DETAILED ACTION
Claims 15-27 are pending, and claim 15 is currently under review.
Claims 1-14 are cancelled.
Claims 16-27 are withdrawn.
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 .
Election/Restrictions
Applicant’s election without traverse of group I, claim 15, in the reply filed on 7/07/2026 is acknowledged.
Claims 16-27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/07/2026.
Response to Amendment
The amendment filed 7/07/2026 has been entered. Claims 15-27 remain(s) pending in the application.
Claim Interpretation
The term “ultra-high strength” is interpreted to merely refer to a tensile strength of at least 2000 MPa as further recited in claim 15.
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.
Claim 15 is 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 15 recites “main” alloying elements, which is indefinite because it is unclear as to what further meaning/structure, if any, is required by the term “main”. It is unclear whether “main” requires some further consideration of structure or alloying, or whether “main” merely means that the alloying element is not an impurity, or something entirely different. The examiner interprets the aforementioned term to merely refer to the claimed alloying element ranges rather than requiring any particular further structure or considerations.
Claim 15 is 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 15 recites “restricted” impurity elements, which is indefinite because it is unclear as to what further meaning/structure, if any, is required by the term “restricted”. It is unclear whether “restricted” requires some further consideration of structure or alloying, and accordingly it is further unclear whether non-impurity elements can therefore be unrestricted and what claim scope this entails. The examiner interprets the aforementioned term to merely refer to the claimed impurity element ranges rather than requiring any particular further structure or considerations.
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) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hiraishi et al. (JPH0790496, machine translation referred to herein) alone; or alternatively further in view of Kodym et al. (1985, Trace elements in steel – ways to influence melting operations), Mustafa et al. (2021, Effect of lead and zinc impurities in ironmaking and the corresponding removal methods: a review), and Tervo et al. (2017, Effect of impurity level and inclusions on the ductility and toughness of an ultra-high strength steel).
Regarding claim 15, Hiraishi et al. discloses a steel composition as seen in table 1 below [0015-0016]. The examiner notes that the overlap between the steel composition of Hiraishi et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I). The examiner interprets the omission of specific elements in the disclosure of Hiraishi et al. to mean that these elements are not included or merely included in typical impurity amounts that would still overlap with the claimed ranges as would have been recognized by one of ordinary skill.
Hiraishi et al. does not expressly teach that the steel is a spring steel. However, the examiner notes that this is merely an instance of intended use of the claimed steel, which is not considered to impart any further structure to the claims because 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. See MPEP 2111.02. Accordingly, the steel of Hiraishi et al. would be entirely capable of being utilized for springs as recognized by one of ordinary skill.
Hiraishi et al. does not expressly teach a tensile strength of at least 2000 MPa as claimed. However, one of ordinary skill would understand that steel properties such as tensile strength are directly influenced by steel composition and microstructure. Hiraishi et al. discloses an overlapping steel composition as shown below. Hiraishi et al. further teaches a similar microstructure of cemented carbides [0021-0022] which is substantially identical to the sorbite (ie. dispersed carbides) microstructure of the instant application [0036 instant specification]. Therefore, similar overlapping values of tensile strength would have naturally flowed from the disclosure of Hiraishi et al. See MPEP 2112 & MPEP 2144.05(I). The examiner’s position is further bolstered by the overlapping hardness values obtained by Hiraishi et al. of at least 300 HV relative to those achieved by the instant specification (350 HB or less) [0034 instant specification].
Alternatively, Hiraishi et al. does not expressly teach limiting the claimed impurity element ranges as claimed. However, Kodym et al., Mustafa et al., and Tervo et al. teach controlling impurity amounts as shown in table 1 below to avoid damaging effects of impurities [p.1, fig.5.4 Kodym]; to avoid harmful amounts of Zn [p.2 Mustafa]; and to avoid detrimental effects on mechanical properties [abstract Tervo]. Therefore, it would have been obvious to one of ordinary skill to modify the steel of Hiraishi et al. to control impurity elements for the aforementioned benefits disclosed by the prior art. The examiner notes that the ranges of the prior art overlap with and fall within those as claimed. See MEPP 2144.05(I).
Table 1.
