Detailed Office Action
Notice of Pre-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
Request to Continue Examination
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 07/13/26 has been entered.
Response to Amendments
The amendment filed on 07/13/26 has been entered. Claims 7 – 11 have been canceled. Claims 16 – 22 are newly added. Claims 1 – 6, 12, and 14 – 22 are under examination.
Claim Rejections – U.S.C. § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 20 and 22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 20, the volume content range of the sintered ceramic-metal composite granules was not described in the specification as to reasonably convey to one skilled in the art that the inventor(s) were in possession of the invention at the time of filing. The examiner notes that in the remarks of 07/13/26, it is stated that [0052] of the pg-pub provides support. However, a review of this paragraph shows that the volume content range of 70 – 90% is directed to the content of titanium carbide within the granules, not the volume content of granules within the reinforcement.
Regarding claim 22, the limitation of the granules being sintered to one another prior to being embedded in the second metal matrix was not described in the specification as to reasonably convey to one skilled in the art that the inventor(s) were in possession of the invention at the time of filing. The examiner notes that in the remarks of 07/13/26, it is stated that [0069-0073] of the pg-pub provides support. However, a review of these paragraphs does not appear to describe the limitation as claimed. The paragraphs disclose that the granules are sintered to obtain a particular size and liquid phase sintered to obtain a particle porosity [0068-0069]. The paragraphs also describe that the granules can be agglomerated by adhesive or by confining them in a container [0070-0071] but do not describe that the granules are agglomerated by sintering.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 3 improperly broadens claim 1 (to which it depends) because the d50 range of sintered ceramic-metal composite granules of 0.5 – 10 mm is broader than the range claimed in claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Response to Arguments
Applicant’s amendments and arguments thereto have overcome the previous rejection under 35 U.S.C. 103 over Ederyd (WO2021/184057) in view of Kirk (US2012/0003488) and MPIF (“Isostatic Pressing”, NPL, 2019).
Applicant argues that Ederyd teaches away from such large interstices and states that close packing is desired. The examiner respectfully disagrees that Ederyd teaches away from the interstices range because Ederyd states “On one hand, there is thus needed a close packing of the cemented carbide grains in order to reach maximum wear-resistance and to avoid an exposition of too great areas of the less wear-resistant cast iron. On the other hand, the channels between the grains must not be too narrow, which should prevent the passage of melt or cool the melt too rapidly during the casting.” [0098]. That is, Ederyd acknowledges that passage/interstice space/size is a balance between wear resistance and melt infiltration ability. However, the examiner agrees that Ederyd does not teach or suggest a numerical range of the passages/interstices nor would Ederyd inherently possess a size in the claimed range. As such, the previous rejection is withdrawn.
Allowable Subject Matter
Claims 1 – 2, 4 – 6, 12, 14 – 19 and 21 are allowed. The following is an examiner’s statement of reasons for allowance:
Regarding claim 1, the prior art does not anticipate or reasonably render obvious the cumulative limitations of claim 1, with particular attention to the interstices between ceramic-metal composite granules being between 0.5 – 3 mm. The closest prior art is Ederyd (WO2021/184057) in view of Kirk (US2012/0003488) and MPIF (“Isostatic Pressing”, NPL, 2019). However, Ederyd alone or in combination does not expressly disclose or reasonably suggest an interstices size between 0.5 – 3 mm. Moreover, Ederyd would not inherently possess the claimed feature. Lastly, the prior art does not teach or suggest why an ordinarily skilled artisan would have controlled/modified Ederyd alone or in combination to possess the feature.
Claims 2, 4 – 6, and 15 – 19 and 21 depend from and therefore requires the cumulative limitations of claim 1.
Regarding claim 12, the prior art does not anticipate or reasonably render obvious the cumulative limitations of claim 12, with particular attention to the interstices between ceramic-metal composite granules being between 0.5 – 3 mm. The closest prior art is Ederyd (WO2021/184057) in view of Kirk (US2012/0003488) and MPIF (“Isostatic Pressing”, NPL, 2019). However, Ederyd alone or in combination does not expressly disclose or reasonably suggest an interstices size between 0.5 – 3 mm. Moreover, Ederyd would not inherently possess the claimed feature. Lastly, the prior art does not teach or suggest why an ordinarily skilled artisan would have controlled/modified Ederyd alone or in combination to possess the feature.
Regarding claim 14, the prior art does not anticipate or reasonably render obvious the cumulative limitations of claim 14, with particular attention to the interstices between ceramic-metal composite granules being between 0.5 – 3 mm. The closest prior art is Ederyd (WO2021/184057) in view of Kirk (US2012/0003488) and MPIF (“Isostatic Pressing”, NPL, 2019). However, Ederyd alone or in combination does not expressly disclose or reasonably suggest an interstices size between 0.5 – 3 mm. Moreover, Ederyd would not inherently possess the claimed feature. Lastly, the prior art does not teach or suggest why an ordinarily skilled artisan would have controlled/modified Ederyd alone or in combination to possess the feature.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US2018/0369905 – discloses casting inserts in the form of granules (and others) containing titanium carbide and metal compositon but does not describe the interstices/gap size between said inserts.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Austin M Pollock whose telephone number is (571)272-5602. The examiner can normally be reached M - F (11 - 8 ET).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738
Prosecution Insights