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 and 2 in the reply filed on 07/13/2026 is acknowledged. Upon further consideration, claims 4, 5, 7, and 8 are also part of elected Group I due to their dependence of claim 1.
Claims 3, 6, and 9-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 07/13/2026.
Claims 1, 2, 4, 5, 7, and 8 are presented for examination on the merits.
Priority
Copies of the certified copies of the priority documents have been received in this National Stage application from the International Bureau.
Information Disclosure Statement
One (1) information disclosure statement (IDS) was submitted on 03/27/2024. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS is being considered by the examiner.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 20da from Fig. 4 is not in the instant specification.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
Regarding claim 1, the limitation “steel having been quenched and tempered” (emphasis added) is interpreted as a product-by-process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113. In this case, the instant claims are drawn to a mechanical component that includes steel. Prior art with a mechanical component that includes steel and has the claimed properties will be interpreted as reading on the instant claims regardless of whether the steel of the prior art has been quenched, tempered, or been subjected to a different processing.
Similarly, the limitation “wherein a dimensional change rate after retaining at 160°C for 2500 hours” of claims 7 and 8 is interpreted as a product-by-process limitation. See MPEP 2113. Prior art with a component with the claimed dimensional rate will be interpreted as reading on the claimed component despite differences in processing methods.
Regarding claim 1, the term “includes” in the limitation “mechanical component that includes steel” and the term “comprising” are interpreted as open-ended transitional terms. The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See MPEP 2111.03(I). In this case, the mechanical component does not exclude additional, unrecited elements.
Further regarding claim 1, the claimed core and surface are both interpreted as including steel given the limitations “a nitrogen concentration in the steel on the surface” in line 7 and “an amount of residual austenite in the steel in the core” in line 10.
Further regarding claim 1, the limitation “has a surface” in line 2 is interpreted as referring to the claimed mechanical component.
Regarding claims 7 and 8, the limitation “wherein a dimensional change after retaining at 160°C for 2500 hours” is interpreted as pertaining to the claimed mechanical component as a whole and changes to any dimension (e.g. thickness, length, width, volume, etc.) of a component will be interpreted as reading on the claimed “dimensional change”.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3 of copending Application No. 18/850,638 (reference application).
The copending application claims a “mechanical component having a surface, the mechanical component being made of steel subjected to quenching and tempering, the mechanical component comprising: a nitrided layer formed at the surface, wherein the steel contains at least 0.95 mass % and at most 1.10 mass % of carbon, less than 0.30 mass % of silicon, less than 0.50 mass % of manganese, less than 0.0080 mass % of sulfur, at least 1.3 mass % and at most 1.6 mass % of chromium, and a remainder composed of iron and an inevitable impurity, an average nitrogen concentration at the surface is equal to or more than 0.10 mass %, a hardness at the surface is equal to or more than 850 Hv, and an amount of retained austenite at the surface is equal to or less than 20 volume %” in claim 1 and “wherein a dislocation density of martensite at the surface is equal to or more than 1.1 x 1015 m-2, and a dislocation density of austenite at the surface is equal to or more than 2.5 x 1014m2” in claim 2. The instant application similarly claims a mechanical component with a nitride layer, an overlapping nitrogen concentration at the surface, an overlapping hardness at the surface, an overlapping amount of residual austenite, an overlapping dislocation density, and overlapping chemical composition (instant is a high carbon steel or bearing steel which has a carbon content overlapping with that of the copending application). Although the claims at issue are not identical, they are not patentably distinct from each other because of overlapping chemical compositions, structure (both have nitrided layers and overlapping austenite amounts), and properties (e.g. nitrogen concentration, hardness, dislocation density). In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. See MPEP § 2144.05 I.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
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(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 4 recites a “relationship” using X and Y terms. Amended claim 4 recites “934923.48 + 379.96 × X - 330.96 × X2 - 5.41 × 104 × logY + 783.83 × (logY2) ≥ 0”. This amendment introduces new matter since the instant specification recites the relationship as “934923.48 + 379.96 × X - 330.96 × Y2 - 5.41 × 104 × logY + 783.83 × (logX2) ≥ 0” (emphasis added to highlight differences, [0013], [0040], [0079]). The claimed relationship of claim 4 as currently amended does not have support in the instant disclosure.