Element (wt.%)
Claim 15 (wt.%)
Hiraishi et al. (wt.%)
C
0.45 – 0.6
0.1 – 1.2
Si
0.15 – 0.35
0 – 1
Mn
6 – 12
10 – 25
Al
1 – 3
0 – 1
Cr
0.3 – 0.5
0 – 15
Mo
0.1 – 0.25
0 – 3
V
0.1 – 0.5
0.1 – 4
Nb
0.025 – 0.04
0 – 3
N
0.005 – 0.015
0 – 0.3
Pb
0 – 0.03
n/a
up to 0.002 (Kodym)
Sn
0 – 0.03
n/a
up to 0.008 (Kodym)
Zn
0 – 0.03
n/a
0.00015 (Mustafa)
Sb
0 – 0.03
n/a
up to 0.002 (Kodym)
Bi
0 – 0.03
n/a
up to 0.0005 (Kodym)
O
0 – 0.0015
n/a
0.0008 (Tervo)
H
0 – 0.0015
n/a
up to 0.0003 (Kodym)
S
0 – 0.02
0 – 0.005
P
0 – 0.02
0 – 0.01
Cu
0 – 0.02
n/a
up to 0.08 (Kodym)
Ni
0 – 0.35
0 – 5
Fe & Impurities
Balance
Balance
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ehrhardt et al. (US 2016/0017469) alone; or alternatively further in view of Kodym et al. (1985, Trace elements in steel – ways to influence melting operations), Mustafa et al. (2021, Effect of lead and zinc impurities in ironmaking and the corresponding removal methods: a review), and Tervo et al. (2017, Effect of impurity level and inclusions on the ductility and toughness of an ultra-high strength steel).
Regarding claim 15, Ehrhardt et al. discloses a steel composition as seen in table 2 below [0008-0010]. Ehrhardt et al. further discloses a tensile strength of 1400 to 2400 MPa [0009]. The examiner notes that the overlap between the steel composition and tensile strength of Ehrhardt et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I). The examiner interprets the omission of specific elements in the disclosure of Ehrhardt et al. to mean that these elements are not included or merely included in typical impurity amounts that would still overlap with the claimed ranges as would have been recognized by one of ordinary skill.
Ehrhardt et al. does not expressly teach that the steel is a spring steel. However, the examiner notes that this is merely an instance of intended use of the claimed steel, which is not considered to impart any further structure to the claims because 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. See MPEP 2111.02. Accordingly, the steel of Ehrhardt et al. would be entirely capable of being utilized for springs as recognized by one of ordinary skill.
Alternatively, Ehrhardt et al. does not expressly teach limiting the claimed impurity element ranges as claimed. However, Kodym et al., Mustafa et al., and Tervo et al. teach controlling impurity amounts as shown in table 1 below to avoid damaging effects of impurities [p.1, fig.5.4 Kodym]; to avoid harmful amounts of Zn [p.2 Mustafa]; and to avoid detrimental effects on mechanical properties [abstract Tervo]. Therefore, it would have been obvious to one of ordinary skill to modify the steel of Ehrhardt et al. to control impurity elements for the aforementioned benefits disclosed by the prior art. The examiner notes that the ranges of the prior art overlap with and fall within those as claimed. See MEPP 2144.05(I).
Table 2.
Element (wt.%)
Claim 15 (wt.%)
Ehrhardt et al. (wt.%)
C
0.45 – 0.6
0.3 – 0.85
Si
0.15 – 0.35
Si+Al: 1 – 4
Mn
6 – 12
1 – 6
Al
1 – 3
Si+Al: 1 – 4
Cr
0.3 – 0.5
0 – 1
Mo
0.1 – 0.25
0 – 0.5
V
0.1 – 0.5
0 – 0.2
Nb
0.025 – 0.04
0 – 0.1
N
0.005 – 0.015
0 – 0.015
Pb
0 – 0.03
n/a
up to 0.002 (Kodym)
Sn
0 – 0.03
n/a
up to 0.008 (Kodym)
Zn
0 – 0.03
n/a
0.00015 (Mustafa)
Sb
0 – 0.03
n/a
up to 0.002 (Kodym)
Bi
0 – 0.03
n/a
up to 0.0005 (Kodym)
O
0 – 0.0015
n/a
0.0008 (Tervo)
H
0 – 0.0015
n/a
up to 0.0003 (Kodym)
S
0 – 0.02
n/a
up to 0.015 (Kodym)
P
0 – 0.02
n/a
up to 0.015 (Kodym)
Cu
0 – 0.02
0 – 1
Ni
0 – 0.35
0 – 2
Fe & Impurities
Balance
Balance
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 5712721177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734
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