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 .
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/02/2025 has been entered.
Status of the Claims
Claims 1-4 and are amended; claims 1-8 remain for examination, wherein claims 1 and 3 are independent claims.
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 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.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fujii (CN 1445379 A, with on-line translation, thereafter CN’379) in view of Nakano (CN 105960475 A, with on-line translation, thereafter CN’475).
Regarding claims 1-8, CN’379 teaches a hot work tool steel for hot work tool application (Abstract and working examples of CN’379), which reads on the claimed hot-work tool steel for hot work tool as recited in the instant claims. The comparison between the #working example in table 9 of CN’379 and those disclosed in the instant claims are listed in the following table. All of the essential alloy composition disclosed in the #working example in table 9 of CN’379 are within the claimed alloy composition ranges. The calculated values form working example in table 9 of CN’379 according to formula 2 is also within the range of formula 2. CN’379 specify applying 2.0wt% Ni or less in order to improve the hardenability (page 9/26, first paragraph of CN’379), adjusting amount of Mo + 1/2W in range 0.3-5wt% in the alloy in order to wear resistance of the alloy (page 7/26, lns.16-22 of CN’379), adjusting Cr range from 3.5 to 6.5 (Page 7/26, lns.10-15 of CN’379); and adjusting Si range 0.02-2.00wt% (preferring 0.15-0.60wt%) in order improve the alloy’s property (Page 9/26, lns.15-20 of CN’379). Overlapping composition ranges of Ni, Cr, Si, and Mo + 1/2W creates prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the amount of Ni, Cr, Si, and (Mo+1/2W) from the disclosing of CN’379 for the hot working tool steel since CN’379 teaches the same hot working tool steel throughout the whole disclosing range. It is noted that the calculated values form working example in table 9 of CN’379 according to formula 1 is outside the claimed A value as recited in the instant claims 1, 3, and 5-6. However, the claimed formula for value A is recognized as an equation fully depend on claimed alloy composition ranges of Si, Mn, Ni, Cr, Mo, W, and V. It is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art. In re Cooper and Foley 1943 C.D.357, 553 O.G.177; 57 USPQ 117, Taklatwalla v. Marburg. 620 O.G.685, 1949 C.D.77, and In re Pilling, 403 O.G.513, 44 F(2) 878, 1931 C.D.75. In the instant case, in the absence of evidence to the contrary, the selection of the proportions of Si, Mn, Ni, Cr, Mo, W, and V from CN’379 in order to meet the claimed equation would appear to require no more than routine investigation by those ordinary skilled in the art. In re Austin, et al., 149 USPQ 685, 688. Actually, the calculated values form working example in table 9 of CN’379 according to formula 1 is about 6.79, which is considered as close to the low limit of claimed value A range of 7 or more. Closing in A value ranges creates prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the alloy composition ranges from the disclosing of CN’379 for the hot working tool steel since CN’379 teaches the same hot working tool steel throughout the whole disclosing range.
Element
From instant Claims 1-8 (mass%)
From Example #working example in table 9 of CN’379 (mass%)
Within/overlapping range (mass%)
C
0.25-0.45
0.36
0.39
Si
0.1-0.33
0.41
0.15-0.6 (Page 9/26, lns.15-20 of CN’379)
--
Overlapping: 0.15-0.33
Mn
0.5-0.9
0.62
0.62
Ni
0.2-0.4 (cl.1,3);
0.2-0.3 (cl.2,4);
--
2.0 or less (cl.4)
--
Overlapping:
0.2-0.4 (cl.1,3);
0.2-0.3 (cl.2,4);
Cr
5.0-5.45 (cl.1,3);
5.1-5.40 (cl.7,8)
5.51
Adjusting 3.5-6.5 (Abstract, cl,1)
--
Overlapping:
5.0-5.45 (cl.1,3);
5.1-5.40 (cl.7,8)
Mo, W, or Mo+1/2W
1.9-2.3
Mo: 1.61
Mo+1/2W: 0.3-5.0 (cl.1)
Overlapping
Mo+1/2W: 1.9-2.3
V
0.6-0.9
0.75
0.75
Fe
Balance + impurities
Balance + impurities
Balance + impurities
Formula 1
7.00-8.66 (cl.1 and 3);
7.00-8.5 (Cl.5-6)
About 6.79
Close to 7.00
Formula 2
1.0 or less
About 0.97
About 0.97
Still regarding claims 1 and 3, CN’379 does not specify the claimed properties as recited in the instant claims. CN’475 teaches a hot work tool with all of the alloy composition ranges (par.[0031]-[0055] of CN’475) overlaps the claimed alloy composition ranges as shown in the following table. MPEP 2144 05 I. CN’475 indicates hardness and Charpy impact (L direction, 2 mm U notch) properties (par.[0066] and [0070] of CN’475) overlapping the claimed properties. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the alloy properties from the disclosing of CN’475 for the hot working tool steel of CN’379 since both CN’379 and CN’475 teach the same hot working tool steel as claimed throughout the whole disclosing range.