Claims 1, 2, 4, 5, 7, and 8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a mechanical component with a nitrided layer and core, does not reasonably provide enablement for the claimed amount of residual austenite in the core, dislocation density of the residual austenite in the core, nitrogen concentration in the surface, and hardness in the surface of claim 1, dislocation density of martensite of claim 2, relationship of claim 4, and dimensional rate change of claims 7 and 8. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)
The broadest reasonable interpretation of claims 1, 2, 4, 5, 7, and 8 encompasses a mechanical component comprising high carbon or bearing steel, a nitrided layer, a core, and specific properties in the core of the component (amount of residual austenite and dislocation density of the residual austenite), the surface of the component (nitrogen concentration and hardness), and other parts of the component (dimensional rate change). The specification discloses sufficient information for one of ordinary skill in the art to make a steel component with a nitrided layer and core. Specifically, the instant specification recites a method of manufacturing including nitriding or nitrocarburizing, quenching, cooling, tempering, and a post-treatment ([0046]-[0053]). One of ordinary skill in the art understands nitriding or nitrocarburizing a component will result in a component with a nitrided layer and a core. However, the specification does not provide sufficient direction on how to achieve the specific nitrogen concentration at the surface, hardness at the surface, amount of residual austenite in the core, and dislocation density of residual austenite in the core of claim 1. Additionally, the specification does not provide guidance for achieving the dislocation density of martensite of claim 2, the relationship of claim 4, which depends on the nitrogen concentration and dislocation density of martensite, nor does the specification provide sufficient guidance on the dimensional change rate after retaining at 160°C for 2500 hours of claims 7 and 8.
Regarding the amount of residual austenite and dislocation density of residual austenite of claim 1, the instant specification recites the dislocation density of residual austenite increases with performing a sub-zero treatment or cryo treatment ([0060]). The instant specification recites it is conceivable to reduce the amount of residual temperature by performing tempering at a high temperature ([0055]) and by performing sub-zero treatment or cryo treatment ([0059]). The instant specification further recites the amount of residual austenite was adjusted by changing the cooling temperature and retaining time in the sub-zero or cryo treatment ([0088]).
Regarding the nitrogen concentration of claims 1 and 4, the instant specification recites the nitrogen concentration in the steel on the surface of each sample was adjusted by changing a heating temperature and a retaining time in a nitriding treatment or a nitrocarburizing treatment ([0066]).
Regarding the hardness of claim 1, the instant specification recites when processing target member 20 is heated at a temperature of higher than or equal to 180°C in tempering step S5, the higher the heating temperature, the lower the dislocation density of martensite and the lower the hardness ([0053]).
Regarding the dislocation density of martensite of claims 2 and 4, the instant specification recites the dislocation density of martensite in the steel on the surface of each sample was adjusted by changing a cooling temperature and a retaining time in a sub-zero treatment or a cryo treatment ([0066]).
Regarding the dimensional change rate of claims 7 and 8, the instant specification recites the dimensional change rate is a value obtained by dividing a value obtained by subtracting a dimension of the mechanical component before the retaining from a dimension of the mechanical component after the retaining (a difference in dimension of the mechanical component before and after the retaining) by the dimension of the mechanical component before the retaining ([0016]), which explains how to measure the claimed rate, but not how to make the claimed component with the claimed rate, or what processing changes are required to obtain the claimed 40 x 10-5 of claim 7 or 15 x 10-5 of claim 8, since the processing and chemistry of claims 7 and 8, as presently claimed are the same.
Therefore, based on the instant disclosure, the claimed properties are achieved by performing nitriding or nitrocarburizing at specific temperatures and times, tempering at “a high temperature”, and adjusting the cooling temperature and retaining times in a sub-zero treatment or cryo treatment.
Regarding nitriding or nitrocarburizing, the instant specification does not recite temperatures nor times for the nitriding or nitrocarburizing step and only recited the atmosphere gas contain a nitrogen source or a nitrogen source and a carbon source ([0049]-[0050]).
