DETAILED ACTION
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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/10/2026, which is marked with “No IDS size fee is required under 37 CFR 1.17(v) at this time”, is being considered by the examiner.
Response to Amendments/ Status of Claims
An amendment, filed 03/13/2026, is acknowledged.
Claims 2 and 5 are currently pending.
Claim 1 and 3-4 are cancelled.
Claim 2 has been amended, by incorporating a limitation from the claim 3.
Therefore, claim 2 is currently under consideration for this office action.
Status of Previous Rejections
The previous 35 USC § 103 rejections of the claims 1-3 have been withdrawn, due to cancellation of claim 1 and 3, and amendment of claim 2.
The previous nonstatutory double patenting rejection of the claims 1-3 over claim 1, 7 and 9 of copending Application No. 18268061 (reference application), have been withdrawn, due to cancellation of claim 1 and 3, and amendment of claim 2. (It is to be noted claims of copending Application No. 18268061, also has been amended).
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 2 is rejected under 35 U.S.C. 103 as being unpatentable over Yamazaki Yoshio, et.al. [JP4147701B2] [Google translation], and further in view of F. Maresca, et.al. [“On the role of interlath retained austenite in the deformation of lath martensite”, 2014 Modelling Simul. Mater. Sci. Eng. 22 045011].
Regarding claim 2, Yamazaki teaches a part, having improved delayed fracture resistance, for a high-strength bolt, (a high strength bolt component that has excellent beach weather resistance and delayed fracture resistance [Section 0001] and steel materials that are preferably made into bolt component materials by hot rolling such as plate rolling and wire rod rolling followed by subsequent bolt making process) [Section 0028]. Yamazaki’s a high strength bolt component material comprises the following composition and a comparison with as recited composition of claim has been shown in the following table.
Element
Instant Claim 1 (wt. %)
Yamazaki's composition wt. %
Within/Overlapping Range
C
0.15-0.30
0.15-0.40 [Section 0014]
Overlapping
Si
0.05-0.35
0.15-2.0 [Section 0015]
Overlapping
Mn
0.95-1.35
0.2-2.0 [Section 0016]
Overlapping
P
0.03 or less
0.02 or less [Section 0017]
Within
S
0.03 or less
0.015 or less [Section 0018]
Within
Ti
0.005 - 0.030
0.01 - 0.05 [Section 0022]
Overlapping
B
0.0010 - 0.0040
0.0005 - 0.0040 [Section 0023]
Within
Fe and inevitable impurities
Balance
Balance [Section 0027]
Overlapping
Yamazaki’s composition for all elements is either overlapping or within the as recited range in the instant claim.
Yamazaki further teaches the structure at the time of quenching is a martensite structure in which the retained austenite is 0 or less than 1% (volume ratio), and the tempering treatment is adjusted to obtain a homogeneous tempered martensite, thereby further penetrating hydrogen. It was found that delayed fracture can be prevented and delayed fracture resistance is improved [Section 0012].
Yamazaki’s volume fraction of retained austenite is overlapping with the as recited range in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have selected and produced a composition and a volume fraction of retained austenite from the teachings of Yamazaki that falls within the instantly-claimed ranges, because “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)” [See MPEP § 2144.05.I].
Yamazaki is silent about the retained austenite is formed at a martensite lath boundary and has a thickness of 100 nm or smaller.
However, Maresca teaches lath martensite in steels is obtained by more or less rapid quenching of low carbon austenite (typically 0–0.6 wt.% C) to room temperature. Maresca teaches recent in the austenite to martensite transformation, the martensitic transformation is never complete, therefore, interlath austenite films can be retained at lath grain boundaries. Since interlath films can be very thin, below 50 nm thickness, and have been detected with TEM in low carbon martensitic steels [Page 2].
Maresca’s thickness of retained austenite interlath film is within the as recited range in the instant claim.
Maresca teaches extensive experimental evidence of large deformation and ductile fracture behaviour of lath martensite in martensitic and multi-phase high strength steels under quasi-static, uniaxial loading conditions. The presence of thin films of interlath retained austenite may trigger the observed apparent martensite ductility. The austenite film acts like a ‘greasy’ plane on which the stiffer laths can slide. The shearing mechanism is not a mere consequence of the lower flow stress in the austenitic phase, but it is largely due to the orientation relationship between the retained austenite face centered cubic lattice and the body centered cubic lath crystals [Abstract].
Maresca is analogues to the instant claim as well as Yamazaki as Maresca is in the field of the austenite to martensite transformation behavior in the low carbon high strength material.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have Maresca’s teachings of thinner interlath retained austenite in combination of Yamazaki’s method of producing high strength bolt component with an improved delayed fracture resistance, for controlling the volume fraction and size of the retained austenite to control the deformation of martensite within the high strength component.
Response to Arguments
Applicant’s arguments dated 03/13/2025, with respect to the previous 35 USC § 103 rejections of the claims 2 have been acknowledged, but does not seem persuasive.
