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 .
Priority
Receipt is acknowledged of a certified copy of EP 21159990.7 filed March 1, 2021 as required by 37 CFR 1.55. Receipt is also acknowledged of a copy of WO 2022/183265, the WIPO publication of PCT/BR 2022/050066 filed February 26, 2022.
Response to Restriction Election
Applicant's election with traverse of Group I, claims 1-9, in the reply filed on February 26, 2026 is acknowledged.
The traversal is on the grounds that claims 1 and 10 are amended to recite an upper limit of 0.70% C as supported by [0016] of applicant’s specification (Remarks p. 6 para. 6), which is a special technical feature that is distinguished from Kubota, which discloses 0.75 to 1.20% C (Kubota [0095]-[0096]) (Remarks p. 6 para. 7).
This is not found persuasive because Group I (claims 1-9), Group II (claims 10-13), and Group III (claim 14) lack unity of invention because even though the inventions of these groups require the technical feature of the method of manufacturing as recited in claim 10, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Kochi (JP 2002-97543 machine translation) or LV (JP H07-228945 machine translation) as evidenced by the below pending rejections.
The restriction requirement is still deemed proper and is therefore made FINAL.
Claims 10-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventive group, there being no allowable generic or linking claim.
Claim Status
This Office Action is in response to Applicant’s Restriction Election, Arguments, and Claim Amendments filed February 26, 2026.
Claims Filing Date
February 26, 2026
Amended
1, 10
Pending
1-14
Withdrawn
10-14
Under Examination
1-9
Abstract Objection
The abstract of the disclosure is objected to because
It uses legal phraseology “consisting of” and “comprising”.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The form and legal phraseology often used in patent claims should be avoided.
Claim Objection
Claim 7 is objected to because of the following informalities:
Lines 2-4 “one or more…of the group consisting of…α-Al8.36Mn2Si1.14, α-Al4.01Mn1.0Si0.74.” does not include a conjunction between the last two items in the list.
Appropriate correction is required.
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- 9 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.
Claim 1 lines 26-27 “one or more intermetallic phases based on an Al-Fe-Mn-Si system” renders the claim indefinite. It is unclear what an Al-Fe-Mn-Si system is and what constitutes one or more intermetallic phases based on this system. The composition of the one or more intermetallic phases could require some or all of the elements of the system. For the purpose of examination claim 1 will be interpreted as requiring one or more intermetallic phases including one or more of Al, Fe, Mn, and Si.
Claim 6 lines 1-3 “the one or more intermetallic phases of the Al-Fe-Mn-Si system comprise at least one ternary Al-Mn-Si intermetallic phase” renders the claim indefinite. It is unclear how a ternary intermetallic phase with Al, Mn, and Si is an intermetallic phase of the Al-Fe-Mn-Si system. The ternary intermetallic phase only includes three of the four elements in the system. It is unclear how Fe relates to the system and the intermetallic phase of the system. For the purpose of examination claim 6 will be interpreted as requiring at least one ternary Al-Mn-Si intermetallic phase.
Claim 7 lines 1-3 “the one or more intermetallic phases of the Al-Fe-Mn-Si system comprises one or more intermetallic phases of the group consisting of Al4Mn1Si2, Al4Mn1Si1, Al9Mn3Si1, Al2Mn2Si3, Al17Fe3.2Mn0.8Si2, α-Al8.36Mn2Si1.14, α-Al4.01Mn1.0Si0.74” renders the claim indefinite. It is unclear how an intermetallic phase with Al, Mn, and Si is an intermetallic phase of the Al-Fe-Mn-Si system. The intermetallic phases listed include three of the four elements in the system. It is unclear how Fe relates to the system and the intermetallic phase of the system. For the purpose of examination claim 7 will be interpreted as requiring at least one of the listed intermetallic phases.
Claim 8 lines 2-3 “substantially free of” renders the claim indefinite. The term “substantially” is a relative term, such that the metes and bounds are unclear.
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).
Claim 6 lines 2-3 recite broadly “at least one ternary Al-Mn-Si intermetallic phase” and narrowly “in particular Al2Mn2Si3”.
