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 Status
An amendment, filed 12/19/2025, is acknowledged. Claim 41, 48, 54, 59-63, and 65-66 are amended. Claims 41-83 are currently pending; Claims 70-83 are withdrawn.
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) 41-57, 60-65, and 68-69 are rejected under 35 U.S.C. 103 as being unpatentable over Nishida (US 2019/0040506)(previously cited).
With respect to Claim 41, Nishida teaches a method of manufacturing a stainless steel component comprising a fine-grained martensite structure component, the method comprising steps of: providing a steel component having an initial stainless steel composition, introducing nitrogen into the steel at a temperature T1 of 860°C or higher, preferably 1000°C or less, and including examples of 950°C thereby creating an at least partially austenitic nitrogen-containing steel component, cooling the stainless steel to a temperature T2 of at most 200°C, such that austenite is decomposed into martensite and one ordinary skill in the art would expect that at least “an amount” of carbon and/or nitrogen containing precipitates to form, bringing the steel component to a temperature T3 (referred to as a quenching temperature) of, for example, 950-1200°C and thus above T2, thereby again austenitizing at least part of the steel component, quenching the steel component to a temperature T4 below a martensite start temperature of the at least part austenitic nitrogen-containing steel component for initiating a transformation of at least some of the austenite into fine-grained martensite, thereby producing a steel component comprising at least a portion of fine-grained martensite structure component. (para. 89-94; Table 1). Note, that the claim does not require a component having a fully martensitic structure and therefore, as Nishida teaches a method forming a component with at least a portion of nitrogen-containing fine grained martensitic structure, it is deemed to meet the instant claim.
With respect to the claim step “iii)” and temperature T2, the claim only requires “bringing” the steel component to the claimed temperature range. It does not require holding, for any particular amount of time, within that temperature range. As a result, any amount of time the steel component spends within the temperature range of 500-800°C, is interpreted to meet the claimed limitation of “bringing” the component to this temperature range. Additionally, it is noted that the claim does not exclude additional steps, such as cooling below the stated temperature range, as further evidenced by the instant Fig. 1b. As Nishida teaches cooling the steel component from T1 (about 950°C) to at most 200°C, it necessarily brings the steel component through the required temperature range and meets this limitation.
Thus, Nishida teaches a method deemed to meet each of the recited claim steps and teachings temperatures T1, T2, T3, and T4 which respectively fall within or overlap the instantly claimed ranges. It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Finally, with respect to the limitation “such that austenite is decomposed into a steel component comprising at least an amount of carbon- and/or nitrogen-containing precipitates,” as Nishida teaches a steel comprising carbon and subjected to a nitrogen-introducing step, one ordinary skill in the art would expect that at least “an amount” (interpreted as one or more precipitates) of carbon and/or nitrogen containing precipitates to form. Moreover, as Nishida teaches a method comprising the same steps and the same or substantially the same parameters (e.g. temperature) as those instantly claimed, it would necessarily be expected to result in the same properties and/or structure.
"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, 195 USPQ 430, 433 (CCPA 1977). Thus, the burden is shifted to the applicant to prove that the product of the prior art does not necessarily or inherently possess the characteristics attributed to the claimed product. See In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (“When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not."); MPEP 2112.01. Therefore, the prima facie case can only be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product.
With respect to Claim 42, Nishida teaches a step wherein the steel component is heated to a temperature T3 of, for example, 950-1200°C, falling within the claimed range. (see rejection of claim 41 above).
With respect to Claim 43, Nishida teaches wherein the steel component is forged and annealed prior to heating to temperature 1, the steel component comprising carbon and 0.02 mass% nitrogen (para. 99), and thus, based on the processing treatments/history one of ordinary skill in the art would expect that “wherein the at least partly austenitic nitrogen-containing steel component comprises at least an amount of carbon- and/or nitrogen-containing precipitates.” Furthermore, Nishida specifically recognizes that large steel ingots/components are known to comprise carbides precipitates and thus, teaches an optional step to reduce such precipitates prior to the nitrogen introducing step (step ii). (para. 97). See also MPEP 2112.01.
