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
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 1-6 and 11-14, drawn to a steel for a high-temperature carburized gear shift.
Group II, claims 7-10, drawn to a manufacturing method for the steel for a high-temperature carburized gear shift.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of the steel composition of claim 1, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Tatsuro et al. (JP 2001279383A, hereinafter “Tatsuro”).
Tatsuro teaches a steel for high-temperature carburizing a hot forged member comprising the following composition (Tatsuro, [0020], [0025-00401], and Table 1):
Element
Present Invention, mass%
Tatsuro, mass%
Tatsuro, Steel B
C
0.17-0.22
0.1-0.5
0.21
Si
0.05-0.35
0.01-2.3
0.05
Mn
0.8-1.4
0.3-1.8
0.8
S
0.01-0.035
0.001-0.15
0.015
Cr
0.8-1.4
0.01-2.0
1.06
Al
0.020-0.046
0.015-0.05
0.030
N
0.006-0.020
0.006-0.02
0.0180
Nb
0.002-0.030
0.005-0.05
0.027
V
0.02 or less
0.01 or less
0.0018
Ti
0.01 or less
0.01 or less
0.0020
Balance
Fe and impurities
Fe and impurities
Fe
The composition of Steel B of Tatsuro falls within the ranges of claim 1 of the present invention. Therefore, since the limitation fails to define a contribution over Tatsuro, it fails to constitute a special technical feature and hence there is a lack of unity between the cited claims.
During a telephone conversation with Alex Smolenski on 1/15/2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-6 and 11-14. Affirmation of this election must be made by applicant in replying to this Office action. Claims 7-10 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Rejections - 35 USC § 102(a)(1)
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-2, 4-6, 11, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tatsuro et al. (JP 2001279383A, hereinafter “Tatsuro”).
The Examiner is providing a machine translation of Tatsuro.
Regarding claims 1 and 2, Tatsuro teaches a steel for high-temperature carburizing a hot forged member comprising the following composition (Tatsuro, [0020], [0025-00401], and Table 1):
Element
Present Invention, mass%
Tatsuro, mass%
Tatsuro, Steel B
Tatsuro, Steel D
C
0.17-0.22
0.1-0.5
0.21
0.20
Si
0.05-0.35
0.01-2.3
0.05
0.27
Mn
0.8-1.4
0.3-1.8
0.8
0.82
S
0.01-0.035
0.001-0.15
0.015
0.018
Cr
0.8-1.4
0.01-2.0
1.06
1.10
Al
0.020-0.046
0.015-0.05
0.030
0.027
N
0.006-0.020
0.006-0.02
0.0180
0.0165
Nb
0.002-0.030
0.005-0.05
0.027
0.027
V
0.02 or less
0.01 or less
0.0018
<0.001
Ti
0.01 or less
0.01 or less
0.0020
<0.001
Balance
Fe and impurities
Fe and impurities
Fe
Fe
The composition of Steel B and Steel D of Tatsuro fall within the ranges of claims 1 and 2 of the present invention.
Regarding claims 4 and 11, Tatsuro teaches the steel further comprises (Tatsuro, [0020] and Table 1):
Element
Present Invention, mass%
Tatsuro, mass%
Tatsuro, Steel B
P
0.015 or less
0.025 or less
0.013
O
0.0020 or less
0.0025 or less
0.0013
H
0.0002 or less
0
0
B
0.0010 or less
0.001 or less
<0.0003
Ca
0.003 or less
0
0
The composition of Steel B, falls within the ranges of claims 4 and 11.
Regarding claim 5, Tatsuro teaches Steel B, which falls within the ranges of the present invention and has a microalloying element coefficient of approximately 2.27, i.e., (20×0.027/93-0.0018/51+0.030/27) / (0.0180/14+0.21/120) = 2.27, which falls within the claimed range.
Regarding claims 6 and 13, Tatsuro further teaches the steel is manufactured by melting and casting steel bars, hot rolling at a heating temperature of 1080-1280°C with a finishing temperature of 920-1000°C, and carburized at 1050°C for 3 hours (Tatsuro, [0044] and [0052]; Specification, pg. 12, lines 20-23, pg. 15, lines 13-18 and pg. 16, lines 9-14). Given the composition and method of making the steel of Tatsuro are substantially identical to the composition and method of making the carburized gear shaft as used in the present invention, as set forth above, it is clear that the steel of Tatsuro would inherently have a hardenability of 30-43 HRC at a representative position J9mm and maintain 5-8 grades of an austenite grain size before and after high-temperature vacuum carburizing as presently claimed.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Claims 1-3, 5-6, and 13-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al. (KR 20050095070A, hereinafter “Kim”).
The Examiner is providing a machine translation of Kim.