Claim 8 lines 2-3 recite broadly “substantially free of V- and/or Ti- and/or Nb-secondary hardening carbides” and narrowly “in particular substantially free of any secondary hardening carbide”.
Claim 9 lines 2-3 recite broadly “equal to or higher than 120 J/cm2” and narrowly “or 140 J/cm2 or 160 J/cm2 or 200 J/cm2 or 250 J/cm2”.
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.
For the purpose of examination claims 6, 8, and 9 will be interpreted as requiring the respective broad recitations.
Claims 2-5 are rejected as depending from claim 1.
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.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kochi (JP 2002-97543 machine translation).
Regarding claim 1, Kochi discloses a martensitic steel with a composition that reads on that claimed ([0008]-[0010], [0013]-[0021], Table 1 No.11 ).
Kochi Table 1 No. 11 is silent to 0.40 to 1.50 wt% Al.
Kochi discloses 0.2% or more and 1.5% or less Al ([0019]).
It would have been obvious to one of ordinary skill in the art in the example composition of Kochi to include 0.2 to 1.5% Al to improve sag resistance without causing problems such as decarburization during heat treatment and solidification cracking during casting (Kochi [0019]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Element
Claim 1 (wt%)
“consisting of”
Kochi (wt%)
Table 1 No. 11
C
0.30 to 0.70
0.45
Si
2.50 to 4.50
2.50
Mn
1.00 to 2.50
1.00
Al
0.40 to 1.50
0.04
Cr
0.10 to 2.00
0.20
V
0.01 to 0.40
0.040
Ti
0.005 to 0.35
0.040
Optionally one or more of
Nb
Less than 0.35
0.1000
Zr
Less than 0.35
-
Ta
Less than 0.35
-
P
Less than 0.25
0.01
S
Less than 0.25
0.01
Co
Less than 0.50
-
Mo
Less than 0.90
0.70
W
Less than 0.90
-
Ni
Less than 0.50
0.20
Cu
Less than 0.50
0.20
N
Less than 0.050
-
Ca
Less than 0.10
-
Mg
Less than 0.10
-
Ce
Less than 0.10
-
La
Less than 0.10
-
B
Less than 0.10
0.001
Fe
Balance
Balance
The martensitic steel comprising one or more intermetallic phases based on an Al-Fe-Mn-Si system has been considered and determined to result from the claimed composition. The prior art discloses a composition that reads on that claimed (Kochi [0008]-[0010], [0013]-[0021], Table 1 No. 11), such that one or more intermetallic phases based on an Al-Fe-Mn-Si system naturally flows from the disclosure of the prior art.
Regarding claim 2, Kochi discloses at least one of the following requirements:
C: 0.40 to 0.60% (0.45%) (Table 1 No. 11),
Si: 3.00 to 4.00%,
Mn: 1.30 to 1.80%,
Al: 0.70 to 1.20%.
Regarding claim 3, Kochi discloses at least one of the following requirements:
V: 0.01 to 0.15% (0.040%) (Table 1 No. 11),
Ti: 0.05 to 0.25%,
Nb: less than 0.15% (0.100%) (Table 1 No. 11).
Regarding claim 4, Kochi discloses at least one of the following requirements:
Mo: less than 0.10%,
W: less than 0.10% (0%) (Table 1 No. 11),
Ni: less than 0.05%,
Cu: less than 0.10%.
Regarding claim 5, Kochi discloses 0.20% Cr (Table 1 No. 11).
Kochi Table 1 No. 11 is silent to 0.30 to 0.80 wt% Cr.
Kochi discloses 0.1% or more and 3% or less Cr ([0018]).
It would have been obvious to one of ordinary skill in the art in the example composition of Kochi to include 0.1 to 3% Cr to improve corrosion resistance without hardenability becoming too high, degrading cold formability during bolt forming and the like (Kochi [0018]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 6, the one or more intermetallic phases of the Al-Fe-Mn-Si system comprising at least one ternary Al-Mn-Si intermetallic phase, in particular Al2Mn2Si3 has been considered and determined to result from the claimed composition. The prior art discloses a composition that reads on that claimed (Kochi [0008]-[0010], [0013]-[0021], Table 1 No. 11), such that one or more intermetallic phases of the Al-Fe-Mn-Si system comprising at least one ternary Al-Mn-Si intermetallic phase, in particular Al2Mn2Si3 naturally flows from the disclosure of the prior art.
