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 .
Status of Claims
Claims 1-9 are examined in this office action as claims 6-9 are new and claims 1-2 and 5 were amended in the reply dated 6/25/26.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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 1-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 has been amended to recite “tempering a metal member after performing nano-crystallization on at least a portion of a surface of the unheated metal member” in the last two lines of the claim. “Unheated” is not explicitly recited anywhere in the application, much less in relation to the metal member. Applicant points to paragraphs 0010, 0018, 0024 and Fig. 1 as support for this amendment. However, while these paragraphs and the figure recite an order of the steps of first performing a nano-crystallization, followed by quenching, then tempering, these paragraphs do not recite that the metal member is unheated during the nano-crystallization process. Similarly, the specific examples given such as in paragraph [0033] of the specification do not recite performing shot peening on an unheated metal member nor is a temperature at which the shot peening is carried out disclosed. Therefore, the specification does not describe the claimed subject matter of “unheated metal member” in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor had possession of the claimed invention.
Claims 1-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim 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 "the unheated metal member" in the last two lines of the claim. There is insufficient antecedent basis for this limitation in the claim. While there is a previous recitation of a metal member, there is no previous recitation of an unheated metal member nor of the metal member being in an unheated state. Thus, it is not clear upon which the nano-crystallization must be performed upon. Claims 2-9 are also rejected as they depend from claim 1 and do not solve the above issue.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 and 8-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2003-055711 A (cited on IDS dated 8/14/26) and its English translation of Oda.
As to claim 1, “the unheated metal member” lacks antecedent basis and it is unclear what the nano-crystallization is performed upon, see 112(b) rejection above. For the purposes of applying prior art, this will be interpreted as requiring the metal member not be in the process of heating during nano-crystallization. Oda discloses a surface treatment method for a steel member by which fine and stable austenitic grains can be secured (Oda, abstract), meeting the limitation of manufacturing a reference piece and by having stable austenitic grains Oda is disclosing where austenite is retained meeting the claim limitations. While claim 1 also recites that this is “for measuring retained austenite”, the claim preamble must be read in the context of the entire claim. The determination of whether preamble recitations are structural limitations or mere statements of purpose or use "can be resolved only on review of the entirety of the [record] to gain an understanding of what the inventors actually invented and intended to encompass by the claim" as drafted without importing "'extraneous' limitations from the specification." Corning Glass Works, 868 F.2d at 1257, 9 USPQ2d at 1966. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999), see MPEP § 2111.02(II). In the instant case, this invocation that the piece is for measuring retained austenite does not add any structure other than there must be retained austenite in the piece that is capable of being measured. As Oda discloses where the structure of the steel member contains stable austenite grains, it meets the claim limitations.
Oda discloses where the steel member is subjected to a shot peening step followed by rapid heating to an austenizing temperature or higher after the shot peening and subsequently quenching (Oda, claim 1), meeting the limitation of performing quenching. Oda discloses where the steel member is then tempered (Oda, paragraph [0030] on 5th page of translation), meeting the limitation of tempering.
As to claim 8, while Oda does not explicitly disclose where nanocrystals are formed in a range of 0 µm to 50 µm in a depth direction from the surface of the metal member by the nano- crystallization, as noted above Oda discloses the same starting material of steel, applies the same method thereto of shot peening followed by quenching and tempering, and results in the same finished structure incorporating austenite. As such, the same method applied to the same materials would naturally produce the same properties of nanocrystals are formed in a range of 0 µm to 50 µm in a depth direction from the surface of the metal member by the nano- crystallization. “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.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (emphasis added), see MPEP § 2112.01(I).
As to claim 9, Oda discloses where the steel member is subjected to another shot peening treatment after the quenching and tempering steps (Oda, paragraph [0046] on bottom of pg. 7 of translation). While Oda does not state that this adjusts the ratio between the martensite and austenite, as Oda is starting with the same material of a peened, quenched, and tempered steel material and is applying the same method of shot peening thereto, the same method applied to the same material would naturally produce the same result of adjusting the ratio between martensite and austenite. “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.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (emphasis added), see MPEP § 2112.01(I).
