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 .
Status of the Claims
Claims 1-7 are pending wherein claims 1 and 3 are amended and claim 8 is canceled.
Status of Previous Rejections
The previous rejection of claims 1-6 under 35 U.S.C. 103 as being unpatentable over Shuto et al. (CN 106661689 A) is withdraw in view of the Applicant’s amendment to claim 1. The previous rejection of claims 1-2, 5 and 7 under 35 U.S.C. 103 as being unpatenable over Kinami et al. (US 2004/0094238) is withdrawn in view of the Applicant’s amendment to claim 1.
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 1-7 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.
With respect to the recitations “for carbonitriding treatment”, “wherein a carbonitrided steel material obtained by subjecting the steel material to carbonitriding satisfies […]”, and “wherein a carbonitrided and tempered steel material obtained by subjecting the steel material to carbonitriding and subsequently tempering at 500°C ” in claim 1, the recitation “for carbonitriding treatment” and suggest that the carbonitriding step is optional whereas “a carbonitrided steel material obtained by subjecting the steel material to carbonitriding satisfies […]” and “wherein a carbonitrided and tempered steel material obtained by subjecting the steel material to carbonitriding and subsequently tempering at 500°C ” are not recitations that indicate carbonitriding is optional, but rather required and in addition to that tempering and thus it is unclear if what is being claimed is merely the steel composition; a steel composition that has been only carbonitrided; or a carbonitrided and tempered steel composition.
With respect to the recitation “The steel material for carbonitriding treatment according to claim 1, wherein the carbonitrided steel material has a surface C concentration of 0.4-0.7 mass% and a surface N concentration is 0.36-0.8 mass%” in claim 1, since both “for carbonitriding treatment” and “carbonitrided steel” are present in the same claim, it is unclear if merely a steel is required or if a carbonitrided steel is required.
With respect to the recitation “for carbonitriding treatment” and “wherein a carbonitrided steel material obtained by subjecting the steel material to carbonitriding satisfies […]” in claim 3, since both recitations are present in the same claim it is unclear if the claim merely requires a steel composition or if the claim requires a carbonitrided steel composition.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2-7 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
In regard to claims 2-7, if claim 1 is deemed to require carbontriding and tempering, then claims 2-7 would fail to further limit it since the claims do not require that the steel be carbonitrided and tempered. Claims 2-6 appear to not even require any carbonitriding be conducted. Claim 7, for instance, recites “when subjected to a tempering treatment at 500°C” which would be optional language. MPEP 2111.04.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Response to Arguments
Applicant's arguments filed October 2, 2026 have been fully considered but they are not persuasive.
First, the Applicant primarily argues that claim 1 retains the preamble “[a] steel material for carbonitriding treatment” which the Examiner has properly construed as directed to the steel alloy composition prior to any carbonitriding and the Expression 1/Expression2 and hardness limitations have been recast as “wherein” clauses that expressly and consistently identify properties as characteristics of “carbonitrided steel material obtained by subjecting the steel material to carbonitriding” and, for the hardness limitation “a carbonitrided and tempered material obtained by subjecting the steel material to carbonitriding and subsequently tempering at 500°C” this language removes the conflicting optional/mandatory signals identified by the Examiner and instead defines the claimed steel material by a definite compositional/structural capability. The Applicant further argues that claim 3 has been amended in a parallel fashion.
In response, the Examiner notes that the recitation “for carbonitriding treatment” and suggest that the carbonitriding step is optional whereas “a carbonitrided steel material obtained by subjecting the steel material to carbonitriding satisfies […]” and “wherein a carbonitrided and tempered steel material obtained by subjecting the steel material to carbonitriding and subsequently tempering at 500°C ” are not recitations that indicate carbonitriding is optional, but rather required and in addition to that tempering and thus it is unclear if what is being claimed is merely the steel composition; a steel composition that has been only carbonitrided; or a carbonitrided and tempered steel composition. Thus, the scope of the claims are indefinite.
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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/JESSEE R ROE/Primary Examiner, Art Unit 1759
