DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/01/2025 has been entered.
Status of Claims
Claims 15-27 and 29-39 are pending. Of the pending claims, claims 15-23 and 30-39 are presented for examination on the merits, and claims 24-27 and 29 are withdrawn from examination.
Claims 35-39 are new.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 15, 16, 19, 20, 22, 23, and 30-39 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2007-000892 (A) to Ito et al. (“Ito”) (abstract and machine translation are attached – see NOTE below) in view of US 2003/0051781 (A1) to Branagan (“Branagan”), optionally with evidence from or further in view of Fruehan et al., “Hydrogen and Nitrogen Control in Ladle and Casting Operations,” Materials Science and Engineering Department, Carnegie Mellon University, pp. 1-54 (“Fruehan”).
NOTE: Ito was cited in the IDS dated 01/02/2025 and a machine translation was provided therewith. To facilitate citations, a machine translation containing paragraph numbers is being re-supplied with this Office action and is cited accordingly in the Notice of References Cited (PTO-892).
Regarding claims 15, 19, 20, 22, 23, and 30-34, Ito discloses a build-up welding or overlay welding material. Abstract; claim 1; paragraph preceding para. [0001]. The welding material can be provided in the form of powder. Para. [0021], [0022], [0051], [0056].
The welding material includes the following elements in percent by mass (abstract; para. [0013], [0031], [0042]-[0044], [0049]):
Element
Claim 15
JP 2007-000892 (A)
C
0.01 - 0.2
0.50 or less
Ti
2.5 - 10
1.2 - 26.0
B
> 0, (0.45xTi)-1.35 to (0.45xTi)+0.70
0.5 - 12.0
S
≤ 0.03
0.100 or less
P
≤ 0.04
impurity
N
≤ 0.05
interstitial element
O
≤ 0.05
impurity
Fe & unavoidable
balance
Fe main component &
impurities
impurities
The claimed optional elements (Si, Mn, Al, Ni, Mo, Cr, Cu, Nb, V) are not intentionally present, optional, and/or present in amounts that overlap the claimed ranges. Para. [0016], [0032], [0038]-[0040], [0042], [0046], [0050], [0051].
The overlap between the ranges taught in the prior art and recited in the claims creates a prima facie case of obviousness. MPEP § 2144.05(I). It would have been obvious for one of ordinary skill in the art to select from among the prior art ranges because there is utility over an entire range disclosed in the prior art.
Borides and/or composite thereof containing one or more elements selected from Group 4A, Group 5A, Group 6A, and Fe are dispersed in the welding material. Abstract; para. [0013], [0016], [0017], [0020], [0036], [0053], [0056]. Of the borides and/or composite thereof, at least 50% by volumetric rate are TiB2. Abstract; para. [0013], [0016], [0017], [0031], [0035]-[0037].
The limitation reciting “for additive manufacturing” will not be accorded patentably weight because it is an intended use of the powder and does not appear to impart any distinguishing structural difference outside the limitations already set forth in the body of the claim. See MPEP § 2111.02(II).
Ito is silent as to the mean roundness of the powder particles.
Branagan is directed to hard metallic materials and methods of forming hard metallic materials. Para. [0003]. The metallic coatings produced can be used as protective coatings and hard-facing material on surfaces of parts, devices, and machines to protect surfaces from corrosion, erosion, and wear. Para. [0075]. A method of application includes applying powder to a surface to form a hardened layer. Para. [0011], [0056]; FIG. 2. The metallic powder is advantageously spherical, which allows for improved passage through thermal deposition devices. Para. [0045].
It would have been obvious to one of ordinary skill in the art to have formed the powder particles of Ito into spheres because spherical shapes would facilitate powder flow through nozzles during the coating (buildup or overlay) process, thereby decreasing clogging and material waste. The specification defines mean roundness as longest dimension of a particle projection divided (b) by the smallest dimension of a particle projection (l) (b / l) (para. [0035]). The claim recites a mean roundness of at least 0.70. Although Branagan does not characterize the particles in terms of mean roundness, Branagan teaches spherical particles and the projection of a spherical particle is a circle, where the longest and smallest dimensions of said projected circle would be equal or near equal to each other (i.e., b/l would be close to or approaching 1), which would fall within the claimed range.
