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 .
Election/Restrictions
Applicant’s election without traverse of Group I (Claims 1-6) in the reply filed on 06/16/2026 is acknowledged. Claim 7 is withdrawn. Claims 1-6 are examined herein.
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.
Claims 1-6 are 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 1 recites “Hv is in Hv” in the last line. The meaning of this limitation is unclear. Vickers hardness has a unit. “Hv” is not a unit. Appropriate correction is required.
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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshida (US 2007/0017610).
Regarding claims 1-6, Yoshida teaches a steel containing 0.2-0.6 wt.% C, 0.05-0.5 wt. % Si, 0.1-2 wt.% Mn, 0.005-0.5 wt. % Al, 0.015 wt.% or less P, 0.06 wt.% or less S and 0.01 wt.% or less N ([0022] to [0035]), which overlap the recited composition in claims 1-2 and it would be obvious to one of ordinary skill in the art to select the amount of each element based on the ranges disclosed in Yoshida to make a steel that meets the recited composition in claims 1-2. See MPEP 2144.05 I.
Yoshida discloses that the steel is heated to 900-1000 ºC, quenched in oil or water to make a steel having martensite structure, and tempered at 580 ºC or higher ([0041]), which meets the limitation that the steel contains 80 vol.% or more tempered martensite. Yoshida discloses that the steel has HV hardness of 460 or higher ([0039]), which overlaps the recited hardness in claims 1, 5 and 6. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05 I.
Yoshida does not explicitly disclose the carbide amount and the formula (1) limitations as recited in claims 1 and 5, and the carbide size limitation as recited in claim 3. However, these limitations depend on the steel composition and a method of making the steel. Yoshida discloses that the steel is heated to 900-1000 ºC, quenched in oil or water to make a steel having martensite structure, and tempered at 580 ºC or higher ([0041]), which meets the recited quenching temperature, cooling rate and the tempering temperature recited in claim 7. In view of the fact that Yoshida teaches a steel composition that meets the recited composition in claim 2 and a method of making the steel that meets the recited quenching temperature, cooling rate and the tempering temperature recited in claim 7, one of ordinary skill would expect that the steel disclosed by Yoshida to meet the recited carbide amount and the recited formula (1) in claims 1 and 5, and the carbide size limitation as recited in claim 3. “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, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 I.
The preamble “for a sliding part” in claim 1 is intended use. When the preamble only states a purpose or intended use for the invention, the preamble is not a claim limitation. See MPEP2111.02 II.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Xiaowei Su whose telephone number is (571)272-3239. The examiner can normally be reached 8:00-5:00.
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/XIAOWEI SU/Primary Examiner, Art Unit 1733
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