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 § 103
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.
Claim(s) 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jean-Louis et al. (FR2685707), hereinafter “Jean-Louis,” wherein an English machine translation is used and cited herein, as evidenced by “Impurities in Steel” ("Impurities in Steel." Metallurgy. N.p., 11 Feb. 2009. Web. 07 Dec. 2015.).
Regarding claims 1-8, Jean-Louis teaches a maraging steel having a chemical composition comprising, by weight, 14-19% Ni, 9-14% Co, 5-8% Mo, 0.005-0.05% rare earth elements, less than 0.1% Mn, less than 0.1% Si, less than 0.01% C, and a balance of Fe and inevitable impurities (Abstract, [0008]-[0010], which satisfies or overlaps with the instantly claimed ranges. Jean-Louis does not teach that its steel composition has O, which reads on 0% of O. Furthermore, note that the mere purity of a product, by itself, is insufficient to render the claimed product nonobvious over the prior art. See MPEP §2144.04 (VII). Regarding the overlapping ranges, note that in the case where the claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP §2144.05.
Jean-Louis teaches that the inevitable impurities may include residual amounts of impurity elements, such as aluminum, silicon, and manganese ([0008], [0010]), but is silent as to wherein the inevitable impurities comprise one or more of sulfur, phosphorus, nitrogen hydrogen, boron, copper, chromium, tungsten, vanadium zirconium, calcium, magnesium, zinc, neodymium, and tantalum. However, sulfur, phosphorus, and nitrogen are common impurities found in steels, as evidenced by “Impurities in Steel” (p. 1). One of ordinary skill in the art would expect the maraging steel of Jean-Louis to have one or more of sulfur, phosphorus, and nitrogen present in impurity amounts.
As to claims 9 and 10, Jean-Louis teaches wherein its steel is a maraging steel and has a mechanical strength of 2000 MPa and high ductility (Abstract, [0010]), but does not explicitly teach that a structure of maraging steel comprises Fe-Ni martensite and an intermetallic compound, wherein the intermetallic compound comprises Ni3Mo phase and a molybdenum-rich phase, wherein a yield strength of the maraging steel is greater than or equal to 1500 MPa, and an elongation of the maraging steel is greater than or equal to 3%. However, Jean-Louis teaches a steel with a chemical composition that satisfies or closely overlaps with the instantly claimed chemical composition ranges, as detailed above, and further teaches a method of manufacture of its steel comprising melting and casting, which is substantially similar to that described in paragraphs [0033] and [0055] of the instant specification.
Thus, as Jean-Louis teaches a steel with an overlapping chemical composition and substantially similar process of manufacture, one of ordinary skill in the art would expect the steel of Jean-Louis to have a structure of maraging steel comprises Fe-Ni martensite and an intermetallic compound, wherein the intermetallic compound comprises Ni3Mo phase and a molybdenum-rich phase, wherein a yield strength of the maraging steel is greater than or equal to 1500 MPa, and an elongation of the maraging steel is greater than or equal to 3%. In the case 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.” See MPEP §2112.01.
Response to Arguments
Applicant's arguments filed 6/26/2026 have been fully considered but they are not persuasive.
Applicant argues that the currently amended claim 1 excludes Ti and Al, while Jean-Louis prefers to have Ti and/or Al in the steel. Applicant further argues that this preference is a teaching away from the claimed features.
In response, Examiner notes that claim 1 in no way excludes Ti and Al. Note that claim 1 recites the limitations “wherein the steel material comprises” and “wherein the inevitable impurities comprise” allow for Ti and Al to be present as intentional components or inevitable impurities. The transitional term "comprises", which is synonymous with "includes," "contains," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See MPEP 2111.03. Nonetheless, Jean-Claude teaches that its steel is titanium free ([0009]-[0010]) and has less than 0.2% Al ([0008]), which indicates that the steel of Jean-Claude may include no Al.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY M LIANG whose telephone number is (571)272-0483. The examiner can normally be reached M-F: 9:00am-5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at (571)272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY M LIANG/Primary Examiner, Art Unit 1734
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