Detailed Office Action
Notice of Pre-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 .
Response to Amendments
The amendment filed on 02/09/26 has been entered. Claims 1 – 16 remain pending. Claims 11 – 16 remain withdrawn. Claims 1 – 10 are under examination.
Applicant’s amendments have overcome the previous rejections under 112(b)
Claim Rejections – U.S.C. §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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1 – 3 and 5 – 9 are rejected under 35 U.S.C. 103 as being unpatentable over Shinto (JP2007/308772, using espacenet translation, cited with OA on 11/28/25) in view of Vucemilovic (DE102005041233, espacenet translation, with OA on 11/28/25) and Goldsteinas (US2014/0090754)
Regarding claims 1 and 7 – 8, Shinto teaches a method of forming a carburized part comprising the steps of heating and vacuum carburizing [0050] at a temperature above the austenitizing temperature [0008, 0063], holding at a lower temperature above the austenization point [0050 – 0051], then cooling and holding by a quenching oil to form bainite [0063, 0064], meeting the claimed limitation of heating to an austenization temperature and quenching in oil to form bainite. Wherein the workpiece is held at the bainite temperature for a period of time [0057], meeting the claimed limitation of removing the workpiece after a predetermined amount of time.
Shinto does not explicitly teach that the steps are performing by heating in a vacuum heating chamber followed by transferring to a quenching chamber within a furnace.
Vucemilovic teaches a heat treatment plant for performing a hardening method on a metallic object [0002]. Vucemilovic teaches that the hardening method has the steps of heating the metallic object in a heating chamber in which the atmosphere can be vacuum as well as a carbon containing atmosphere for carburization [0002, 0024]. The metallic object can then be quenched in a bath, of which oil can be the medium [0003] and bainite can be produced by the bath [0004]. Vucemilovic teaches that the method is performed in the heat treatment plant by placing the metallic object in the heating chamber for heating, meeting the claimed limitation of a vacuum heating chamber, and then transferring the heated metallic object to the immersion bath chamber, meeting the claimed limitation of a quenching chamber with a quench reservoir, and discharging the material [0025].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have performed the method of Shinto in the heat treatment plant of Vucemilovic to achieve predictable results. Shinto and Vucemilovic are directed to heat treating steel to form bainite/harden the microstructure by carburizing, austenitizing and isothermal/arrested quenching in oil. Therefore, an ordinarily skilled artisan would have had a reasonable expectation of success in combining the teachings. Moreover, Vucemilovic gives the benefit of performing the method of heating and quenching in one apparatus with the steps being strictly separated and independently controlled [0010 – 0013].
Shinto in view of Vucemilovic teaches isothermal quenching in oil medium but does not explicitly teach maintaining an inert atmosphere over the oil before, during, and after transferring the metal component.
Goldsteinas teaches a method of quenching and cleaning heat treated metal parts [0003]. Goldsteinas teaches that a component is heated to the austenization temperature and then quenched in oil to achieve the desired microstructure, including bainite [0027]. Goldsteinas teaches that sub-atmospheric conditions and/or inert gas blankets should be used to prevent oxidation of the oil which adversely affects its cooling performance and results in darkening of the metal surfaces of the workload [0036, 0038, 0039], meeting claim 8.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have modified the method of Shinto in view of Vucemilovic to have maintained a vacuum/inert gas blanket in order to prevent degradation and adverse effects on its performance, as taught by Goldsteinas. Golsteinas is directed to quenching of heat-treated steel products and as such, an ordinarily skilled artisan would have considered the teachings to be pertinent to the method of Shinto in view of Goldsteinas. Further still, given that Shinto in view of Vucemilovic comprises a furnace with a quench chamber and Goldsteinas is directed towards controlling the atmospheric conditions of quench chambers, an ordinarily skilled artisan would have had a reasonable expectation of success in controlling the atmosphere to be inert. Further still, an ordinarily skilled artisan would benefit from this modification because Golsteinas states that this prevents degradation and adverse effects on its cooling performance.
Moreover, Vucemilovic teaches that another batch can be placed into the furnace following removal of the first batch [0017]. As such, it would have been obvious to an ordinarily skilled artisan to have maintained the inert atmosphere in the quenching chamber to prevent contact between oxygen and the quenching oil throughout the entirety of the process (i.e., before, during, and after transferring the metal component), meeting claims 1 and 7.