With respect to Claims 44-47 and 50, Nishida teaches wherein the initial steel component composition comprises C: 0.10-0.40 mass%, Cr: 10.0-18.0 mass%, and N: 0.02 mass% or less and thus, overlaps the respectively claimed ranges of claims 44-47. (para. 42, 52, 56-57). Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to claim 48, Nishida teaches wherein after the nitrogen-introducing step the component, and thus including the at least partly austenitic nitrogen-containing steel component, comprises up to 2.0 mass% nitrogen. (para. 56-57). Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claim 49, Nishida teaches a method comprising repeated heating and cooling steps, including temporary cooling step equivalent to step iii, and wherein the method is used to control prior austenite (i.e. residual austenite grain size) grain size. (para. 90). Thus, Nishida is deemed to teach wherein the steel component produced in step iii may comprise a content of retained austenite. Furthermore, it would have been obvious to one of ordinary skill in the art performing the method of Nishida comprising an austenitizing heating step to T1 followed by cooling to a temperature T2 to control the content of residual austenite in the steel component, including within the broadly claimed range, by adjusting cooling rate and stop cooling temperature, in order to adjust the final properties, including grain size, of the finished steel component. See also MPEP 2144.05.
With respect to Claim 51, Nishida teaches controlling the grain size to an average grain size of 20 microns or less, the fine grain size resulting from fine austenite grains (see para. 90), and wherein the grain size would not be substantially altered by step v, and thus, is deemed to teach an austenite grain size of step iv falling within the claimed range.
With respect to Claim 52, Nishida teaches a tempering step, which may be considered step vi, comprising tempering the steel component to a temperature of, for example, 200-400°C, falling within the claimed range. (para. 96).
With respect to Claims 53-54, Nishida teaches a subzero thermal treatment between steps v and vi, including examples at a temperature of -75°C, falling within the claimed range(s) of claim 54. (para. 95, 102, 121).
With respect to Claims 55-56, Nishida teaches wherein step ii comprises gas nitriding, the gas atmosphere comprising nitrogen. (para. 89-92, 100).
With respect to Claim 57, Nishida teaches wherein in heating and cooling of steps iv and v, respectively, the steel component is kept in a non-oxidizing environment, such as a vacuum, in order to prevent chemical influences, including changing of the nitrogen content of the steel component. (para. 95, 102). While the reference is silent as to the atmosphere during the cooling of step iii, it follows that it would have been obvious to one of ordinary skill in the art to perform the cooling to a temperature T2 of step iii in a non-oxidizing environment, such as a vacuum, taught by Nishida, in order to prevent unwanted chemical changes, oxidation, and/or contamination of the steel component and in particular, to enable more precise control over the nitrogen absorption and final nitrogen content of the steel component.
With respect to Claim 60, Nishida teaches cooling from T1 to a temperature T2, of at most 200°C, including room temperature (para. 90) and thus, is deemed to teach wherein prior to step iv the component is “taken” through/within the claimed range, meeting the instantly claimed limitation. Note, Claim 60 does not require a step separate from that of, for example, step iii, so long as the component is taken through the respective temperature ranges. Furthermore, as Nishida teaches a method comprising the same material, steps, and processing, parameters it would necessarily be expected to result in the same structure and properties, including the claimed “phases and/or microstructures comprising carbides and/or nitrides.” MPEP 2112.01.
With respect to Claim 61, Nishida teaches wherein T1 may be 1000°C (para. 92), deemed sufficiently close to “above 1000°C” to establish a prima facie case of obviousness. The range is deemed sufficiently close to the claimed range to establish a prima facie case of obviousness. See MPEP 2144.05. (“Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of ‘having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium’ as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. ‘The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.’”).
