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.
Claim Status
This Office Action is in response to Applicant’s Remarks and Claim Amendments filed July 16, 2026.
Claims Filing Date
July 16, 2026
Amended
1-9
New
15-18
Cancelled
10-14
Pending
1-9, 15-18
The applicant argues support for the amendments in [0017]-[0018] (p. 7 para. 5), support for new claim 15 in original claim 9 (p. 10 para. 3), support for new claim 16 in original claims 7-8 (p. 10 para. 4), support for new claim 17 in original claim 12 and [0040] (p. 10 para. 5), and support for new claim 18 in [0040] and original claim 13 (p. 11 para. 2).
Withdrawn Abstract Objection
The following abstract objection is withdrawn due to amendment:
Legal phraseology “consisting of” and “comprising”.
Withdrawn Claim Objection
The following objection is withdrawn due to claim amendment:
Claim 7 lines 2-4 “one or more…of the group consisting of…α-Al8.36Mn2Si1.14, α-Al4.01Mn1.0Si0.74.”.
Withdrawn Claim Rejections - 35 USC § 112
The following 112(b) rejections are withdrawn due to claim amendment:
Claim 1 lines 26-27 “one or more intermetallic phases based on an Al-Fe-Mn-Si system”.
Claim 8 lines 2-3 “substantially free of”.
Claim 6 lines 2-3 reciting broadly “at least one ternary Al-Mn-Si intermetallic phase” and narrowly “in particular Al2Mn2Si3”.
Claim 8 lines 2-3 reciting 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 reciting 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”.
Response to Remarks filed July 16, 2026
Kochi (JP 2002-97543 machine translation)
Applicant’s arguments, see Remarks p. 8 para. 6, filed July 16, 2026, with respect to Kochi Table 1 No. 11 have been fully considered and are persuasive. The rejection over Kochi Table 1 No. 11 has been withdrawn.
The applicant persuasively argues Kochi Ex. 11 of Table 1 includes 0.04% Al and 1.0% Mn, which are outside the range of pending claim 1 (p. 8 para. 6).
Lyu (CN 106811698 machine translation)
Applicant’s claim amendments, see claim 1 lines 1-5, filed July 16, 2026, with respect to Lyu [0033] No. 10 have been fully considered and are persuasive. The rejection over Lyu [0033] No. 10 has been withdrawn.
Amended claim 1 line 5 recites Mn: 1.20 to 2.50%, whereas modified No. 10 of Lyu has 1.0% Mn (Lyu [0015], [0033]).
The applicant argues the LV reference cited in the April 16, 2026 Non-Final Rejection refers to Lyu CN 106811698 machine translation (p. 7 para. 3).
In the April 16, 2026 PTO-892 Notice of Reference Cited form, foreign patent document CN 106811698 has the name “LV”. In the Espacenet machine translation the listed Inventor(s) cite “Lyu”.
New Grounds
In light of claim amendment and upon further consideration new grounds of rejection are made over Kochi and over Lyu.
Unexpected Results
Applicant's arguments filed July 16, 2026 with respect to unexpected results have been fully considered but they are not persuasive.
The applicant argues high levels of Si, Mn, and Al impart high hardness and high toughness (applicant’s specification [0013]), where a synergistic effect is achieved though the combination of Si and Al (applicant’s specification [0017], [0019], [0031]) as evidenced by Examples 1-7 that a Si content of more than 2.7% achieves a hardness over 55 HRC (applicant’s specification [0051]) (p. 7 para. 6).
The evidence relied upon should establish “that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.” MPEP 716.02(b)(II). Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. MPEP 716.02(d). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. MPEP 716.02(d)(II).
Pending claim 1 line 4 recites “Si: 3.00 to 4.50%”. However, applicant’s Examples 3 and 6 include 2.67 wt% Si and 1.52 wt% Si, respectively, which are both outside the claimed range. Further applicant argues criticality of “a Si content of more than 2.7%” (Remarks p. 7 para. 6), such that below the claimed 3.00 wt% Si endpoint the desired properties are achieved. Therefore, the claimed Si content does not yield unexpected results.
Pending claim 1 line 6 also recites “Al: 0.40 to 1.50%”. Applicant’s Example 6 includes 0.335 wt% Al, which is outside the claimed range. Applicant’s Examples 1-5 and 7 include 0.415 to 0.780 wt% Al, which do not show unexpected results over the entire claimed range of Al, such as from more than 0.780 to 1.50 wt% Al.