Regarding claims 2 – 3, Shinto in view of Vucemilovic and Goldsteinas teaches the invention as applied in claim 1. Shinto shows examples in Table 2 in which T3 (i.e. the quenching temperature for forming bainite in the method of Shinto) is between 200 and 230°C [Table 3], meeting the claimed ranges of claims 2 and 3.
Regarding claim 5, Shinto in view of Vucemilovic and Goldsteinas teaches the invention as applied in claim 1. Shinto teaches that the steel alloy compositon has a carbon content of 0.05 – 0.3 mass% [0006], which falls within the claimed range. Shinto also teaches that the carburization forms a carburized layer for the bainite component [0016, Table 3]
Regarding claim 6, Shinto in view of Vucemilovic and Goldsteinas teaches the invention as applied in claim 5. Shinto teaches that first temperature T1 can be 900 – 950°C [0050], which falls within the claimed range, and T2 can be 820 – 890°C [0051], which also falls within the claimed range.
Regarding claim 9, Shinto in view of Vucemilovic and Goldsteinas teaches the invention as applied in claim 1. Goldsteinas teaches that residual oil remains on the workpiece following oil quenching [0042] and that the workpiece is cleaned by liquid solvent [0043], meeting the broadest reasonable interpretation of “washing” after removing the metal component from the quench chamber.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Shinto (JP2007/308772, using espacenet translation, cited with OA on 11/28/25) in view of Vucemilovic (DE102005041233, using espacenet translation, cited with OA on 11/28/25) and Goldsteinas (US2014/0090754), as applied to claim 1, in further view of Wang (CN110846473, using espacenet translation, cited in IDS of 06/17/25)
Regarding claim 10, Shinto in view of Vucemilovic and Goldsteinas teaches the invention as applied in claim 1. Shinto as-modified teaches isothermal quenching in oil medium but does not explicitly teach the flashpoint of the oil.
Wang teaches a method of forming lower bainite in a metal workpiece by heating the austenization temperature followed by isothermal quenching in an oil [0004, 0013, 0014]. Wang teaches that workpiece is left in the oil medium to complete transformation then removed and cleaned [0026]. Further still, Wang discloses that the vaporization point (i.e. flash point) of the oil medium must be higher than the highest holding temperature for the isothermal holding [0047]. Wherein Shinto teaches holding temperatures of greater than 230°C [Table 3] and as such, the flash point would need to be higher than this, meeting the claimed range. Wang teaches that this is so the oil does not burn or easily age or vaporize [0027]
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the method of Shinto as-modified by Vucemilovic and Goldsteinas and controlled the oil to have a vaporization/flash point of greater than the holding temperature for bainite formation, as taught by Wang. Shinto, Vucemilovic, Goldsteinas and Wang are directed to the same field of endeavor steel hardening treatments in oil quench medium. As such, an ordinarily skilled artisan would have considered the teachings of Wang to be pertinent and would have had a reasonable expectation of success in applying the teachings regarding oil vaporization point (disclosed by Wang) to the method of Shinto in view of Vucemilovic and Goldsteinas. Moreover, an ordinarily skilled artisan would benefit from this modification because Wang states that this helps prevent oil burning, aging, or vaporizing.
Claims 1, 4, and 7 – 9 are rejected under 35 U.S.C. 103 as being unpatentable over Pieronek (WO2020/165116, cited with the OA on 11/28/25) in view of Vucemilovic (DE102005041233, using espacenet translation, cited with the OA on 11/28/25) and Goldsteinas (US2014/0090754)
Regarding claims 1 and 7 – 8, Pieronek teaches a method of producing a steel component [0008] by heating at a temperature above the austenitizing temperature [0008] then hardening [0008] in an oil bath to form bainite [0003], meeting the claimed limitation of heating to an austenization temperature and quenching in oil to form bainite. Wherein the workpiece is placed in a cooling unit to cool to a temperature of 100 – 300°C [0066], implying that the workpiece is held in the quenching chamber for an amount of time. Wherein removal of the workpiece from the cooling/quenching chamber is implied given its use as a product. Pieronek teaches that the tempering unit for austenizing [0013] can be a vacuum [0009] and that the workpiece is then transferred to a unit for cooling [0066].
Pieronek does not explicitly teach that the steps are performing by heating in a vacuum heating chamber followed by transferring to a quenching chamber within a furnace.
