DETAILED ACTION
Claims 1-15 are pending, and claims 1-3, 8-10, and 15 are currently under review.
Claims 4-7 and 11-14 are withdrawn.
Claim 15 is newly added.
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 .
Response to Amendment
The amendment filed 11/18/2025 has been entered. Claims 1-14 and newly submitted claim(s) 15 remain(s) pending in the application.
Election/Restrictions
Applicant's election with traverse of the species a(1) in the reply filed on 11/18/2025 is acknowledged. The traversal is on the ground(s) that claims 7 and 14 should also be included in species a(1) because they recite three gases. This is not found persuasive because upon further consideration, claims 7 and 14 recite that NH3 and AX introduction amounts are changed while keeping the other NH3 gas and AX gas constant, which is mutually exclusive from the limitations of elected species a(1).
The requirement is still deemed proper and is therefore made FINAL.
Claims 7 and 14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/18/2025.
Claims 4-6 and 11-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected species, there being no allowable generic or linking claim. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Election was made without traverse in the reply filed on 11/18/2025.
Claim Objections
Claims 1 and 8 are indicated as “withdrawn”, which is erroneous as claims 1 and 8 were noted as generic claims and are currently being examined. Appropriate correction is required.
Claims 2-3 and 8-10 are objected to as they do not refer to a preceding claim. See MPEP 608.01(n).
Claim Interpretation
The term “i.e.” in claim 1 is interpreted to merely pertain to the further recited nitriding treatment steps.
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 2-3 and 9-10 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. Claims 2-3 recite the phrases “close to the first nitriding potential” and “close to the second nitriding potential”, which is indefinite because it is unclear to the examiner as to what particular potential values, if any, are required by the term “close”. It is unclear whether “close” requires some particular value or range of values, if “close” merely pertains to a broad range/category of potential values, or something else entirely. The examiner interprets the claims to be met by any value that would be considered “close” by one of ordinary skill.
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.
Claim(s) 1-3, 8-10, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hiraoka et al. (WO2019208534, machine translation referred to herein).
Regarding claim 1, Hiraoka et al. discloses a method of nitriding steel [0001]; wherein said method includes a first nitriding step at 560 to 600 degrees C and potential of 0.7 to 3, and a second nitriding step at 490 to 510 degrees C (overlapping with the claimed temperature different of 50 degrees C or less) and potential of 0.5 to 2 [0018-0019]. The examiner notes that a second nitriding step at a lower temperature as taught by Hiraoka et al. meets the limitations of “another nitriding gas atmosphere of a second nitriding potential” as claimed. The examiner further notes that the overlap between the nitriding parameters of Hiraoka et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I). Hiraoka et al. further teaches that first nitriding serves to form a gamma prime and epsilon phase, and second nitriding serves to further deposit gama prime phases [0020, 0035, 0063].
Regarding claim 15, Hiraoka et al. discloses the method of claim 1 (see previous). Hiraoka et al. further teaches a nitrided layer thickness of at least 13 micrometers, which overlaps with the claimed range [0020, 0026, 0051]. See MPEP 2144.05(I).
Regarding claims 2-3, Hiraoka et al. discloses the method of claim 15 (see previous). Hiraoka et al. further teaches that nitriding occurs a single furnace, which would naturally result in a discrete, batch-style processing method as recognized by one of ordinary skill because multiple furnaces would be required for continuous treatment [fig.9]. Hiraoka et al. further teaches that the nitriding steps utilize NH3 and an ammonia decomposition gas (ie. AX gas), wherein the amounts of NH3 and ammonia decomposition gas are each changed/controlled in order to control nitriding potential with high precision (ie. close to a desired, predetermined nitriding potential) while keeping a total flow rate of introduced gas constant [0082]. Hiraoka et al. does not expressly teach that the first nitriding step also includes N2 gas as claimed. However, one of ordinary skill would readily understand that ammonia decomposition gas (ie. AX gas) refers to N2 and H2 gas generated during thermal decomposition of ammonia, and so the generated H2 and N2 gas that would naturally occur in the method of Hiraoka et al. can arbitrarily be considered to be both N2 gas and/or AX gas, which meets the claimed gas types.
Regarding claims 8-10, Hiraoka et al. discloses the method of claims 2-3 and 15 (see previous). Hiraoka et al. further teaches embodiments wherein first nitriding is performed for a longer duration than second nitriding [0033-0035, 0042-0043, tables1-2].
