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 .
Priority
Receipt is acknowledged of a certified copy of JP 2021-063442 filed April 2, 2021 as required by 37 CFR 1.55. Receipt is also acknowledged of WO 2022/209637, the WIPO publication of PCT/JP2022/010061 filed March 8, 2022.
Claim Status
This Office Action is in response to Applicant’s Remarks and Claim Amendments filed June 5, 2026.
Claims Filing Date
June 5, 2026
Amended
10, 11
Cancelled
1-9, 15
Pending
10-14, 16, 17
Withdrawn
11, 16, 17
Under Examination
10, 12-14
The applicant argues amended claim 10 includes the feature of previous claim 15 (p. 6 para. 3).
Withdrawn Abstract Objection
The following objection is withdrawn due to abstract amendment:
Lines 1, 2, and 7 reciting legal phraseology “comprises”.
Response to Remarks filed June 5, 2026
Miyanishi in view of Kano
Applicant's arguments filed June 5, 2026 with respect to Miyanishi in view of Kano have been fully considered but they are not persuasive.
The applicant argues Miyanishi and Kano do not disclose inclusions made only of Bi and compound inclusions of manganese sulfide (MnS) and bismuth (Bi) in contact with the manganese sulfide (MnS), in which a maximum total area of the inclusions and compound inclusions is 2300 um2 or less (p. 6 para. 2, p. 8 paras. 2-3).
Miyanishi in view of Kano discloses inclusions made only of bismuth (Bi) (Bi refines crystal grains through Bi particles) (Miyanishi [0044]), the addition of sulfur (S) (Miyanishi [0097]-[0101], Table 1 Exs. 38, 42), and compound inclusions of manganese sulfide (MnS) and bismuth (Bi) in contact with the manganese sulfide (MnS) (when S is added together with Bi as an inclusion-forming element, Bi agglomerates around sulfide-based inclusions), which do not coarsen (Kano [0010]-[0012], [0015]-[0016], [0021]). The prior art discloses compositions within the claim scope (Miyanishi Table 1 Exs. 38 and 42), such that the claimed property of a maximum total area of inclusions and the compound inclusions of 2300 um2 or less naturally flows.
The applicant argues Comparative Example 6 has amounts of the claimed elements within the claimed ranges, yet a maximum total area of Bi inclusions and compound inclusions of MnS and Bi in contact with MnS of 2830 cm2 ([0052], Table 1), which is greater than the claimed amount, such that the claimed maximum total area of inclusions and compound inclusions being 2300 um2 or less does not naturally flow (p. 7 para. 2), where a lower fatigue strength results for steel compositions in which the maximum total area of Bi inclusions and compound inclusions of MnS and Bi in contact with MnS exceeds 2300 um2 as supported by applicant’s Examples and Comparative Examples (Remarks para. spanning pp. 7-8).
Pending claim 10 line 17 recites “0.02 to 0.05 mass % of bismuth (Bi)”. Applicant’s Table 1 Comparative Example 6 includes 0.20 mass% Bi. This is outside the claimed range for bismuth. Further,
Comparative Example 6 only differs in Bi content from the claimed composition. Therefore, Comparative Example 6’s maximum total area of Bi and (Bi+MnS) of 2830 um2, also outside the claimed range, is a result of the increased Bi content.
The inventive examples of the prior art (Miyanishi Exs. 38 and 42) include 0.0360 and 0.0220 % Bi, respectively, which both fall within the scope of applicant’s claimed range for bismuth. In applicant’s Table 1 Examples 1-11 and Comparative Example 1 have bismuth (Bi) contents of 0.02 or 0.03 mass% and a maximum total area of Bi and (Bi+MnS) of 2300 um2 or less. This supports that the claimed property of a maximum total area of inclusions and the compound inclusions of 2300 um2 or less naturally flows from the disclosed composition of the prior art (Miyanishi Table 1 Exs. 38 and 42).
Element
Claim 10 mass%
Applicant’s Comparative Ex. 6 Table 1
Miyanishi Ex. 38
Miyanishi Ex. 42
Fe
Present
Present
Present
Present
C
0.39 to 0.42
0.40
0.40
0.41
Si
0.15 to 0.35
0.21
0.22
0.35
Mn
0.90 to 1.30
1.10
1.22
1.22
V
0.08 to 0.15
0.13
0.147
0.087
P
0.030 or less
0.015
0.011
0.015
Cu
0.300 or less
0.015
0.03
0.03
Ni
Greater than 0 and less than 0.30
0.04
0.02
0.02
Cr
Less than 0.35
0.15
0.13
0.19
S
0.010 to 0.035
0.022
0.024
0.020
Bi
0.2 to 0.05
0.20
0.0360
0.0220
Therefore, the rejection of Miyanishi in view of Kano is maintained.