Regarding tempering, the instant specification recites tempering at a temperature lower than A1 transformation point of steel, a temperature of 180°C, or a temperature of higher than or equal to 180°C in the tempering step ([0053]), but does not recite tempering times.
Regarding the sub-zero treatment or cryo treatment, the instant specification recites cooling to a temperature lower than or equal to -100°C ([0052]), but does not recite retaining times.
Furthermore, the examples provided in Tables 1-4 only disclose the resulting properties and not the changes done to processing steps such as temperature and times which resulted in the differences shown in the properties of provided inventive examples and comparative examples. For instance, it is unclear why Sample 8 of Table 1 does not achieve the claimed nitrogen concentration or hardness. Since Sample 8 is SUJ2 steel, which is a bearing steel and therefore meets the claimed composition of claim 1, one of ordinary skill in the art would assume something changed in processing to result in undesirable hardness and nitrogen concentration. However, it is unclear what the processing differences are (e.g. using a temperature above/below a certain threshold, changes in cooling or heating rates, or changes in retaining times) and whether these undisclosed changes pertain to the nitriding or nitrocarburizing step, tempering step, sub-zero step, or a different processing step. Consequently, one of ordinary skill in the art would find it difficult to make the claimed component in a manner that meets all the claimed properties of claims 1, 2, 4, 5, 7, and 8.
At the time of filing, the state of the art was such that it is well known that rolling bearings made of steel are subjected to nitriding, quenching, sub-zero treatment, and tempering steps to achieve specific nitrogen concentrations and retained austenite amounts, as taught by JP 2006/322017 A of Sakaguchi (as cited in prior Office action and in IDS mailed 03/27/2024, with reference to its English machine translation, see “Free of Prior Art” section in this Office action). Sakaguchi, however, provides more guidance regarding specific parameters for the various processing steps, such as nitriding at 830-860°C for 7-10 hours in an atmosphere of Rx gas + propane gas + ammonia gas, sub-zero treatment at -100 to -60°C for 40 minutes, and tempering at 130-180°C for two hours ([0027]), and does not explicitly disclose any dislocation densities.
Given the large number of variables (including but not limited to steel composition, nitriding temperatures, nitriding times, nitriding environment, tempering temperatures, tempering times, sub-zero temperatures, and sub-zero retaining times) and the guidance provided, the level of predictability in achieving the claimed properties is low and one of ordinary skill in the art would need an unreasonably extensive amount of experimentation to arrive at the claimed invention.
Thus, the disclosed guidance in the instant specification does not bear a reasonable correlation to the full scope of the claim. Taking these factors into account, undue experimentation would be required by one of ordinary skill in the art to practice the full scope of claims 1, 2, 4, 5, 7, and 8.
Claims 5, 7, and 8 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 5 recites the limitation "wherein the steel contains greater than or equal to 0.77 mass percent of carbon, less than or equal to 4.0 mass percent of chromium, greater than or equal to 0.10 mass percent and less than or equal to 0.70 mass percent of silicon, and less than or equal to 0.25 mass percent of molybdenum”. This limitation renders the claim indefinite since it is unclear whether the steel of the claimed component needs to meet the composition of claim 1 (high carbon steel or bearing steel) or of claim 5. See 112(d) rejection below.
Claims 7 and 8 recite the limitation “wherein a dimensional change after retaining at 160°C for 2500 hours”. This limitation renders the claim indefinite since it is unclear whether the claimed retaining is from tempering step S5 ([0053]) or an additional unrecited processing step. Furthermore, Applicant is reminded that the patentability of a product does not depend on its method of production. See MPEP 2113. Additionally, see 112(d) rejections below for claims 7 and 8.
Claim 5, 7, and 8 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 5 recites a steel composition including C, Cr, Si, and Mo. Claim 1, on which claim 5 depends, recites the steel is a high carbon steel or bearing steel. One of ordinary skill in the art understands the composition of high carbon steels includes Mn, does not include Cr nor Mo (see Table 1 in JIS G4401:2000 standard) and that bearing steel has a maximum Cr content of 1.6% (see Table 2 in JIS G4805:1999 standard). Additionally, some high carbon steels have less than 0.77%C, such as SK60, SK65, and SK70 (see Table 1 of JIS G4401:2000 standard). Consequently, claim 5 includes compositions that are not considered either a high carbon steel or a bearing steel as required by claim 1, such as those with 1.7-4.0% Cr contents (not present in either high carbon steel or bearing steels), including Mo if high carbon steel, or missing Mn if high carbon steel. Therefore claim 5 fails to include all the limitations of the claim upon which it depends.
