DETAILED ACTION
Response to Amendment
The Amendment filed 16 April 2026 has been entered. Claim 1 is currently amended and claims 1-5 remain pending in the application. New claims 6 and 7 have been added. Applicant's amendments to the claims have overcome the 112(b) rejections previously set forth in the Non-Final Rejection mailed 16 December 2025.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed on 21 November 2023.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2003268486 of Yoshida in view of US2018282832 of Kawano.
Yoshida and Kawano disclose steels in comparison to the claimed composition as shown in Table A below.
Table A
Instant Invention
Prior Art
Limitation
Claims 1, 2 (mass%)
JP2003268486 (Yoshida) (mass%)
US2018282832 (Kawano) (mass%)
Carbon
0.25-0.37
0.28-0.55
0.28-0.42
Vanadium
0.08-0.28
0.2-0.9
0.4-1.2
Mn
>= 0.6
0.4-0.85
0.2-1.2
Cr
0-6.6
2.5-5.7
4.8-6.00
Mn/Cr
≤ 0.150
Mn + Cr
6.70-7.40
Cu + Ni (Optional)
<= 0.84
Claim 7: 0.03 – 0.84
Ni 0.01-1.65
Cu<= 1, Ni<=1.5
Si
0.4-0.9
0.15-0.8
0.01-1.5
Mo
0.6-2.00
1.4-2.8
0.8-3.20
Al
0.001-0.08
Al<=1.5
Claim 6: 0.1-1.5
Mentions Al as Unavoidable Impurity in steel
N
0.003-0.04
N<= 0.009, In Spec, inevitable impurities
0.002-0.08
W
0.3-2
0.01-1.65
0-5.0
Claim 4: 0.3-5
Yoshida discloses overlapping ranges for C, V, Mn, Cr, Si, Mo, N, and W. In claim 1, the instant invention claims a range for Cu + Ni of ≤ 0.84. This means that a value of zero would read on the disclosed range, making this an optional limitation. Yoshida discloses a range of 0.01-1.65 for Ni and does not disclose a range for Cu, therefore Yoshida reads on the “Cu + Ni” limitation. While Yoshida teaches a steel with Mn in the range of 0.4-0.85 and Cr in the range of 2.5-5.7, Yoshida is silent on Mn/Cr ≤ 0.150 and Mn + Cr in the range of 6.7-7.4. It is noted that these limitations would not both be satisfied based upon the disclosed amounts of Mn and Cr in Yoshida. The upper limit for Mn + Cr, corresponding to a value of Mn = 0.85 and Cr = 2.5, is 6.55. This is close to, but slightly under the range of 6.70-7.40 claimed in the instant application.
Kawano teaches an annealed steel material in the same field as endeavor as Yoshida, with Mn/Cr ≤ 0.150 and Mn + Cr in the range of 6.7-7.4. Kawano discloses a preferred range for Mn of 0.25-1.10 due to insufficient hardenability during quenching when Mn is below 0.20, and deteriorated thermal conductivity when Mn is above 1.10. (Kawano, Para. [0117]) Kawano teaches a preferred range for Cr of 4.90-5.90 due to insufficient corrosion resistance and hardenability during quenching when Cr is less than 4.80, and greatly deteriorated softening resistance and thermal conductivity when Cr is more than 6.00. (Kawano, Para. [0120]) Based on teachings of the contents of both Mn & Cr as found in Kawano, it would have been obvious for one of ordinarily skill in the art to select amounts within the disclosed ranges, such as 0.8 for Mn and 6.0 for Cr, and produce a steel where Mn/Cr ≤ 0.150, and 6.70 mass% ≤ Mn + Cr ≤ 7.40 mass%. Upper and lower limits for Mn/Cr and Mn + Cr for Yoshida and Kawano, and the relevant example can be seen in Table B below.
Table B
JP2003268486
(Yoshida)
Upper Limit for Mn/Cr
Mn = 0.85, Cr = 2.5
Lower Limit for Mn/Cr
Mn = 0.4, Cr = 5.7
Mn/Cr
Mn + Cr
Mn/Cr
Mn + Cr
0.340
3.35
0.07
6.10
Upper Limit for Mn + Cr
Mn = 0.85, Cr = 5.7
Lower Limit for Mn + Cr
Mn = 0.4, Cr = 2.5
Mn/Cr
Mn + Cr
Mn/Cr
Mn + Cr
0.149
6.55
0.160
2.90
US2018282832 (Kawano)
Upper Limit for Mn/Cr
Mn = 1.2, Cr = 2.5
Lower Limit for Mn/Cr
Mn = 0.2, Cr = 6.0
Mn/Cr
Mn + Cr
Mn/Cr
Mn + Cr
0.250
6.0
0.033
6.20
Upper Limit for Mn + Cr
Mn = 6.00, Cr = 1.2
Lower Limit for Mn + Cr
Mn = 0.2, Cr = 4.8
Mn/Cr
Mn + Cr
Mn/Cr
Mn + Cr
0.200
7.2
0.041
5.00
Example Value
Mn = 0.8, Cr = 5.9
Mn/Cr
Mn + Cr
0.135
6.70
While Yoshida is silent on Al as a component of the steel, Kawano teaches an annealed steel material in the same field as endeavor as Yoshida with mass% Al in the range of 0.1 -1.5. Kawano also teaches Al as an unavoidable impurity with a concentration less than or equal to 0.10. (Kawano, Para. [0045]) Thus, it would be obvious to one of ordinary skill in the art to consider Al in the range of 0.1 – 1.5, or less than or equal to 0.10 as an unavoidable impurity in the steel disclosed in Yoshida.