Similarly, pending claim 1 line 5 recites “Mn: 1.20 to 2.50%”. Applicant’s Example 6 includes 0.98 wt% Mn, which is outside the claimed range. Applicant’s Examples 1-5 and 7 include 1.40 to 2.00 wt% Mn, which do not show unexpected results over the entire claimed range of Mn, such as from 1.20 to less than 1.40 wt% Mn and from more than 2.00 up to 2.50 wt% Mn.
For the above cited reasons, applicant’s Examples 1-7 do not establish unexpected results of that claimed.
Kochi (JP 2002-97543 machine translation)
Applicant's following arguments filed July 16, 2026 are applicable to the new pending rejection over Kochi. They have been fully considered, but they are not persuasive.
The applicant argues Kochi discloses C: 0.3 to 1.2%, Mn: 0.15-2%, Si ≤ 3%, Al ≤ 1.5%, and Cr ≤ 3% (p. 7 para. 7), which are broad ranges and not the specific combination of subranges for Si, Mn, and Al (p. 8 para. 5).
Kochi discloses overlapping amounts of C, Mn, Si, Al, and Cr ([0014]-[0019]), such that a prima facie case of obviousness exists. MPEP 2144.05(I).
Element
Claim 1
Kochi
Kochi
C
0.40 to 0.70
0.3 to 1.2
[0014]
Mn
1.20 to 2.50
0.15 to 2.0
[0015]
Si
3.00 to 4.50
3.0 or less (excld. 0)
[0019]
Al
0.40 to 1.50
1.5 or less (excld. 0)
[0019]
Cr
0.10 to 2.00
1 or less
[0018]
The applicant argues Kochi achieves high strength and toughness by introducing lattice defects (Kochi [0012]) (para. spanning pp. 7-8) with a density expressed by HWα(200) (Kochi [0039]) (p. 8 para. 2) through specific processing steps (p. 8 para. 3) and not through the chemical composition alone (Kochi [0022]).
Kochi’s evaluation of standard defect density by Hwa(200) (Kochi [0039]) does not preclude is from reading on the claimed subject matter.
Kochi discloses a martensitic steel (Kochi [0021]) with an overlapping composition (Kochi [0014]-[0019]). The steel of Kochi is processed substantially similarly to that disclosed by applicant in new claims 17 and 18 by quenching and tempering (Kochi [0028]-[0030]). Therefore, the overlapping composition and substantially similar processing of Kochi renders the claimed martensitic steel prima facie obvious. MPEP 2144.05(I).
The applicant argues Kochi does not combine higher values for Mn and Al, where example values for Al are well below 0.4% and examples for Mn are outside 1.20 to 2.50% (p. 8 para. 7) with only Comparative Example 17 including greater than 3.0% Si, but 0.03% Al (para. spanning pp. 8-9).
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. MPEP 2123(II).
Kochi discloses 1.5% or less Al ([0019]), 0.15 to 2.0% Mn ([0015]), 3.0% or less Si ([0019]), which overlap with that claimed, such that a prima facie case of obviousness exists. MPEP 2144.05(I).
The applicant argues claim 1 recites 3.00 to 4.50% Si, but Kochi states values above 3.0% should not occur due to decarburization problems during heat treatment and casting during cracking (Kochi [0018]).
Kochi discloses 3.0% or less Si ([0019]) with overlaps with the claimed Si range at 3.0% such that a prima facie case of obviousness exists. MPEP 2144.05(I). The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection. MPEP 2144.05(I).
The applicant argues new claim 17 recites a hardened, quenched, and tempered martensite (p. 10 para. 6), but Kochi only recites low temperature tempering (Kochi [0032]) with no information regarding the temperature used, and the low temperature rationale to avoid density decrease is unrelated to the presently claimed compositions (p. 10 para. 8).
Kochi discloses a hardened (heated), quenched, and tempered martensitic structure with tempering conditions set to adjust to the required strength level (Kochi [0021], [0028]-[0032]) with examples using manufacturing patterns A, B, and C in Table 2, where patterns A and C include tempering at 300°C (Kochi [0030]-[0031]).
Furthermore, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. MPEP 2113(I).
