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 .
DETAILED ACTION
Claims 1-7 have been cancelled; Claims 8-9 have been amended; Claims 15-16 are added as new claims. It is acknowledged of the receipt of the Applicant’s “132 Declaration” filed on 9/10/2026.
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
This application contains claims directed to the following patentably distinct species in the instant invention:
Claims 15-16 depend on independent claim 8 separately.
Species 1: Claim(s) 15, the Bi particles density is 90-8000 pieces/mm2;
Species 2: Claim(s) 16, the Bi particles density is 85-8000 pieces/mm2;
The species are independent or distinct because they indicate different Bi particles density ranges. The Applicant is required to select one species from the above species. Since Species 2 (claim 16) has been broader range, which has been selected in the following examination.
Therefore, claim 15 is withdrawn as non-elected claims. Claims 8-14 and 16 remain for examination, wherein claim 8 is an independent claim..
Previous Rejections/Objections
Previous rejection of Claim(s) 9 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or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 9/10/2026.
Previous rejection of Claims 8-14 on the ground of non-statutory obviousness type double patenting as being unpatentable over claims 1-2 of co-pending application No. 18/876350 (US-PG-pub 2025/0382687 A1) is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 9/10/2026.
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.
Claim(s) 8-12,14, and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Momozaki et al (JP 2004/018879 A, with on-line translation, listed in IDS filed on 2/28/2024, thereafter JP’879).
PG’879 is applied to the instant claims 8-12 and 14 for the same reason as stated in the previous office action dated 5/12/2026.
Still regarding claim 8 and regarding the newly added claim 16, JP’879 provides 19 pieces per visual field of 0.5 mm×0.5 mm in a cross section of the steel of precipitates of BN and B-containing Bi with diameters of 0.7 μm or larger for example #2 (which is 76 pieces/mm2--noted by the Examiner) and there is no particles diameter greater than 10mm (Fig.10-11 and 15 of JP’879). JP’879 also provides example having 22 pieces per visual field of 0.5 mm×0.5 mm in a cross section of the steel of precipitates of BN and B-containing Bi (Example #1 of JP’879), which corresponding to 88 pieces/mm2 (noted by the examiner). It is within the claimed Bi particle density range in the instant claim 8 and 16.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP’879 in view of Kono et al (JP 2008169411 A, with on-line translation, thereafter JP’411).
JP’879 in view of JP’411 is applied to the instant claim 13 for the same reason as stated in the previous office action dated 5/12/2026.
Response to Arguments
Applicant’s arguments to the art rejection to Claims 8-14 and 16 have been considered but they are moot in view of the new ground rejection as stated as above. The Applicant’s “132 Declaration” filed on 9/10/2026 has been fully considered but it is insufficient to overcome the rejection as stated above since JP’879 provides example having 22 pieces per visual field of 0.5 mm×0.5 mm in a cross section of the steel of precipitates of BN and B-containing Bi (Example #1 of JP’879), which corresponding to 88 pieces/mm2 (noted by the examiner). It is within the claimed Bi particle density range in the instant claim 8 and 16. It is further noted that there is no limitation for the “melting cracks”, and no data to show the criticality of the low limit 80 pieces/mm2 of Bi particles in term of “melting cracks”.
\The Applicant’s arguments are summarized as following:
1, the cited prior art, Momozaki et al (JP’879) does not teach, suggest or motivate ton including 80-8000 pieces/mm2 Bi particles. The Example of JP’879 does not overlap the claimed particle density.
2, unexpected results in Applicant’s “132 Declaration” filed on 9/10/2026 has shown criticality of the claimed Bi particles density.
In response,
Regarding the argument 1, as shown in the rejection for the instant claims in the previous office action dated 5/12/2026 and statement above, although 76 pieces/mm2 Bi-included particles disclosed in Example 2 of JP’879 is outside the claimed 80-8000 pieces/mm2 Bi particles as claimed in the instant claims, JP’879 provides example having 22 pieces per visual field of 0.5 mm×0.5 mm in a cross section of the steel of precipitates of BN and B-containing Bi (Example #1 of JP’879), which corresponding to 88 pieces/mm2 (noted by the examiner). It is within the claimed Bi particle density range in the instant claim 8 and 16.
Regarding the argument 2, refer to the response of the Applicant’s “132 Declaration” filed on 9/10/2026, the Applicant has not shown the criticality of the claimed Bi particle range in term of the “melting cracks” compared to the best example disclosed in cited prior art. Actually, P’879 provides example having 88 pieces/mm2 Bi-contained particles (Example #1 of JP’879), which is within the claimed Bi particle density in the instant claims 8 and 16.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to whose telephone number is (571)270-1884. The examiner can normally be reached on IFP.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan J Johnson can be reached on 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JIE YANG/Primary Examiner, Art Unit 1734
Prosecution Insights