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 .
Status of Claims
Claims 1-16 are pending and presented for examination on the merits.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
Four (4) information disclosure statement(s) (IDS) were submitted on 04/17/2024, 07/10/2024, 04/25/2025, and 04/09/2026. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS are being considered by the examiner.
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.
Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over JP S46-40853 to Yasuo et al. (“Yasuo”) (computer-generated translation is attached) in view of Fruehan et al., "Hydrogen and Nitrogen Control in Ladle and Casting Operations," Materials Science and Engineering Department, Carnegie Mellon University (“Fruehan”).
Regarding claims 1, 5, 8, 10, 11, and 13-16, Yasuo discloses a semi-hard magnetic material that can be used in applications (semi-hard magnetic steel component). Col. 1. The steel contains the following elements (col. 2, col. 4, sole claim):
Element
Claim 1
JP S46-40853
C
0.60 - 1.50
0.2 - 0.8
Si
> 0 to 0.75
0.15 - 2.2
Mn
> 0 to 1.00
0.3 - 1.7
P
> 0 to 0.050
< 0.030
S
> 0 to 0.050
< 0.035
Cu
> 0 to 0.30
< 0.5
Ni
> 0 to 0.30
< 3.5
Mo
> 0 to < 0.30
< 1.0
Cr
0.85 - 2.00
< 3.5
Al
> 0 to 0.100
< 0.2
N
> 0 to 0.0100
-----------------
iron and inevitable
balance
base (steel)
impurities
The overlap between the ranges taught in the prior art and recited in the claims creates a prima facie case of obviousness. MPEP § 2144.05(I). It would have been obvious for one of ordinary skill in the art to select from among the prior art ranges because there is utility over an entire range disclosed in the prior art.
Yasuo is silent regarding the amount of nitrogen (N) in the steel. However, nitrogen is a common gaseous element that becomes dissolved in steel during the steelmaking process, as noted by Fruehan. Page 2 – Executive Summary. Depending on the type of furnace, the nitrogen level can vary from 20-60 ppm to 70-120 ppm. Page 3 – Introduction. Nitrogen has the ability to impact the mechanical properties (e.g., tensile strength) of steel. Pages 2-3.
Thus, one of ordinary skill in the art would have recognized that nitrogen would be present to some degree, such as about 120 ppm or less, in the steel of Yasuo given the natural nitrogen pickup that occurs in the steelmaking process. In addition, it would have been obvious to one of ordinary skill in the art to have controlled the nitrogen content so as to not negatively affect the properties of the steel.
Yasuo is silent regarding the tempered martensitic phase, X-ray diffraction peak from the (211) plane, the area ratio of carbides, and the Vickers hardness. It is well established, however, that when a material is produced by a process that is identical or substantially identical to that of the claims and/or possesses a structure or composition that is identical or substantially identical to that of the claims, any claimed properties or functions are presumed to be inherent. Such a finding establishes a prima facie case of anticipation or obviousness. See MPEP § 2112.01.
In the present instance, Yasuo discloses the steel chemical composition that meets the claimed composition. Additionally, Yasuo discloses a method of manufacture in which the steel is quenched from 850°C and tempered at temperatures up to 500°C. Col. 2, col. 3; Table 1. These temperatures fall within the quench and temper temperatures disclosed in the instant specification as originally filed, for example, at page 26). Therefore, any properties, structure, and attributes, such as the microstructure, hardness, and carbide content claimed, would be expected to also exist in Yasuo’s steels given the matching composition and method of manufacture.
Regarding claim 2, Yasuo discloses a Cu content of less than 0.5%. Col. 2, col. 4, sole claim.
Regarding claims 3 and 6, Yasuo discloses a Ni content of less than 3.5%. Col. 2, col. 4, sole claim.
Regarding claims 4, 7, 9, and 12, Yasuo discloses a Mo content of less than 1.0%. Col. 2, col. 4, sole claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VANESSA T. LUK whose telephone number is (571)270-3587. The examiner can normally be reached Monday-Friday 9:30 AM - 4:30 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith D. 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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/VANESSA T. LUK/Primary Examiner, Art Unit 1733
June 08, 2026
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