The instant claimed are directed to a martensitic steel. The prior art discloses a martensitic steel (Kochi [0021]) with a composition that overlaps with that claimed (Kochi [0014]-[0019]) processed by quenching and tempering (Kochi [0028]-[0030]) that is substantially similar to that recited in new claims 17 and 18, such that the claimed martensite steel product is rendered obvious over the disclosure of the prior art.
For the above cited reasons, a rejection over Kochi is made.
Lyu (CN 106811698 machine translation)
Applicant's following arguments filed July 16, 2026 are applicable to the new pending rejection over Lyu. They have been fully considered, but they are not persuasive.
The applicant argues Lyu discloses C: 0.08 to 0.4%, Si: 0.35 to 3.5%, Mn: 1.5 to 7.0%, and Al: 0.2 to 3.0% (p. 9 para. 3).
Lyu discloses overlapping amounts of C, Mn, Si, Al, and Cr ([0015]-[0021]), such that a prima facie case of obviousness exists. MPEP 2144.05(I).
Element
Claim 1
Lyu
Lyu
C
0.40 to 0.70
0.80 to 0.40
[0015]
Mn
1.20 to 2.50
1.50 to 7.00
[0017]
Si
3.00 to 4.50
0.35 to 3.50
[0016]
Al
0.40 to 1.50
0.02 to 3.00
[0020]
Cr
0.10 to 2.00
0.5 to 1.5
[0021]
The applicant argues Lyu rapidly heats and rapidly cools (Lyu [0028]), which may produce a specific microstructure that exhibits high toughness and high hardness with a morphology containing a large number of film-like austenite phases around which needle-shaped or short rod-shaped martensite phases are arranged (Lyu [0030]) (p. 9 para. 5).
Lyu’s rapid heating (Lyu [0028]) reads on the martensite steel being hardened as recited in new claim 17 line 2. Similarly, Lyu’s rapid cooling (Lyu [0028]) reads on the martensite steel being quenched as also recited in new claim 17 line 2. The resulting generated martensite (Lyu [0030]) renders obvious the steel of Lyu being a “martensitic steel” (claim 1 line 1).
The applicant argues amended claim 1 recites C: 0.40 to 0.70%, but Lyu requires C ≤ 0.40% to ensure the steel remains weldable (Luy [0015]) (p. 9 para. 6).
Lyu discloses 0.08 to 0.40% C ([0015]), which overlaps with the claimed range at 0.40% C, such that a prima facie case of obviousness exists. The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection. MPEP 2144.05(I).
The applicant argues Lyu’s Examples 11-14 have C, Mn, and Si contents that do not meet the present claims (p. 9 para. 7).
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. MPEP 2123(II).
Lyu discloses overlapping amounts of C, Mn, and Si ([0015]-[0017]), such that a prima facie case of obviousness exists. MPEP 2144.05(I).
The applicant argues new claim 17 recites tempering between 1 hour and 3 hours (p. 10 para. 4), but Lyu discloses tempering for 30 seconds to 30 minutes (Lyu [0028]) (p. 10 para. 10).
The claimed are directed to a “martensitic steel” product. Determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. MPEP 2113(I).
Lyu discloses a martensitic steel ([0012], [0030], [0035]) with an overlapping composition ([0010]-[0011], [0014]-[0027]) produced by a substantially similar process including hardening, quenching, and tempering ([0028]-[0032]), such that the claimed martensitic steel is rendered prima facie obvious.
For the above cited reasons, a rejection over Lyu is made.
Claim Interpretation
Claim 18 line 1 “the temperature” is interpreted as further limiting claim 17 line 3 “a temperature at which the martensitic steel is tempered”.
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 2-7, 15, and 16 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.
Claims 2-5 lines 1-2 “the composition includes” renders the claim indefinite. The transitional phrase “includes” is synonymous with “comprising” and is inclusive or open-ended and does not exclude additional, unrecited elements. MPEP 2111.03(I). Claims 2-5 depend from claim 1, which recites in line 1 “martensitic steel consisting of”. The transitional phrase “consisting of” excludes any element not specified in the claim. MPEP 2111.03(II). It is unclear if claims 2-5 allow for the occurrence of additional, unrecited elements that are excluded from claim 1 due to the transitional phrase that is used. For the purpose of examination claim 2-5 are interpreted as further limiting at least one element recited from claim 1 without including additional, unrecited elements.
