DETAILED ACTION
Claims 1-25 are pending, and claims 1-11 are currently under review.
Claims 12-25 are withdrawn.
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/Remarks
The amendment/remarks filed 1/05/2026 has been entered. Claims 1-25 remain(s) pending in the application.
Claim Interpretation
The examiner interprets the features of claim 11 to refer to the version of ASTM E45 in place at the time of the priority date of the instant application as expressly stated by applicant on p.9 of the remarks filed 1/05/2025.
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) 1-3 and 5-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nagao et al. (US 2018/0312935).
Regarding claim 1, Nagao et al. discloses a steel composition as seen in table 1 below [0035-0046, 0059-0072]. The examiner notes that the overlap between the composition of Nagao et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I).
Table 1.
Element (wt.%)
Claim 1 (wt.%)
Nagao et al. (wt.%)
C
0.25 – 0.35
0.02 – 0.5
Si
0.2 – 0.35
0.05 – 0.5
Mn
0.4 – 0.6
0.5 – 2
Cr
1.2 – 1.7
0.1 – 2.5
Ni
1.4 – 1.9
0.05 – 12
Mo
0.15 – 0.25
0.05 – 1.13
Al
0.015 – 0.035
0.01 – 0.1
Nb
0.001 – 0.04
0.005 – 0.1
V
0.001 – 0.06
0.05 – 0.3
N
0.003 – 0.012
0.0005 – 0.008
Ca
0.001 – 0.003
0.0005 – 0.005
Fe
Present
Present
Regarding claim 2, Nagao et al. discloses the steel of claim 1 (see previous). Nagao et al. further discloses including W in an amount of 0.05 to 2 weight percent and B in an amount of 0.0005 to 0.005 weight percent, which overlaps with the claimed ranges [0065-0066]. See MPEP 2144.05(I). Nagao et al. does not expressly teach formulas as further claimed. However, the examiner notes that these formulas merely further limit the claimed composition (ie. C, Mn, Cr, Ni, Mo, W, B, etc.), which still further overlaps with the disclosed compositional ranges of Nagao et al. above, which is still prima facie obvious. See MPEP 2144.05(I).
Regarding claims 3 and 5-10, Nagao et al. discloses the steel of claim 1 (see previous). The examiner notes that the above composition of Nagao et al. further overlaps with the claimed ranges. See MPEP 2144.05(I). Regarding the claimed H amount of claim 7, Nagao et al. is silent regarding any H inclusion and discloses that the composition is “consisting…” (ie. close ended), which one of ordinary skill would understand to mean that H is not included (ie. 0%), which meets the instantly claimed range.
Regarding claim 11, Nagao et al. discloses the steel of claim 1 (see previous). The examiner notes that the claimed “thin” and “heavy” parameters of claim 11 refer to inclusion sizes of at least 2 microns up to 4 microns for A inclusions and ranging up to 13 microns for D inclusions as outlined in ASTM E45. Nagao et al. further discloses that all precipitates have a size of up to 20 nanometers (ie. no inclusions in Nagao et al. are greater than 20 nm), which falls within the claimed ranges of thin and heavy for the claimed inclusions [0087].
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nagao et al. (US 2018/0312935) as applied to claim 1 above, and further in view of ASM Handbooks (2008, Steel melt processing).
Regarding claim 7, Nagao et al. discloses the steel of claim 1 (see previous). Nagao et al. does not expressly teach limiting hydrogen as claimed. ASM Handbooks discloses that it is known to perform vacuum degassing on steel melts to decrease gaseous content (ie. increase purity) and control composition, cleanliness, and inclusion morphology, wherein hydrogen impurities can be limited to approximately 0.4 to 1.6 ppm depending on the specific means [p.219, p.223]. Therefore, it would have been obvious to one of ordinary skill to modify the steel of Nagao et al. by performing vacuum degassing on the steel melt for the aforementioned benefits disclosed by ASM Handbooks, wherein hydrogen can be limited to 0.4 to 1.6 ppm as stated above. The examiner notes that this range overlaps with the claimed H range. See MPEP 2144.05(I).