Regarding claim 7, the one or more intermetallic phases of the Al-Fe-Mn-Si system comprising one or more intermetallic phases of the group consisting of Al4Mn1Si2, Al4Mn1Si1, Al9Mn3Si1, Al2Mn2Si3, Al17Fe3.2Mn0.8Si2, α-Al8.36Mn2Si1.14, α-Al4.01Mn1.0Si0.74 has been considered and determined to result from the claimed composition. The prior art discloses a composition that reads on that claimed (Kochi [0008]-[0010], [0013]-[0021], Table 1 No. 11), such that one or more intermetallic phases of the Al-Fe-Mn-Si system comprises one or more intermetallic phases of the group consisting of Al4Mn1Si2, Al4Mn1Si1, Al9Mn3Si1, Al2Mn2Si3, Al17Fe3.2Mn0.8Si2, α-Al8.36Mn2Si1.14, α-Al4.01Mn1.0Si0.74 naturally flows from the disclosure of the prior art.
Regarding claim 8, the steel being substantially free of V- and/or Ti- and/or Nb-secondary hardening carbides, in particular substantially free of any secondary hardening carbide has been considered and determined to result from the claimed composition. The prior art discloses a composition that reads on that claimed (Kochi [0008]-[0010], [0013]-[0021], Table 1 No. 11), such that the steel being substantially free of V- and/or Ti- and/or Nb-secondary hardening carbides, in particular substantially free of any secondary hardening carbide naturally flows from the disclosure of the prior art.
Regarding claim 9, the steel having an impact toughness equal to or higher than 120 J/cm2 or 140 J/cm2 or 160 J/cm2 or 200 J/cm2 or 250 J/cm2 has been considered and determined to result from the claimed composition. The prior art discloses a composition that reads on that claimed (Kochi [0008]-[0010], [0013]-[0021], Table 1 No. 11), such that the steel having an impact toughness equal to or higher than 120 J/cm2 or 140 J/cm2 or 160 J/cm2 or 200 J/cm2 or 250 J/cm2 naturally flows from the disclosure of the prior art.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over LV (JP H07-228945 machine translation).
Regarding claim 1, LV discloses a martensitic steel ([0012], [0030], [0035]) with a composition that reads on that claimed ([0010]-[0011], [0014]-[0027], [0033]).
The example composition of LV is silent to 0.30 to 0.70 wt% C.
LV discloses 0.08 to 0.40% ([0015]).
It would have been obvious to one of ordinary skill in the art in the Example No. 10 of LV to vary the C between 0.08 and 0.40% to determine the strength of martensite through solid solution strengthening, ensure a smooth progress of martensitic transformation, ensure the stability of supercooled austenite, and ensure weldability (LV [0015]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Element
Claim 1 (wt%)
“consisting of”
LV (wt%)
[0033] No. 10
C
0.30 to 0.70
0.25
Si
2.50 to 4.50
3.5
Mn
1.00 to 2.50
1.0
Al
0.40 to 1.50
1.0
Cr
0.10 to 2.00
0.3
V
0.01 to 0.40
0.05
Ti
0.005 to 0.35
0.02
Optionally one or more of
Nb
Less than 0.35
-
Zr
Less than 0.35
-
Ta
Less than 0.35
-
P
Less than 0.25
-
S
Less than 0.25
-
Co
Less than 0.50
-
Mo
Less than 0.90
0.4
W
Less than 0.90
-
Ni
Less than 0.50
-
Cu
Less than 0.50
-
N
Less than 0.050
-
Ca
Less than 0.10
-
Mg
Less than 0.10
-
Ce
Less than 0.10
-
La
Less than 0.10
-
B
Less than 0.10
-
Fe
Balance
Balance
The martensitic steel comprising one or more intermetallic phases based on an Al-Fe-Mn-Si system has been considered and determined to result from the claimed composition. The prior art discloses a composition that reads on that claimed (LV [0010]-[0011], [0013]-[0027], [0033]), such that one or more intermetallic phases based on an Al-Fe-Mn-Si system naturally flows from the disclosure of the prior art.
