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 .
Requirement for Information
Applicant and the assignee of this application are required under 37 CFR 1.105 to provide the following information that the examiner has determined is reasonably necessary to the examination of this application.
In response to this requirement, please provide answers to each of the following interrogatories eliciting factual information:
Technical information known to Applicant pursuant to 37 CFR 1.105(a)(1)(viii) providing evidence that the full scope of the claims is enabled. Specifically, while Applicant’s disclosure provides test data of a single test sample of steel which consisted of, in mass%, C being 1.15% (See paragraph [0077]) where the intermediate product was produced with a punched-portion volume ratio of 0.20% resulting in the maximum C concentration (Mass%) among the average C concentrations in the hub part being 1.28% (See Tables 3 and 5) thus resulting in a variation or increase of C concentration of 11.3%, claim 1 encompasses chemical compositions of the railway wheel where C, in mass %, consists of “more than 0.80% to 1.35%” with “an average C concentration in each rectangular region in the cross section of the hub part is 1.40% by mass or less”. As such, technical information or evidence of Applicant’s railway wheel having a chemical composition with carbon, in mass, at the upper end of the claimed range (i.e., 1.35%) and also having an average carbon concentration in each rectangular region in the cross section of the hub part being 1.40% by mass or less (thus resulting in a variation or increase of C concentration that is less than 3.7%) is being requested to help determine whether the full scope of claim 1 is enabled.
Technical information known to Applicant pursuant to 37 CFR 1.105(a)(1)(viii) concerning the related art to Maejima et al. (WO 2020/067506 A1; hereinafter “Maejima”), which is both commonly owned by Nippon Steel Corporation with the instant application and has a common inventor with the instant application. Specifically, Applicant is requested to provide technical information concerning the average carbon concentration in each 15 mm x 15 mm rectangular region in the cross section of the hub part of Maejima when the railway wheel consists of in mass %, a C concentration that is near the lower end of the claimed range (i.e., more than 0.80%) as disclosed in Maejima and is subject to the controlled cooling profiles for suppressing the formation of pro-eutectoid cementite in the hub part as disclosed (note that for the railway wheel of Maejima having a C concentration, in mass, of 0.80% to not read upon the independent claim, Maejima would unexpectedly and surprisingly need to have a variation or increase of C concentration of more than 75% at the hub part). Further, Applicant is requested to provide technical information concerning the punched-portion volume ratio of the intermediate product used to form the railway wheel of Maejima. Such information is being requested to help determine the patentability of Applicant’s claimed railway wheel over Maejima.
In responding to those requirements that require copies of documents, where the document is a bound text or a single article over 50 pages, the requirement may be met by providing copies of those pages that provide the particular subject matter indicated in the requirement, or where such subject matter is not indicated, the subject matter found in applicant’s disclosure.
The timing fee and certification requirements of 37 CFR 1.97 are waived for those documents submitted in reply to the requirement. This waiver extends only to those documents within the scope of this requirement under 37 CFR 1.105 that are included in the applicant’s first complete communication responding to this requirement. Any supplemental replies subsequent to the first communication responding to this requirement and any information disclosures beyond the scope of this requirement under 37 CFR 1.105 are subject to the fee and certification requirements of 37 CFR 1.97 where appropriate.
The applicant is reminded that the reply to this requirement must be made with candor and good faith under 37 CFR 1.56. Where the applicant does not have or cannot readily obtain an item of required information, a statement that the item is unknown or cannot be readily obtained may be accepted as a complete reply to the requirement for that item.
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.
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.
Claims 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Maejima et al. (WO 2020/067506 A1; previously cited by Applicant; hereinafter “Maejima”; corresponds to US 2022/0032681 A1 which is used below as the English-language translation for mapping the claimed limitations).
Regarding claim 1, Maejima discloses a railway wheel 1 comprising: a rim part 4, a hub part 2 having a through hole 21, and a web part 3 which is disposed between the rim part and the hub part (Fig. 1), and is connected to the rim part and the hub part (Fig. 1), wherein a chemical composition of the railway wheel consists of, in mass%, C: more than 0.80% to 1.35%, Si: 1.00% or less, Mn: 0.10 to 1.50%, P:0 to 0.050%, S: 0 to 0.030%, N: 0.0200% or less, Al: 0 to 1.500%, Cu: 0 to 0.50%, Ni: 0 to 0.50%, Cr: 0 to 0.50%, V: 0 to 0.12%, Ti: 0 to 0.010%, Mo: 0 to 0.20%, and Nb: 0 to 0.050%.with the balance being Fe and impurities (Abstract; paragraphs [0024-0034], [0041-0051], [0128-0137] and [0145-0154]; Tables 1 and 3), and wherein Maejima implicitly discloses in a cross section of the hub part obtained when, in a central axis direction of the through hole. the hub part is cut along a plane that includes the central axis, when regions of 15 mm x 15 mm defined by a plurality of axial line segments which are parallel to the central axis and which are arranged at a pitch of 15 mm in a radial direction of the railway wheel from an inner peripheral surface of the through hole, and by a plurality of radial line segments which are perpendicular to the central axis and which are arranged at a pitch of 15 mm in the central axis direction from a surface of the hub part in which an opening of the through hole is formed are defined as rectangular regions (evident from at least Fig. 1 and paragraph [0072] that the hub part can be defined by the claimed rectangular regions).
Maejima fails to expressly disclose an average C concentration in each rectangular region in the cross section of the hub part is less than 1.40% by mass.
