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 1-11 in the reply filed on 19 February 2026 is acknowledged.
Claims 12-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 19 February 2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings were received on 5 October 2023. These drawings are accepted.
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) 1-11 is/are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by US 20110091348 A1 (hereinafter “Hatano”).
Regarding claim 1, Hatano teaches a steel for heat treatment (see title). Hatano teaches that the steel has a fine microstructure when it is heat treated (see Solution to Problem). Hatano teaches that the steel has a composition which overlaps the claimed compositional ranges (see Solution to Problem). Hatano teaches that the steel has a grain size of 10 µm or less before heat treatment and 5 µm or less after heat treatment (see [0041]-[0044]). Hatano teaches that the grain size is determined by measuring the sizes when a grain boundary angle is set at 15 degrees by an electron backscatter method (see [0042]-[0043]).
More specifically, Hatano teaches examples of the steel at [0082]-[0096] and Tables 1-2. Hatano teaches that the steel is quenched (see [0084]). One such example Is Example 17, having 0.40% C, 0.98% Si, and 0.99% Mn, with 0.45% Cr (see Table 1). The composition of Example 17 falls entirely within the specified ranges, anticipating the entire ranges. Applicant is directed or MPEP 2131.03.
Hatano teaches that after Hot rolling, the steel has a grain size of 2.5 µm (see Table 2). The grain size of Example 17 falls within the specified range, anticipating the entire range. Applicant is directed or MPEP 2131.03. Thus Hatano teaches a heat treated steel (title, Table 2), with the same composition (Table 1), and the same grain size (Table 2) claimed.
Regarding claim 2, Hatano does not describe what is a ratio of a grain size of a steel in a surface to that of a center portion. Hatano is completely silent as to there being a difference in the surface microstructure to that of an interior. However Hatano teaches the steel having the same composition is quenched, yielding the same property of the grain size, when measured in the same way. The properties not disclosed by the prior art would have been present inherently. Applicant is directed to MPEP 2112.
Regarding claim 3, Hatano is applied to the claim as stated above in the rejection of claim 1.
Hatano does not describe what is a ratio of a grain size of a steel when measured at a grain angle of 5 degrees, compared with that of the steel when measured at a grain angle of 15 degrees. Hatano is completely silent as measuring the grain size when a mismatch is set at 5 degrees. However Hatano teaches the steel having the same composition is quenched, yielding the same property of the grain size, when measured in the same way. The properties not disclosed by the prior art would have been present inherently. Applicant is directed to MPEP 2112.
Regarding claim 4, Hatano is applied to the claim as stated above in the rejection of claim 1.
Hatano does not describe what is a ratio of a grain size of a steel when measured at a grain angle of 2 degrees, compared with that of the steel when measured at a grain angle of 15 degrees. Hatano is completely silent as measuring the grain size when a mismatch is set at 2 degrees. However Hatano teaches the steel having the same composition is quenched, yielding the same property of the grain size, when measured in the same way. The properties not disclosed by the prior art would have been present inherently. Applicant is directed to MPEP 2112.
Regarding claim 5, Hatano is applied to the claim as stated above in the rejection of claim 1.
Hatano does not describe what is GOS value at grain boundary setting of 15 degrees. Hatano is completely silent as to measuring a GOS value. However Hatano teaches the steel having the same composition is quenched, yielding the same property of the grain size, when measured in the same way. The properties not disclosed by the prior art would have been present inherently. Applicant is directed to MPEP 2112.
Regarding claim 6, Hatano is applied to the claim as stated above in the rejection of claim 1.
Hatano does not describe what is a frequency of a GOS value at an angle in a range of 0-10 degrees at grain boundary setting of 15 degrees. Hatano is completely silent as to measuring a GOS value. However Hatano teaches the steel having the same composition is quenched, yielding the same property of the grain size, when measured in the same way. The properties not disclosed by the prior art would have been present inherently. Applicant is directed to MPEP 2112.
Regarding claims 7-9, Hatano is applied to the claim as stated above in the rejection of claim 1.
