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 .
Election/Restrictions
Applicant’s election without traverse of Group I (Claims 1-6 and 11-13) in the reply filed on 01/06/2026 is acknowledged. Claims 7-10 are withdrawn. Claims 1-6 and 11-13 are examined herein.
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 3, 6, 11 and 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 3 recites the broad recitation O≤0.003%, and the claim also recites “preferably O≤0.002%” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Appropriate correction is required.
Claims 6 and 13 recite J1, J3, J5, J7 and J9. The meaning of J1, J3, J5, J7 and J9 is not defined. Appropriate correction is required.
Claims 6 and 13 recite “section shrinkage” and “bandwidth”. The terms of “section shrinkage” and “bandwidth” are not commonly used. Please verify whether there are translation errors for these terms. Appropriate correction is required.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 11 recites the broad recitation O≤0.003%, and the claim also recites “preferably O≤0.002%” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Appropriate correction is required.
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.
Claims 1-6 and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over JP’510 (JP2019-11510, IDS dated 08/22/2023).
Regarding claims 1 and 2, JP’510 discloses (Abstract; Page 2-4) a gear steel having good cold forgeability with a composition that overlaps the recited composition and it would be obvious to one of ordinary skill in the art to select an amount of each element based on the ranges disclosed in JP’510 to make a steel that meet the recited composition in claims 1 and 2. See MPEP 2144.05 I. Since JP’510 discloses that the steel has good cold forgeability and can be used to make gears (Page 1, last paragraph; Page 2, 1st paragraph; Page 4, 4th and 9th paragraphs), it would be obvious to one of ordinary skill in the art to use the steel disclosed by JP’510 to make a gear by cold forging.
Element
Claims 1+2
(mass %)
JP’510
(mass %)
Overlap
(mass %)
C
0.15-0.17
0.05-0.3
0.15-0.17
Si
0.1-0.2
0.0-0.5
0.1-0.2
Mn
1-1.1
0.3-3.0
1-1.1
Cr
0.8-0.9
0.0-3.0
0.8-0.9
Al
0.02-0.04
0.015-0.1
0.02-0.04
Fe + Impurities
Balance
Balance
Balance
JP’510 discloses that the essential elements are C, Si, Mn and Al, and Cr can be added to improve hardenability (Page 3-4), which meets the transitional phrase “consisting of” in claim 2.
Regarding claims 3 and 11, JP’510 discloses that the steel contains 0.003-0.03 wt% N, 0.02 wt% or less S, 0.01 wt% or less P and 0.001-0.007 wt. % O (Page 3-4, Page 8), which overlap the recited amount of N, S, P and O in claims 3 and 11. 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. Thus, claims 3 and 11 are obvious over JP’510.
Regarding claim 4, JP’510 discloses that the steel contains 0-0.1 wt% Ti and 0-0.08 wt% Ca (Page 4-5), which overlap the recited amount of Ti and Ca in claim 4. 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. Thus, claim 4 is obvious over JP’510.
Regarding claims 5 and 12, JP’510 discloses that the steel has a microstructure composed of ferrite and spheroidized carbide (Abstract; Page 6), which meets the structure limitation recited in claims 5 and 12.
Regarding claims 6 and 13, JP’510 does not explicitly disclose the recited property limitations in claims 6 and 13. However, the properties of a steel depend on the steel composition and the microstructure of the steel. In view of the fact that JP’510 teaches a steel that meets the recited composition in claim 1 and the microstructure limitation recited in claims 5 and 12, one of ordinary skill in the art would expect that the steel disclosed by JP’510 to meet the recited property limitations in claims 6 and 13. “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). See MPEP 2112.01 I.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Xiaowei Su whose telephone number is (571)272-3239. The examiner can normally be reached 8:00-5:00.
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/XIAOWEI SU/Primary Examiner, Art Unit 1733