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
Claims 1-3 have been amended; Claims 4-8 have been withdrawn as non-elected claims; Claims 1-3 remain for Examination, wherein claim 1 is an independent claim.
Information Disclosure Statement
IDS filed on 3/20/2026 has been recorded.
Previous Claim Ob/jects/Rejections
Previous rejection of claims 1-3 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or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn in view of the Applicant’s “Arguments/remarks with amendment” file on 3/20/2026.
However, in view of the Applicant’s amendments, newly filed IDS, and reconsideration, new ground rejection is listed 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 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al (KR 20190078112 A1, with on-line translation, thereafter KR’112) in view of Jung et al (US-PG-pub 2021/0324493 A1, thereafter PG’493).
KR’112 in view of PG’493 is applied to the instant claims 1-3 for the same reason as claimed in the previous office action dated 12/12/2025.
The amended features in the instant claims 1-3 do not change the scope of the instant claims.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-3 are rejected on the ground of nonstatutory obviousness type double patenting as being unpatentable over Claims 1-5 of copending application No. 17/270956 (US 11,905,571 B2) in view of KR’112.
Claims 1-5 of copending application No. 17/270956 (US 11,905,571 B2) in view of KR’112 is applied to the instant claims 1-3 for the same reason as claimed in the previous office action dated 12/12/2025.
The amended features in the instant claims 1-3 do not change the scope of the instant claims.
Response to Arguments
Applicant’s arguments to the art rejection to Claims 1-3 have been considered but they moot in view of the new ground rejection as stated above.
The Applicant’s arguments are summarized as following:
1, the nitrogen composition range defined in the present invention (0.01-0.03 wt% N) cannot be regarded as being substantially disclosed or suggested by over Lee et al (KR’112) (0.01 wt% or less N).
2, the claimed density of AlN particles fundamentally different from the AlN distribution specified in Lee et al (KR’112).
3, Jung et al (PG’493) is directed to a carbide-based alloy with V is an essential element, which in a different direction from that of the present invention.
4, Claims 1-5 of copending application No. 17/270956 (US 11,905,571 B2) require V as essential element, which the claims in the present application does not require V as an essential element. While 2-10 area% martensite is substantially different from the range 0.1-2 area% martensite as claimed in the instant claim.
In response,
Regarding the Applicant argument 1, as pointed out in the rejection for the instant claims in the previous office action dated 12/12/2025, the 0.0006-0.01 wt% N disclosed by Lee et al (KR’112) overlap the claimed 0.01-0.03 wt% N in the instant claims at 0.01wt%, which creates a prima facie case of obviousness.
Regarding the argument 2, there is no evidence to show the AlN particles in the instant claims are fundamentally different from the AlN distribution specified in Lee et al (KR’112).
Regarding the argument 3, Jung et al (PG’493) is cited for the adjusting 0.5-1.5 mass% Cr and 0.5-1.5 mass% Mo for improving hardenability (par.[0031]-[0032] of PG’493) and adjusting microstructure in area fraction, bainite is 85% or more, martensite is 2 to 10%, and pearlite is 1 to 5% (par.[0036] of PG’493). It is noted that the “comprises” language in the instant claim does not excluding including V in the alloy.
Regarding the argument 4, Firstly, It is noted that the “comprises” language in the instant claim does not excluding including V in the alloy. Secondly, 2-10 area% martensite overlaps the range 0.1-2 area% martensite as claimed in the instant claim at 2 area%, which cannot be indicated as substantially different between them.
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 JIE YANG whose telephone number is (571)270-1884. The examiner can normally be reached on IFP.
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 J Johnson can be reached on 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
/JIE YANG/Primary Examiner, Art Unit 1734
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