Claim 6 lines 1-3 “the one or more intermetallic phases comprise at least one ternary Al-Mn-Si intermetallic phase” renders the claim indefinite. The one or more intermetallic phases has antecedent basis back to claim 1 lines 28-29, “one or more intermetallic phases including Al, Fe, Mn, and Si”. It is unclear how a ternary intermetallic phase with Al, Mn, and Si is an intermetallic phase “including Al, Fe, Mn, and Si” (claim 1 lines 28-29). The ternary intermetallic phase recited in claim 6 does not include Fe. Therefore, dependent claim 6 is broader than independent claim 1. 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 comprises one or more intermetallic phases of a group consisting of Al4Mn1Si2, Al4Mn1Si1, Al9Mn3Si1, Al2Mn2Si3, Al17Fe3.2Mn0.8Si2, α-Al8.36Mn2Si1.14, and α-Al4.01Mn1.0Si0.74” renders the claim indefinite. The one or more intermetallic phases has antecedent basis back to claim 1 lines 28-29, “one or more intermetallic phases including Al, Fe, Mn, and Si”. It is unclear how an intermetallic phases only with Al, Mn, and Si are intermetallic phases “including Al, Fe, Mn, and Si” (claim 1 lines 28-29). Many of the ternary intermetallic phases recited in claim 7 do not include Fe. Therefore, dependent claim 7 include intermetallic phases that are broader than independent claim 1. For the purpose of examination claim 7 will be interpreted as requiring at least one of the listed intermetallic phases.
Claim 15 line 2 “secondary hardening carbide” renders the claim indefinite. It is unclear what does and does not constitute a secondary hardening carbide. It is unclear what makes a carbide secondary hardening or not. Applicant’s specification at [0033] recites “carbides…, such as, e.g., V- and/or Ti- and/or Nb-secondary hardening carbides”. For the purpose of examination claim 15 will be interpreted as “secondary hardening carbide” referring to V and/or Ti and/or Nb secondary hardening carbides.
Claim 16 lines 1-3 “the one or more intermetallic phases comprises one or more intermetallic phases comprises Al2Mn2Si3” renders the claim indefinite. The one or more intermetallic phases has antecedent basis back to claim 1 lines 28-29, “one or more intermetallic phases including Al, Fe, Mn, and Si”. It is unclear how an intermetallic phase of Al2Mn2Si3 is an intermetallic phase “including Al, Fe, Mn, and Si” (claim 1 lines 28-29) because it does not include Fe. Therefore, dependent claim 16 includes an intermetallic phase that is outside the scope of independent claim 1. For the purpose of examination claim 16 will be interpreted as requiring the listed intermetallic phase of Al2Mn2Si3.
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 and 15-18 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 ([0021]) with a composition that overlaps with that claimed ([0008]-[0009], [0013]-[0020]). 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 (%)
Kochi
C
0.40 to 0.70
0.3 to 1.2
[0014]
Si
3.00 to 4.50
3.0 or less
[0017], [0019]
Mn
1.20 to 2.50
0.15 to 2.0
[0015]
Al
0.40 to 1.50
1.5 or less
[0017], [0019]
Cr
0.10 to 2.00
3 or less
[0017]-[0018]
V
0.01 to 0.40
0.3 or less
[0017], [0020]
Ti
0.005 to 0.35
0.30 or less
[0017], [0020]
Optionally one or more of
Nb
Less than 0.35
0.3 or less
[0017], [0020]
Zr
Less than 0.35
0.3 or less
[0017], [0020]
Ta
Less than 0.35
-
-
P
Less than 0.25
0.2 or less
[0016]
S
Less than 0.25
0.02 or less
[0016]
Co
Less than 0.50
-
-
Mo
Less than 0.90
2 or less
[0017]-[0018]
W
Less than 0.90
-
-
Ni
Less than 0.50
10 or less
[0017]-[0018]
Cu
Less than 0.50
1 or less
[0017]-[0018]
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
Steel
[0013]
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 processed substantially similar to that disclosed by applicant (applicant’s specification [0038]-[0041]). The prior art discloses a composition that overlaps with that claimed (Kochi [0008]-[0009], [0013]-[0020]) processed substantially similarly by hardening, quenching, and tempering (Kochi [0028]-[0033], Table 2), 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 the composition includes at least one element selected from a group consisting of:
C: 0.40 to 0.60% (0.3 to 1.2) ([0014]),
Si: 3.00 to 4.00% (3.0 or less) ([0017], [0019]),
Mn: 1.30 to 1.80% (0.15 to 2.0) ([0015]),
Al: 0.70 to 1.20% (1.5 or less) ([0017], [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).