Claim(s) 2-3 and 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hiraoka et al. (WO2019208534, machine translation referred to herein) as applied to claim 15 above, and further in view of or evidenced by Shimizu et al. (US 2015/0053311) or further in view of Hiraoka et al. (JP2019014956, US 2020/0190609 referred to as English translation, herein referred to as Hiraoka (‘609)).
Regarding claims 2-3, Hiraoka et al. discloses the method of claim 15 (see previous). Hiraoka et al. further teaches that nitriding occurs a single furnace, which would naturally result in a discrete, batch-style processing method as recognized by one of ordinary skill because multiple furnaces would be required for continuous treatment [fig.9]. Hiraoka et al. further teaches that the nitriding steps utilize NH3 and an ammonia decomposition gas (ie. AX gas), wherein the amounts of NH3 and ammonia decomposition gas are each changed/controlled in order to control nitriding potential with high precision (ie. close to a desired, predetermined nitriding potential) while keeping a total flow rate of introduced gas constant [0082].
Hiraoka et al. does not expressly teach that the first nitriding step also includes N2 gas as claimed. Shimizu et al. discloses that N2 gas is naturally present when NH3 is thermally decomposed at nitriding temperatures [0067]. Therefore, the examiner submits that N2 gas would naturally be present during the nitriding of Hiraoka et al. as evidenced by Shimizu et al. Alternatively, Shimizu et al. further teaches that higher temperatures (ie. first nitriding temperatures) can result in extreme oxidation, wherein said oxidation can be prevented by including an inert gas such as N2 [0065]. Therefore, it would have been obvious to one of ordinary skill to modify the method of Hiraoka et al. by including N2 inert gas to prevent oxidation at higher nitriding temperatures (ie. first nitriding step of Hiraoka et al. performed at higher temperatures) as taught by Shimizu et al.
Alternatively, Hiraoka et al. (‘609) discloses that gas nitriding is conventionally known to be performed with NH3 and ammonia decomposition gas, or a mixture of NH3, ammonia decomposition gas, and nitrogen gas (ie. N2) [0004]. In words, Hiraoka et al. (‘609) expressly teaches that the selection of nitriding atmosphere of NH3 and ammonia decomposition gas (ie. as taught by Hiraoka et al.) and a mixture of NH3, ammonia decomposition gas, and N2 (as claimed) are art-recognized equivalents that are conventionally known and both useful for nitriding. Therefore, it would have been obvious to one of ordinary skill to substitute the nitriding gas of Hiraoka et al. for a mixture of NH3, ammonia decomposition gas, and N2 because these gas mixtures are art-recognized equivalents as indicated by Hiraoka et al. (‘609). See MPEP 2144.06(II). Furthermore, Hiraoka et al. (‘609) expressly teaches a finite number of identified, predictable nitriding gas mixtures for nitriding applications, wherein it would have been obvious to one of ordinary skill to pursue a combination of gas mixtures to arrive at the predictable result of nitriding with desired combinations of gases (ie. first nitriding with NH3, AX, N2; second nitriding with NH3, AX) to desirably control a nitriding potential as taught by Hiraoka et al. (‘609) [0017]. See MPEP 2143(I)(E). Hiraoka et al. (‘609) also expressly teaches controlling/changing an amount of NH3 and ammonia decomposition gas while keeping a total gas flow constant in order to desirably control nitriding potential to be close to a desired, target potential (emphasis added) [abstract, 0030]. Therefore, it would have been obvious to one of ordinary skill to modify the method of Hiraoka et al. by controlling/changing an amount of NH3 and ammonia decomposition gas while keeping a total gas flow constant in order to desirably control nitriding potential to be close to a desired, target potential.
Regarding claims 9-10, the aforementioned prior art discloses the method of claims 2-3 (see previous). Hiraoka et al. further teaches embodiments wherein first nitriding is performed for a longer duration than second nitriding [0033-0035, 0042-0043, tables1-2].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 8-10, and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/552,031 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application recites at least three nitriding steps, which overlaps with the scope of the instant application. The nitriding parameters of the copending claims further overlap with the claimed parameters, which is prima facie obvious. See MPEP 2144.05(I).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS A WANG whose telephone number is (408)918-7576. The examiner can normally be reached usually M-Th: 7-5.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734
/JONATHAN JOHNSON/Supervisory Patent Examiner, Art Unit