Uno in view of Kano
Applicant's arguments filed June 5, 2026 with respect to Uno in view of Kano have been fully considered but they are not persuasive.
The applicant argues Uno and Kano do not disclose the maximum total area of inclusions made of Bi and compound inclusions of manganese sulfide and bismuth in contact with the manganese sulfide being 2300 um2 or less (p. 9), where this claim feature does not naturally flow (p. 10 para. 1) and is therefore not taught or suggested by the prior art (p. 10 para. 2).
Uno in view of Kano discloses an overlapping composition including 0.011 % S and 0 to 0.100 % Bi (Uno [0016], [0026], [0033]-[0034], Table 2 Ex. 13) with inclusions made only of bismuth (Bi) (Bi forms Bi metal inclusions) and compound inclusions of manganese sulfide (MnS) and bismuth (Bi) in contact with the manganese sulfide (MnS) (when S is added together with Bi as an inclusion-forming element, Bi agglomerates around sulfide-based inclusions), which do not coarsen (Kano [0010]-[0012], [0015]-[0016], [0021]). The prior art discloses compositions that read on that claimed, such that the claimed property of a maximum total area of inclusions and the compound inclusions of 2300 um2 or less naturally flows.
In support, applicant’s Table 1 Examples 1-11 and Comparative Example 1 have bismuth (Bi) contents of 0.02 or 0.03 mass% and a maximum total area of Bi and (Bi+MnS) of 2300 um2 or less. Uno discloses 0 to 0.100 % Bi ([0033]-[0034]). This disclosed overlapping Bi range encompasses the Bi content of applicant’s inventive examples but not Comparative Example 6. It supports that the claimed property of a maximum total area of inclusions and the compound inclusions of 2300 um2 or less naturally flows.
Therefore, the rejection of Uno in view of Kano is maintained.
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.
Claims 10 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Miyanishi (JP 2021-155808 machine translation) in view of Kano (JP 2005-154886 machine translation).
Regarding claim 10, Miyanishi discloses a non-heat treated (raw material) steel for a crankshaft ([0001]-[0003], [0101]) with a composition that falls within the scope of claim 10 ([0097]-[0101], Table 1, Exs. 38, 42).
Element
Claims 10, 14
Miyanishi Ex. 38
Miyanishi Ex. 42
C
0.39 to 0.42
0.40
0.41
Si
0.15 to 0.35
0.22
0.35
Mn
0.90 to 1.30
1.22
1.22
V
0.08 to 0.15
0.147
0.087
P
0.030 or less
0.011
0.015
Cu
0.300 or less
0.03
0.03
Ni
Greater than 0 to 0.30 or less
0.02
0.02
Cr
0.35 or less
0.13
0.19
S
0.010 to 0.035
0.024
0.020
Bi
0.02 to 0.05
0.0360
0.0220
Fe
Present
Present
Present
Ceq
0.95 to 0.99
1.01
0.95
Miyanishi discloses inclusions made only of bismuth (Bi) (Bi refines crystal grains through Bi particles) ([0044]) and inclusions of manganese sulfide (MnS) ([0039], [0041]).
Miyanishi is silent to compound inclusions of manganese sulfide (MnS) and bismuth (Bi) in contact with the manganese sulfide (MnS).
Kano discloses compound inclusions of manganese sulfide and bismuth (Bi) in contact with the manganese sulfide (MnS) (when S is added together with Bi as an inclusion-forming element, Bi agglomerates around sulfide-based inclusions) ([0010]-[0012], [0015]-[0016], [0021]).
It would have been obvious to one of ordinary skill in the art for the steel of Miyanishi to include compound inclusions of manganese sulfide (MnS) and bismuth (Bi) in contact with the manganese sulfide (MnS) because when S is added together with Bi as an inclusion (particle) forming element, Bi is known to agglomerate around sulfide-based inclusions, which do not coarsen (Kano [0010]).
The limitation of a maximum total area of inclusions and the compound inclusions of 2300 um2 or less has been considered and determined to recite a property of the claimed non-heat treated steel composition. The prior art discloses compositions within the scope of claim 10 (Miyanishi Table 1 Exs. 38 and 42), such that the claimed property of a maximum total area of inclusions and the compound inclusions of 2300 um2 or less naturally flows.
Regarding claim 12, Miyanishi Exs. 38 and 42 are silent to Mn of 1.00 to 1.20 mass %.
Miyanishi discloses a content of manganese (Mn) is 1.00 to 1.20 mass % (0.80 to 1.50 %) ([0039]).