Regarding claim 3, Kochi discloses the composition includes at least one element selected from a group consisting of:
V: 0.01 to 0.15% (0.3 or less) ([0017], [0020]),
Ti: 0.05 to 0.25% (0.3 or less) ([0017], [0020]),
Nb: less than 0.15% (0.3 or less) ([0017], [0020]).
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 4, Kochi discloses the composition includes at least one element selected from a group consisting of:
Mo: less than 0.10% (2 or less) ([0017]-[0018]),
W: less than 0.10% (0) ([0013]-[0020]),
Ni: less than 0.05% (10 or less) ([0017]-[0018]),
Cu: less than 0.10% (1 or less) ([0017]-[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 5, Kochi discloses the composition includes Cr: 0.30 to 0.80% (3 or less) ([0017]-[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 comprising at least one ternary Al-Mn-Si intermetallic phase has been considered and determined to result from the claimed composition processed substantially similar to that disclosed by applicant (applicant’s specification [0038]-[0041]). The prior art discloses a martensitic steel (Kochi [0021]) with a composition that reads on that claimed (Kochi [0008]-[0009], [0013]-[0020]) processed substantially similarly by hardening, quenching, and tempering (Kochi [0028]-[0033], Table 2), such that one or more intermetallic phases comprising at least one ternary Al-Mn-Si intermetallic phase naturally flows from the disclosure of the prior art.
Regarding claim 7, the one or more intermetallic phases comprising one or more intermetallic phases of a group consisting of Al4Mn1Si2, Al4Mn1Si1, Al9Mn3Si1, Al2Mn2Si3, Al17Fe3.2Mn0.8Si2, α-Al8.36Mn2Si1.14, and α-Al4.01Mn1.0Si0.74 has been considered and determined to result from the claimed composition processed substantially similar to that disclosed by applicant (applicant’s specification [0038]-[0041]). The prior art discloses a martensitic steel (Kochi [0021]) with a composition that reads on that claimed (Kochi [0008]-[0009], [0013]-[0020]) processed substantially similarly by hardening, quenching, and tempering (Kochi [0028]-[0033], Table 2), such that one or more intermetallic phases comprising one or more intermetallic phases of the group consisting of Al4Mn1Si2, Al4Mn1Si1, Al9Mn3Si1, Al2Mn2Si3, Al17Fe3.2Mn0.8Si2, α-Al8.36Mn2Si1.14, and α-Al4.01Mn1.0Si0.74 naturally flows from the disclosure of the prior art.
Regarding claim 8, the martensitic steel being free of V- and/or Ti- and/or Nb-secondary hardening carbides has been considered and determined to result from the claimed composition processed substantially similar to that disclosed by applicant (applicant’s specification [0038]-[0041]). The prior art discloses a martensitic steel (Kochi [0021]) with a composition that reads on that claimed (Kochi [0008]-[0009], [0013]-[0020]) processed substantially similarly by hardening, quenching, and tempering (Kochi [0028]-[0033], Table 2), such that the steel being free of V- and/or Ti- and/or Nb-secondary hardening carbides 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 has been considered and determined to result from the claimed composition processed substantially similar to that disclosed by applicant (applicant’s specification [0038]-[0041]). The prior art discloses a martensitic steel (Kochi [0021]) with a composition that reads on that claimed (Kochi [0008]-[0009], [0013]-[0020]) processed substantially similarly by hardening, quenching, and tempering (Kochi [0028]-[0033], Table 2), such that the steel having an impact toughness equal to or higher than 120 J/cm2 naturally flows from the disclosure of the prior art.
Regarding claim 15, the martensitic steel being free of any secondary hardening carbide has been considered and determined to result from the claimed composition processed substantially similar to that disclosed by applicant (applicant’s specification [0038]-[0041]). The prior art discloses a martensitic steel (Kochi [0021]) with a composition that reads on that claimed (Kochi [0008]-[0009], [0013]-[0020]) processed substantially similarly by hardening, quenching, and tempering (Kochi [0028]-[0033], Table 2), such that the steel being free of any secondary hardening carbide naturally flows from the disclosure of the prior art.
