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 1-8 are pending wherein claims 1-6 are amended and claim 8 is new.
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 1-8 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”, “when subjected to carbonitriding”, and “providing a carbonitrided steel material having a hardness of 560 HV or more at a portion from a surface thereof to a depth of 0.05 mm when subjected to a tempering treatment at 500°C after the carbonitriding” in claim 1, the recitations “for carbonitriding treatment” and “when subjected to carbonitriding” suggest that the carbonitriding step is optional whereas “providing a carbonitrided steel material […]” is not a recitation that indicates carbonitriding is optional, but rather required and thus it is unclear if what is being claimed is merely the steel composition or a carbonitrided steel composition.
With respect to the recitation “for carbonitriding treatment” and “providing, by performing the carbonitriding a carbonitrided steel material” 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.
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 8, 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.
Examiner Interpretation
In view of the indefiniteness set forth in claim 1, the Examiner has given claim 1 the broadest reasonable interpretation and that is that it is merely drawn to a steel alloy composition upon which may be subjected to further processing.
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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Shuto et al. (CN 106661689 A).
In regard to claim 1, Shuto et al. (CN ‘689) discloses steel alloys having compositions relative to that of the instant invention as set forth below (page 5 of Translation).
Element
Instant Claim
(mass percent)
Shuto et al. (CN ‘689)
(mass percent)
Overlap
C
0.1 – 0.3
0.03 – 0.2
0.1 – 0.2
Si + Al
0.01 – 0.38
0.2 – 3
0.2 – 0.38
Mn
0.4 – 2.0
0.1 – 3
0.4 – 2
P
0 – 0.03
0 – 0.10
0 – 0.03
S
0 – 0.03
0 – 0.03
0 – 0.03
Cu
0 – 0.3
0 – 2.0
0 – 0.3
Ni
0 – 2.5
0 – 2
0 – 2
Cr
0.5 – 3
0 – 2
0.5 – 2
Mo
0.001 – 1
0 – 1
0.001 – 1
N
0.005 – 0.03
more than 0 – 0.01
0.005 – 0.01
Ti
0 – 0.05
0 – 0.3
0 – 0.05
Nb
0.001 – 0.08
0 – 0.3
0.001 – 0.08
B
0.0005 – 0.003
0 – 0.01
0.0005 – 0.003
Fe
Balance
Balance
Balance
The Examiner notes that the amounts of carbon, silicon, aluminum, manganese, phosphorus, sulfur, copper, nickel, chromium, molybdenum, nitrogen, titanium, niobium and boron for the steel based alloys disclosed by Shuto et al. (CN ‘689) overlap the ranges of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to select the claimed amounts of carbon, silicon, aluminum, manganese, phosphorus, sulfur, copper, nickel, chromium, molybdenum, nitrogen, titanium, niobium and boron from the amounts disclosed by Shuto et al. (CN ‘689) because Shuto et al. (CN ‘689) discloses the same utility throughout the disclosed ranges.
With respect to the recitation “for carbonitriding treatment” in claim 1, the Examiner considers this an intended use that would not further limit the structure of the steel. MPEP 2111.02 II.
With respect to the recitation “consisting of” Shuto et al. (CN ‘689) does not require the presence of any elements beyond what is set forth in the claims are normal impurity elements. MPEP 2111.03.
With respect to the recitation “satisfying the following Expression 1 of 0.6 to 1.4 and Expression 2 of >560 when subjected to carbonitriding, Expression 1: Surface C concentration (mass %) +12/14 x Surface N concentration (mass%), Expression 2: 129.7805 x [Cr (mass%)] – 76.9797 x [Cr (mass%)]2 + 339.3375 x [Surface N concentration (mass%)] – 539.345 x [Surface N concentration (mass%)]2 + 181.4983 x [Cr (mass%)] x [Surface N concentration (mass%)] + 437.6799, and providing a carbonitrided steel material having a hardness of 560 HV or more at a portion from a surface thereof to a depth of 0.05 mm when subjected to a tempering treatment at 500°C after the carbonitriding” in claim 1, the Examiner considers this recitation to be optional language since it is unclear if Applicant is claimed a carbonitrided steel or merely a steel intended for carbonitriding.
In regard to claim 2, Shuto et al. (CN ‘689) discloses 0 to 0.3 mass percent niobium, 0 to 0.3 mass percent titanium, and 0 to 0.01 mass percent boron (page 5 of Translation).
In regard to claim 3, Shuto et al. (CN ‘689) discloses steel alloys having compositions relative to that of the instant invention as set forth below (page 5 of Translation).
Element
Instant Claim
(mass percent)
Shuto et al. (CN ‘689)
(mass percent)
Overlap
C
0.15 – 0.25
0.03 – 0.2
0.15 – 0.2
Si + Al
0.03 – 0.29
0.2 – 3
0.2 – 0.29
Mn
0.5 – 1.8
0.1 – 3
0.5 – 1.8
P
0 – 0.03
0 – 0.10
0 – 0.03
S
0 – 0.03
0 – 0.03
0 – 0.03
Cu
0.001 – 0.3
0 – 2.0
0.001 – 0.3
Ni
0.01 – 0.6
0 – 2
0.01 – 0.6
Cr
0.6 – 1.8
0 – 2
0.6 – 1.8
Mo
0.01 – 0.8
0 – 1
0.01 – 0.8
N
0.01 – 0.025
more than 0 – 0.01
0.01
Ti
0.012 – 0.04
0 – 0.3
0.012 – 0.04
Nb
0.0015 – 0.06
0 – 0.3
0.0015 – 0.06
B
0.0006 – 0.0025
0 – 0.01
0.0006 – 0.0025
Fe
Balance
Balance
Balance
The Examiner notes that the amounts of carbon, silicon, aluminum, manganese, phosphorus, sulfur, copper, nickel, chromium, molybdenum, nitrogen, titanium, niobium and boron for the steel based alloys disclosed by Shuto et al. (CN ‘689) overlap the ranges of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to select the claimed amounts of carbon, silicon, aluminum, manganese, phosphorus, sulfur, copper, nickel, chromium, molybdenum, nitrogen, titanium, niobium and boron from the amounts disclosed by Shuto et al. (CN ‘689) because Shuto et al. (CN ‘689) discloses the same utility throughout the disclosed ranges.
