DETAILED ACTION
Claims 1-4 are pending and currently under review.
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 .
Response to Amendment
The amendment filed 7/24/2026 has been entered. Claims 1-4 remain(s) pending in the application. Applicant’s amendments to the Claims have overcome each and every 112(b) rejection previously set forth in the Non-Final Office Action mailed 5/27/2026.
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) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sakata et al. (JP2018076557, machine translation referred to herein) alone or alternatively further in view of Kawasaki et al. (JPH04285143, machine translation referred to herein).
Regarding claim 1, Sakata et al. discloses steel bars for electrical applications [0001, 0057]; wherein said steel has a composition as seen in table 1 below [0016, 0020]. The examiner notes that the overlap between the steel composition of Sakata et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I).
Sakata et al. does not expressly teach a critical upset ratio as claimed. However, the examiner submits that an overlapping, substantially similar range of critical upset ratios would have naturally flowed from the disclosure of Sakata et al. One of ordinary skill would readily understand that critical upset ratio is a mechanical property which is directly affected by steel composition and manufacturing parameters. Sakata et al. discloses an overlapping composition as already explained. Sakata et al. further discloses manufacturing the steel through hot rolling at 1100 degrees C and annealing at 500 to 1200 degrees C [0052, 0057], which is substantially similar to the hot forging at 1200 degrees C and annealing at 950 degrees C of the instant specification [0038 instant spec.]. Since Sakata et al. discloses an overlapping steel composition and substantially similar method of manufacture, one of ordinary skill would understand similar overlapping properties of critical upset ratio to have naturally flowed absent concrete evidence to the contrary. See MPEP 2144.05(I) & MPEP 2112.
Alternatively, Sakata et al. does not expressly teach a critical upset ratio as claimed. Kawasaki et al. discloses that it is known to control a critical upset ratio to be above 60 percent according to a test piece having a diameter of 14 mm and height of 22.5 mm, notch depth of 0.8 mm, and tip radius of 0.15 mm is cracked [0024-0025, fig.2]. This parameter is controlled to ensure good ductility of the steel [0024]. Therefore, it would have been obvious to one of ordinary skill to modify the steel of Sakata et al. by controlling a critical upset rate to be 60 percent or higher to ensure good ductility as taught by Kawasaki et al. above. Although the test parameters of Kawasaki et al. vary slightly relative to those as claimed, one of ordinary skill would readily recognize that the disclosed range of 60 percent or higher for a slightly smaller test piece still overlaps with the claimed range which is prima facie obvious. See MPEP 2144.05(I).
Table 1.
Element (wt.%)
Claim 1 (wt.%)
Sakata et al. (wt.%)
C
0 – 0.02
0.0001 – 0.05
Si
0 – 0.023
0 – 0.5
Mn
0.01 – 0.5
0.1 – 0.5
P
0.002 – 0.02
0 – 0.02
S
0.02 – 0.05
0 – 0.1
Al
0.013 – 0.05
0 – 0.05
N
0.001 – 0.01
0 – 0.01
B
0.0003 – 0.0065
0 – 0.03
Fe and impurities
Balance
Balance
Regarding claim 2, the aforementioned prior art discloses the steel of claim 1 (see previous). Sakata et al. further discloses an inclusion of Cu from 0 to 0.1 weight percent, among others, which falls within the claimed range [0018].
Regarding claims 3-4, the aforementioned prior art discloses the steel of claims 1-2 (see previous). Sakata et al. is further silent regarding any inclusions of the claimed ranges, which meets the claims since the claimed ranges allow for 0%.
Response to Arguments
The previous rejections over Masumoto et al. have been withdrawn in view of applicant’s amendments.
Applicant's arguments 7/24/2026 regarding the 103 rejections over Sakata et al. have been fully considered but they are not persuasive.
Applicant argues that no evidence or reasoning is provided to show that the disclosure of Sakata et al. meets the claimed critical upset ratio features. The examiner cannot concur. Overlapping values of critical upset ratio would have naturally flowed from the disclosure of Sakata et al. as explained above.
Applicant’s arguments are further moot in view of the new grounds of rejection over Kawasaki et al.
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.
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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