Regarding claim 16, the one or more intermetallic phases comprises Al2Mn2Si3 has been considered and determined to result from the claimed composition processed substantially similar to that disclosed by applicant (applicant’s specification [0038]-[0041]). The prior art discloses a martensitic steel (Kochi [0021]) with a composition that reads on that claimed (Kochi [0008]-[0009], [0013]-[0020]) processed substantially similarly by hardening, quenching, and tempering (Kochi [0028]-[0033], Table 2), such that the one or more intermetallic phases comprises Al2Mn2Si3 naturally flows from the disclosure of the prior art.
Regarding claim 17, Kochi discloses
the martensitic steel is hardened (heated), quenched, and tempered ([0028]-[0033], Table 2),
a temperature at which the martensitic steel is tempered is in a range between 100°C and 600°C (300°C) ([0028]-[0033], Table 2).
A time duration that the martensitic steel is tempered is between 1 hour and 3 hours has been considered and determined to recite a product-by-process claim limitation. Determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. MPEP 2113(I).
The prior art discloses a martensitic steel ([0021]) with an overlapping composition ([0008]-[0009], [0013]-[0020]) that is hardened (heated), quenched, and tempered (Kochi [0028]-[0033], Table 2), such that the claimed product is rendered obvious.
Regarding claim 18, Kochi discloses the temperature is in a range between 100°C and 300°C (300°C) ([0028]-[0033], Table 2).
Claims 1-9 and 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Lyu (JP H07-228945 machine translation).
Regarding claim 1, Lyu discloses a martensitic steel ([0012], [0030], [0035]) with a composition that overlaps with that claimed ([0010]-[0011], [0014]-[0027]). 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”
Lyu (wt%)
Lyu
C
0.40 to 0.70
0.08 to 0.40
[0015]
Si
3.00 to 4.50
0.35 to 3.50
[0016]
Mn
1.20 to 2.50
1.50 to 7.00
[0017]
Al
0.40 to 1.50
0.02 to 3.00
[0020]
Cr
0.10 to 2.00
0.5 to 1.5
[0021]
V
0.01 to 0.40
0.10 to 0.50
[0026]
Ti
0.005 to 0.35
0.02 to 0.20
[0026]
Optionally one or more of
Nb
Less than 0.35
0.02 to 0.20
[0026]
Zr
Less than 0.35
-
-
Ta
Less than 0.35
-
-
P
Less than 0.25
≤ 0.020
[0018]
S
Less than 0.25
≤ 0.010
[0019]
Co
Less than 0.50
-
-
Mo
Less than 0.90
0.25 to 0.60
[0022]
W
Less than 0.90
-
-
Ni
Less than 0.50
0.5 to 2.5
[0023]
Cu
Less than 0.50
0.2 to 0.50
[0024]
N
Less than 0.050
-
-
Ca
Less than 0.10
0.0005 to 0.005
[0027]
Mg
Less than 0.10
0.0005 to 0.005
[0027]
Ce
Less than 0.10
-
-
La
Less than 0.10
-
-
B
Less than 0.10
0.001 to 0.0050
[0025]
Fe
Balance
Remainder
[0010]
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 processed substantially similar to that disclosed by applicant (applicant’s specification [0038]-[0041]). The prior art discloses a martensitic steel (Lyu [0012], [0030], [0035]) with a composition that renders obvious that claimed (Lyu [0010]-[0011], [0014]-[0027]) processed substantially similarly by hardening quenching, and tempering (Lyu [0028]-[0031]), 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, Lyu discloses the composition includes at least one element selected from a group consisting of:
C: 0.40 to 0.60% (0.08 to 0.40%) ([0015]),
Si: 3.00 to 4.00% (0.35 to 3.5%) ([0016]),
Mn: 1.30 to 1.80% (1.50 to 7.00) ([0017]),
Al: 0.70 to 1.20% (0.02 to 3.00) ([0020]).
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 3, Lyu discloses the composition includes at least one element selected from a group consisting of:
V: 0.01 to 0.15% (0.10 to 0.50) ([0026]),
Ti: 0.05 to 0.25% (0.02 to 0.20) ([0026]),
Nb: less than 0.15% (0.02 to 0.20) ([0026]).
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 4, Lyu discloses the composition includes at least one element selected from a group consisting of:
Mo: less than 0.10% (optional) ([0010]),
W: less than 0.10% (0%) ([0010]-[0011], [0014]-[0027]),
Ni: less than 0.05% (optional) ([0010]),
Cu: less than 0.10% (optional) ([0010]).
