited yield strength in claim 6. 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). Thus, the recited yield strength is a prima facie case of obviousness over JP’366. See MPEP 2144.05 I.
Allowable Subject Matter
Claim 2 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
JP’366 (JP 11-172366A) does not teach that the steel has a surface layer portion with a ferrite grain size of 150 to 500 µm and an inner region with a ferrite grain size of 10 to 60 µm.
Response to Arguments
Applicant's arguments filed 05/05/2026 have been fully considered but they are not persuasive.
First, the applicants argued that the present invention is characterized by forming a dual structure having different grain sizes in the thickness direction (coarse grains in the surface layer and fine grains in the inner region). In contrast, JP'366 relates to alloy design aimed at reducing strain rate dependency of yield strength by addition of Ni, and thus the core technical idea is fundamentally different. Specifically, the present invention intentionally forms a difference in grain size between the surface layer (150-500 um) and the inner region (10-50 µm). In contrast, JP'366 discloses a ferrite grain size of 30-200 µm, which merely assumes a uniform microstructure throughout the thickness direction, and does not disclose or suggest a structure having a grain size difference between the surface layer and the inner region as in the present invention.
In response, claim 1 recites that the average ferrite grain size in the surface layer portion is greater than an average ferrite grain size in an inner region, which encompasses an embodiment that the grain size difference between surface layer and the inner region is close to zero such as 0.00001µm. JP’366 discloses that the average grain size of ferrite in the steel is 20 to 200 µm (Page 6, 3rd paragraph). Since no treatment is performed to alter the grain size in the surface region in JP’366, it would be obvious to one of ordinary skill in the art that the ferrite grain size at the surface layer portion is the same as the ferrite grain size in an inner region, that is, the grain size difference between the surface regions and the inner region is 0µm. Thus, the grain size difference between the surface region and the inner region in the steel disclosed by JP’366 is close to the recited grain size difference in claim 1. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). See MPEP 2144.05 I. Thus, claim 1 is obvious over JP’366.
Second, the applicants argued that the present invention requires Nb in an amount of 0.04-0.15% to fix solid-solution C. In contrast, JP' 366 defines Nb as an optional element together with Ti and V, and the examples disclose Nb ≤ 0.035%, which does not meet the lower limit of the present invention.
In response, JP’366 discloses 0.003-0.1 wt% Nb has an effect of reducing solid solution of C and N in Fe and suppressing yield strength (Page 4). The Nb amount disclosed by JP’366 overlaps the recited Nb in claim 1. 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). Thus, the recited composition in claim 1 is a prima facie case of obviousness over JP’366. See MPEP 2144.05 I.
Third, the applicants argued that the present invention does not include Ni, whereas JP'366 requires Ni in an amount of 0.5-5.0% to control properties. Thus, the mechanisms for achieving the desired properties are fundamentally different.
In response, claim 1 recites “comprising” as a transitional phrase, which is open-ended and does not exclude other elements. Thus, claim 1 is not different in composition from the steel disclosed by JP’366.
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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/XIAOWEI SU/Primary Examiner, Art Unit 1733
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