Claims 7 and 8 recite the limitation “wherein a dimensional change after retaining at 160°C for 2500 hours”, which has an indefiniteness issue, as described in the 112(b) rejection above. In the case where the retaining step is an additional step not included in the component of claim 1, since the component of claims 7 and 8 are subjected to an additional retaining step that is not included in claim 1, the components of claims 7 and 8 are different to the component of claim 1. A product may be claimed at a single point in time. Therefore, claims 7 and 8 fail to include all the limitations of the claim upon which it depends.
If the retaining step refers to tempering or a retaining step that was already applied to the component of claim 1, claims 7 and 8 fail to further limit the subject matter of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Free of Prior Art
At this time, the disclosure is insufficient to perform a substantive search and the pending claims are indicated herein as being free of the prior art.
The closest prior art is JP 2006/322017 A of Sakaguchi (as cited in prior Office action and in IDS mailed 03/27/2024, with reference to its English machine translation) which teaches a rolling bearing made of bearing steel that has been nitrided, quenched, and tempered (Abstract, [0002], reads on claimed mechanical component that includes steel having been quenched and tempered and reads on claimed steel is a high carbon steel or bearing steel).
Sakaguchi teaches the N content of the surface layer forming the rolling surface 3a is set to 0.20% by mass or more and 2.00% by mass or less, the amount of retained austenite in the surface layer is set to 5% by volume or more and 24% by volume or less (Abstract, reads on claimed wherein a nitrogen concentration in the steel on the surface is greater than or equal to 0.3 mass percent and an amount of residual austenite in the steel in the core is less than or equal to 5 volume percent; the Examiner notes that while the austenite of Sakaguchi is in the surface layer, one of ordinary skill in the art would reasonably expect the same amount of residual austenite in a core portion in close proximity to the surface layer and therefore the amounts of austenite of Sakaguchi and the instant invention overlap). Sakaguchi teaches a higher nitrogen content in the surface layer and a nitrided layer ([0017], reads on claimed nitrided layer that is located on the surface and contains nitrogen as a solid solution; a surface layer implicitly discloses a core located at a position farther away from the surface than the nitrided layer).
Sakaguchi teaches hardness of the surface layer is Hv743 or higher ([0024]) and further teaches inventive examples (Table 1, No. 1-11) with hardness values of 860-952 Hv. The examiner notes that the overlap of N content, residual austenite, and hardness values of the instant claims and Sakaguchi is prima facie obvious. See MPEP 2144.05(I).
Regarding processing, Sakaguchi teaches the steel is forged or cut, carburized and nitride in a mixed gas, quenched at a temperature between 820°C and 920°C, a sub-zero treatment is performed at -190 to 10°C to increase strain density of martensite, and a tempering is done to control the amount of residual austenite in the surface layer ([0016]-[0025]).
However, Sakaguchi does not explicitly disclose or render obvious a dislocation density of the residual austenite in the steel in the core.
Claim 1 presents a combination of features that are neither anticipated by nor obvious in view of the prior art available before the effective filing date of the claimed invention. Further, it would not have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Sakaguchi to obtain the claimed dislocation density without the use of impermissible hindsight. Consequently, the claims are deemed to be free of the prior art.
However, claims 1, 2, 4, 5, 7, and 8 are rejected under 35 U.S.C. 112(a), 112(b), and 112(d) in this Office action. A further search of prior art would be required to make an allowability determination should claims be amended in a manner that improves clarity and overcomes the 112 issues described in this Office action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAYELA ALDAZ whose telephone number is (571)270-0309. The examiner can normally be reached Monday -Thursday: 10 am - 7 pm and alternate Friday: 10 am - 6 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached at (571) 272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.A./Examiner, Art Unit 1733
/REBECCA JANSSEN/Primary Examiner, Art Unit 1733
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