Claim(s) 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nagao et al. (US 2016/0060738, herein referred to as Nagao et al. (‘738)).
Regarding claim 1, Nagao et al. (‘738) discloses a steel composition as seen in table 2 below [0056-0066, 0078-0093]. The examiner notes that the overlap between the composition of Nagao et al. (‘738) and that as claimed is prima facie obvious. See MPEP 2144.05(I).
Table 2.
Element (wt.%)
Claim 1 (wt.%)
Nagao et al. (‘738) (wt.%)
C
0.25 – 0.35
0.05 – 0.35
Si
0.2 – 0.35
0.05 – 0.5
Mn
0.4 – 0.6
0.5 – 2
Cr
1.2 – 1.7
0.1 – 2.5
Ni
1.4 – 1.9
0.05 – 2
Mo
0.15 – 0.25
0.05 – 2
Al
0.015 – 0.035
0.01 – 0.1
Nb
0.001 – 0.04
0.005 – 0.1
V
0.001 – 0.06
0.005 – 0.2
N
0.003 – 0.012
0.0005 – 0.008
Ca
0.001 – 0.003
0.0005 – 0.005
Fe
Present
Present
Regarding claim 2, Nagao et al. (‘738) discloses the steel of claim 1 (see previous). Nagao et al. (‘738) further discloses including W in an amount of 0.05 to 2 weight percent and B in an amount of 0.0005 to 0.005 weight percent, which overlaps with the claimed ranges [0088-0089]. See MPEP 2144.05(I). Nagao et al. (‘738) does not expressly teach formulas as further claimed. However, the examiner notes that these formulas merely further limit the claimed composition (ie. C, Mn, Cr, Ni, Mo, W, B, etc.), which still further overlaps with the disclosed compositional ranges of Nagao et al. (‘738) above, which is still prima facie obvious. See MPEP 2144.05(I).
Regarding claims 3-10, Nagao et al. (‘738) discloses the steel of claim 1 (see previous). Nagao et al. (‘738) further teaches an inclusion of Ti in an amount of 0.005 to 0.1 weight percent [0087]. The examiner notes that the above composition of Nagao et al. (‘738) further overlaps with the claimed ranges. See MPEP 2144.05(I). Regarding the claimed H amount of claim 7, Nagao et al. (‘738) is silent regarding any H inclusion, which one of ordinary skill would understand to mean that H is not included (ie. 0%), which meets the instantly claimed range.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nagao et al. (US 2016/0060738, herein referred to as Nagao et al. (‘738)) as applied to claim 1 above, and further in view of ASM Handbooks (2008, Steel melt processing).
Regarding claim 7, Nagao et al. (‘738) discloses the steel of claim 1 (see previous). Nagao et al. (‘738) does not expressly teach limiting hydrogen as claimed. ASM Handbooks discloses that it is known to perform vacuum degassing on steel melts to decrease gaseous content (ie. increase purity) and control composition, cleanliness, and inclusion morphology, wherein hydrogen impurities can be limited to approximately 0.4 to 1.6 ppm depending on the specific means [p.219, p.223]. Therefore, it would have been obvious to one of ordinary skill to modify the steel of Nagao et al. (‘738) by performing vacuum degassing on the steel melt for the aforementioned benefits disclosed by ASM Handbooks, wherein hydrogen can be limited to 0.4 to 1.6 ppm as stated above. The examiner notes that this range overlaps with the claimed H range. See MPEP 2144.05(I).
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nagao et al. (US 2016/0060738, herein referred to as Nagao et al. (‘738)) as applied to claim 1 above, and further in view of either one of Nagao et al. (US 2018/0312935) or ASM Handbooks (2008, Steel melt processing).
Regarding claim 11, Nagao et al. (‘738) discloses the steel of claim 1 (see previous). Nagao et al. (‘738) does not expressly teach inclusion parameters as claimed. The examiner notes that the claimed “thin” and “heavy” parameters of claim 11 refer to inclusion sizes of at least 2 microns up to 4 microns for A inclusions and ranging up to 13 microns for D inclusions as outlined in ASTM E45. Nagao et al. discloses a steel for hydrogen storage [abstract]; wherein precipitate inclusions are controlled to have a size of up to 20 nanometers (ie. no inclusions in Nagao et al. are greater than 20 nm) for hydrogen trapping [0087]. Therefore, it would have been obvious to one of ordinary skill to modify the steel of Nagao et al. (‘738) by controlling precipitate sizes as taught by Nagao et al. above for the aforementioned benefit. The examiner notes that the precipitate size of Nagao et al. falls within the claimed ranges of thin and heavy for the claimed inclusions.
