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 .
Election/Restrictions
Applicant’s election without traverse of Group I (Claims 1-6) in the reply filed on 12/09/2025 is acknowledged. Claims 7-11 are withdrawn. Claims 1-6 are examined herein.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 4 is 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 4 recites R2= ([Ti] + [Nb]) / [Si]. However, claim 4 does not define the meaning of [Nb]. Appropriate correction is required to improve the clarity of the claim.
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 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.
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.
Conclusion
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/XIAOWEI SU/Primary Examiner, Art Unit 1733