Element
From instant Claims 1-4 and 7-8(mass%)
From CN’475 (mass%)
overlapping range (mass%)
C
0.25-0.45 (cl.1,3)
0.30-0.50
0.30-0.45 (cl.1,3)
Si
0.1-0.33 (cl.1,3)
2.00 nor less
0.1-0.33 (cl.1,3)
Mn
0.5-0.9 (cl.1,3)
1.50 or less
0.5-0.9 (cl.1,3)
Ni
0.2-0.4 (cl.1,3);
0.2-0.3 (cl.2,4);
1.00 or less
0.2-0.4 (cl.1,3);
0.2-0.3 (cl.2,4);
Cr
5.0-5.45 (cl.1,3);
5.1-5.40 (cl.7,8)
3.00-6.00
5.0-5.45 (cl.1,3);
5.1-5.40 (cl.7,8)
Mo, W, or Mo+1/2W
1.9-2.3 (cl.1,3)
Mo+1/2W: 0.5-3.50 (cl.1)
1.9-2.3 (cl.1,3)
V
0.6-0.9 (cl.1,3)
0.10-1.50
0.6-0.9 (cl.1,3)
Fe
Balance + impurities
Balance + impurities
Balance + impurities
Hardness HRC
43 or more
42-50 (par.[0070]
42-50
Charpy impact (J/cm2)
50 or more
50 or more (par.[0066])
50 or more
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over MUTO YASUMASA (JP 2018-131654 A, with on-line translation, thereafter JP’654).
Regarding claims 1-8, JP’654 teaches a hot work tool steel that has excellent toughness and softening resistance (Abstract and working examples of JP’654), which reads on the claimed hot-work tool steel for hot work tool as recited in the instant claims. The comparison between the working example #21 in table 1 of JP’654 and those disclosed in the instant claims are listed in the following table. All of the essential alloy composition disclosed in the working example #21 in table 1 of JP’654 are within the claimed alloy composition ranges. The calculated values form the working example #21 in table 1 of JP’654 according to formula 1-2 are also within the range of formula 1-2. It is noted that the 4.86 mass% Cr in the working example #21 in table 1 of JP’654, which is outside the claimed Cr ranges in the instant claims 1,3, and 7-8. However, JP’654 indicates adjusting Cr in range 4.50-5.40 mass% (par.[0018] of JP’654) and adjusting Ni in range 0.8 or less mass% (par.[0019] of JP’654), which overlaps the claimed Cr and Ni ranges as claimed in the instant claims. Overlapping composition ranges of Cr and Nio ranges creates prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the amount of Cr and Ni ranges from the disclosing of JP’654 for the hot working tool steel since JP’654 teaches the same hot working tool steel throughout the whole disclosing range and JP’654 teaches proper amount Cr for improving hardenability and ensuring toughness (par.[0018] of JP’654).
Element
From instant Claims 1-8 (mass%)
From the working example #21 in table 1 of JP’654 (mass%)
Within/overlapping range (mass%)
C
0.25-0.45 (C.1,3)
0.33
0.33
Si
0.1-0.33 (Cl.1,3)
0.30
0.30
Mn
0.5-0.9 (cl.1,3)
0.77
0.77
Ni
0.2-0.4 (cl.1,3);
0.2-0.3 (cl.2,4);
0.49
Adjusting: 0.8 or less
--
Overlapping range:
0.2-0.4 (cl.1,3);
0.2-0.3 (cl.2,4);
Cr
5.0-5.45 (cl.1,3);
5.1-5.40 (cl.7,8)
4.86
Adjusting: 4.5-5.4
--
Overlapping range 5.0-5.45 (cl.1,3);
5.1-5.40 (cl.7,8)
Mo, W, or Mo+1/2W
1.9-2.3 (cl.1,3)
Mo+1/2W: 2.17
2.17
V
0.6-0.9 (cl.1,3)
0.68
0.68
Fe
Balance + impurities
Balance + impurities
Balance + impurities
Formula 1
7.00-8.66 (cl.1, 3);
7.00-8.5 (Cl.5-6)
About 7.46
About 7.46
Formula 2
1.0 or less
About 0.92
About 0.92
From claims 1 and 3
Par.[0033] of JP’654
Hardness (HRC)
43
44.5-45.5
44.5-45.5
Toughness (J/cm2)
40 or more
40 or more
40 or more
Still regarding claims 1 and 3, JP’654 specify hardness and toughness for the disclosed alloy (par.[0033] of JP’654), which reads on the claimed properties in the instant claims.
Response to Arguments
Applicant’s arguments to the art rejection to Claims 1-8 have been considered but they are not persuasive. Regarding the arguments related to the amended features in the instant claims, the Examiner’s position has stated as above.
The Applicant’s arguments have been summarized as following:
1, Regarding the rejection under 35 U.S.C. 103 as being unpatentable over Fujii (CN’379) in view of Nakano (CN’475), the cited prior arts indicates much broader range of Ni comparted to the claimed Ni ranges and there is no working examples including the claimed Ni and Cr ranges as recited in the instant claims.
2, Regarding the rejection under 35 U.S.C. 103 as being unpatentable over Muto (JP’654), the cited prior art(s) does not specify every limitations as claimed in the instant claims since there is no working example in Muto (JP’654) meet the claimed Cr and Ni ranges.
In response,
Regarding the arguments 1-2, Firstly, cited prior art(s) teaches Ni and Cr ranges overlapping the claimed Cr and Ni ranges, which creates a prima facie case of obviousness. MPEP 2144 05 I. Proper “132 Declaration” with comparation data is suggested to show the criticality of the claimed Ni range and Cr range in term of the argued properties. Secondly, the invention of cited prior art(s) including Fujii (CN’379), Nakano (CN’475), and Muto (JP’654) ought to be taken as a whole, and should not in any way be limited to the examples provided in the reference. It has been well settled in many court decisions that it would have been obvious to one having ordinary skill in the art to construct the process comprising said parameter within the disclosed range. To show unexpected result for the criticality of the narrow alloy composition ranges and claimed value A ranges, the Applicant should provide proper “132 Declaration” with comparation data to show the criticality of the narrow alloy composition ranges and the claimed A range in term of alloy’s properties.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIE YANG whose telephone number is (571)270-1884. The examiner can normally be reached on IFP.
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/JIE YANG/Primary Examiner, Art Unit 1734