Ito discloses that N (nitrogen) is an interstitial element (para. [0044]), but is silent regarding a specific amount. However, there is no mention in Ito of intentional addition of N beyond impurity level. This is supported by Table 1, where N is not a measured element. Therefore, N is understood to be present at no more than an impurity level, which meets the claim limitation.
Alternatively, Fruehan discloses that nitrogen and hydrogen are present during steelmaking processes. Page 3. Typical amounts are 70-120 ppm (0.0070-0.0120% by mass) in electric arc furnace processes and 20-60 ppm (0.0020-0.0060% by mass) in basic oxygen furnace processes. Page 3. One of ordinary skill in the art would know that any residual nitrogen in Ito’s iron-based alloys would be present in amounts of no more than 0.0120% by mass, for example, depending on the technique used to refine the iron.
Fruehan also teaches that nitrogen affects the properties of steel significantly. Page 2. Therefore, it would have been obvious to one of ordinary skill in the art to have limited the amount of nitrogen in Ito’s iron alloy because its presence would interfere with the desired traits from other alloying elements.
Regarding claim 16, Branagan discloses that the metallic powder is advantageously spherical, which allows for improved passage through thermal deposition devices. Para. [0045].
The specification defines mean sphericity in terms of projected area and perimeter/circumference (para. [0037]). The claim recites a mean sphericity of at least 0.75. Although Branagan does not characterize the particles in terms of mean sphericity, Branagan teaches spherical particles and the projection of a spherical particle is a circle, where the area and circumference would be close to a perfectly round circle, i.e., sphericity would be close to or approach 1, which would fall within the claimed range.
Regarding claims 35-39, Ito discloses that the borides and/or composite thereof containing one or more elements selected from Group 4A, Group 5A, Group 6A, and Fe are dispersed in the welding material at a volumetric rate of 3-50%. Abstract; para. [0013], [0014], [0031], [0036], [0053], [0056]. Of the borides and/or composite thereof, at least 50% by volumetric rate are TiB2. Abstract; para. [0013], [0016], [0017], [0031], [0035]-[0037]. For example, if borides are present in an amount of 10 vol.% or 20 vol.%, then at least half (5-10 vol.% or 10-20 vol%, respectively) are TiB2, which overlap the claimed ranges.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Ito in view of Branagan, optionally with evidence from or further in view of Fruehan, as applied to claim 15 above, and further in view of US 2017/0066090 (A1) to Eibl et al. (“Eibl”).
Regarding claim 17, Ito discloses that there are no restrictions on the particle size of the powder, though it is desirable to use a powder having a particle size of about several microns (para. [0020]), but Ito does not disclose a specific particle size.
Eibl is directed to hardfacing/hardbanding materials, alloys, and powder compositions for protecting substrates. Abstract; para. [0011]. In some embodiments, the alloy powder size distribution is 53-180 µm at a rate of about 50%, about 60%, or about 70% or greater yield (para. [0196]), which overlaps the claimed ranges. The powder in this size and form may be appropriate for processes, such as PTA, HVOF, laser welding, and powder metallurgy processes, for applying a coating to a substrate. Para. [0193]-[0195].
It would have been obvious to one of ordinary skill in the art to have limited the particle size of Ito’s powder to the ranges disclosed by Eibl because a selective particle size would make the powder more suitable for apparatuses used to coat substrates.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Ito in view of Branagan, optionally with evidence from or further in view of Fruehan, as applied to claim 15 above, and further in view of US 2021/0246537 (A1) to Maroli et al. (“Maroli”).
Regarding claim 18, Ito discloses that there are no restrictions on the particle size of the powder, though it is desirable to use a powder having a particle size of about several microns (para. [0020]), but Ito does not disclose a specific particle size.
Maroli is directed to an iron-based alloy composition and powder for hardfacing applications by overlay welding. Para. [0001], [0027]. For the powder to be compatible with powder feeding devices of coating apparatuses used for applying the hardfacing coating, at least 95 wt.% of the powder composition has a particle size up to 300 µm (para. [0023]-[0025]), which overlaps the claimed ranges. An example minimum particle size can be 20 µm. Para. [0024]. An example maximum particle size can be 150 µm or up to about 200 µm. Para. [0024], [0026].
