DETAILED ACTION
Claims 1-22 are pending, and claims 1-6 are currently under review.
Claims 7-22 are withdrawn.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 .
Election/Restrictions
Applicant’s election without traverse of group I, claims 1-6, in the reply filed on 11/11/2025 is acknowledged.
Claims 7-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/11/2025.
Claim Interpretation
The term “λ” as recited in claim 1 is interpreted to refer to hectoseconds such that claim 1 requires a cooling rate that achieves a duration of 300 seconds within the range of 800 to 500 degrees C as expressly defined in [0152 instant specification] as filed.
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 1-6 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. Claim 1 recites “high speed work applications”, which is indefinite because the term “high speed” is a relative term which is not defined by the instant specification or claims. It is unclear whether “high speed” requires a particular speed, or whether “high speed” merely refers to a broad category of applications, or something else entirely. The examiner interprets the aforementioned term to be met by any application that can be considered to be high speed by one of ordinary skill.
Claims 1-6 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. Claim 1 recites that hardening is performed “for at most 2 to 20 minutes”, which is indefinite because it is unclear whether the claim requires either: 1) a duration of at most 2 minutes, 2) a duration of at most 20 minutes, or 3) a duration range of 2 to 20 minutes. The examiner interprets the claim to be met by any of the aforementioned interpretations.
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.
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) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Emanuelsson et al. (WO2010044740); or alternatively further in view of Ozaki (US 2005/0161125), Wisell (US 5,435,827), and further in view of or evidenced by Theisen et al. (US 2008/0253919).
Regarding claim 1, Emanuelsson et al. discloses a method of manufacturing wear resistant steels for applications such as cold working or cutting, which meets the limitation of high speed work applications [p.1]. Emanuelsson et al. teaches that the method includes steps of providing a melt having a composition as seen in table 1 and forming a powder from said melt through jetting of droplets (ie. atomization) [p.4-6], performing hot isostatic pressing of said powder [p.5], optional further hot working [p.8], and subsequent hardening heat treatment of austenitizing at 950 to 1150 degrees C for at least about 30 minutes, quenching to room temperature to achieve martensite, and tempering at 150 to 650 degrees C one or several times for at least one hour or two hours [p.8-9, 13, 20]. The examiner notes that the composition of Emanuelsson et al. does not require any nonrecited elements and therefore meets the limitation of “consisting of…” as claimed. The examiner notes that the overlap between the steel composition and manufacturing parameters of Emanuelsson et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I).
The examiner notes that the term “about” as taught by Emanuelsson et al. allows for values below 30 minutes and therefore overlaps with or is substantially close to the claimed hardening duration range of 2 to 20 minutes which is prima facie obvious because similar steel properties are still achieved by Emanuelsson et al. See MPEP 2144.05(I). One of ordinary skill would further recognize that room temperature is below 60 degrees C as claimed and would further understand that cooling to room temperature would naturally be expected to occur after tempering is concluded [p.9, 22]. Emanuelsson et al. nonetheless further teaches that cooling to room temperature is immediately performed after tempering [p.22].
Emanuelsson et al. does not expressly teach that quenching after hardening is performed within 300 seconds as claimed. However, the examiner submits that quenching to form martensite after austenitization would naturally require a cooling rate that results in a cooling duration range overlapping with the claimed range within 800 to 500 degrees C as would have been recognized by one of ordinary skill. Alternatively, this is evidenced by Theisen et al., which shows that cooling from the hardening temperature of Emaneulsson et al. (ie. 950 to 1150 degrees C) down to martensite formation requires a λ value of less than 1 [fig.1a]. Alternatively, Theisen et al. discloses that it is known to limit a λ value to be less than 9 when cooling in order to desirably form martensite and obtain a high level of wear resistance [0055]. Therefore, it would have been obvious to one of ordinary skill to modify the method of Emanuelsson et al. by specifying a cooling rate in order to achieve high wear resistance as taught by Theisen et al.
Alternatively, Emanuelsson et al. does not expressly teach a shorter hardening duration as claimed. Ozaki discloses processing tool steels through a similar hardening, quenching, and tempering method [abstract]; wherein a hardening duration can be controlled to be 5 minutes when the hardening temperature is above 1100 degrees C [0110]. Alternatively, Wisell also discloses that it is known to manufacture high speed tools through hardening, quenching, and tempering, wherein hardening (ie. solution heat treatment) is performed for 3 minutes [col.5 ln.20-30]. The examiner notes that all of the claimed features as disclosed in the prior art, although not necessarily in a single reference, wherein it would have been obvious to one of ordinary skill to combine the general method of Emanuelsson et al. by specifying a hardening duration of 5 minutes as taught by Ozaki or 3 minutes as taught by Wisell for the predictable result of a hardened steel heated at a higher temperature for a shorter duration. See MPEP 2143(I)(A).
Table 1.
Element (wt.%)
Claim 1 (wt.%)
Emanuelsson et al. (wt.%)
C
0.55 – 0.75
0.1 – 5
Si
0.7 – 1
0.01 – 4
Mn
0.2 – 0.5
0.01 – 15
Cr
4 – 5
0.01 – 40
Mo
1.8 – 3.5
0.01 – 15
V
0.8 – 1.5
0.01 – 20
W
1.8 – 3
0 – 15
Co
3 – 5
0 – 20
N
0.02 – 1
0 – 3
Ni (optional)
0 – 1.5
0 – 40
Cu (optional)
0 – 1
0 – 5
Ti (optional)
0 – 1.5
0 – 5
Nb (optional)
0 – 1.5
0 – 15
Ta (optional)
0 – 1.5
0
Hf (optional)
0 – 1.5
0
Zr (optional)
0 – 1.5
0 – 5
Al (optional)
0 – 1.5
0 – 1
B (optional)
0 – 0.8
0
S (optional)
0 – 0.35
0 – 1
P (optional)
0 – 0.35
0
Fe & Impurities
Balance
Balance
Regarding claim 2, the aforementioned prior art discloses the method of claim 1 (see previous). The examiner notes that the above composition of Emanuelsson et al. further overlaps with the claimed ranges. See MPEP 2144.05(I).
Regarding claims 3-5, the aforementioned prior art discloses the method of claim 1 (see previous). The examiner notes that the aforementioned parameters of the prior art further overlap with the claimed ranges. See MPEP 2144.05(I).
Regarding claim 6, the aforementioned prior art discloses the method of claim 1 (see previous). The aforementioned prior art does not expressly teach a compressive strength as claimed. However, the examiner notes that steel properties are directly influenced by steel composition and microstructure as would have been recognized by one of ordinary skill. Since the prior art discloses an overlapping steel composition, an overlapping method of manufacture, and an identical martensitic microstructure as explained above, the examiner notes that similar, overlapping values of compressive strength would have naturally flowed from the prior art absent concrete evidence to the contrary. See MPEP 2112 & MPEP 2144.05(I).
Conclusion
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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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734