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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 06/19/2025 was filed after the mailing date of the Non-Final Rejection on 04/07/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Response to Amendment and Status of Claims
Applicant's amendment, filed 06/19/2025, has been entered. Claims 1-3 and 5-9 are amended, claim 4 is cancelled, and no new claims are added. Accordingly, claims 1-3 and 5-9 are pending and considered in this Office Action.
Applicant’s amendment to the specification, filed 06/19/2025, appears acceptable.
In the interest of the clarity of the record, Examiner notes that the specification appears to provide support for a method due to the description of Figure 1 at Page 6 of the specification which describes a real heat-exchanger tube which can typically be used as a steam-generator tube in a refuse incineration system that is subject to metal active gas arc welding under particular welding parameters.
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 1-3 and 5-9 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.
Claim 1 is now amended to a method requiring the steps of ‘providing’ an alloy as claimed and then ‘using’ the alloy as weld-cladding material in a thermal recycling system by subjecting the weld-cladding material to build-up welding and operational stress, wherein after the build-up welding, the weld-cladding material selectively forms, in an operationally-stressed condition, within a fully austenitic microstructure matrix, a sigma phase and hard particles in the weld-metal microstructure.
The metes and bounds of the claim are indefinite because it is not clear what steps would ‘subject’ the weld-cladding material to ‘operational stress’ nor what ‘an operationally-stressed condition’ would be. Additionally, it is unclear what “selectively forms” means especially “within a fully austenitic microstructure matrix, a sigma phase, and hard particles in the weld-metal microstructure’ would require. If the limitation is intending to capture a resultant microstructure of the weld-cladding material, then the conditions/steps should be included in the method claim. Otherwise, it appears that the alloy weld-cladding material need only be capable of producing such a microstructure. Further, it is unclear how ‘using the alloy as weld-cladding material in a thermal recycling system by subjecting the weld-cladding material to build-up welding and operational stress’ is intended to be interpreted. It appears that the alloy weld-cladding material would be used in the manufacture or repair of a thermal recycling system but no steps are presented to describe when or how the method is to be practiced in a thermal recycling system.
Limitations from the specification cannot be read into the claim; however, for the purposes of furthering prosecution, Examiner notes the description of Figure 1 at Page 6 of the specification could possibly serve as the basis for precise claim language directed to the disclosed method.
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 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Alves et al. (U.S. 9,228,250).
Regarding claim 1, Alves et al. (hereinafter “Alves”) teaches a Ni-Fe-Cr-Mo alloy (Title) meeting claim 1 as follows:
Element
Claimed
Nicrofer 3426 hMo
Analysis
Ni
33.5-35.0
33.79
Lies Within
Cr
26.0-28.0
26.38
Lies Within
Mo
6.0-7.0
6.88
Lies Within
Fe
<33.5
29.16
Lies Within
Mn
1.0-4.0
1.97
Lies Within
Si
≤ 0.1
0.05
Lies Within
Cu
0.5-1.5
1.16
Lies Within
Al
0.01-0.3
0.04
Lies Within
C
≤ 0.01
0.007
Lies Within
P
≤ 0.015
-
Taken as zero; Lies Within
S
≤ 0.01
0.002
Lies Within
N
0.1-0.25
0.21
Lies Within
B
0.001-0.004
0.003
Lies Within
RE
> 0-1.0
0.02
Lies Within
W
≤ 0.2
-
Taken as zero; Lies Within
Co
≤ 0.5
0.14
Lies Within
Nb
≤ 0.2
-
Taken as zero; Lies Within
Ti
≤ 0.1
-
Taken as zero; Lies Within
Alves further teaches that the alloy is preferably used for the production of welding rods (Col. 4 lines 60-62) which would meet the BRI of the claimed ‘weld-cladding material’.
In the interest of furthering prosecution and making the record as clear as practicable, Examiner notes that it has been held that ‘the claiming of a new use, new function, or unknown property which is inherently present in the prior art does not necessarily make the claim patentable’ In re Best, 562 F.2d 1252, 1254, USPQ 430, 433 (CCPA 1977) as well as MPEP 2112.I.
Thus, it would be obvious to use the alloy of Alves as a welding rod in a process of built-up welding for a thermal recycling system absent evidence to the contrary.
