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 .
Status of Claims
Claims 1-3 and 5 are examined in this office action as claims 6-15 are directed to a withdrawn invention, claim 4 is canceled, and claim 1 is amended in the reply dated 4/9/26.
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 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 1-3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over US 6641640 B1 of Hesse.
Table A
Element
Claims 1-5 limitation
(mass %)
Hesse claim 1 (wt %)
C
0.15-1.0%
Not more than 0.5%
N
0.15-1.0%
0.55 to 1.2%
Si
0.1-2.0%
Up to 2% (col 4, line 31)
Mn
10-25%
At least 15% (claim 2)
2 to 26%
Cr
5-21%
At least 14% (claim 3)
11 to 24%
Mo
0.1˂2.5%
2.5 to 10%
Ni
≤0.1%
Permissible upper limit of 0.5% (col 3, lines 64-66)
Total contents of C and N (claim 5)
0.6-1.5%
0.55 to 1.7%
Fe and unavoidable impurities
Remainder and unavoidable impurities
Iron alloy so balance iron and unavoidable impurities (col 4, lines 27-28)
With respect to claims 1-3, and 5, these claims are to a “metal powder for manufacturing a steel component” and “wherein the steel component comprises more than one solidified volume section produced from more than one portion of the metal powder, and wherein two adjacent solidified volume sections of the steel component are not produced at the same time”. The claim preamble must be read in the context of the entire claim. The determination of whether preamble recitations are structural limitations or mere statements of purpose or use "can be resolved only on review of the entirety of the [record] to gain an understanding of what the inventors actually invented and intended to encompass by the claim" as drafted without importing "'extraneous' limitations from the specification." Corning Glass Works, 868 F.2d at 1257, 9 USPQ2d at 1966. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999), see MPEP § 2111.02(II). In the instant case, the claim fully sets forth the structure of the powder by describing its composition, size, and flow rate. As such, the preamble is merely an intended use for the claimed powder and does not limit the scope of the claims. Also the limitations concerning the steel component and its structure is merely further definition of the intended use of the claimed metal powder. These limitations concerning the steel component do not result in a structural difference in the claimed powder, see MPEP § 2111.02(II).
Hesse discloses a nickel- and cobalt-free, nitrogen containing steel in powder form having a mean particle size of at least 0.1 micrometer and not more than 100 micrometers (Hesse, col 7, lines 63-67) and discloses a specific example with a mean particle size of 8 micrometers (Hesse, col 10, lines 20-21), meeting the claimed particle size of 5-150 µm.. Hesse discloses the composition of the powder in comparison to the claims in Table A above and Hesse discloses a composition which overlaps the claimed composition for all elements except Mo. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed composition over the prior art disclosure since the prior art teaches that this composition produces parts with excellent mechanical properties such as strength and hardness (Hesse, col 11, lines 9-14) throughout the disclosed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) . See MPEP § 2144.05 I.
While the disclosed range in Hesse for Mo does not overlap the claimed range, it does directly abut the claimed range and is so mathematically close to the range of 0.1 to less than 2.5% that that one of ordinary skill in the art would expect the alloy to have the same or patentably indistinct properties from the alloy with the claimed range. MPEP § 2144.05(I) provides that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties." See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997) (under the doctrine of equivalents, a purification process using a pH of 5.0 could infringe a patented purification process requiring a pH of 6.0-9.0). See also In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of "less than 6 pounds per cubic feet" and the prior art range of "between 6 lbs./ft3 and 25 lbs./ft3" were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.).In the instant case, there is no showing that the range of 0.1 to less than 2.5% or less exhibits unexpected results nor criticality for this range. As such, the Mo composition of 2.5-10 wt% (Hesse, claim 1) creates a prima facie case of obviousness that is not rebutted by the evidence on record.
While Hesse is silent concerning flow rate, Hesse nevertheless discloses that the metallic powder is manufactured using gas atomization (Hesse, col 3, lines 38-39). As Hesse discloses the same starting composition, see Table A above, and applies the same method of gas atomization to form the powder (pg. 16, first paragraph of specification noting use of gas or water atomization to form the powder), the same method applied to the same starting material would produce the same results of the metal powder having a flow rate determined in accordance with DIN EN ISO 4490 of less than 30 sec/50 g. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (emphasis added), see MPEP § 2112.01(I).
