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
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Status of Claims
Claims 1-10 are canceled and Claims 11-30 are new.
Claim Objections
Claims 11-30 objected to because of the following informalities: the steps (e.g. “a),” “b),” etc.) should be identified consistently. The claims use a letter with one parenthesis, a letter with two parentheses, and a letter with no parentheses. Appropriate correction is required.
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 11-30 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “high carbon alloy steel” in Claim 11 is a relative term which renders the claim indefinite. The term “high” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The specification does not describe what carbon range reads on “high carbon alloy steel.” The specification does describe medium- and high-carbon steels is 0.4-2.3% C on page 5.
Claim 19 recites the limitation "the group" in line 5. There is insufficient antecedent basis for this limitation in the claim.
Claim 19 recites the limitation "the remaining components" in lines 6 and 7. There is insufficient antecedent basis for this limitation in the claim.
Claim 22 recites the limitation "the respective tempering temperature" in line 3. There is insufficient antecedent basis for this limitation in the claim.
The term “high carbon alloy steel” in Claim 24 is a relative term which renders the claim indefinite. The term “high” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The specification does not describe what carbon range reads on “high carbon alloy steel.” The specification does describe medium- and high-carbon steels is 0.4-2.3% C on page 5.
Claims dependent on any of the rejected claims are likewise rejected under this statute.
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 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 11, 16, 17, 19-21, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over PL 234490 B1.
PL 234490 B1 (PL ‘490) teaches heat treatment of low- or medium-alloy cast steel (abstract). Carbon composition is 1.2% (page 26, 9th page of translation). As stated above, applicant does not define what is meant by “high carbon alloy steel.” PL ‘490 teaches a carbon composition within what is described in the instant specification of 0.4-2.3% C for medium- and high-carbon steels. The heat treatment is in five successive stages (page 21, 4th page of translation) with respect to Claim 11:
Claim 1
PL ‘490
step a)
heating to austenitizing temperature TA
step b)
holding for a time tA
step c)
quenching to temperature TB between MS (γ) + ΔT and 350 °C
step d)
holding for a time tB to obtain a volume fraction of bainitic ferrite in the range of 20-75% vol.
step e)
quenching to temperature TQ between the temperature of the beginning of MS (γr1) and the end of Mf (γr1) of the martensitic transformation
step f)
holding for a time tQ
step g2)
annealing at TP for a time tP allowing for carbon diffusion to ensure obtaining the temperature of the austenite martensitic transformation
Further regarding step g2), partitioning time and temperature should be selected to achieve a decrease in martensite carbon supersaturation and stabilization of residual austenite while not causing the release of other alloy carbides (page 26, 9th page of translation). Therefore, PL ‘490 teaches the same operating conditions and properties to “defuse martensite and bainitic ferrite to austenite to increase thermal and mechanical stability” as claimed. Regarding the bainitic ferrite volume % range in step d), PL ‘490 teaches an overlapping range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists because the prior art discloses the utility of the composition over the entire disclosed range. See MPEP § 2144.05.
Regarding Claim 16, PL ‘490 teaches a temperature of less than 350 °C (page 20, 4th page of translation).
Regarding Claim 17, quenching reads on continuous cooling. TB should not be less than °C (page 24, 7th page of translation).
Regarding Claim 19, the content of the steel is translated below from the tables (originals on pages 9, 12, and 13, respectively):
PNG
media_image1.png
139
676
media_image1.png
Greyscale
PNG
media_image2.png
130
694
media_image2.png
Greyscale
PNG
media_image3.png
130
684
media_image3.png
Greyscale
PL ‘490 teaches within the claimed composition of C, Mn, Si, Cr, Mo, V, Ti, Nb, Co, and Cu.
Regarding Claim 20, PL ‘490 does not exemplify 1050 °C as claimed. However, a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation; therefore, a prima facie case of obviousness exists. See MPEP § 2144.05 II B. In this case, PL ‘490 teaches meeting the claimed limitation of austenization.
Regarding Claim 21, PL ‘490 does not exemplify austenizing for about 15 minutes as claimed. However, a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation; therefore, a prima facie case of obviousness exists. See MPEP § 2144.05 II B. In this case, PL ‘490 teaches meeting the claimed limitation of austenization.
Regarding Claim 23, PL ‘490 teaches TB is about 25 °C (page 23, 6th page of translation).
Allowable Subject Matter
Claims 12-15, 18, and 22 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include of the limitations of the base claim and any intervening claims.
Claims 24-30 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter.
Regarding Claims 12-15, 18, 22, and 24-30, PL ‘490 does not suggest tempering as recited in step g1).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Nishioka et al (US 2021/0047705 A1) teaches a carbide-free bainite and retained austenite steel. Chen et al (US 2022/0205058 A1) teaches a high strength steel product and process. WO 2019/238741 A1 teaches a flat steel product and method for its production.
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Tima M. McGuthry-Banks
Primary Examiner
Art Unit 1733
/Tima M. McGuthry-Banks/Primary Examiner, Art Unit 1733
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