Hatano teaches that fine ferrite is generates (See [0077]-[0079]). Hatano teches that fine cementite is generated (See [0056] and [0077]-[0079]). Hatano teaches that the heat treatment may generate pearlite (see [0077]-[0079]). Hatano teaches the steel having the same composition is quenched, yielding the same property of the grain size, when measured in the same way. The properties not disclosed by the prior art would have been present inherently. Applicant is directed to MPEP 2112.
Regarding claim 10, Hatano is applied to the claim as stated above in the rejection of claim 1.
Hatano teaches that the heat treatment may generate pearlite (see [0077]-[0079]). Hatano teaches the steel having the same composition is quenched, yielding the same property of the grain size, when measured in the same way. The properties not disclosed by the prior art would have been present inherently. Applicant is directed to MPEP 2112.
Regarding claim 11, Hatano is applied to the claim as stated above in the rejection of claim 1.
The claim is a product-by-process claim. "[E]ven though product-by-process claims are limited by and defined by the process, 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." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Hatano teaches the steel having the same composition is quenched, yielding the same property of the grain size, when measured in the same way. The properties not disclosed by the prior art would have been present inherently. Applicant is directed to MPEP 2112.
Claim(s) 1-11 is/are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by US 20160273067 A1 (hereinafter “Monden”).
Regarding claim 1, Monden teaches a steel bar (See title). Monden etches that a composition overlaps the claimed composition (See [0015]). Monden teaches that a grain size of the center portion of the steel includes a grain size of 1.0-10.0 µm at a surface of the steel bar, with a grain size of 1.0-15.0 µm at a center of the bar, when the grain size be measured using a grain orientation mismatch of 15 degrees or more as a grain boundary (see [0015]).
Monden teaches Example 1 having 0.45% C, 0.20% Si, 0.85% Mn, and no Cr (See Table 1-1). The composition of Example 1 falls entirely within the specified ranges, anticipating the entire ranges. Applicant is directed or MPEP 2131.03.
Monden teaches the steel is heat treated (Table 2-1). Monden teaches that this steel has a grain size of 5.7 µm in a surface area (see Table 2-4). The grain size of Example 1 falls entirely within the specified range, anticipating the entire ranges. Applicant is directed or MPEP 2131.03.
Monden teaches other Examples also, such as Comparative Example 34, having 0.45% C, 0.23% Si, 0.77% Mn (see Table 1-2). The composition of Comparative Example 34 falls entirely within the specified ranges, anticipating the entire ranges. Monden teaches the steel is heat treated (Table 2-2). Monden teaches that this steel has a grain size of 8.1 µm in a surface portion and 11.2 µm in a center portion (see Table 2-5). The grain size of Comparative Example 34 falls entirely within the specified range, anticipating the entire ranges. Applicant is directed or MPEP 2131.03.
Regarding claim 2, Monden teaches that Comparative Example 34 has a grain size of 8.1 µm in a surface area and 11.2 µm in a center portion (see Table 2-5). Thus the ratio of a grain size at surface to that at center is 8.1/11.2 = 0.72. This value falls in the range claimed, anticipating the entire range.
Regarding claims 3-11, Monden is applied to the claims a stated above. Monden does not teach the claimed properties in any example. Monden does not measure the claimed properties.
The steels of Monden are heat treated, and have the same composition as claimed, and have the same properties of grain size as claimed when measured in the same way. The properties not disclosed by the prior art would have been inherently present. Applicant is directed to MPEP 2112.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 5,458,699 teaches a method of manufacturing a steel wire having composition similar to that claimed is immersed in lead bath after heat treating. US 5,458,699 also anticipates the claimed invention. US 20090095383 A1 teaches a steel having a fine grain in a surface layer.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER S KESSLER whose telephone number is (571)272-6510. The examiner can normally be reached 9-5:30.
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CHRISTOPHER S. KESSLER
Primary Examiner
Art Unit 1734
/CHRISTOPHER S KESSLER/Examiner, Art Unit 1759
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