Maejima, however, expressly teaches the railway wheel consists of: in mass %, a C concentration that can be as low as 0.80% (paragraphs [0025], [0042], [0129] and [0146]) and is produced to suppress formation of pro-eutectoid cementite in the hub part via controlled cooling of the individual parts of the wheel including the hub part (Fig. 16) utilizing various cooling rate profiles (Fig. 17; Table 4) such that an area fraction of pro-eutectoid cementite in the microstructure of the hub part is “0.90 to 15.00%” (paragraph [0140]) to prevent the deterioration of the toughness of the hub part (paragraphs [0018], [0019], [0077], [0106], [0109]).
From these teachings of utilizing controlled cooling to suppress formation of pro-eutectoid cementite in the hub part, thus minimizing localized increases in C concentrations and leading to a more uniform carbon distribution, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention that such modifications of the railway wheel of Maejima would result in an average C concentration in each rectangular region in the cross section of the hub part to be less than 1.40% by mass with a reasonable expectation of success in preventing the deterioration of the toughness of the hub part.
Regarding claim 2, Maejima further discloses the chemical composition contains one or more elements selected from the group consisting of: P:0.001 to 0.050% (Table 3), S: 0.001 to 0.030% (Table 3), Al: 0.001 to 1.500% (Table 3), Cu: 0.01 to 0.50%, Ni: 0.01 to 0.50%, Cr: 0.01 to 0.50% (Table 3), V: 0.01 to 0.12% (Table 3), Ti: 0.001 to 0.010%, Mo: 0.01 to 0.20%, and Nb: 0.010 to 0.050%.
Response to Amendment
The declaration under 37 CFR 1.132 filed 2 June 2026 is insufficient to overcome the rejection of claim 1 under 35 USC 103 based upon Maejima as set forth in the last Office action because: while the declaration generally highlights the differences between the instant application and Maejima regarding the method of forming the railway wheel and the means used to measure or determine the variations of the C concentration in the hub part, such differences are not relevant to the claimed invention which is directed to the product (i.e., a railway wheel) instead of a method of forming the railway wheel or a method for determining the average C concentration of the rectangular regions of the hub part. Further, the declaration fails to provide any evidence to discredit that it would have been obvious that the railway wheel of Maejima which consists of: in mass %, a C concentration that can be as low as 0.80% and expressly discloses the use of various controlled cooling rate profiles to suppress formation of pro-eutectoid cementite in the hub part thus minimizing localized increases in C concentrations and leading to a more uniform carbon distribution would result in an average C concentration in each rectangular region in the cross section of the hub part to be less than 1.40% (i.e., a variation or increase of C concentration of no more than 75% at the hub part compared to the 0.80% C concentration of the railway wheel).
Response to Arguments
Applicant's arguments filed 2 June 2026 have been fully considered but they are not persuasive.
In response to Applicant’s argument that “‘an average C concentration in each rectangular region in the cross section of the hub part is 1.40% by mass or less’ is completely different from suppressing the formation of pro-eutectoid cementite taught in Maejima”, the Examiner respectfully disagrees and notes that suppressing the formation of pro-eutectoid cementite in the hub part as taught by Maejima would directly result in minimizing localized increases in C concentrations and lead to a more uniform carbon distribution in the hub part.
In response to Applicant’s argument that the present invention suppresses variations in C concentration in the entire cross section of the hub part including the central axis while “Maejima merely adjusts the area fraction of pro-eutectoid cementite measured in a visual field of 200 μm x 200 μm in an arbitrary cross section of the hub part”, the Examiner respectfully disagrees as it is abundantly clear that Maejima is concerned with suppressing the formation of pro-eutectoid cementite, and thus variations in C concentration, across the entire hub part instead of a single arbitrary 200 μm x 200 μm cross section as alleged by Applicant. Specifically, paragraphs [0018] and [0019] of Maejima teaches for railway wheels with C content as high as 0.80% or more, pro-eutectoid cementite is likely to be formed in the railway wheel, including the hub part, thus deteriorating the toughness of the steel. Paragraph [0079] of Maejima teaches “in order to suppress the formation of pro-eutectoid cementite as much as possible, it has been found to be necessary to strictly control the production process”. Such production process, including the specific cooling profile for the hub part, is shown in Fig. 17 and Table 4, and described in paragraphs [0227-0235].
In response to Applicant’s argument that “the control of pro-eutectoid cementite carried out by Maejima is extremely microscopic as compared with the variations in C concentration in the entire cross section of the hub part controlled by the present invention”, the Examiner again notes that the claimed invention is not directed to the means employed for observing or determining C concentration. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). It is noted that while Maejima utilizes an optical microscope for observing the pro-eutectoid cementite at a so-called “extremely microscopic” level, the instant application utilizes an electron probe microanalyzer (EPMA) to determine the C concentration at points of an even more “extremely microscopic” level (i.e., at 500 x 500 points with a measurement interval of 30 μm in both the longitudinal and lateral directions of one 15 mm x 15 mm rectangular region).
Conclusion
This Office action has an attached requirement for information under 37 CFR 1.105. A complete reply to this Office action must include a complete reply to the attached requirement for information. The time period for reply to the attached requirement coincides with the time period for reply to this Office action.
THIS ACTION IS MADE FINAL. 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 KIP T KOTTER whose telephone number is (571)272-7953. The examiner can normally be reached 9:30-6 EST Monday-Friday.
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, Samuel (Joe) J Morano can be reached at (571)272-6684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Kip T Kotter/Primary Examiner, Art Unit 3615
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