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 .
Status of Claims
Claim 5 is canceled. Claims 1-4 and 6 are pending where claims 1 and 6 have been amended.
Status of Previous Rejections
The previous 35 USC § 112 and § 102/103 rejections of the claims have been withdrawn in view of amendments to the claims.
Claim Rejections - 35 USC § 103
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) 1-4 and 6 is/are rejected under 35 U.S.C. 103 as obvious over US 2020/0347486 A1 to Lee et al (English language equivalent of CN 111542637 A, cited by applicant in IDS filed 4/17/2026).
Regarding claims 1-3, Lee ‘486 discloses an austenitic high manganese steel with 95 area% or more of austenite which lies within the instantly claimed ranges as well as specific examples which lie within the instantly claimed composition as follows (Lee ‘486, abstract, para [0022-0046,0058-0067] Table 1, IE1):
Element
Claimed wt%
Lee ‘486 wt%
Lee ‘486 IE1 wt%
Lies within?
C
0.2-1.8
0.3-0.5
0.40
Yes/Yes
Mn
8-30
20-23
21.51
Yes/Yes
Cr+Mo+W
0-8
Cr: 0-2.5
Cr: 1.99
Yes/Yes
Fe
Balance
Balance
Balance
Balance
Regarding the limitation “wherein a length of austenitic grain boundaries is 30 to 120 µm per unit area of 100 µm2,” the instant specification at para [00023] states that the length of austenitic grain boundaries is inversely proportional to the grain size. On pages 7 and 8 of the remarks filed 12/10/2025, applicant discloses that length of austenitic grain boundaries per unit area of 100 µm2 may be calculated by assuming square grains, calculating the area of one grain as the grain size squared and the perimeter of one grain as 4 times the grain size, dividing 100 µm2 by the estimated area of one grain, multiplying that number by the estimated perimeter of one grain, dividing that number by 2 to estimate the case for square grains (which simplifies to austenitic grain boundaries per unit area of 100 µm2 = 200 µm2/grain size in µm), and multiplying the case for square grains by 0.5-0.75 to get the case for hexagonal grains. Lee ‘486 discloses the grain size may range from 5 to 150 µm (Lee ‘486, para [0053]). Applying applicant’s calculations to these grain sizes results in an estimated length of austenite grain boundaries per unit area of 100 µm2 of 1.33-40 µm per unit area of 100 µm2 for square games or 0.67-30 µm per unit area of 100 µm2 for hexagonal grains, which overlaps the instantly claimed range of 30 to 120 µm per unit area of 100 µm2. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of grain size of Lee ‘486 including ones that result in length of austenite grain boundaries per unit area of 100 µm2 overlapping the instantly claimed length of austenitic grain boundaries per unit area of 100 µm2 because a prima facie case of obviousness in the case of overlapping ranges.
Regarding claims 4 and 6, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01 [R-3].) In the instant case, the grain boundaries and area fraction of precipitate at grain boundaries of Lee ‘486 would be expected to be the same or similar as the instantly claimed because the alloy of Lee ‘486 has the same or substantially the same composition and structure.
Claim(s) 1-4 and 6 is/are rejected under 35 U.S.C. 103 as obvious over US 2015/0354037 A1 to Lee et al (English language equivalent of CN 104884661 A, cited by applicant in IDS filed 4/17/2026).
Regarding claims 1-3, Lee ‘037 discloses an austenitic high manganese steel with 90 volume% or more of austenite which lies within the instantly claimed ranges as well as specific examples which lie within the instantly claimed composition as follows (Lee ‘037, abstract, para [0021-0051] Table 1, EE1):
Element
Claimed wt%
Lee ‘037 wt%
Lee ‘037 EE1 wt%
Lies within?