With respect to the recitation “providing, by performing the carbonitriding, a carbonitrided steel material that satisfies the following Expression 1 being 0.7 to 1.2: Expression 1: Surface C concentration (mass%) + 12/14 x Surface N concentration (mass%)” in claim 3, the Examiner considers this recitation to be optional language since it is unclear if Applicant is claimed a carbonitrided steel or merely a steel intended for carbonitriding.
In regard to claim 4, Shuto et al. (CN ‘689) discloses 0 to 2 mass percent copper, which encompasses the range of the instant invention (page 5 of Translation).
In regard to claim 5, Shuto et al. (CN ‘689) discloses 0.2 to 3.0 mass percent of silicon plus aluminum and this would include the range of silicon claimed (page 5 of Translation).
In regard to claim 6, Shuto et al. (CN ‘689) discloses 0 to 2 mass percent copper, which encompasses the range of the instant invention (page 5 of Translation).
Claims 1-2, 5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Kinami et al. (US 2004/0094238).
In regard to claim 1, Kinami et al. (‘238) discloses steel alloys having compositions relative to that of the instant invention as set forth below (abstract and [0010-0029]).
Element
Instant Claim
(mass percent)
Kinami et al. (‘238)
(weight percent)
Overlap
C
0.1 – 0.3
0.10 – 0.35
0.1 – 0.3
Si
0 – 0.3
less than 0.5
0 – 0.3
Mn
0.2 – 1.5
0.1 – 3
0.2 – 1.5
P
0 – 0.03
0 – 0.03
0 – 0.03
S
0 – 0.03
0 – 0.03
0 – 0.03
Cu
0 – 0.3
0
0
Ni
0 – 2.5
2 – 3
2 – 2.5
Cr
0.5 – 3
1 – 2
1 – 2
Mo
0.001 – 1
0.3 – 1
0.3 – 1
Al
0.01 – 0.08
0.005 – 0.05
0.01 – 0.05
N
0.005 – 0.03
0 – 0.025
0.005 – 0.025
Ti
0 – 0.05
0 – 0.003
0 – 0.003
Nb
0.001 – 0.08
0 – 0.1
0.001 – 0.08
Fe
Balance
Balance
Balance
The Examiner notes that the amounts of carbon, silicon, aluminum, manganese, phosphorus, sulfur, copper, nickel, chromium, molybdenum, nitrogen, titanium, and niobium for the steel based alloys disclosed by Kinami et al. (‘238) the ranges of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to select the claimed amounts of carbon, silicon, aluminum, manganese, phosphorus, sulfur, copper, nickel, chromium, molybdenum, nitrogen, titanium, and niobium from the amounts disclosed by Kinami et al. (‘238) because Kinami et al. (‘238) discloses the same utility throughout the disclosed ranges.
With respect to the recitation “for carbonitriding treatment” in claim 1, the Examiner considers this an intended use that would not further limit the structure of the steel. MPEP 2111.02 II.
With respect to the recitation “consisting of” in claim 1, Kinami et al. (‘238) does not require the presence of any elements beyond what is set forth in the claims are normal impurity elements. MPEP 2111.03.
With respect to the recitation “satisfying the following Expression 1 of 0.6 to 1.4 and Expression 2 of >560 when subjected to carbonitriding, Expression 1: Surface C concentration (mass %) +12/14 x Surface N concentration (mass%), Expression 2: 129.7805 x [Cr (mass%)] – 76.9797 x [Cr (mass%)]2 + 339.3375 x [Surface N concentration (mass%)] – 539.345 x [Surface N concentration (mass%)]2 + 181.4983 x [Cr (mass%)] x [Surface N concentration (mass%)] + 437.6799, and providing a carbonitrided steel material having a hardness of 560 HV or more at a portion from a surface thereof to a depth of 0.05 mm when subjected to a tempering treatment at 500°C after the carbonitriding” in claim 1, the Examiner considers this recitation to be optional language since it is unclear if Applicant is claimed a carbonitrided steel or merely a steel intended for carbonitriding. Additionally, the Examiner Kinami et al. (‘289) discloses carbonitriding (abstract and [0008]).
In regard to claim 2, Kinami et al. (‘289) 0 to 0.003 weight percent titanium and 0 to 0.1 weight percent niobium (abstract, [0020] and [0025]).
In regard to claim 5, Kinami et al. (‘289) discloses less than 0.5 weight percent silicon (abstract and [0012]).
In regard to claim 7, Kinami et al. (‘289) discloses carbonitriding the steel material and wherein the hardness would be 750 Hv (abstract and [0123]).
Allowable Subject Matter
Claim 8 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
In regard to claim 8, Shuto et al. (CN ‘689) fails to specify wherein the carbonitrided steel material has a surface carbon concentration of 0.4 to 0.7 and a surface nitrogen concentration of 0.36 to 0.8.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-8 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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/JESSEE R ROE/Primary Examiner, Art Unit 1759
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