Regarding claim 2, LV discloses fulfilling at least one of the following requirements:
C: 0.40 to 0.60% (0.08 to 0.40%) ([0015]),
Si: 3.00 to 4.00% (3.5%) ([0033] No. 10),
Mn: 1.30 to 1.80%,
Al: 0.70 to 1.20%.
Regarding claim 3, LV discloses fulfilling at least one of the following requirements:
V: 0.01 to 0.15% (0.05%) ([0033] No. 10),
Ti: 0.05 to 0.25%,
Nb: less than 0.15% (0%) ([0033] No. 10).
Regarding claim 4, LV discloses fulfilling at least one of the following requirements:
Mo: less than 0.10% (0%) ([0033], No. 10),
W: less than 0.10% (0%) ([0033], No. 10),
Ni: less than 0.05% (0%) ([0033], No. 10),
Cu: less than 0.10% (0%) ([0033], No. 10).
Regarding claim 5, LV discloses fulfilling the following requirement:
Cr: 0.30 to 0.80% (0.3%) ([0033], No. 10).
Regarding claim 6, the one or more intermetallic phases of the Al-Fe-Mn-Si system comprising at least one ternary Al-Mn-Si intermetallic phase, in particular Al2Mn2Si3 has been considered and determined to result from the claimed composition. The prior art discloses a composition that reads on that claimed (LV [0010]-[0011], [0013]-[0027], [0033]), such that one or more intermetallic phases of the Al-Fe-Mn-Si system comprising at least one ternary Al-Mn-Si intermetallic phase, in particular Al2Mn2Si3 naturally flows from the disclosure of the prior art.
Regarding claim 7, the one or more intermetallic phases of the Al-Fe-Mn-Si system comprising one or more intermetallic phases of the group consisting of Al4Mn1Si2, Al4Mn1Si1, Al9Mn3Si1, Al2Mn2Si3, Al17Fe3.2Mn0.8Si2, α-Al8.36Mn2Si1.14, α-Al4.01Mn1.0Si0.74 has been considered and determined to result from the claimed composition. The prior art discloses a composition that reads on that claimed (LV [0010]-[0011], [0013]-[0027], [0033]), such that one or more intermetallic phases of the Al-Fe-Mn-Si system comprises one or more intermetallic phases of the group consisting of Al4Mn1Si2, Al4Mn1Si1, Al9Mn3Si1, Al2Mn2Si3, Al17Fe3.2Mn0.8Si2, α-Al8.36Mn2Si1.14, α-Al4.01Mn1.0Si0.74 naturally flows from the disclosure of the prior art.
Regarding claim 8, LV discloses the steel being substantially free of V- and/or Ti- and/or Nb-secondary hardening carbides (substantially free of Nb-secondary hardening carbides because Nb is not present in the composition) ([0033]), in particular substantially free of any secondary hardening carbide (Si promotes enrichment of C into austenite and has a “removal” and “purification” effect on C dissolves in cementite and Al acts as a non-carbide forming element, promoting the enrichment of C into austenite and inhibiting the precipitation of cementite) ([0016], [0020]).
Regarding claim 9, LV discloses high toughness ([0007]-[0009], [0013], [0030], [0025]). The steel having an impact toughness equal to or higher than 120 J/cm2 or 140 J/cm2 or 160 J/cm2 or 200 J/cm2 or 250 J/cm2 has been considered and determined to result from the claimed composition. The prior art discloses a composition that reads on that claimed (LV [0010]-[0011], [0013]-[0027], [0033]), such that the steel having an impact toughness equal to or higher than 120 J/cm2 or 140 J/cm2 or 160 J/cm2 or 200 J/cm2 or 250 J/cm2 naturally flows from the disclosure of the prior art.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANI HILL whose telephone number is (571)272-2523. The examiner can normally be reached Monday, Wednesday-Friday 7am-12pm.
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/STEPHANI HILL/Examiner, Art Unit 1735
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