It would have been obvious to one of ordinary skill in the art in the steel of Miyanishi to include 0.80 to 1.50 % Mn to enhance hardenability, suppress fusion cracks during induction hardening, combining with S to form MnS, suppressing the formation of FeS to improve ductility and suppress hot forging cracks (Miyanishi [0039]). It in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 13, Miyanishi Exs. 38 and 42 are silent to V of 0.10 to 0.13 mass %.
Miyanishi discloses a content of vanadium (V) is 0.10 to 0.13 mass % (0.050 to 0.200 %) ([0043]).
It would have been obvious to one of ordinary skill in the art in the steel of Miyanishi to include 0.050 to 0.200 % V to increase hardness of the ferrite and to increase internal hardness of the machine structural art such that fatigue strength is increased (Miyanishi [0043]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 14, Miyanishi discloses a carbon equivalent (Ceq) that is represented by the following Formula (1) is 0.95 to 0.99 (0.95) (Table 1 Ex. 42), Ceq = [C] + 0.167[Si] + 0.222[Mn] + 0.067[Cu] + 0.067[Ni] + 0.25[Cr] + 0.4[Mo] + 1.8[V]---Formula (1) wherein each pair of square brackets represents “mass %” of an element in the corresponding pair of square brackets in Formula (1).
Claims 10 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Uno (JP H09-195000 machine translation) in view of Kano (JP 2005-154886 machine translation).
Regarding claim 10, Uno discloses a non-heat treated steel for a crankshaft ([0001], [0008], [0014]) with a composition that falls within the claimed Si, Mn, V, P, Cu, Cr, S, and Fe contents ([0039], Table 2 Ex. 13).
Element
Claims 10, 14
Uno Table 2 Ex. 13
Uno Table 2 Ex. 13- Modified
Uno Citation
C
0.39 to 0.42
0.29
0.20 to 0.50
[0016]
Si
0.15 to 0.35
0.18
0.18
Table 2 Ex. 13
Mn
0.90 to 1.30
0.98
0.98
Table 2 Ex. 13
V
0.08 to 0.15
0.115
0.115
Table 2 Ex. 13
P
0.030 or less
0
0
Table 2 Ex. 13
Cu
0.300 or less
0.08
0.08
Table 2 Ex. 13
Ni
Greater than 0 to 0.30 or less
0
0 to 0.30
[0026]
Cr
0.35 or less
0
0
Table 2 Ex. 13
S
0.010 to 0.035
0.011
0.011
Table 2 Ex. 13
Bi
0.02 to 0.05
0
0 to 0.100
[0033]-[0034]
Fe
Present
Present
Present
Table 2 Ex. 13
Ceq
0.95 to 0.99
0.75
0.66 to 0.98
-
Table 2 Ex. 13 of Uno includes 0.29 % C.
Uno discloses 0.20 to 0.50% C ([0016]).
It would have been obvious to one of ordinary skill in the art in the Table 2 Ex. 13 composition of Uno to vary the C between 0.20 and 0.50 % to impart the desired static strength without reducing machinability and fatigue strength (Uno [0016]).
Table 2 Ex. 13 is silent to Ni.
Uno discloses adding 0 to 0.30% Ni ([0026]).
It would have been obvious to one of ordinary skill in the art in the Table 2 Ex. 13 composition of Uno to vary the Ni between 0 and 0.30 % to improve hardenability and toughness without deteriorating machinability (Uno [0026]).
Table 2 Ex. 13 is silent to Bi.
Uno discloses 0 to 0.100% Bi ([0033]-[0034]).
It would have been obvious to one of ordinary skill in the art in the Table 2 Ex. 13 composition of Uno to include 0 to 0.100 % Bi to improve machinability without impairing economic efficiency (Uno [0033]-[0034]).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Uno discloses 0 to 0.100 % Bi ([0033]-[0034]), 0.98 % Mn, and 0.011 % S (Table 2 Ex. 13).
Uno is silent to inclusions made only of bismuth (Bi) and compound inclusions of manganese sulfide (MnS) and bismuth (Bi) in contact with the manganese sulfide (MnS).
Kano discloses inclusions made only of bismuth (Bi) (Bi forms Bi metal inclusions) and compound inclusions of manganese sulfide and bismuth (Bi) in contact with the manganese sulfide (MnS) (when S is added together with Bi as an inclusion-forming element, Bi agglomerates around sulfide-based inclusions) ([0010]-[0012], [0015]-[0016], [0021]).
It would have been obvious to one of ordinary skill in the art for the steel of Miyanishi to include inclusions made of bismuth (Bi) and compound inclusions of manganese sulfide (MnS) and bismuth (Bi) in contact with the manganese sulfide (MnS) because in a steel structure Bi forms metal inclusions and when S is added together with Bi as an inclusion (particle) forming element, Bi is known to agglomerate around sulfide-based inclusions, which do not coarsen (Kano [0010]).