In response to applicant's argument that the references fail to show certain features of the invention, “Yoshio discloses a Ni-Cu-Cr-B steel that requires Ni (2.3-5.0%), Cu (0.2-0.5%), Al, Cr, and N as essential alloying elements. By contrast, the present invention is a Mn-B steel that contains none of these elements.” does not seem persuasive because, it is noted that the features upon which applicant relies (i.e., Mn-B steel) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). In this case, claim does not recite any Mn-B steel, the claim 2 recite “A part, having improved delayed fracture resistance, for a high-strength bolt, comprising a composition” and the prior art Yoshio does not teach Ni-Cu-Cr-B steel, rather, Yoshio Yamazaki teaches high strength bolt component that has excellent delayed fracture resistance and an overlapping composition as recited in the claim2.
With respect to Applicant’s argument “Yoshio teaches suppressing hydrogen ingress by minimizing retained austenite to less than 1 vol% to secure a uniform tempered martensite microstructure. The present invention takes a fundamentally different approach, by intentionally securing 0.3-2.0 vol% of retained austenite and controlling its formation at the martensite lath boundaries with a thickness of 100 nm or smaller, so that it functions directly as a hydrogen diffusion barrier. Yoshio provides no disclosure whatsoever of this microstructural design concept,” does not seem fully persuasive, because the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In this case claim recites 0.3-2.0 vol% of retained austenite, and Yoshio teaches retained austenite to less than 1 vol%, which is within the as recited in the instant claim. It is true, Yoshio is silent about the retained austenite is formed at a martensite lath boundary and has a thickness of 100 nm or smaller, but to meet that deficiency Maresca is being used and Maresca teaches interlath films below 50 nm thickness [Page 2] and Maresca’s thickness of retained austenite interlath film is within the as recited range in the instant claim.
With respect to Applicant’s argument “Maresca is a purely computational study analyzing the plastic deformation behavior of lath martensite by crystal plasticity simulation. Its technical purpose is entirely different from improving delayed fracture resistance and suppressing hydrogen diffusion in steel for highstrength bolts. A person of ordinary skill in the art would have no motivation to combine Yoshio with Maresca for the purpose of improving delayed fracture resistance”, does not seem persuasive, because, it is noted that the features upon which applicant relies (i.e., suppressing hydrogen diffusion) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993) and in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this case, Yoshio already teaches highstrength bolts with improving delayed fracture resistance and Maresca is used to meet the limitation of the thickness of interlath retained austinite with a motivation of having a plastic deformation and ductile fracture behaviour of lath martensite in martensitic in multi-phase high strength steels.
With respect to Applicant’s argument “Maresca itself states that the formation of interlath retained austenite is strongly dependent on alloy composition, particularly the presence of Mn, Si, Al, and P. Given that Maresca's Ni-Cu-Cr-B steel and the present Mn-B steel have fundamentally different compositions, the assumption that the interlath retained austenite microstructure of the present invention would be identically achieved in Yoshio's steel does not hold.” Does not seem persuasive, nowhere in the Maresca’s reference teaches Ni-Cu-Cr-B steel and it is further to be noted that the features upon which applicant relies (i.e., Mn-B steel) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). In this case, claim does not recite any Mn-B steel, the claim 2 recite “A part, having improved delayed fracture resistance, for a high-strength bolt, comprising a composition”, a microstructure and a thickness of interlath retained austenite, and as shown above Yoshio in view of Maresca meet theses limitations. Maresca teaches lath martensite in steels is obtained by more or less rapid quenching of low carbon austenite (typically 0–0.6 wt.% C) to room temperature. Maresca teaches recent in the austenite to martensite transformation, the martensitic transformation is never complete, therefore, interlath austenite films can be retained at lath grain boundaries. Since interlath films can be very thin, below 50 nm thickness, and have been detected with TEM in low carbon martensitic steels [Page 2]. The instant claim as well as Yoshio both have low carbon steel same as Maresca, therefore, Maresca is analogous to both the instant claim and Yoshio. In addition Maresca teaches austenite can be retained at room temperature are (i) chemical stabilization, due to the alloying composition (especially the presence of Mn, Si, Al and Pi); and (ii) mechanical stabilization, due to the relevant transformation strain developed during the austenite to martensite transformation (e.g. [34]; see also [36] for evidence of significant plastic accommodation in austenite during lath martensite formation. Both the instant claim and Yoshio also recites Mn, Si, and P etc. (page 5).
Therefore, the 35 U.S.C. § 103 rejection of claim 2 has been maintained but rewritten due to amendment. (please see the corresponding rejection section for further details).
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NAZMUN NAHAR SHAMS whose telephone number is (571)272-5421. The examiner can normally be reached M-F 11:00 AM-7:00PM (EST).
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/NAZMUN NAHAR SHAMS/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738
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