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 5, Lyu discloses the composition includes: Cr: 0.30 to 0.80% (0.5 to 1.5) ([0021]). 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 comprising at least one ternary Al-Mn-Si intermetallic phase has been considered and determined to result from the claimed composition processed substantially similar to that disclosed by applicant (applicant’s specification [0038]-[0041]). The prior art discloses a martensitic steel (Lyu [0012], [0030], [0035]) with a composition that reads on that claimed (Lyu [0010]-[0011], [0014]-[0027]) processed substantially similarly by hardening quenching, and tempering (Lyu [0028]-[0031]), such that one or more intermetallic phases comprising at least one ternary Al-Mn-Si intermetallic phase naturally flows from the disclosure of the prior art.
Regarding claim 7, the one or more intermetallic phases comprising one or more intermetallic phases of the group consisting of Al4Mn1Si2, Al4Mn1Si1, Al9Mn3Si1, Al2Mn2Si3, Al17Fe3.2Mn0.8Si2, α-Al8.36Mn2Si1.14, and α-Al4.01Mn1.0Si0.74 has been considered and determined to result from the claimed composition processed substantially similar to that disclosed by applicant (applicant’s specification [0038]-[0041]). The prior art discloses a martensitic steel (Lyu [0012], [0030], [0035]) with a composition that reads on that claimed (Lyu [0010]-[0011], [0014]-[0027]) processed substantially similarly by hardening quenching, and tempering (Lyu [0028]-[0031]), such that one or more intermetallic phases comprises one or more intermetallic phases of the group consisting of Al4Mn1Si2, Al4Mn1Si1, Al9Mn3Si1, Al2Mn2Si3, Al17Fe3.2Mn0.8Si2, α-Al8.36Mn2Si1.14, and α-Al4.01Mn1.0Si0.74 naturally flows from the disclosure of the prior art.
Regarding claim 8, Lyu discloses the steel being free of V- and/or Ti- and/or Nb-secondary hardening carbides (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, Lyu discloses high toughness ([0007]-[0009], [0013], [0030], [0025]). The steel having an impact toughness equal to or higher than 120 J/cm2 has been considered and determined to result from the claimed composition processed substantially similar to that disclosed by applicant (applicant’s specification [0038]-[0041]). The prior art discloses a martensitic steel ([0012], [0030], [0035]) with a composition that renders obvious that claimed (LV [0010]-[0011], [0014]-[0027]) processed substantially similarly by hardening quenching, and tempering (Lyu [0028]-[0031]), such that the steel having an impact toughness equal to or higher than 120 J/cm2 naturally flows from the disclosure of the prior art.
Regarding claim 15, Lyu discloses the martensitic steel is 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 16, the one or more intermetallic phases comprises Al2Mn2Si3 has been considered and determined to result from the claimed composition processed substantially similar to that disclosed by applicant (applicant’s specification [0038]-[0041]). The prior art discloses a martensitic steel (Lyu [0012], [0030], [0035]) with a composition that reads on that claimed (Lyu [0010]-[0011], [0014]-[0027]) processed substantially similarly by hardening quenching, and tempering (Lyu [0028]-[0031]), such that the one or more intermetallic phases comprises Al2Mn2Si3 naturally flows from the disclosure of the prior art.
Regarding claim 17, Lyu discloses
the martensitic steel is hardened (rapid heating), quenched (rapid cooling), and tempered (reheated) ([0028]-[0032]),
a temperature at which the martensitic steel is tempered is in a range between 100°C and 600°C (not exceed 100 degrees of Mf point) ([0028], [0035] Table 2).
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).
A time duration that the martensitic steel is tempered is between 1 hour and 3 hours has been considered and determined to recite a product-by-process claim limitation. Determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. MPEP 2113(I).
The prior art discloses a martensitic steel ([0012], [0030], [0035]) with an overlapping composition ([0010]-[0011], [0014]-[0027]) that is hardened (rapidly heated), quenched (rapidly cooled), and tempered (reheated) (Lyu [0028]-[0032]), such that the claimed product is rendered obvious.
Regarding claim 18, Lyu discloses the temperature is in a range between 100°C and 300°C (not exceed 100 degrees of Mf point) ([0028], [0035] Table 2). 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).
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 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.
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/STEPHANI HILL/Examiner, Art Unit 1735
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