Alternatively, it is noted that the instant specification discloses meeting the claimed inclusion parameters merely by performing vacuum degassing [0034 instant spec.]. Although Nagao et al. (‘738) does not expressly teach a step of vacuum degassing, ASM Handbooks discloses that it is known to perform vacuum degassing on steel melts to decrease gaseous content (ie. increase purity) and control composition, cleanliness, and inclusion morphology [p.219]. Therefore, it would have been obvious to one of ordinary skill to modify the steel of Nagao et al. (‘738) by performing vacuum degassing on the steel melt for the aforementioned benefits disclosed by ASM Handbooks, wherein the claimed inclusion parameters would have naturally flowed from the combination of elements expressly suggested by the prior art.
Response to Arguments
The previous 112b rejections are withdrawn in view of applicant’s remarks filed 1/05/2025.
Applicant's arguments filed 1/05/2025 regarding the rejections over Nagao et al. (US 2018/0312935) have been fully considered but they are not persuasive.
Applicant argues that Nagao et al. (US 2018/0312935) requires a V:Mo ratio that results in V and Mo ranges outside of the claimed range. The examiner cannot concur. The examiner notes that the V:Mo ratio disclosed by Nagao et al. pertains to a ratio of a number of atoms of V and Mo (emphasis added). In other words, the disclosed ratio of Nagao et al. is calculated according to atomic percent, not mass percent, such that applicant’s determination of a maximum V:Mo ratio of 0.4 is erroneous. As stated previously, the disclosure of Nagao et al. still overlaps with the claimed range, which is prima facie obvious. See MPEP 2144.05(I). As a mere example to demonstrate said overlap, the examiner notes that V and Mo inclusions of 0.06 and 0.2 weight percent, respectively, satisfy the claimed ranges as well as the disclosed ranges of Nagao et al. as determined by the examiner.
Applicant's arguments filed 1/05/2025 regarding the rejections over Nagao et al. (‘738) have been fully considered but they are not persuasive.
Applicant argues that the disclosed ranges of Nagao et al. (‘738) are too broad such that prima facie obviousness is not present. The examiner cannot concur. MPEP 2144.05(III)(D) expressly states that applicant must establish that “:the prior art disclosure of the variable is within a range that is so broad in light of the dissimilar characteristics of the members of the range”. Since applicant has not explained how the inclusion ranges of Nagao et al. are so broad as to result in dissimilar characteristics based on differing amounts in said ranges, the examiner cannot concur.
Applicant then argues that Nagao et al. (‘738) is specifically directed to a steel having the elements of invention 2 as well as up to 1.28 weight percent Ni and up to 0.0008 weight percent Ca. The examiner cannot concur. It is not entirely clear to the examiner as to where applicant bases the above values on from the disclosure of Nagao et al. (‘738). Applicant further does not cite to any passages of Nagao et al. (‘738). The only mention of these values is in table 3-2 of Nagao et al. pertaining to examples steels MG and MH. However, these examples were never relied upon in the previous rejections, and the examiner further notes that specific examples do not constitute a teaching away from the broader disclosure of the prior art. See MPEP 2123.
Finally, even if the disclosure of Nagao et al. (‘738) was so broad such that analysis under MPEP 2144.08 were required, which the examiner does not acquiesce, the examiner still cannot concur. Nagao et al. (‘738) expressly provides clear reasoning for including specific amounts of Ni, Ca, etc., such that one of ordinary skill in the art of metallurgy is provided with express and clear teachings for including inclusion elements as desired as taught by Nagao et al. (‘738) [0082, 0091, for example]. See MPEP 2144.08(II).
Conclusion
THIS ACTION IS MADE FINAL. 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.
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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.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734