C
0.2-1.8
0.8-1.5
1.21
Yes/Yes
Mn
8-30
15-22
19.1
Yes/Yes
Cr+Mo+W
0-8
Cr: >0-5
Mo: 0.1-1
Cr: 3.2
Mo: 0.3
Yes/Yes
Fe
Balance
Balance
Balance
Balance
Regarding the limitation “wherein a length of austenitic grain boundaries is 30 to 120 µm per unit area of 100 µm2,” the instant specification at para [00023] states that the length of austenitic grain boundaries is inversely proportional to the grain size. On pages 7 and 8 of the remarks filed 12/10/2025, applicant discloses that length of austenitic grain boundaries per unit area of 100 µm2 may be calculated by assuming square grains, calculating the area of one grain as the grain size squared and the perimeter of one grain as 4 times the grain size, dividing 100 µm2 by the estimated area of one grain, multiplying that number by the estimated perimeter of one grain, dividing that number by 2 to estimate the case for square grains (which simplifies to austenitic grain boundaries per unit area of 100 µm2 = 200 µm2/grain size in µm), and multiplying the case for square grains by 0.5-0.75 to get the case for hexagonal grains. Lee ‘037 discloses the grain size may be 100 µm or less (Lee ‘013, para [0049,0051], claim 3). Applying applicant’s calculations to these grain sizes results in an estimated length of austenite grain boundaries per unit area of 100 µm2 of at least 2 µm per unit area of 100 µm2 for square games at least 1 µm per unit area of 100 µm2 for hexagonal grains, which overlaps the instantly claimed range of 30 to 120 µm per unit area of 100 µm2. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of grain size of Lee ‘037 including ones that result in length of austenite grain boundaries per unit area of 100 µm2 overlapping the instantly claimed length of austenitic grain boundaries per unit area of 100 µm2 because a prima facie case of obviousness in the case of overlapping ranges.
Regarding claims 4 and 6, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01 [R-3].) In the instant case, the grain boundaries and area fraction of precipitate at grain boundaries of Lee ‘037 would be expected to be the same or similar as the instantly claimed because the alloy of Lee ‘037 has the same or substantially the same composition and structure.
Claim(s) 1-4 and 6 is/are rejected under 35 U.S.C. 103 as obvious over US 2020/0140981 A1 to Kim et al (English language equivalent of CN 110114493 A, cited by applicant in IDS filed 4/17/2026).
Regarding claims 1-3, Kim discloses an austenitic high manganese steel with 97 area% or more of austenite which overlaps the instantly claimed ranges as well as specific examples which lie within the instantly claimed composition as follows (Kim, abstract, para [0022-0055, 0085-0094] Table 1, EE1):
Element
Claimed wt%
Kim wt%
Kim IS1 wt%
Overlaps/Lies within?
C
0.2-1.8
0.6-1.9
0.63
Yes/Yes
Mn
8-30
12-22
21.1
Yes/Yes
Cr+Mo+W
0-8
Cr: >0-5
4.8
Yes/Yes
Fe
Balance
Balance
Balance
Balance
Regarding the limitation “wherein a length of austenitic grain boundaries is 30 to 120 µm per unit area of 100 µm2,” the instant specification at para [00023] states that the length of austenitic grain boundaries is inversely proportional to the grain size. On pages 7 and 8 of the remarks filed 12/10/2025, applicant discloses that length of austenitic grain boundaries per unit area of 100 µm2 may be calculated by assuming square grains, calculating the area of one grain as the grain size squared and the perimeter of one grain as 4 times the grain size, dividing 100 µm2 by the estimated area of one grain, multiplying that number by the estimated perimeter of one grain, dividing that number by 2 to estimate the case for square grains (which simplifies to austenitic grain boundaries per unit area of 100 µm2 = 200 µm2/grain size in µm), and multiplying the case for square grains by 0.5-0.75 to get the case for hexagonal grains. Kim discloses the grain size may be 500 µm or less (Kim, para [0054-0055]). Applying applicant’s calculations to these grain sizes results in an estimated length of austenite grain boundaries per unit area of 100 µm2 of at least 0.4 µm per unit area of 100 µm2 for square games at least 0.2 µm per unit area of 100 µm2 for hexagonal grains, which overlaps the instantly claimed range of 30 to 120 µm per unit area of 100 µm2. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of grain size of Kim including ones that result in length of austenite grain boundaries per unit area of 100 µm2 overlapping the instantly claimed length of austenitic grain boundaries per unit area of 100 µm2 because a prima facie case of obviousness in the case of overlapping ranges.
Regarding claims 4 and 6, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01 [R-3].) In the instant case, the grain boundaries and area fraction of precipitate at grain boundaries of Kim would be expected to be the same or similar as the instantly claimed because the alloy of Kim has the same or substantially the same composition and structure.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-4 and 6 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment and applicant's submission of an information disclosure statement under 37 CFR 1.97(c) with the timing fee set forth in 37 CFR 1.17(p) on 4/17/2026 prompted 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 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 BRIAN D WALCK whose telephone number is (571)270-5905. The examiner can normally be reached Monday-Friday 10 AM - 6:30 PM.
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/BRIAN D WALCK/ Primary Examiner, Art Unit 1738
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