It would have been obvious to one of ordinary skill in the art to have limited the particle size of Ito’s powder to a range or subset of ranges taught by Maroli because a selective particle size would improve the compatibility of the powder with the apparatuses used to carry out the hardfacing coating process.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Ito in view of Branagan, optionally with evidence from or further in view of Fruehan, as applied to claim 15 above, and further in view of US 4,194,900 (A) to Ide et al. (“Ide”).
Regarding claim 21, Ito discloses that the borides and/or composite thereof contains one or more elements selected from Group 4A, Group 5A, Group 6A, and Fe and can include iron borides (abstract; para. [0013], [0016]), but is silent regarding the formula of the iron boride.
Ide is directed to a hard alloyed powder for use in the spray coating of metal surfaces. Col. 6, lines 16-30. The powder can be applied when high hardness and high wear resistance are required. Col. 6, lines 12-15. Compounds contributing to wea resistance and strength include Fe borides, such as Fe2B and FeB. Col. 2, lines 57-63.
It would have been obvious to one of ordinary skill in the art to have selected an iron boride, such as Fe2B and FeB, for the welding material of Ito because it would enhance strength and permit tailoring of the hardness of the powder.
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); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
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 15-23 and 30-39 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9, 10, and 18-20 (filed 08/06/2025) of copending Application No. 17/785,675 in view of Branagan.
Copending claims 9, 10, and 18-20 recite the chemical composition, boride types and contents, and particles sizes recited in instant claims 15-23 and 30-39. The claims of the copending application do not specify mean roundness or mean sphericity as recited in instant claims 15 and 16, respectively.
Branagan is directed to hard metallic materials and methods of forming hard metallic materials. Para. [0003]. The metallic coatings produced can be used as protective coatings and hard-facing material on surfaces of parts, devices, and machines to protect surfaces from corrosion, erosion, and wear. Para. [0075]. A method of application includes applying powder to a surface to form a hardened layer. Para. [0011], [0056]; FIG. 2. The metallic powder is advantageously spherical, which allows for improved passage through thermal deposition devices. Para. [0045].
It would have been obvious to one of ordinary skill in the art to have formed the powder particles of the copending application into spheres because spherical shapes would facilitate powder flow through nozzles during the coating (buildup or overlay) process, thereby decreasing clogging and material waste. The instant specification defines mean roundness as longest dimension of a particle projection divided (b) by the smallest dimension of a particle projection (l) (b / l) (para. [0035]). Instant claim 15 recites a mean roundness of at least 0.70. Although Branagan does not characterize the particles in terms of mean roundness, Branagan teaches spherical particles and the projection of a spherical particle is a circle, where the longest and smallest dimensions of said projected circle would be equal or near equal to each other (i.e., b/l would be close to or approaching 1), which would fall within the claimed range.
The instant specification defines mean sphericity in terms of projected area and perimeter/circumference (para. [0037]). Instant claim 16 recites a mean sphericity of at least 0.75. Although Branagan does not characterize the particles in terms of mean sphericity, Branagan teaches spherical particles and the projection of a spherical particle is a circle, where the area and circumference would be close to a perfectly round circle, i.e., sphericity would be close to or approach 1, which would fall within the claimed range.
The copending claims do not recite that the powders are used for additive manufacturing. However, this limitation is merely an intended use of the powder and does not appear to impart any distinguishing structural difference outside the limitations already set forth in the body of the claim, thereby not distinguishing the instant claims from the copending claims. See MPEP § 2111.02(II).
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s arguments with respect to Isaac (US 2016/0348222 (A1)) and Wang (CN 109014179 (A)) have been considered but are moot because the new ground of rejection does not rely on these references to reject the instant claims.
Applicant’s request for an interview is acknowledged. Because new prior art references have been cited, the Examiner issued an Office action to give Applicant an opportunity to review the references and new grounds of rejection. Applicant is welcome to schedule an interview upon receipt and review of the Office action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VANESSA T. LUK whose telephone number is (571)270-3587. The examiner can normally be reached Monday-Friday 9:30 AM - 4:30 PM ET.
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/VANESSA T. LUK/Primary Examiner, Art Unit 1733
December 05, 2025