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 .
Election/Restrictions
Claims 9-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Groups II and III, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 01/07/2026.
Applicant's election with traverse of Group I claims 1-8 in the reply filed on 01/07/2026 is acknowledged. The traversal is on the grounds that Groups II and III encompass particular physical characteristics that result from the features of the manufacturing method of the elected claims. This is not found persuasive because Group II only requires an alloy steel for cold-forging (which comprises an intended use) comprising segmented cementite, which would include any alloy steel comprising segments of cementite, regardless of the process used to produce it, while Group III only requires a gear for cold-forging with a gear surface grain boundary oxide layer of 19 µm or less which would include gears with any composition of grain boundary oxide layer made by any process that results in a layer of 19 µm or less.
The requirement is still deemed proper and is therefore made FINAL.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
Claim 8 is 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.
Claim 8 recites the limitation "wherein the homogenizing, the furnace-cooling, and the segmentation-annealing comprises an annealing time of 8 hours or less" in lines 2-3. The limitation is indefinite as it is unclear if “annealing time” refers to only the time of the segmentation-annealing step, the amount of time spent annealing in the homogenizing, furnace-cooling , and segmentation-annealing steps (but not necessarily of the steps overall), or the combined time of all three steps, making unclear what step(s) is/are limited to be 8 hours or less.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hong et al. (KR 20210129445 A, original document supplied with IDS filed 10/31/2024, machine translation supplied herein).
Regarding claim 1, Hong teaches a manufacturing method of an alloy steel for cold-forging (Title) comprising step (a) homogenizing a steel material [0008, 0051, 0055], (b) furnace-cooling the steel material [0008, 0051, 0055], and (c) annealing the steel material at least once [0008, 0051, 0055], where the annealing step results in segments of cementite (i.e., segmentation-annealing) [0044].
Hong does not teach wherein the segmentation-annealing is optionally repeated one or more times, however repeating the segmentation-annealing is considered optional, thus Hong is considered to read upon 1 in its entirety.
Regarding claim 2, Hong teaches wherein the homogenizing is performed at 870-930 °C [0055], and that the presence of niobium and nitrogen in the alloy refine the austenite grain size (i.e., austenite is present) [0033, 0037].
The instant specification discloses temperatures of 800-900 °C to be suitable for austenite homogenization (Instant specification pg. 7 lines 24-26), for steel alloys which may comprise carbon (C): 0.17 to 0.23 wt%, silicon (Si): more than 0 to 0.7 wt% or less, manganese (Mn): 0.45 to 0.9 wt%, phosphorus (P): more than 0 to 0.020 wt% or less, sulfur 10 (S): more than 0 to 0.030 wt% or less, chromium (Cr): 0.85 to 2.25 wt%, nickel (Ni): more than 0 to 0.25 wt% or less, and niobium (Nb): 0.015 to 0.035 wt% (instant specification: pg. 7 lines 13-15) and further comprise nitrogen (N): 100 to 160 ppm, oxygen (O): more than 0 to 15 ppm (instant specification: pg. 7 lines 18-20).
Hong teaches 0.17 to 0.23 wt%, silicon (Si): greater than 0 and less than or equal to 0.7 wt%, manganese (Mn): 0.45 to 0.9 wt%, chromium (Cr): 0.85 to 2.25 wt%, niobium (Nb): 0.015 to 0.035 wt%, nickel (Ni): greater than 0 and less than or equal to 0.25 wt%, nitrogen (N): 100 to 160 ppm, oxygen (O): greater than 0 and less than or equal to 15 ppm, and the remainder being iron (Fe), i.e., a steel alloy within the ranges set forth in the instant application, therefore the alloy of Hong would be austenitized at temperatures of 800-900 °C as in the instant application, and the temperatures of 870-930 °C of Hong are at or above an austenitizing temperature as claimed.
Regarding claim 3, Hong teaches wherein the homogenizing is performed at 870-930 °C [0055], such as 880 °C [0069] or 900 °C [0071, 0073], which are within the claimed range. Hong teaches the homogenizing is performed for 2-3 hours [0008, 0051, 0055].
