DETAILED ACTION
Claims 1-7 are pending, and claims 1-3 are currently under review.
Claims 4-7 are withdrawn.
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 1-3, in the reply filed on 8/05/2026 is acknowledged.
Claims 4-7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 8/05/2026.
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) 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lim et al. (KR20160071522, machine translation referred to herein) in view of Iwamoto et al. (JPH07188847, machine translation referred to herein).
Regarding claim 1, Lim et al. discloses a graphite steel having a composition as seen in table 1 [0001, 0008]. The examiner notes that the overlap between the composition of Lim et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I). Lim et al. further discloses a steel microstructure of a matrix of ferrite with graphite contained therein having a graphitization rate of higher than 99%, in addition to a small amount of pearlite and 0.5 percent or more MnS inclusions, which overlaps with the claimed ranges [0004, 0045, 0050]. See MPEP 2144.05(I).
Lim et al. does not expressly teach an inclusion of Ti and Ca as claimed. Iwamoto et al. discloses a graphite steel wherein Ti and Ca are included in amounts shown in table 1 below to promote graphitization and improve machinability, respectively [0032, 0037]. Therefore, it would have been obvious to one of ordinary skill to modify the steel of Lim et al. by including Ti and Ca for the aforementioned benefits disclosed by Iwamoto et al above.
Alternatively, Lim et al. discloses a small amount of pearlite as stated above; however, the aforementioned prior art does not expressly teach an amount of pearlite that would result in a total of 5% pearlite and MnS as claimed. However, the examiner notes that pearlite is merely a steel microstructure which one of ordinary skill would readily understand to be directly affected by steel composition such as C amount (which makes up pearlite) as well as steel manufacturing. One of ordinary skill would also readily understand that pearlite (which depends upon an amount of C in the steel) is directly influenced by a graphitization amount of the steel (which pertains to an amount of free C in the steel). Furthermore, the instant specification discloses obtaining the claimed steel by manufacturing according to parameters shown in table 1 below. Since Lim et al. discloses a substantially similar steel composition, and method of manufacture (shown below) as well as an identical graphitization amount, an overlapping, substantially similar amount of pearlite would have naturally flowed from the disclosure of Lim et al. See MPEP 2112 & MPEP 2144.05(I).
Table 1.
Element (wt.%)
Claim 1 (wt.%)
Lim et al. (wt.%)
C
0.6 – 0.9
0.8 – 1.2
Si
2 – 2.5
2 – 3
Mn
0.7 – 1.3
0.01 – 1
S
0.2 – 0.5
0.01 – 0.35
Al
0.01 – 0.05
0.01 – 0.03
Ti
0.005 – 0.02
0.005 – 0.05
N
0.003 – 0.015
0.006 – 0.012
Ca
0.0001 – 0.05
0.0002 – 0.3
Fe & Impurities
Balance
Balance
Manufacturing Parameters
Instant specification [0059-0066]
Lim et al. [0045, 0056]
hot rolling at 900 to 1150 degrees C
Hot rolling at 1000 degrees C
heat treatment at 700 to 800 degrees C
Heat treatment at 750 degrees C
Regarding claim 2, the aforementioned prior art discloses the steel of claim 1 (see previous). As stated above, Lim et al. already teaches a graphitization amount of greater than 99% [0045].
Regarding claim 3, the aforementioned prior art discloses the steel of claim 1 (see previous). Lim et al. further discloses limiting P and O to 0.03 weight percent or less and 0.01 weight percent or less, respectively, which overlaps with the claims because the aforementioned ranges of Lim et al. include 0% (ie. not included) [0008]. See MPEP 2144.05(I).
Claim(s) 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Iwamoto et al. (JPH07188847, machine translation referred to herein) alone or further in view of Lim et al. (KR20160071522, machine translation referred to herein).
Regarding claim 1, Iwamoto et al. discloses a graphite steel having a composition as seen in table 2 [0005, 0022-0041]. The examiner notes that the overlap between the composition of Iwamoto et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I). Iwamoto et al. further discloses a steel microstructure of mainly ferrite with graphite therein having a graphitization rate of up to 100% in some examples [0006, tables 3,6,8]. Although Iwamoto et al. does not expressly disclose a broad graphitization range, one of ordinary skill would recognize the several exemplary graphitization values of Iwamoto et al. to suggest a desirable graphitization range which overlaps with the claimed range. See MPEP 2144.05(I).
Iwamoto et al. does not expressly teach an amount of MnS and pearlite that would result in a total of 5% pearlite and MnS as claimed. However, the examiner notes that MnS and pearlite pearlite are merely instances of the steel microstructure which one of ordinary skill would readily understand to be directly affected by steel composition such as C amount (which makes up pearlite) as well as steel manufacturing. One of ordinary skill would also readily understand that pearlite (which depends upon an amount of C in the steel) is directly influenced by a graphitization amount of the steel (which pertains to an amount of free C in the steel). Furthermore, the instant specification discloses obtaining the claimed steel by manufacturing according to parameters shown in table 1 below. Since Iwamoto et al. discloses a substantially similar steel composition, and method of manufacture (shown below) as well as an identical graphitization amount, an overlapping, substantially similar amount of pearlite would have naturally flowed from the disclosure of Lim et al. See MPEP 2112 & MPEP 2144.05(I).
Alternatively, Iwamoto et al. does not expressly teach an inclusion of pearlite, such that one of ordinary skill would understand that pearlite is not present (ie. 0%). Iwamoto et al. does not expressly teach an amount of MnS as claimed. Lim et al. discloses it is known to control MnS in graphite steels to be 1 percent or more to improve machinability [0050]. Therefore, it would have been obvious to modify the steel of Iwamoto et al. to include 1 percent or more MnS to improve machinability as taught by Iwamoto et al. The examiner notes that zero pearlite (as suggested by Iwamoto et al.) and 1 percent or more MnS as taught by Lim et al. overlaps with the claimed value of a total of 5% combined MnS and pearlite. See MPEP 2144.05(I).
Table 2.
Element (wt.%)
Claim 1 (wt.%)
Iwamoto et al. (wt.%)
C
0.6 – 0.9
0.1 – 1.5
Si
2 – 2.5
0.5 – 2
Mn
0.7 – 1.3
0.1 – 2
S
0.2 – 0.5
0.03 – 0.25
Al
0.01 – 0.05
0.01 – 0.5
Ti
0.005 – 0.02
0.005 – 0.05
N
0.003 – 0.015
0.0015 – 0.015
Ca
0.0001 – 0.05
0.0002 – 0.3
Fe & Impurities
Balance
Balance
Manufacturing Parameters
Instant specification [0059-0066]
Iwamoto et al. [0044]
hot rolling at 900 to 1150 degrees C
Hot rolling at 1000 degrees C or higher
heat treatment at 700 to 800 degrees C
Heat treatment at 600 to Ac1
Regarding claim 2, the aforementioned prior art discloses the steel of claim 1 (see previous). As stated above, Iwamoto et al. already suggests graphitization range of up to 100%. See MPEP 2144.05(I).
Regarding claim 3, the aforementioned prior art discloses the steel of claim 1 (see previous). Iwamoto et al. further discloses limiting O to 0.003 weight percent or less, which overlaps with the claims because the aforementioned ranges of Iwamoto et al. include 0% (ie. not included) [0027]. See MPEP 2144.05(I).
Conclusion
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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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734
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