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 .
Priority
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed provisional application, Application No. 62/233,609, fails to provide adequate support in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for claims of this application.
Claims 1, 3-10, 12-16 and 18 of the instant application do not have adequate 112 basis in the 62/233,609 provisional application and therefore cannot receive the benefit of the earlier filing date. Specifically, present independent claims 1 and 10 do not have adequate support for the amounts of Ca, Ti and Al up to about 0.05 wt%. The 62/233,609 provisional application only discloses 0.005% max Ca, and 0.01% max Al & Ti (see the Table on page 2, page 6, third paragraph, and claims 1 and 2 of the 61/233,609 provisional application) – these are lower than recited amount of 0.05 wt%. Additionally, the amount of cobalt in the original provision disclosure is not more than about 0.01% (page 6, third paragraph), which is lower than currently claimed up to about 0.25% (claim 9). Specification of non-provisional Application no. 15/278,125 provides adequate support for the claimed amounts. Accordingly, the effective filing date of present claims is September 28, 2016.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: numeral 18 (see page 7, last paragraph of the specification) is not indicated in fig. 1. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The abstract of the disclosure is objected to because in line 10, a period should be inserted after the term “0.5”. Correction is requested. See MPEP § 608.01(b).
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3-10, 12-16 and 18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
With respect to claims 1 and 10, features “usual impurities and residual amounts of other elements” (last two lines) are ambiguous and renders the claims indefinite. Also, term “the alloy” (last line) should recite the steel alloy for proper antecedent basis. It is unclear what elements are meant by usual impurities and residual amounts of other elements. According to the specification (application no. 15/278,125): calcium, titanium and aluminum are considered residual elements, added up to 0.05%. (page 6). While cobalt is considered an impurity in this alloy, the alloy may contain up to about 0.25% cobalt (last paragraph on page 6), which appears to be a significant amount, much higher than typical impurities. Therefore, it is confusing whether cobalt is considered an impurity? The recited conflicting language fails to clearly set forth the scope, rendering the claims indefinite. Each dependent claim from 1 and 10 is therefore also indefinite. For purpose of examination and in accordance with broadest reasonable interpretation consistent with the specification, the claims are taken to mean: cobalt is from 0-0.25%, and Ca, Ti, and Al are residual elements from 0-0.05%, thereby being optional with 0%.
Appropriate corrections are required.
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, 3-10, 12-16 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Ueda et al. (US 6254696, hereafter “Ueda”).
Regarding claims 1, 3-10, 12-16 and 18, Ueda discloses a steel composition having alloying constituents with wt% ranges that overlap those recited by instant claims as shown in the table below (see col. 3, lines 40-51; col. 5, lines 51+; claim 2).
Element
Claims 1, 10
(About wt.%)
Ueda
(wt.%)
Overlap
(wt.%)
C
0.21-0.27
0.15-0.45
0.20-0.30
Mn
1.8-2.2
0.20-3.0
1.8-2.2
Si
0.8-1.0
0.1-2.0
0.8-1.0
Cr
1.95-2.25
0.20-3.0
1.0-2.3
Ni
0.6-0.8
0.05-4.0
0.6-0.8
Mo+1/2W
0.15-0.25
Mo:0.01-1.0
W: 0
Mo+1/2 W: 0.1
Cu
0.3-0.7
0.05-0.5
0.5
Co
0
0
0
V+5/9xNb
0.25-0.45
V:0.01-0.30
Nb: 0.005-0.05
V +5/9xNb: 0.30+
Ti
0-0.05
0.01-0.05
0.01
Al
0-0.05
0
0
Ca
0-0.05
0.001-0.015
0.001
P, S (impurities)
0.001 max
0
0
Fe
balance
balance
balance
The overlap in alloy wt% ranges establishes a prima facie case of obviousness because it would be obvious for one skilled in the art to select instantly claimed alloy wt% ranges over the broader prior art disclosure since similar properties such as high strength and toughness are taught (see col. 5). See MPEP 2144.05 [R-5] which states 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); and "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). The absence of elements such as Al, Co, P, and S, reads on essentially zero of these elements, overlapping the claimed ranges. Alternatively, the reduction of impurities would have been a prima facie matter to the skilled artisan in order to obtain a steel with less known harmful elements such as S or P. MPEP 2144.04 VII.
The teachings of Ueda of Cr, Mn, Si and V are considered prima facie obvious where Ueda teaches that the elements in question provide strengthening effects (see col. 5, lines 14-49, col. 6, lines 38-47), a central goal of both Applicant’s steel and Ueda’s steel. Accordingly, it would have been obvious to a person of ordinary skill in the art to have selected a composition in the ranges as claimed because Ueda teaches the same utility over an overlapping range. Applicant is further directed to MPEP 2144.05. Alternatively, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
In addition, Ueda teaches the function of every single element within the composition - see col. 4, line 65 thru col. 7, line 28. Ueda recognizes the amount of each alloying element to have a distinct effect on the properties of the steel. Thereby the adjustment of the alloying elements in order to generate desirable properties would require no more than routine investigation to the skilled artisan. MPEP 2144.05.
Response to Declaration under 37 CFR 1.132
Examiner acknowledges the 132 Declaration of Robert Buck filed 11/6/24. However, this preemptive declaration appears to be based on specific examples from Nozaki reference (US 2014/0000765 A1), which is not pertinent to current 103 rejection(s) relying on Ueda reference explained above. Therefore, this Declaration concerning unexpected results is irrelevant.
To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP 716.02(d). Examiner also points out that arguments of counsel cannot take the place of evidence in the record; the objective evidence must be commensurate in scope with the claimed ranges of elements.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/6/24 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.
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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