Regarding claim 4, Hong teaches wherein the furnace-cooling is performed at a temperature of 680-790 °C [0008, 0051, 0055], such as 690 °C [0069] which is within the claimed range.
Regarding claim 5, Hong teaches wherein the segmentation-annealing results in a segmented cementite (i.e., the segmentation-annealing is performed by segmenting cementite) [0044].
Regarding claim 8, Hong teaches wherein the homogenizing, the furnace-cooling, and the segmentation-annealing comprises an annealing time of 8 hours or less [0009, 0052, 0067], as best can be examined in view of the rejection of claim 8 under 35 USC 112(b) above.
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.
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 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Hong as applied to claim 1 under 35 USC 102 above, further in view of Sasaki et al. (US 20180105894 A1).
Regarding claim 6, Hong teaches wherein the segmentation-annealing comprises annealing at a temperature of 740°C to 760°C [0008, 0051, 0055]. Hong does not teach stabilizing at a temperature of 680°C to 700°C.
Sasaki teaches a steel wire for mechanical structural parts (Title), where steel wire made of an alloy containing C, Si, Mn, P, S, Al, and N is subjected to annealing [0053-0054, 0056] to reduce deformation resistance and improve crack resistance during cold working to result in excellent cold workability (i.e., cold forging) (Abstract), thus Sasaki and Hong are analogous to the instant application as both are directed to processes for treating steel alloys comprising C, Si, Mn, P, S, Al, and N by annealing to make the steel alloy for cold forging. Sasaki teaches annealing where the alloy is heated to 740 °C, then cooled to 660 °C and held at 660 °C for one hour (i.e., stabilizing at a temperature) [0081]. Sasaki teaches the annealing of the method improves cold workability [0002], and that annealing increases grain boundary cementite [0053, 0062] which reduces deformation resistance and improves crack resistance [0018].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention after annealing the steel alloy of Hong to have cooled and held the steel alloy at a lower temperature according to Sasaki, as doing so would improve cold workability and crack resistance, and reduces deformation resistance in the steel alloy as taught by Hong.
Hong in view of Sasaki, discussed above, is silent to stabilizing at a temperature of 680 to 700 °C in the process described therein. However, it has long been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05 (II) A-B. In the instant case, one of ordinary skill would be motivated to use cooling temperatures suitable for the steel alloy of the composition of Hong and of the instant application.
Further, the mere recitation of a numerical parameter in an otherwise known process will not generally result in patentability of a claim directed to that process, absent evidence of criticality of the numerical parameter. In the instant case the numerical parameter (stabilizing temperature) does not appear to be critical to the invention, at least for the reason it is recited solely in a dependent claim.
Thus, the disclosure of Hong in view of Sasaki is held to establish a prima facie case of obviousness of a method as presently claimed.
Regarding claim 7, Hong does not teach wherein the segmentation-annealing is performed one to three times.
Sasaki teaches a steel wire for mechanical structural parts (Title), where steel wire made of an alloy containing C, Si, Mn, P, S, Al, and N is subjected to annealing [0053-0054, 0056] to reduce deformation resistance and improve crack resistance during cold working to result in excellent cold workability (i.e., cold forging) (Abstract), thus Sasaki and Hong are analogous to the instant application as both are directed to processes for treating steel alloys comprising C, Si, Mn, P, S, Al, and N by annealing to make the steel alloy for cold forging. Sasaki teaches annealing the steel alloy [0065-0067] where annealing may be repeated a plurality of times [0073], which overlaps the claimed range of 1-3 times. Sasaki teaches performing annealing a plurality of times reduces the aspect ratio of individual cementite particles and increases the grain boundary cementite percentage [0073] which decreases deformation resistance and crack occurrence [0018, 0073].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have performed the annealing of Hong a plurality of times as taught by Sasaki as doing so would decrease deformation resistance and crack occurrence in the steel alloy as taught by Hong.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nikolas T Pullen whose telephone number is (571)272-1995. The examiner can normally be reached Monday - Thursday: 10:00 AM - 6:00 PM EST.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/NIKOLAS TAKUYA PULLEN/Examiner, Art Unit 1733
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