With respect to Claims 62-63, as with claim 41, claims 62-63 do not require any particular holding time at the recited temperatures. Nishida teaches cooling from T1 (about 950°C) to a temperature T2, of at most 200°C and thus, teaches bringing the steel component through the respectively claimed ranges of claims 62 and 63. (see rejection of claim 41 above).
With respect to claim 64, Nishida teaches heating to a temperature T3 of 950-1200°C, below the melting point of the steel component and which may be the same or below T1, which is preferably, between 860-1000°C. (para. 89, 92-94). Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to claim 65, Nishida teaches heating to a temperature T3 of 950-1200°C, overlapping the claimed range(s). (para. 89, 92-94). Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claims 68-69, Nishida teaches a method comprising introducing nitrogen into the surface of a stainless steel component, thereby forming a hardened fine-grained martensitic structure on at least the surface of the component, specifically, to a depth of at least 0.05 mm from the surface, wherein the component has a thickness of 0.30 mm or less. (para. 21-23). Thus, Nishida teaches wherein the hardened nitrogen-rich surface layer to a depth of 0.05 mm or more, overlaps with the thickness of component (0.30 mm or less), such that the entire component may have said structure or, alternatively, the hardened structure may be provided adjacent to a “core” having a second, different, structure that is not a hardened nitrogen-rich fine grained martensite. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Claim(s) 58-59 and 66-67 are rejected under 35 U.S.C. 103 as being unpatentable over Nishida (US 2019/0040506) as applied to claim 41 above, in view of Christiansen (US 2014/0048180)(previously cited).
With respect to Claims 58-59 and 66, Nishida teaches wherein step iv and step iii (see rejection of claim 57 above) may be performed in a non-oxidizing atmosphere, for example, a vacuum or hydrogen atmosphere. (para. 95). Nishida is silent as to one of the recited gases and silent as to the specific pressure of claim 59 and 66, respectively.
Christiansen teaches a method of treating a stainless steel component comprising introducing nitrogen into the component under high temperature followed by cooling, wherein the cooling takes place in an inert gas such as argon or helium at a high pressure, for example, 4-20 bar. (para. 11-13, 70).
Thus, both Nishida and Christiansen are drawn to methods of introducing nitrogen into a stainless steel component at an elevated temperature followed by a cooling step. It would have been obvious to one of ordinary skill in the art to modify the method of Nishida to perform steps following the nitrogen-introducing step (thus including one or more of step iii, iv, and v) under a controlled inert atmosphere comprising argon or helium at a pressure of 4 to 20 bar, as taught by Christiansen, in order to prevent unwanted chemical changes, oxidation, and/or contamination of the steel component and in particular, to enable more precise control over the nitrogen absorption and final nitrogen content of the steel component. With respect to Claims 59 and 66, it would have been obvious to one of ordinary skill in the art to select from the overlapping pressure ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claim 67, Nishida is silent as to a further step of carburizing or carbo-nitriding.
As detailed above, Christiansen teaches a method of treating a stainless steel component comprising introducing nitrogen in to the steel component under high temperature, and further teaches additional carburizing or nitrocarburizing steps at a lower temperature than the nitrogen-introducing step. (para. 11-15). The reference teaches that the low temperature step provides a steel component with enhanced strength and corrosion resistance and also requires reduced processing time. (para. 15-16).
It would have been obvious to one of ordinary skill in the art to modify the method of Nishida, to further perform a carburizing step or carbo-nitriding step, as taught by Christiansen, in order to further enhance the strength and corrosion resistance of the steel component.
Claim(s) 68-69 are rejected under 35 U.S.C. 103 as being unpatentable over Nishida (US 2019/0040506) as applied to claim 41 above, in view of Imundo (US 2018/0355464)(previously cited).
With respect to Claims 68-69, Nishida teaches a method comprising introducing nitrogen into the surface of a stainless steel component, thereby forming a hardened fine-grained martensitic structure on at least the surface of the component, specifically, to a depth of at least 0.05 mm from the surface. (para. 21-23). In the alternative to the above rejection, if Nishida is not deemed to teach a case-core structure,
Imundo teaches a method of manufacturing a steel component comprising a fine-grained martensite structure component, the method comprising introducing carbon into the component at a high temperature and resulting in a component with a hardened surface layer (i.e. case) and a core having a second, different, structure. (abstract; para. 3, 12-14).
