DETAILED ACTION
Claims 1-14 are pending, and claims 1-3 and 8-10 are currently under review.
Claims 4-7 and 11-14 are withdrawn.
Claim 15 is cancelled.
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 4/16/2026 has been entered. Claims 1-14 remain(s) pending in the application. Applicant’s amendments to the Claims have overcome each and every objection and 112(b) rejection previously set forth in the Non-Final Office Action mailed 1/16/2026.
Claim Interpretation
The phrases “controlled toward the…nitriding potential” in claims 2-3 are interpreted to merely require that nitriding potential is controlled to reach a desired first or second target value.
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 and 8-10 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]. Hiraoka et al. also 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 target 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 1 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 target 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].
Response to Arguments
The previous double patenting rejections are withdrawn in view of the terminal disclaimer filed 4/16/2026.
Applicant's arguments filed 4/16/2026 have been fully considered but they are not persuasive.
Applicant argues that Hiraoka et al. discloses examples having layer thicknesses of 18 and 20 micrometers, which does not meet the claimed range. In response, the examiner notes that specific examples do not constitute a teaching away from the broader disclosure of the prior art. See MPEP 2123. The broader disclosed range of a layer thickness of 13 micrometers or more still overlaps with the claimed range and is prima facie obvious. See MPEP 2144.05(I).
Applicant then argues that the temperature ranges of the nitriding treatments of Hiraoka et al. are not within 50 degrees C as claimed. The examiner cannot concur. One of ordinary skill would readily understand that the first nitriding step at 560 to 600 degrees C and second nitriding step at 490 to 510 degrees as taught by Hiraoka et al. results in a temperature difference of at least 50 degrees C, which overlaps with the claimed range. See MPEP 2144.05(I).
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.
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
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