DETAILED ACTION
Claims 1-20 are pending and currently under review.
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 .
Response to Amendment
The amendment filed 6/29/2026 has been entered. Claims 1-20 remain(s) pending in the application. Applicant’s amendments to the Claims have overcome each and every 112(b) rejection previously set forth in the Non-Final Office Action mailed 3/27/2026.
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.
Claims 7 and 17 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. Claims 7 and 17 recite a Cr range of 7 to 9 weight percent. However, claims 7 and 17 are dependent upon claims 1 and 11, respectively, which already recite a narrower Cr range of 7 to 8.8 weight percent. Therefore, it is unclear whether these claims intend to broaden the claimed Cr range or not.
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.
Claims 7 and 17 are 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. Claims 7 and 17 recite a Cr range of 7 to 9 weight percent. However, claims 7 and 17 are dependent upon claims 1 and 11, respectively, which already recite a narrower Cr range of 7 to 8.8 weight percent. Therefore, claims 7 and 17 do not further limit the claim scope of claims 1 and 11. 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
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Noguchi et al. (JPH1030154, machine translation referred to herein) in view of either one of Nitta et al. (JPH07138601, machine translation referred to herein) or Hirai et al. (JPH10102105, machine translation referred to herein); and alternatively over the aforementioned prior art and further in view of ASM Handbooks (2015, Applications for metal powder injection molding).
Regarding claims 1, 11, and 20, Noguchi et al. discloses a steel having a composition as seen in table 1 below [0008]. The examiner notes that the overlap between the composition of Noguchi et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I). Noguchi et al. further teaches using the steel for components such as gears, cams, screws, etc., which one of ordinary skill would understand to naturally include electronic devices and mechanical parts [0002].
Noguchi et al. does not expressly teach an oxygen inclusion as claimed. Nitta et al. discloses controlling O ranges for steel mechanical parts to be up to 0.3 weight percent to improve compressibility of steel powders and improve hardness [0005, 0012, 0018]. Therefore, it would have been obvious to one of ordinary skill to modify the steel of Noguchi et al. by controlling O amounts for the aforementioned benefits of Nitta et al. Alternatively, Hirai et al. discloses controlling O inclusions in steel to be 0.005 to 0.1 weight percent to refine powder steel powder size [0009, 0012]. Therefore, it would have been obvious to one of ordinary skill to modify the steel of Noguchi et al. by controlling O amounts for the aforementioned benefits of Hirai et al. In either situation, the examiner notes that the overlap between the O amounts of the prior art and that as claimed is prima facie obvious. See MPEP 2144.05(I).
The aforementioned prior art does not expressly teach that the steel is formed through metal injection molding as claimed. However, the examiner notes that this feature is a product-by-process limitation which, upon further consideration, is not considered to impart any further structure to the claims because injection molding is not considered to impart any special, distinct structure. See MPEP 2113. Alternatively, ASM Handbooks discloses that it is known to utilize metal injection molding to form metal parts having complex or small designs [p.855]. Therefore, it would have been obvious to one of ordinary skill to modify the steel of the aforementioned prior art, which can be used for gears, cams, screws, etc. as taught by Noguchi et al., by forming said steel through metal injection molding as a desirable means for forming complex or small metal parts as stated above.
Table 1.
Element (wt.%)
Claims 1, 11, 20 (wt.%)
Noguchi et al. (wt.%)
Cr
7 – 8.8
8.1 – 9
Ni
2 – 7.5
6 – 8
Co
6 – 15
5 – 9
Mo
4 – 7
5 – 9
O
0.03 to 0.4
0 – 0.3 (Nitta et al.)
0.005 – 0.1 (Hirai et al.)
C
0.002 to 0.35
0 – 0.03
Fe
50 – 80
Balance
Regarding claims 6 and 16, the aforementioned prior art discloses the steel of claims 1 and 11 (see previous). Noguchi et al. further teaches inclusions of up to 0.1 weight percent Si and up to 0.1 weight percent Mn, which overlaps with the claimed range [0008]. See MPEP 2144.05(I).
Regarding claims 7 and 17, the aforementioned prior art discloses the steel of claims 1 and 11 (see previous). The examiner notes that the aforementioned composition of Noguchi et al. further overlaps with the claimed range. See MPEP 2144.05(I).
Regarding claims 2-5, 8-10, 12-15, and 18-19, the aforementioned prior art discloses the steel of claims 1 and 11 (see previous). The aforementioned prior art does not expressly teach inclusions of Nb, Ta, W, B, and rare earths as claimed. However, the examiner notes that the claimed ranges of “greater than 0” include extremely small amounts which one of ordinary skill would recognize to be impurity amounts, which still overlaps with the disclosure of Noguchi et al. which allows for steel impurity elements [0008].
Claim(s) 2-5, 8-10, 12-15, and 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Noguchi et al. (JPH1030154, machine translation referred to herein) and others as applied to claims 1 and 11 above, and further in view of Deutsche (GB1021405).
Regarding claims 2-4 and 12-14, the aforementioned prior art discloses the steel of claims 1 and 11 (see previous). The aforementioned prior art does not expressly teach inclusions of Nb and Ta as claimed. Deutsche discloses a stainless steel having inclusions of 0.1 to 1 weight percent columbium (ie. Nb) and tantalum to achieve high tensile strength for structural steels, which overlaps with the claimed ranges [p.2 ln.95-115]. See MPEP 2144.05(I). Therefore, it would have been obvious to one of ordinary skill to modify the steel of the aforementioned prior art by including Ta and Nb for the aforementioned benefit disclosed by Deutsche.
Regarding claims 5 and 15, the aforementioned prior art discloses the steel of claims 1 and 11 (see previous). The aforementioned prior art does not expressly teach inclusions of W as claimed. Deutsche further teaches an inclusion of 1 to 6 weight percent W to achieve high tensile strength for structural steels, which overlaps with the claimed range [p.2 ln.95-115]. See MPEP 2144.05(I). Therefore, it would have been obvious to one of ordinary skill to modify the steel of the aforementioned prior art by including W for the aforementioned benefit disclosed by Deutsche.
Regarding claims 8 and 18, the aforementioned prior art discloses the steel of claims 1 and 11 (see previous). The aforementioned prior art does not expressly teach inclusions of B as claimed. Deutsche further teaches an inclusion of up to 0.1 weight percent B to achieve high tensile strength for structural steels, which overlaps with the claimed range [p.2 ln.59-65]. Therefore, it would have been obvious to one of ordinary skill to modify the steel of the aforementioned prior art by including B for the aforementioned benefit disclosed by Deutsche.
Regarding claims 9 and 19, the aforementioned prior art discloses the steel of claims 1 and 11 (see previous). The aforementioned prior art does not expressly teach inclusions of rare earths as claimed. Deutsche further teaches an inclusion of up to 0.2 weight percent of Ce (ie. rare earths) to achieve high tensile strength for structural steels, which overlaps with the claimed range [p.2 ln.59-65]. See MPEP 2144.05(I). Therefore, it would have been obvious to one of ordinary skill to modify the steel of the aforementioned prior art by including Ce for the aforementioned benefit disclosed by Deutsche.
Response to Arguments
Applicant’s arguments regarding the 103 rejections have been considered but are moot in view of the new grounds of rejection above.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS A WANG whose telephone number is (408)918-7576. The examiner can normally be reached usually M-Th: 7-5.
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, Jonathan Johnson can be reached at 5712721177. 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.
/NICHOLAS A WANG/Primary Examiner, Art Unit 1734
Prosecution Insights