Claims 1-3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over "Gas–solid interactions during nonisothermal heat treatment of a high-strength CrMnCN austenitic steel powder: Influence of atmospheric conditions and heating rate on the densification behavior." Of Krasokha.
Table B
Element
Claims 1-5 limitation
(mass %)
Krasokha Table 1 (mass %)
C
0.15-1.0%
0.36 %
N
0.15-1.0%
0.40%
Si
0.1-2.0%
0.38%
Mn
10-25%
At least 15% (claim 2)
19.20%
Cr
5-21%
At least 14% (claim 3)
18.00%
Mo
0.1˂2.5%
1.03%
Ni
≤0.1%
0.36%
Total contents of C and N (claim 5)
0.6-1.5%
0.76%
Fe and unavoidable impurities
Remainder and unavoidable impurities
balanced
With respect to claims 1-3 and 5, these claims are to a “metal powder for manufacturing a steel component” and “wherein the steel component comprises more than one solidified volume section produced from more than one portion of the metal powder, and wherein two adjacent solidified volume sections of the steel component are not produced at the same time”. The claim preamble must be read in the context of the entire claim. The determination of whether preamble recitations are structural limitations or mere statements of purpose or use "can be resolved only on review of the entirety of the [record] to gain an understanding of what the inventors actually invented and intended to encompass by the claim" as drafted without importing "'extraneous' limitations from the specification." Corning Glass Works, 868 F.2d at 1257, 9 USPQ2d at 1966. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999), see MPEP § 2111.02(II). In the instant case, the claim fully sets forth the structure of the powder by describing its composition, size, and flow rate. As such, the preamble is merely an intended use for the claimed powder and does not limit the scope of the claims. Also the limitations concerning the steel component and its structure is merely further definition of the intended use of the claimed metal powder. These limitations concerning the steel component do not result in a structural difference in the claimed powder, see MPEP § 2111.02(II).
Krasokha discloses where the particle size is smaller than 200 µm (Krasokha, pg. 4239, section II, left column, 1st paragraph), overlapping the claimed particle size of 5-150 µm and it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select within the overlapping range for particle size to reach the claimed invention. “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.”, see MPEP § 2144.05(I).
Krasokha discloses the composition in comparison to the claimed ranges in Table B above. As Krasokha discloses a composition which in the example austenitic steel powder has a composition which is within the claimed range for the composition except for Ni, Krasokha anticipates these compositional limitations.
Krasokha discloses where Ni is 0.36 mass% (Krasokha, Table 1), which is close to the claimed range of less than or equal to 0.1 mass%. The MPEP provides that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). See also In re Becket, 88 F.2d 684 (CCPA 1937) ("Where the component elements of alloys are the same, and where they approach so closely the same range of quantities as is here the case, it seems that there ought to be some noticeable difference in the qualities of the respective alloys."), see MPEP § 2144.05(I). Given the closeness of the disclosed Ni amount to the claimed composition, one of ordinary skill would naturally expect the alloys to exhibit the same properties.
While Krasokha is silent concerning flow rate, Krasokha nevertheless discloses that the metallic powder is manufactured using gas atomization (Krasokha, pg. 4239, section II, left column, 1st paragraph). As Krasokha discloses the same starting composition, see Table B above, and applies the same method of gas atomization to form the powder (pg. 16, first paragraph of specification noting use of gas or water atomization to form the powder), the same method applied to the same starting material would produce the same results of the metal powder having a flow rate determined in accordance with DIN EN ISO 4490 of less than 30 sec/50 g. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (emphasis added), see MPEP § 2112.01(I).
Claims 1-3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over "Gas–solid interactions during nonisothermal heat treatment of a high-strength CrMnCN austenitic steel powder: Influence of atmospheric conditions and heating rate on the densification behavior." Of Krasokha in view of US 6641640 B1 of Hesse.
