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 .
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 07/24/2026 has been entered.
Status of claims
Claims 9-10 have been cancelled; Claim 1 has been amended; Claims 1-8 remain for examination, wherein claim 1 is an independent claim.
Previous Rejections/Objections
Previous rejection of Claim(s) 1-2 and 5-10 under 35 U.S.C. 103 as being unpatentable over Takemori et al ( EP 0950723 B1, thereafter EP’723) in view of Toru et al (EP 2279837 B1, thereafter EP’837) is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 07/24/2026.
Previous rejection of Claim(s) 3-4 under 35 U.S.C. 103 as being unpatentable over EP’723 in view of EP’837, and in view of Carminati et al (US-PG-pub 2022/0065313 A1, thereafter PG’313) is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 07/24/2026.
In view of the Applicant’s amendments in the instant claims, newly recorded reference(s), and reconsideration, a new ground rejection is added as following:
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 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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Takemori et al ( EP 0950723 B1, thereafter EP’723) in view of Toru et al (EP 2279837 B1, thereafter EP’837) and Carminati et al (US-PG-pub 2022/0065313 A1, thereafter PG’313).
Regarding claims 1-2, PG’723 teaches a high surface pressure resistant steel parts are suitably used as power transmitting parts which are required to have contact fatigue strength and wear resistance and examples of which are rolling members (e.g., gears and bearings), the races of a rolling member and cam components (Abstract of EP’723), which reads on the claimed bearing steel as claimed in the instant claim. The comparison between the claimed alloy composition ranges and those disclosed by EP’723 is listed in the following table. All of the essential alloy composition ranges disclosed by EP’914 overlap the claimed alloy composition ranges and the N is not an essential alloy element in the alloy (table 1 of EP’723), which creates a prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize alloy composition ranges from the disclosure of EP’723 since EP’723 teaches the same bearing steel as claimed the throughout whole disclosing range. EP’723 teaches surface hardening for the bearing steel (par.[0003], claims and examples of EP’723). However, EP’723 does not specify oxynitride layer comprising a nitride layer and oxide layer on the steel surface as recited in the instant claim. however applying oxynitride layer on a surface of a bearing steel is a well-known technique as demonstrated by EP’837. EP’837 teaches a surface treatment for bearing steel (claims and example of EP’837). EP’837 teaches applying oxynitride layers on the steel surface (examples of EP’837) in order to improve the surface wear resistance and corrosion resistance (par.[0005] of EP’837). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to apply the oxynitride layer on the surface of steel as demonstrated by EP’837 for the steel of since EP’837 and EP’723 teaches the same bearing steel as claimed throughout whole disclosing range and EP’837 teaches applying oxynitride layers in order to improve the surface wear resistance and corrosion resistance (par.[0005] of EP’837).
Still regarding claim 1 and claims 3-4, EP’723 in view of EP’837 teaches surfacing hardening treatment (par.[0003], claims and examples of EP’723 and examples of EP’837). EP’723 in view of EP’837 does not specify the claimed composition comprising at least one selected from the group consisting of Fe2N, Fe3N, Fe4N, and combinations (claim 3) and the claimed composition comprising at least one selected from the group consisting of Fe3O4, Fe2O3, and combinations (claim 4). PG’313 teaches a ferritic nitrocarburization treatment of the base metal (par.[0036], [0081]-[0083], and [0089], and of PG’313) for forming anti-wear function coating (par.[0061] of PG’313). PG’313 teaches including layers (Fe4N) or (Fe2-3CxNy)(par.[0089] of PG’313) and oxidized top layer comprising magnetite (Fe3O4)(par.[0081]-[0083] of PG’313), which reads on the claimed compositions as claimed in the instant claims. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to include Fe4N layers (cl.3) and top Fe3O4 layer (cl.4) as demonstrated by PG’313 for the steel EP’723 in view of EP’837 since all of PG’313, EP’837 and EP’723 teaches the steel surface hardening as claimed throughout whole disclosing range and PG’313 teaches applying surface treatment to improve the friction and ensure wear resistance over time (par.[0016] of PG’313). The claimed hardness and sheet resistance (cl.1) are recognized as material properties fully depended on the alloy composition and heat treatment. EP’723 in view EP’837 and PG’313 teaches the same bearing steel with similar alloy composition ranges and same oxynitride layers including same Fe-N and Fe-O phases as claimed in the instant invention, the claimed hardness and sheet resistance would be highly expected for the steel of EP’723 in view EP’837 and PG’313. MPEP 2112 01 and 2145 II.
Element
From instant Claim 1 (mass%)
From EP’723 (mass %)
overlapping range
(mass %)
C
0.65-1.0
0.1-1.2
0.65-1.0
Cr
1.6-2.0
0.5-5.0
1.6-2.0
Al
1.5-3.0
0.3-3.0
1.5-3.0
Mn
0.8-1.2
Up to 1.5
0.8-1.2
Si
0.7-1.0
Up to 1
0.7-1.0
Ni
0.1-0.3
Up to 4
0.1-0.3
Mo
0.08-0.12
Up to 1
0.08-0.12
Fe
Balance
Balance
Balance
From claim 2
P
0.025 or less
Not intended added
0-Impurity level
S
0.02 or less
Not intended added
0-Impurity level
N
0.01 or less
Not intended added
0-Impurity level
O
0.020 or less
Not intended added
0-Impurity level
Regarding claim 5, EP’837 teaches applying oxynitride layer in range of 0.075-10 mm (par.[0018] of EP’837), which overlaps the claimed 10-30 mm range as claimed in the instant claim. overlapping in oxynitride layer range creates a prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize oxynitride layer range from the disclosure of EP’837 for the steel of EP’723 in order to improve the surface wear resistance and corrosion resistance (par.[0005] of EP’837).
Regarding claim 6, EP’837 teaches applying oxide layer in range of 0.2-5 mm (par.[0020] of EP’837), which overlaps the claimed 0-4 mm range as claimed in the instant claim. overlapping in oxynitride layer range creates a prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize oxide layer range from the disclosure of EP’837 for the steel of EP’723 in order to improve the surface wear resistance and corrosion resistance (par.[0005] of EP’837).
Regarding claim 7, EP’723 teaches heat treatment at temperature 850-900oC (par.[0045] of EP’723), which is within the claimed temperature range of the heat treatment in the instant claim.
Regarding claim 8, EP’837 teaches applying oxynitride layers and treatment (par.[0026]-[0027] of EP’837) in order to improve the surface wear resistance and corrosion resistance (par.[0005] of EP’837). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to apply oxynitride layers and treatment as demonstrated by EP’837 for the steel of since EP’837 and EP’723 teaches the same bearing steel as claimed throughout whole disclosing range and EP’837 teaches applying oxynitride layers in order to improve the surface wear resistance and corrosion resistance (par.[0005] of EP’837).
Notes: SUZUKI AIKO et al (JP 2007100771 A, with on-line translation) is cited as a reference only.
Response to Arguments
Applicant’s arguments to the art rejection to Claim(s) 1-8 have been considered but they are moot in view of the new ground rejection as stated above. Regarding the arguments related to the amended features in the instant claims, the Examiner’s position has stated as above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIE YANG whose telephone number is (571)270-1884. The examiner can normally be reached on IFP.
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/JIE YANG/Primary Examiner, Art Unit 1734
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