The limitation of a maximum total area of inclusions and the compound inclusions of 2300 um2 or less has been considered and determined to recite a property of the claimed non-heat treated steel composition. The prior art discloses a composition that renders obvious that recited in claim 10, including an overlapping amount of 0 to 0.100% Bi (Uno [0016], [0026], [0033]-[0034], Table 2 Ex. 13), such that the claimed property of a maximum total area of inclusions and the compound inclusions of 2300 um2 or less naturally flows.
Regarding claim 12, Uno discloses a content of manganese is 1.00 to 1.20 mass % (0.98) (Table 2 Ex. 13). The Mn content of Uno Table 2 Ex. 13 is so close to the claimed range that prima facie one skilled in the art would have expected the composition of Uno to have the same properties as the claimed steel. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are close. MPEP 2144.05(I).
Alternatively, Uno discloses 0.60 and up to 1.00% Mn ([0018]).
It would have been obvious to one of ordinary skill in the art in the Table 2 Ex. 13 composition of Uno to vary the Mn from 0.60 up to 1.00% to improve static strength without impairing economic efficiency ([0018]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 13, Uno discloses a content of vanadium (V) is 0.10 to 0.13 mass % (0.115 %) (Table 2 Ex. 13).
Regarding claim 14, a carbon equivalent (Ceq) that is represented by the following Formula 1 is 0.95 to 0.99 (0.66 to 0.98) (Uno Table 2 Ex. 13 Modified, [0016], [0026], [0033]-[0034]), Ceq = [C] + 0.167[Si] + 0.222[Mn] _ 0.067[Cu] + 0.067[Ni] + 0.25[Cr] + 0.4[Mo] + 1.8[V]---Formula (1) wherein each pair of square brackets represents “mass %” of an element in the corresponding pair of square brackets in Formula (1). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Related Art
Kim (KR 101715515 machine translation)
Kim discloses non-alloyed steel for a crankshaft ([0001]) with Mn generating MnS inclusions ([0047]) and Bi precipitated around MnS inclusions ([0100]).
Hiroshi (JP 2003-055714 machine translation)
Hiroshi discloses a non-heat treated steel use for a connecting rod part for an internal combustion engine (crankshaft) ([0001], [0036]) with an overlapping composition ([0022]-[0035]]).
Tokokage (JP 2002-180194 machine translation)
Tokokage discloses an untampered steel ([0001]) with an overlapping composition ([0016]-[0029]).
Mitsuo (JP H11-129838 machine translation)
Mitsuo discloses a non-heat treated steel ([0001]) with an overlapping composition ([0015]-[0037])
Takemoto (EP 0856590)
Takemoto discloses a non-thermal refining steel (2:5-10) with an overlapping composition (3:1 to 4:31).
Anami (JP 2001-234279 machine translation)
Anami discloses a cold forging steel ([0001]) with an overlapping composition ([0006]-[0009], [0020]-[0031], [0049]), where MnS-based inclusions improve cold forgeability and Bi improves crack initiation limit compressibility and chip remediation performance ([0011]-[0012], [0018]). Anami discloses controlling the oxygen content of the MnS inclusions ([0013]-[0015], [0033]-[0036]).
Elm.
Claim 10
JP ‘714
JP ‘194
JP ‘838
EP ‘590
JP ‘279
C
0.39 to 0.42
0.20 to 0.60
0.01 to 0.70
0.20 to 0.50
0.30 to 0.60
0.7 or less
Si
0.15 to 0.35
0.05 to 1.50
0.05 to 1.80
0.05 to 0.70
0.05 to 2.00
2.5 or less
Mn
0.90 to 1.30
0.30 to 2.0
0.20 to 3.50
0.60 to 1.00
0.10 to 1.00
0.1 to 3
V
0.08 to 0.15
0.010 to 0.50
0.50 or less
0.02 to 0.50
0.05 to 0.50
0.5 or less
P
0.030 max
-
-
0 to 0.05
0.03 to 0.20
-
Cu
0.300 max
Appropriate amount
-
0 to 0.30
0.03 to 0.50
2 or less
Ni
0 to 0.30
Appropriate amount
1.5 max
0 to 0.30
0.03 to 0.50
2 or less
Cr
0.35 max
1.5 max
1.5 max
0 to 1.00
0.01 to 0.50
1.5 or less
S
0.010 to 0.035
0 to 0.10
0.03 to 0.20
0.01 to 0.07
0.20 max
0.025 or less
Bi
0.02 to 0.05
0 to 0.30
0.3 max
0 to 0.10
0.30 max
0.2 or less
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.
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/STEPHANI HILL/Examiner, Art Unit 1735
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