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 1-5 and 8-13 in the reply filed on 10/27/2025 is acknowledged.
Claims 6-7 and 14-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group II, there being no allowable generic or linking claim.
Status of Claims
Claims 1-21 are pending. Claims 1-5 and 8-13 are presented for this examination. Claims 6-7 and 14-21 are withdrawn.
Priority
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 08/17/2023 and 09/21/2023 and is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-5 and 8-13 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 pre-AIA the applicant regards as the invention.
Instant claim 1 required a “mother phase”; this is unclear as to whether it means a final “martensitic phase” or an initial austenitic phase before martensitic phase forms, or some other unspecified interpretation.
As a result of rejected claim 1, all elected dependent claims are also rejected under the same statute.
Claim Interpretation
Claims 1-5 and 8-13 recitation “for the brake disc rotor” is a preamble statement reciting purpose or intended use.
Because the preamble merely states the purpose or intended use of the invention, rather than a claim limitation, no patentable weight would be given. See MPEP 2111.02 II or if a Prior Art structure is capable of performing the intended use as recited in the preamble, then it meets the claim.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1 is rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Yazawa (JP2001152296A).
As for claim 1, Yazawa discloses a martensitic stainless steel sheet (Abstract line 1). Table 1 Steel No 1 ([0040]) discloses every elemental composition within instant claimed ranges.
Precipitates in the martensite phase (mother phase) of the Steel No 1 has average particle size and density within claimed ranges as illustrated in table 1 below. By applying the claimed formula, instant hardening hardness index A is determined to be within claimed range as illustrated in table 1 below. Hence, Yazawa’s steel No 1 anticipated instant claim 1.
Table 1
Element
Applicant
(weight %)
Yazawa et al.
(weight %)
Table 1 Steel No 1
Within/Overlap
(weight %)
C
0.001-0.5
0.0055
0.0055
N
0.001-0.5
0.0138
0.0138
Si
0.01-5
0.25
0.25
Mn
0.01-12
0.66
0.66
P
0.001-0.1
0.02
0.02
S
0.0001-1
0.005
0.005
Cr
10-35
11.38
11.38
Ni
0.01-5
0.05
0.05
Cu
0.001-3
0.03
0.03
Mo
0.001-3
0.001
0.001
Nb
0.001-1
0.001
0.001
V
0.001-1
0.001
0.001
Average particle size (µm)
<=2
0.11
0.11
Density (piece/µm2)
0.01-20
1.12
1.12
Hardening hardness index A
200-800
267.7
267.7
B (Claim 2)
0.0001-0.01
0.0005-0.005
0.0005-0.005
Claim(s) 3-5 and 8-13 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Yazawa (JP2001152296A).
As for claims 3 and 8, they are inherent mechanical properties according to MPEP 2112.01.
When the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the prior art products necessarily possess the characteristics of the claimed product. See MPEP 2112.01.
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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)
As for claims 4-5 and 9-13, how the claimed hardness decrease and 0.2% proof stress are obtained are product by process limitation according to MPEP 2113.
According to MPEP 2113, determination of patentability of product is based on the product itself. That is, the patentability of product does not depend on its method of production unless the process of making the claimed product imparts any structural and/or functional limitation and characteristic on the claimed product.
In the instant case, Yazawa discloses Table 1 Steel No 1 which has same elemental composition as well as precipitates average particle size, density and hardening hardness index A. Therefore, claimed hardness and 0.2% proof stress would be expected absent evidence of the contrary.
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.
Claim(s) 2 is rejected under 35 U.S.C. 103 as being unpatentable over Yazawa.
As for claim 2, Yazawa discloses an overlapping range of B as illustrated in Table 1 above.
A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNY R WU whose telephone number is (571)270-5515. The examiner can normally be reached on 8:30 AM-5:00 PM.
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/JENNY R WU/Primary Examiner, Art Unit 1733