The ranges for C, V, Si, Mo, N, and W disclosed in Yoshida overlap with those in the claimed invention, and the ranges for Mn, Cr, and Al disclosed in Kawano overlap with those in the claimed invention. Furthermore, it is noted that a prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I. Claims 2-5 are also rejected as they depend on claim 1.
Claims 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2003268486 of Yoshida in view of US2018282832 of Kawano.
Claims 3 and 4 both require a steel material having a minimal dimension that is 300 mm or more. Kawano teaches a steel having a thickness of 200 mm or more and a width of 250 mm or more. Kawano discloses that steel of this size range and scale are required to manufacture a large die. (Kawano, Para. [0127]) Therefore, it would be obvious to one of ordinary skill in the art to select within the size parameters disclosed in Kawano and produce a steel material with dimensions of the claimed invention.
Claims 3-5 all require a steel material with a minimum mass. Claims 3 and 4 require a minimum of 3000 kg and claim 5 requires a minimum of 2000 kg. While Yoshida and Kawano are silent on the mass of the material, the size dimensions of the steel material would have been well within the ordinary level of skill to produce, based upon the mold sizes available to the skilled artisan as well as the typical proportions & dimensions commonly used in the art. Furthermore, the overall mass in kilograms would correspond directly to the elemental composition as well as the selected dimensions. See MPEP 2144.04 (IV)(A) "In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device". The same principle would apply to the selection of the relative dimensions of the claimed steel material because it would be expected to perform the same or substantially similar to the prior art steel when pieces of the same relative size were compared. The size of the steel material alone would not be expected to significantly impact its performance in a way that makes it patentably distinct.
New Claim 6 further limits claim 1 by claiming 5.7 mass%< Cr ≤ 6.60 mass%.
Yoshida claims a range for Cr of 2.5-5.7, Para[0013] . This borders the claimed range. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close, see MPEP 2144.05.
Kawano discloses a range for Cr of 4.80≤Cr≤6.00. This overlaps with the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, see MPEP 2144.05. Kawano teaches that in the case of Cr<4.80, hardenability during quenching and corrosion resistance are not sufficient, Para[0118], and that in the case of 6.00<Cr, softening resistance and thermal conductivity are greatly deteriorated, Para[0119]. Therefore, based on the teachings of Yoshida and Kawano, it would be obvious to one of ordinary skill in the art to include Cr in the disclosed range in the steel material taught by Yoshida in view of Kawano in order to achieve sufficient hardenability during quenching, corrosion resistance, softening resistance and thermal conductivity. Thus, Yoshida in view of Kawano covers all limitations of claim 6.
New Claim 7 further limits claim 1 by claiming 0.03 mass% ≤ Cu + Ni ≤ 0.84 mass% (combined mass % of Cu and Ni).
Yoshida discloses a range for Ni of 0.01-1.65. Assuming no Cu addition, this range overlaps with the claimed range for Cu + Ni. Therefore, Yoshida teaches the additional limitation of claim 7. Thus, Yoshida in view of Kawano covers all limitations of claim 7.
Response to Arguments
Applicant's arguments filed 16 April 2026 have been fully considered but they are not persuasive. Applicant argues that (remarks, page 9 of 12) instant claim 1 does not include Cr = 5.7%, and therefore Yoshida, which has an upper limit for Cr of 5.7%, does not teach an overlapping range for Cr. This is not found persuasive as a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close, see MPEP 2144.05. Furthermore, this argument is moot because the 103 rejection relies upon the teachings of Kawano for amounts of Cr. Kawano discloses a range for Cr of 4.80≤Cr≤6.00. This overlaps with the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, see MPEP 2144.05.
Applicant argues that (remarks, page 10 of 12) Kawano’s range for V does not overlap with present claim 1. This argument is moot as the 103 rejection relies upon the V teachings of primary reference Yoshida. Yoshida teaches a range of V: 0 20 to 0.90 mass%, Para[0013]. This overlaps with the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, see MPEP 2144.05.
Applicant argues that (remarks, page 10 of 12) Kawano does not teach an overlapping range for aluminum because Kawano teaches Al as an unavoidable impurity but also discloses a range of 0.10<Al<1.50, which falls outside the claimed range. This is not found persuasive because Kawano discloses a separate range of Al ≤ 0.10, when Al is included as an unavoidable impurity, Para[0045]. This overlaps with the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, see MPEP 2144.05.
Applicant argues that (remarks, page 11 of 12) the ratio (Mn/Cr) and sum (Mn + Cr) of Mn and Cr cannot simply be combined from Kawano and Yoshida reference ranges to teach the claimed limitation since each has certain effects. This argument is not found persuasive as the 103 rejection does not combine the ratio (Mn/Cr) or sum (Mn + Cr) for Yoshida with the ratio (Mn/Cr) or sum (Mn + Cr) of Kawano. The rejection relies on the teaching of Mn and Cr of Kawana as a whole. Based on teachings of the contents of both Mn & Cr as found in Kawano, it would have been obvious for one of ordinarily skill in the art to select amounts within the disclosed ranges, such as 0.8 for Mn and 6.0 for Cr, and produce a steel where Mn/Cr ≤ 0.150, and 6.70 mass% ≤ Mn + Cr ≤ 7.40 mass%.
Thus, the rejection is maintained.
Examiner’s Note
Examiner has attached a previously-cited foreign reference that was inadvertently omitted in the non-final action. Reference Included: JP2003268486
Conclusion
THIS ACTION IS MADE FINAL. 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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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/JACOB BENJAMIN STILES/Examiner, Art Unit 1733
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