It would have been obvious to one of ordinary skill in the art to modify the method of Nishida to select a component thickness such that the method results in a hardened surface/case with a fine grained martensitic structure and a core having a differing structure, as taught by Imundo, in order to allow for a greater scope of component thicknesses enabling more applications and additionally, to obtain the benefit of a hardened case-core structure (see para. 3-7 of Imundo). Finally, with respect to claim 69, as Nishida teaches forming a hardened layer of 0.05 mm or more, it would have been obvious to select from the overlapping portion of the case depth range. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Response to Arguments
Applicant's arguments filed 12/19/2025 have been fully considered but they are not persuasive.
Applicant argues that “Claim 63 depended directly from claim 41, not from claim 60. As such, the features of claim 63, which have been incorporated into claim 41, were and are not limited by the features of claim 60.” This argument is not found persuasive.
Applicant misstates or misinterprets the rejection in the Non-Final Office Action, which demonstrates that the independent claim clearly allowed for quenching to below 100°C, based on dependent claim 60 and did not suggest claim 63 depended on claim 60. Claim 41 is indeed limited by the features of claim 60 to the degree that the scope of claim 41 must allow for the narrower limitations of claim 60 without the latter claim violating 35 U.S.C. 112(d).
Applicant argues that prior art Nishida fails to teach a step of bringing the steel component to a temperature T2 between 500°C and 800°C. Applicant argues that Nishida, teaching a temperature T2 of at most 200°C, does not meet the claimed temperature range T2.
With respect to Claim 41 and the recited step “iii)” and temperature T2, the claim only requires “bringing” the steel component to the claimed temperature range. It does not require holding, for any particular amount of time, within that temperature range. As a result, any amount of time the steel component spends within the temperature range of 500-800°C, is interpreted to meet the claimed limitation of “bringing” the component to this temperature range. As Nishida teaches cooling the steel component from T1 (about 950°C) to at most 200°C, it necessarily brings the steel component through the required temperature range and meets this limitation.
Additionally, it is noted that the claim does not exclude additional steps, such as cooling below the stated temperature range, as further evidenced by the instant Fig. 1b. In particular, Fig. 1b, depicting an inventive process, comprises the steel component is quenched from T1, then reheated to 500-800C and held for an amount of time, quenched again, then heated again to T3 for an amount of time. These cooling and holding steps are not recited in claim 41. Applicant is invited to claim specific process steps, such as holding times at the relevant temperatures to overcome the rejection.
Applicant also argues that the rejection fails to properly teach or suggest the claimed carbon and/or nitrogen containing precipitates, arguing that the rejection does not satisfy MPEP 2112. (Remarks, pgs. 16-17). These arguments have been fully considered but are not found persuasive.
Nishida teaches a steel comprising carbon and subjected to a nitrogen-introducing step, one ordinary skill in the art would expect that at least “an amount” (interpreted as one or more precipitates) of carbon and/or nitrogen containing precipitates to form. Moreover, as Nishida teaches a method comprising the same steps and the same or substantially the same parameters (e.g. temperature) as those instantly claimed, it would necessarily be expected to result in the same properties and/or structure.
"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, 195 USPQ 430, 433 (CCPA 1977). Thus, the burden is shifted to the applicant to prove that the product of the prior art does not necessarily or inherently possess the characteristics attributed to the claimed product. See In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (“When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not."); MPEP 2112.01. Therefore, the prima facie case can only be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product.
Applicant fails to provide sufficient evidence or arguments, commensurate with the scope of the claims, to rebut the prima facie case of obviousness established by the prior art.
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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/JOHN A HEVEY/Primary Examiner, Art Unit 1735