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 .
Claim Rejections - 35 USC § 112
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.
Claims 1-2 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
With respect to claim 1, limitations “the area fraction of hard structure is 90% or more”, “area of…in the hard structure” are ambiguous because it is unclear what is meant by “hard structure”? This relative phrase is subject to varying interpretations what one considers “hard” in the context of steel structure? Even among medium-carbon steels (C 0.30-0.50%), there is a wide range of microstructure variations and differing properties depending on a particular microstructure. According to Applicant’s specification, hard structure is intended to be “bainite” [0020]- which is not recited in the claim. Moreover, the recited cementite particles also form “hard structure” and consequently, it is confusing what is implied the features of cementite particles in the hard structure. The recited vague language fails to clearly set forth the scope, rendering the claim indefinite. For purpose of examination and in accordance with broadest reasonable interpretation consistent with the specification, the claim is taken to mean: hard structure can comprise any phase of steel and wherein a Vickers hardness of any phase in the steel material is 220 to 400 Hv.
With respect to claim 2, “the steel material according to claim 1, comprising one or more…” (preamble) is conflicting with previous claim 1 which recites transitional term “consisting of”, which excludes any additional element. Claim 2 allows for additional element(s) excluded by claim 1 and thus fails to further limit claim 1. Examiner suggests language such as “The steel material according to claim 1, further satisfying at least one of:”
Appropriate corrections are requested.
Claim Rejections - 35 USC § 103
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.
Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Yamasaki et al. (WO 2020/0162616 A1, hereafter “Yamasaki”, see attached document) in view of Yokoyama et al. (WO 2018193787 A1, see attached document). This rejection is made as best understood in light of indefinite claim language.
Regarding claim 1, Yamasaki discloses a medium-carbon (C: 0.35-0.45%) steel material consisting of Si, Mn, Cr, Mo, V, Al, N, P and S, each element being in the respectively recited range (see table no. 1 examples and claim 1). Yamasaki is silent in terms of 220-400 Hv of at least one phase in the steel. However, such feature is known in the art of steel composition. Yokoyama (also directed to steel composition- abstract) discloses a method for producing a steel sheet comprising hard structure including bainite, cementite and martensite [0037-0038], wherein the average hardness of martensite is 330-500 Hv to achieve improved tensile strength [0039]- this overlaps with claimed hardness. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), MPEP 2144.05. Yamasaki also desires the steel material for bolt having a high tensile strength of more than 1200 MPa [0003-0004]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to provide a Vickers hardness of about 300-400 Hv in the steel material of Yamasaki in order to obtain desired properties, such as tensile strength, for particular usage as industrial bolts.
As to claim 2, Yamasaki discloses the steel material further satisfying at least B being 0.0005%, Cu being 0.20% and Ni being 0.20% (see [0029-0031], claim 2).
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).
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 claim 1-2 of co-pending Application No. 18/729628 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-2 of application no. 18/729628 teaches each feature of recited steel material composition and structure.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 7/18/24 complies with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVANG R PATEL whose telephone number is (571) 270-3636. The examiner can normally be reached on Monday-Friday 8am-5pm, EST.
To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at https://www.uspto.gov/patents/laws/interview-practice. Communications via Internet email are at the discretion of Applicant. If Applicant wishes to communicate via email, a written authorization form must be filed by Applicant: Form PTO/SB/439, available at www.uspto.gov/patent/patents-forms. The form may be filed via the Patent Center and can be found using the document description Internet Communications, see https://www.uspto.gov/patents/apply/forms. In limited circumstances, the Applicant may make an oral authorization for Internet communication. See MPEP § 502.03.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached on 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DEVANG R PATEL/
Primary Examiner, AU 1735
Prosecution Insights