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 .
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 1-5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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.
Claim 1 recites the limitation “6.60 mass% ≤ Mn + Cr ≤ 7.40 mass%”. It is not clear whether this is intended to represent:
the combined mass% of Mn and Cr to the range of 6.6-7.4, (6.6 ≤ (Mn + Cr) ≤ 7.4), or
the individual mass% of Mn to be greater than or equal to 6.6 and the individual mass% of Cr to be less than or equal to 7.4, ((6.6 ≤ Mn) + (Cr ≤ 7.4)).
The specification does not provide an explanation of the scope of the claim, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Claims 2-5 are also rejected as they depend from claim 1 and do not solve the above issue.
Claim 1 also recites the limitation “Mn/Cr ≤ 0.150”. It is not clear whether this refers to the amount of Mn divided by the amount of Cr being less than or equal to 0.150, corresponding to a ratio, or if this means that the amount of Mn or the amount of Cr can be less than or equal to 0.150.
Additionally, there are no units specified in this limitation in claim 1. It is not clear if this limitation corresponds to the mass% of Mn and Cr or some other unit of measure. The specification does not provide an explanation of the scope of the claim, and one of ordinary skill in the art would not be apprised of the scope of the invention. Claims 2-5 are also rejected as they depend from claim 1 and do not solve the above issue.
Claim 1 also recites the limitation “Cu + Ni ≤ 0.84 mass%”. It is not clear whether this is intended to represent:
the combined mass% of Cu and Ni to be less than or equal to 0.84, ( (Cu + Ni) ≤ 0.84), or
the individual mass% of Cu to be less than or equal to 0.84 and the individual mass% of Cr to be less than or equal to 0.84, ((Cu ≤ 0.84) + (Ni ≤ 0.84)).
The specification does not provide an explanation of the scope of the claim, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Claims 2-5 are also rejected as they depend from claim 1 and do not solve the above issue.
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.
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
6.60-7.40
Cu + Ni (Optional)
<= 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. It is not clear what is meant by “Cu + Ni”, see 112(b) rejection above. For the purposes of applying prior art this will be interpreted as encompassing the combined mass% of Cu and Ni. 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. It is noted that it is also not clear what is meant by “Mn/Cr” or “6.60 mass% ≤ Mn + Cr ≤ 7.40 mass%”, as explained in the 112(b) rejections above. For the purposes of applying prior art “Mn/Cr” will be interpreted as encompassing the mass% of Mn divided by the mass% of Cr, and “6.60 mass% ≤ Mn + Cr ≤ 7.40 mass%” will be interpreted as encompassing the combined mass% of Mn added to the combined mass% of Cr. 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 6.6-7.4. 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 6.60-7.40 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 6.6-7.4. 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 5.9 for Cr, and produce a steel where Mn/Cr ≤ 0.150, and 6.60 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 teaches Al as an unavoidable impurity. (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 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.
Conclusion
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/JACOB BENJAMIN STILES/Examiner, Art Unit 1733