Vucemilovic teaches a heat treatment plant for performing a hardening method on a metallic object [0002]. Vucemilovic teaches that the hardening method has the steps of heating the metallic object in a heating chamber in which the atmosphere can be vacuum [0002, 0024]. The metallic object can then be quenched in a bath, of which oil can be the medium [0003] and bainite can be produced by the bath [0004]. Vucemilovic teaches that the method is performed in the heat treatment plant by placing the metallic object in the heating chamber for heating, meeting the claimed limitation of a vacuum heating chamber, and then transferring the heated metallic object to the immersion bath chamber, meeting the claimed limitation of a quenching chamber with a quench reservoir, and discharging the material [0025].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have performed the method of Pieronek in the heat treatment plant of Vucemilovic to achieve predictable results. Pieronek and Vucemilovic are directed to heat treating steel to form bainite/harden the microstructure by austenitizing and isothermal/arrested quenching in oil. Therefore, an ordinarily skilled artisan would have had a reasonable expectation of success in combining the teachings. Moreover, Vucemilovic gives the benefit of performing the method of heating and quenching in one apparatus with the steps being strictly separated and independently controlled [0010 – 0013].
Pieronek in view of Vucemilovic teaches isothermal quenching in oil medium but does not explicitly teach maintaining an inert atmosphere over the oil before, during, and after transferring the metal component.
Goldsteinas teaches a method of quenching and cleaning heat treated metal parts [0003]. Goldsteinas teaches that a component is heated to the austenization temperature and then quenched in oil to achieve the desired microstructure, including bainite [0027]. Goldsteinas teaches that the sub-atmospheric conditions and/or inert gas blankets should be used to prevent oxidation of the oil which adversely affects its cooling performance and results in darkening of the metal surfaces of the workload [0036, 0038, 0039], meeting claim 8.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have modified the method of Pieronek in view of Vucemilovic to have maintained an inert gas blanket in order to prevent degradation and adverse effects on its performance, as taught by Goldsteinas. Golsteinas is directed to quenching of heat treated steel products and as such, an ordinarily skilled artisan would have considered the teachings to be pertinent to the method of Pieronek in view of Goldsteinas. Further still, given that Pieronek in view of Vucemilovic comprises a furnace with a quench chamber and Goldsteinas is directed towards controlling the atmospheric conditions of a quench chambers, an ordinarily skilled artisan would have a reasonable expectation of success in controlling the atmosphere to be inert. Further still, an ordinarily skilled artisan would benefit from this modification because Golsteinas states that this prevents degradation and adverse effects on its cooling performance.
Moreover, Vucemilovic teaches that another batch can be placed into the furnace following removal of the first batch [0017]. As such, it would have been obvious to an ordinarily skilled artisan to have maintained the inert atmosphere in the quenching chamber to prevent contact between oxygen and the quenching oil throughout the entirety of the process (i.e., before, during, and after trasnfering), meeting claims 1 and 7.
Regarding claim 4, Pieronek in view of Vucemilovic and Goldsteinas teaches the invention as applied in claim 1. Pieronek teaches that the carbon content is 0.08 – 0.6 wt% [0076, 0077], which overlaps with the claimed range. Pieronek teaches that the austenitizing is between 840°C and 940°C [0013], which overlaps with the claimed range.
With regards to the overlapping ranges taught, “In the case where the claimed ranges "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)”, absent evidence of criticality or unexpected results (MPEP 2144.05 I). "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05 III A).
Regarding claim 9, Pieronek in view of Vucemilovic and Goldsteinas teaches the invention as applied in claim 1. Goldsteinas teaches that residual oil remains on the workpiece following oil quenching [0042] and that the workpiece is cleaned by liquid solvent [0043], meeting the broadest reasonable interpretation of “washing” after removing the metal component from the quench chamber.
Claims 2 – 3 are rejected under 35 U.S.C. 103 as being unpatentable over Pieronek (WO2020/165116, cited in OA on 11/28/25) in view of Vucemilovic (DE102005041233, using espacenet translation, cited in OA on 11/28/25) and Goldsteinas (US2014/0090754), as further evidenced by Krauss (“Bainite”, ASM Handbook, NPL, 2015, cited in OA on 11/28/25)
Regarding claims 2 – 3, Pieronek in view of Vucemilovic and Goldsteinas teaches the invention as applied in claim 1. Pieronek teaches that the bainite can be formed [0003] and that the cooling unit cools to 100 – 300°C [0066], which overlaps with the claimed range.
Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I). “In the case where the claimed ranges "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)”
Moreover, it has been held in United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.”); In re Alter, 220 F.2d 454, 456 (CCPA 1955) (“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.”). In this case, the temperature range for bainite formation is dependent upon the specific composition of the steel (which is not claimed) and it would have been obvious for an ordinarily skilled artisan to have determined the appropriate temperature range necessary for bainite formation via routine experimentation/optimization in order to perform the method of Pieronek. This is further evidenced by Krauss (Bainite, ASM Handbook) which describes how bainite is formed [Page 1], equations for the estimation of the temperature range based on the composition [Page 3], and specifically discloses that lower bainite forms roughly in the range of 200 – 350°C, which overlaps with the claimed range [Page 8].
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Pieronek (WO2020/165116, cited with OA on 11/28/25) in view of Vucemilovic (DE102005041233, using espacenet translation) and Goldsteinas (US2014/0090754), as applied to claim 1, in further view of Wang (CN110846473, using espacenet translation, cited in IDS of 06/17/25)
Regarding claim 10, Pieronek in view of Vucemilovic and Goldsteinas teach the invention as applied in claim 1. Pieronek as-modified teaches isothermal quenching in oil medium but does not explicitly teach the flashpoint of the oil.
Wang teaches a method of forming lower bainite in a metal workpiece by heating the austenization temperature followed by isothermal quenching in an oil [0004, 0013, 0014]. Wang teaches that workpiece is left in the oil medium to complete transformation then removed and cleaned [0026]. Further still, Wang discloses that the vaporization point (i.e. flash point) of the oil medium must be higher than the highest holding temperature for the isothermal holding [0047]. Wherein Pieronek teaches cooling to temperatures of 200 – 300°C [0066] and as such, the flash point would need to be higher than this, meeting the claimed range. Wang teaches that this is so the oil does not burn or easily age or vaporize [0027].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the method of Pieronek as-modified by Vucemilovic and Goldsteinas and controlled the oil to have a vaporization/flash point of greater than the cooling temperature range, as taught by Wang. Pieronek, Vucemilovic, Goldsteinas and Wang are directed to the same field of endeavor steel hardening treatments in oil quench medium. As such, an ordinarily skilled artisan would have considered the teachings of Wang to be pertinent and would have had a reasonable expectation of success in applying the teachings regarding oil vaporization point (disclosed by Wang) to the method of Pieronek in view of Vucemilovic and Goldsteinas. Moreover, an ordinarily skilled artisan would benefit from this modification because Wang states that this helps prevent oil burning, aging, or vaporizing.
Response to Arguments
Applicant’s amendments have overcome the previous rejection 102(a)(1).
Applicant’s arguments filed on 02/09/26 have been fully considered are persuasive. The examiner agrees that the oxygen-free atmosphere described by Wang is not necessarily inert gas. As such, the previous rejections are withdrawn.
However, upon further consideration, a new rejection is made of:
Claims 1 – 3 and 5 – 9 under 35 U.S.C. 103 as being unpatentable over Shinto (JP2007/308772) in view of Vucemilovic (DE102005041233) and Goldsteinas (US2014/0090754)
Claim 10 under 35 U.S.C. 103 as being unpatentable over Shinto (JP2007/308772) in view of Vucemilovic (DE102005041233) and Goldsteinas (US2014/0090754), as applied to claim 1, in further view of Wang (CN110846473)
Claims 1, 4, and 7 – 9 under 35 U.S.C. 103 as being unpatentable over Pieronek (WO2020/165116) in view of Vucemilovic (DE102005041233) and Goldsteinas (US2014/0090754)
Claims 2 – 3 under 35 U.S.C. 103 as being unpatentable over Pieronek (WO2020/165116) in view of Vucemilovic (DE102005041233) and Goldsteinas (US2014/0090754), as further evidenced by Krauss (“Bainite”, ASM Handbook, NPL, 2015)
Claim 10 under 35 U.S.C. 103 as being unpatentable over Pieronek (WO2020/165116) in view of Vucemilovic (DE102005041233) and Goldsteinas (US2014/0090754), as applied to claim 1, in further view of Wang (CN110846473)
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
EP2985554 – Industrial furnace for metallic treatment including protective gas injector and conveyor from vacuum heat treatment chamber to oil quench bath. Can be used for bainitic hardening and carburizing.
CN111118267 – Isothermal SFPID furnace with multi-purpose function including using oil quench chamber and heating chamber for carburizing
JP2012126940 – heat treatment furnace for carburizing, nitrogen supply line to maintain positive pressure, and oil bath
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUSTIN POLLOCK whose telephone number is (571)272-5602. The examiner can normally be reached M - F (8 - 5).
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 on (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738
Prosecution Insights