Regarding claims 1 and 2, Kim teaches high-temperature carburizing steel comprising the following composition (Kim, [0003-0005] and Table 1):
Element
Present Invention, mass%
Kim, wt.%
Kim, Steel A
C
0.17-0.22
0.1-0.3
0.22
Si
0.05-0.35
0.1-0.4
0.15
Mn
0.8-1.4
0.5-1.0
0.88
S
0.01-0.035
0.03 or less
0.013
Cr
0.8-1.4
0.8-1.3
1.22
Al
0.020-0.046
0.01-0.04
0.035
N
0.006-0.020
100-200 ppm
i.e., 0.01-0.02
0.0101 (101 ppm)
Nb
0.002-0.030
0.010-0.040
0.026
V
0.02 or less
0
0
Ti
0.01 or less
50 ppm or less
i.e., 0.005 or less
0.003 (30 ppm)
Balance
Fe and impurities
Fe and impurities
Fe
The composition of Steel A of Kim falls within the ranges of claims 1 and 2 of the present invention.
Regarding claim 3, Kim teaches the following additional elements can be included in the steel (Kim, [0003-0005] and Table 1):
Element
Present Invention, mass%
Kim, wt.%
Kim, Steel A
Ni
0.25 or less
0.30 or less
0.20
Mo
0.10 or less
0.10 or less
0.05
Cu
0.20 or less
0
0
The amounts of Ni, Mo, and Cu fall within the additional elemental ranges of claim 3.
Regarding claim 5, Kim teaches Steel A, which falls within the ranges of the present invention and has a microalloying element coefficient of approximately 2.70, i.e., (20×0.026/93-0/51+0.035/27) / (0.0101/14+0.22/120) = 2.70, which falls within the claimed range.
Regarding claims 6, 13, and 14, Kim further teaches the hardness of Steel A at J5/J11 HRC is 45.1-33.1 (Kim, Table 2). Given the composition and hardness of the steel A of Kim are substantially identical to the composition and hardness of the carburized gear shaft as used in the present invention, as set forth above, it is clear that the steel of Kim would inherently have a hardenability of 30-43 HRC at a representative position J9mm and maintain 5-8 grades of an austenite grain size before and after high-temperature vacuum carburizing as presently claimed.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 3, 12, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Tatsuro et al. (JP 2001279383A, hereinafter “Tatsuro”).
Regarding claim 3, Tatsuro teaches the following additional elements can be included in the steel (Tatsuro, [0020] and Table 1):
Element
Present Invention, mass%
Tatsuro, mass%
Overlap
Ni
0.25 or less
0.01-3.5
0.01-0.25
Mo
0.10 or less
0.005-1.0
0.005-0.1
Cu
0.20 or less
0
0
The ranges of Tatsuro overlap with the ranges of claim 3. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fe. Cir. 1990).
Regarding claim 12, Tatsuro teaches the steel further comprises (Tatsuro, [0020] and Table 1):
Element
Present Invention, mass%
Tatsuro, mass%
Tatsuro, Steel B
P
0.015 or less
0.025 or less
0.013
O
0.0020 or less
0.0025 or less
0.0013
H
0.0002 or less
0
0
B
0.0010 or less
0.001 or less
<0.0003
Ca
0.003 or less
0
0
The composition of Steel B, falls within the ranges of claim 12.
Regarding claim 14, Tatsuro further teaches the steel is manufactured by melting and casting steel bars, hot rolling at a heating temperature of 1080-1280°C with a finishing temperature of 920-1000°C, and carburized at 1050°C for 3 hours (Tatsuro, [0044] and [0052]; Specification, pg. 12, lines 20-23, pg. 15, lines 13-18 and pg. 16, lines 9-14). Given the composition and method of making the steel of Tatsuro are substantially identical to the composition and method of making the carburized gear shaft as used in the present invention, as set forth above, it is clear that the steel of Tatsuro would inherently have a hardenability of 30-43 HRC at a representative position J9mm and maintain 5-8 grades of an austenite grain size before and after high-temperature vacuum carburizing as presently claimed.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Claims 4 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (KR 20050095070A, hereinafter “Kim”).
Regarding claims 4, 11, and 12, Kim teaches the steel further comprises (Kim, [0003-0005]):
Element
Present Invention, mass%
Kim, wt.%
Overlap
P
0.015 or less
0.030 or less
Encompass
O
0.0020 or less
30 ppm or less
i.e., 0.003 or less
Encompass
H
0.0002 or less
0
0
B
0.0010 or less
10-50 ppm
i.e., 0.001-0.005
0.001
Ca
0.003 or less
0
0
The ranges of Kim overlap or encompass the ranges of claims 4, 11, and 12. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fe. Cir. 1990).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIELLE CARDA whose telephone number is (571)270-1240. The examiner can normally be reached Monday-Friday 8:30-4:00 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIELLE M. CARDA/Primary Examiner, Art Unit 1738