Furthermore, products of identical chemical composition cannot have mutually exclusive properties In re Spada, 911 F.2d 705, 709, 15 USPQ 2d 1655, 1658 (Fed. Cir. 1998) such that the alloy of Alves would be expected to achieve and/or possess in an operationally-stressed condition, within a fully austenitic microstructure matrix, a sigma phase and hard particles in the weld-metal microstructure absent evidence to the contrary.
Regarding claim 2, Alves teaches the composition as applied to claim 1 above and “Nicrofer 3426 hMO” Example 1 of Table 1 anticipates claim 2 as follows:
Element
Claimed
Nicrofer 3426 hMo
Analysis
Ni
33.5-35.0
33.79
Lies Within
Cr
26.0-28.0
26.38
Lies Within
Mo
6.0-7.0
6.88
Lies Within
Fe
<33.5
29.16
Lies Within
Mn
1.8-3.0
1.97
Lies Within
Si
≤ 0.1
0.05
Lies Within
Cu
1.0-1.5
1.16
Lies Within
Al
0.05-0.3
0.04
Lies Within
C
≤ 0.01
0.007
Lies Within
P
≤ 0.015
-
Taken as zero; Lies Within
S
≤ 0.01
0.002
Lies Within
N
0.2-0.25
0.21
Lies Within
B
0.001-0.004
0.003
Lies Within
sE (RE)
0.020-0.060
0.02
Lies Within
W
≤ 0.2
-
(not required)
Co
≤ 0.5
0.14
Lies Within
Nb
≤ 0.1
-
(not required)
Ti
≤ 0.5
-
(not required)
Regarding claim 3, Alves teaches the composition as applied to claim 1 above but does not describe the use of the alloy “in the field of heat exchanger tubes of refuse incineration systems”; however, this feature is the intended use of the alloy. Alves composition would be expected to be capable of use in the field of heat exchanger tubes of refuse incineration systems as it has an anticipatory composition to that instantly claimed.
Regarding claim 5, Alves teaches the composition as applied to claim 1 above but does not describe that “the weld cladding material remains fully austenitic and no delta ferrite forms in corrosion-impairing proportions, even in the case of welding-related dilution with iron”; however, it is expected that Alves alloy would embody this capability because the Ni content is within the claimed range.
Regarding claim 7, Alves teaches the alloy as applied to claim 1 above and further teaches that the alloy can be used for the production of a wire (Col. 4 lines 60-62).
Regarding claim 8, Alves teaches the alloy as applied to claim 1 above and further teaches that the alloy can be used for the production of strips (Col. 4 lines 60-62).
Claims 6 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Alves et al. (U.S. 9,228,250) as applied to claim 1 above.
Regarding claim 6, Alves teaches the composition as applied to claim 1 above but is silent that the alloy is used for repairs; however, it would be obvious to the person of ordinary skill in the art to use Alves’ material to repair another material.
It has been held that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle. 325 U.S. at 335, 65 USPQ at 301. See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). MPEP 2144.07.
Regarding claim 9, Alves anticipates the composition as applied to claim 1 above but is silent that the weld cladding material exists in the powder form; however, it would be obvious to the person of ordinary skill in the art that the alloy could be in powder form.
Response to Arguments
Applicant's arguments filed 06/19/2025 have been fully considered but they are not persuasive.
Alves teaches that the alloy is preferably used as a welding rod (Col. 4 lines 60-62). Thus, it would be obvious to use the alloy of Alves for its intended and preferred use, i.e. welding. While Alves does not elaborate on the welding processes or systems, it would be obvious to use the alloy in a welding rod in a process and/or system that is in need of welding such as thermal recycling system and/or build-up welding.
Examiner notes Applicant’s argument that the material of Alves is configured to be subject to a roll or explosive cladding process which Applicant believes to be “an entirely different process from weld cladding” (see Page 2 of Remarks filed 06/19/2025). However, this is unpersuasive because Alves teaches that the alloy is useful for welding rods (Col. 4 lines 60-62) and Alves attention to roll or explosive cladding processes would not teach away from the alloy’s use in ‘weld-cladding’.
‘The claiming of a new use, new function, or unknown property which is inherently present in the prior art does not necessarily make the claim patentable’ In re Best, 562 F.2d 1252, 1254, USPQ 430, 433 (CCPA 1977) as well as MPEP 2112.I.
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 ALEXANDRA M MOORE whose telephone number is (571)272-8502. The examiner can normally be reached M-F 8am-5pm, EST.
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ALEXANDRA M MOORE
Primary Examiner
Art Unit 1738
/ALEXANDRA M MOORE/Primary Examiner, Art Unit 1738