DETAILED ACTION
Status of Claims
Claims 15, 16, 18-27, and 29-41 are pending.
Claim 15 is currently amended. Claims 40 and 41 are new.
Status of Restriction
Claims 15, 16, 18-23, and 30-41 contain allowable subject matter. Claims 24-27 and 29, previously withdrawn from consideration as a result of a restriction requirement, include all limitations of at least one claim containing allowable subject matter. Pursuant to the procedures set forth in MPEP § 821.04(a), the restriction requirement between the inventions of Group I and Group II, as set forth in the Office action mailed on 10/28/2024, is hereby withdrawn and claims 24-27 and 29 are hereby rejoined and fully examined for patentability under 37 CFR 1.104.
In view of the withdrawal of the restriction requirement, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Claim Objections
Claims 15 and 41 are objected to because of the following informalities: The “2” in the compounds “TiB2” and “Fe2B” should be in subscript form, consistent with how titanium diboride and iron boride are recited elsewhere in claim 15 (TiB2 and Fe2B at line 20 of the claim). 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 24-27, 40, and 41 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.
Regarding claim 24, the claim is indefinite because it is internally inconsistent. The molten composition of the claim confines boron (B) to (0.45xTi)-1.35% ≤ B ≤ (0.45xTi)+0.70%, with no minimum limit for B. However, claim 15, to which claim 24 refers in the preamble, requires that the metal powder contain (0.45xTi)-1.35% ≤ B ≤ (0.45xTi)+0.70%, with B > 0 (B must exceed zero). The claims do not correspond to one another because B cannot be required in the metal powder produced while also simultaneously being allowed to be absent (B lower limit is zero) in its method of manufacture. In other words, B should be required to be present, i.e., greater than zero, in the method of manufacture because B is present in the metal powder produced by the method of manufacture.
Regarding claims 25-27, the claims are likewise rejected, as they depend on rejected claim 24.
Regarding claims 40 and 41, the claims are indefinite because they lack units. The claims recite that the austenite is at most 10%, but they do not specify the unit on which the percentage is based (e.g., area, volume, weight, etc.).
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, 16, 18-23, 29, and 30-39 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9, 10, and 12-20 of co-pending Application No. 17/785,675 in view of US 4,194,900 (A) to Ide et al. (“Ide”) and further in view of US 2003/0051781 (A1) to (“Branagan”).
Co-pending claims 9, 10, and 18-20 recite the chemical composition, boride types and contents, and particles sizes recited in instant claims 15, 16, 18-23, and 30-39. Co-pending claims 16 and 17 recites a metal part manufactured by an additive manufacturing process and corresponds to instant claim 29. Co-pending claims 12-15 recite a method of manufacture and corresponds to instant claims 24-27.
The claimed co-pending metal powder is silent regarding the atomized state of the metal powder. The claimed co-pending method does not specify that the pressurized gas is argon.
Ide is directed to a hard alloyed powder for use in the spray coating of metal surfaces. Col. 6, lines 16-30. The hard alloy contains borides and/or multiple borides of Group IV-a or V-a elements of the Periodic Table. Col. 3, lines 52-55. The hard alloyed powder may be made by gas atomization, and the gas may be argon. Abstract; col. 4, lines 62-68; col. 5, lines 1, 2, 35-38.
Atomization is the preferred method of manufacture from an industrial point of view. Col. 4, lines 62-65. Inert gas prevents undesirable oxidation of B. Col. 5, lines 35-38. Therefore, it would have been obvious to have produced the claimed boride-containing powder by an inert gas atomization process because it is preferable from an industry standpoint and minimized oxidation of the boron.
The co-pending claims 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 co-pending 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.
Claims 40 and 41 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9, 10, and 18-20 of co-pending Application No. 17/785,675 in view of Ide and Branagan, as noted above, and further in view of US 2018/0044766 (A1) to Tidesten (“Tidesten”) and US 2013/0174942 (A1) to Bonnet et al. (“Bonnet”).
Co-pending claims 9, 10, and 18-20 recite the chemical composition, boride types and contents, and particles sizes recited in instant claims 15, 16, 18-23, and 30-39. Ide and Branagan address the atomized state of the powders, the mean sphericity, and mean roundness, as noted above. The claimed co-pending metal powder does not specify a ferrite structure containing at most 10% austenite.
Tidesten is directed to wear-resistant Fe-based alloys containing boron that forms hard phase particles. Para. [0001]. The alloys may be made by argon gas atomization. Para. [0031]. The steel composition and heat treatment can be selected to give the steel a ferritic, martensitic, austenitic, or duplex austenitic/ferritic matrix structure. Para. [0030].
Bonnet is directed to a steel plate throughout which TiB2 particles are dispersed throughout. Para. [0014]. The steel may have a microstructure that is partially or completely ferritic, bainitic, austenitic, martensitic, or a mixture thereof, the proportions suitable for meeting required mechanical properties. Para. [0046].
It would have been obvious to one of ordinary skill in the art to have carried out a cooling and/or heat treatment on the metal powders of the co-pending application to obtain a desired microstructure, such as ferrite, because customization would enable the user to tailor the powders to attain predetermined properties, thereby expanding the versatility and utility of the powders.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed 04/10/2026 have been fully considered.
Applicant’s arguments with respect to Ito (JP 2007-000892 (A)) have been considered but are moot because Ito is not used to reject the claims.
The double patenting rejection is maintained, with modifications in light of the amendments to the claims, due to the lack of a terminal disclaimer on file.
Applicant is notified that claims 15, 16, 18-27, and 29-41 are not rejected under prior art, but are subject to the objections and non-prior art rejections set forth above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith D. Hendricks, can be reached at 571-272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VANESSA T. LUK/Primary Examiner, Art Unit 1733
June 25, 2026
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