As to claims 1-3 and 5, for all elements and properties save the Ni amount, the reasons set forth in the rejection over Krasokha above are similarly applied in this rejection. With respect to the Ni amount, in the alternative, while Krasokha does not explicitly disclose where the Ni amount is at most 0.1 mass%, this amount of Ni is obvious in view of the teachings of the art.
Hesse relates to the same filed of endeavor of nitrogen containing steels (Hesse, abstract; see also Table A above showing a composition which overlaps the claimed range). Hesse teaches that a permissible upper limit for nickel in these steel alloys is preferably 0.5 wt% (Hesse, col 3, lines 64-67). Hesse teaches that this content of nickel allows for the use of these alloys on or in the human body such as in a watch, earpiece, or implant (Hesse, col 4, lines 1-3).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute control of nickel to be less than 0.1 wt% as taught by Hesse into the steel alloy disclosed in Krasokha, thereby allowing the alloy to be used in such applications as a watch, earpiece, or implant (Hesse, col 4, lines 1-3).
Response to Arguments
With respect to the 112(b) rejection, it is agreed that applicant’s deletion of the dash symbol cures the indefiniteness issue concerning the range of Mo and therefore the rejection is withdrawn.
With respect to the 103 rejection over Hesse, applicant argues that Hesse despite exhibiting a range for Mo which abuts the claimed range would not render the claims obvious (Applicant’s remarks, pg. 6 last paragraph – pg. 7 1st paragraph).
However, as noted in the rejection above, this a retreated range from the originally disclosed Mo range of 0.1-3.0% and the Mo amount in Hesse is so mathematically close to the newly claimed range of 0.1 to less than 2.5% that that one of ordinary skill in the art would expect the alloy to have the same or patentably indistinct properties from the alloy with this newly claimed range. There is no showing that the range of 0.1 to less than 2.5% or less exhibits unexpected results nor criticality. As such, the Mo composition of 2.5-10 wt% (Hesse, claim 1) creates a prima facie case of obviousness that is not rebutted by the evidence on record.
Applicant argues that the new limitations concerning the steel component being comprised of more than one solidified volume differentiates the claims from the Hesse as it describes a sintering or injection molding process and thus does not have solidified volumes not produced at the same time (Applicant’s remarks, pg. 7, 2nd – 3rd paragraphs). Similarly, applicant argues that Krasokha also relates to where the metal powder is sintered and does not disclose an additive manufacturing process and therefore does not disclose solidified volumes not produced at the same time (Applicant’s remarks, pg. 7, last paragraph).
However, the elected invention and claims are directed to “A metal powder”. Applicant is claiming where this metal powder is “for manufacturing a steel component”. Thus, this is merely an intended use of the powder and the intended use of creating a steel component with more than one solidified volume not produced at the same time does not change the structure of the powder being claimed. The powder as claimed is capable of forming the steel component, and the powders disclosed in Hesse and Krasokha are both capable of use to form components using additive manufacturing. As Hesse and Krasokha render obvious the composition, size and flowrate of the powder, the powder itself is obvious.
Finally, applicant argues that the composition for Mo has been amended to be greater than or equal to 0.1% and less than 2.5% which eliminates any overlap with Hesse and Ni has been amended to be less than or equal to 0.1% which eliminates any overlap with Krasokha and therefore a person of ordinary skill cannot reach the subject matter of claim 1 in an obvious manner (Applicant’s remarks, pg. 8, 1st paragraph).
The fact that Hesse discloses an abutting range to the claimed range of Mo is addressed above. While Krasokha does not disclose an overlapping or anticipatory amount of Ni, the disclosed amount of Ni in Krasokha only differs 0.26% and this closely matching composition would be expected to exhibit the same properties. Further, as Hesse teaches reasons for limiting the amount of Ni in this class of steel powders, it would be obvious to modify the Ni amount in Krasokha to reach the claim limitations. Thus, applicant arguments are not persuasive and the rejections are maintained.
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 Joshua S Carpenter whose telephone number is (571)272-2724. The examiner can normally be reached Monday - Friday 8:00 am - 5:30 pm.
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/JOSHUA S CARPENTER/Examiner, Art Unit 1733
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
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