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.
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.
Claims 2-7 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2003-055711 A (cited on IDS dated 8/14/26) and its English translation of Oda in view of US 2012/0180539 A1 of Kobayashi.
As to claims 2 and 6-7, Oda discloses where the steel member is subjected to a shot peening step followed by rapid heating to an austenizing temperature or higher after the shot peening and subsequently quenching (Oda, claim 1) and Oda discloses where the media used for shot peening is 600-800HV (Oda, paragraph [0019] on 4th page of translation), meeting the limitation of shot peening using a projection material having a Vickers hardness of HV400 to HV1200 as in claims 2 and 7. However, Oda does not disclose where shot peening is projection air pressure using a pneumatic accelerator nor where the projection air pressure is 0.05 to 1.0 MPa.
Kobayashi relates to the same field of endeavor of shot peening treatments to control the surface of a steel product (Kobayashi, abstract). Kobayashi teaches performing shot peening using a pneumatic accelerator with speeds suitably selected of 0.05-1 MPa (Kobayashi, paragraph [0067]) Kobayashi teaches that this gives compressive residual stress and thereby improve the resistance to thermal stress-cracking (Kobayashi, paragraphs [0036] and [0067]).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute shot peening using a pneumatic accelerator with an air pressure of 0.05-1 MPa as taught by Kobayashi into the method of shot peening disclosed in Oda, thereby improve the resistance to thermal stress-cracking (Kobayashi, paragraphs [0036] and [0067]). This also constitutes simple substitution of one known element for another to obtain predictable results as Oda only differs from the claims by the inclusion of shot peening using a pneumatic accelerator, Kobayashi teaches performing shot peening using a pneumatic accelerator and therefore one of ordinary skill in the art could have substituted a pneumatic accelerator for general shot peening to produce a nano-crystalized surface and the results of the substitution would have been predictable, see MPEP § 2143(I)(B).
As to claims 3-4, while Oda does not explicitly disclose an orientation of the metal member is cancelled by the shot peening as required by claim 3, nor wherein crystal grains sufficient to withstand measurement of residual stress by X-ray are left in the metal member by the shot peening as required by claim 4, as noted above Oda in combination with Kobayashi discloses the same starting material of steel, applies the same method thereto of shot peening followed by quenching and tempering, and results in the same finished structure incorporating austenite. As such, the same method applied to the same materials would naturally produce the same properties of an orientation of the metal member is cancelled by the shot peening as required by claim 3, and wherein crystal grains sufficient to withstand measurement of residual stress by X-ray are left in the metal member by the shot peening as required by claim 4. “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.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (emphasis added), see MPEP § 2112.01(I).
As to claim 5, Oda discloses surface treatment of a steel member (Oda, claim 1) and Oda discloses where the steel contains 0-1.6 wt% carbon (Oda, Fig. 6), overlapping the claimed range of 1.0 to 7.7 wt%. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed compositional amount of carbon over the prior art disclosure since the prior art teaches refined austenite grains and improved fatigue strength of the material (Oda, paragraph [0007] on the 2nd pg. of translation) throughout the disclosed ranges. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) . See MPEP § 2144.05 I.
Response to Arguments
With respect to the 112(b) rejection of claim 5, applicant’s amendment to recite a range for carbon cures the previous issue and therefore the rejection is withdrawn. However, see new 112(b) rejection concerning claim 1 above.
Applicant’s arguments, see pg. 4, last paragraph, filed 6/25/26, with respect to the rejection(s) of claim(s) 1-5 under 35 USC 102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Oda. See also 112(a) written description rejection concerning “unheated metal member” above.
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 Joshua S Carpenter whose telephone number is (571)272-2724. The examiner can normally be reached Monday - Friday 8:00 am - 5:30 pm.
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/JOSHUA S CARPENTER/Examiner, Art Unit 1733
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
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