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 .
Election
2. Applicant’s election without traverse of Group I (which included claims 1-21 in the restriction requirement) in the reply filed on June 23, 2025 is acknowledged. Claims 22 and 24 have been amended so as to be consonant with the elected claims. Thus all claims presently pending in this application (claims 1-22 and 24) are examined herein.
Information Disclosure Statements
3. The information disclosure statements filed August 18, 2022 and September 27, 2022 fail to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. Specifically, no copies of Foreign Patent Document 2 on the August 18, 2022 statement, and no copies of Foreign Patent Documents 3, 4 and 5 or of Non-Patent Literature Document 7 on the September 27, 2022 statement have been provided by Applicant. The statements have been placed in the application file, but the information referred to above has not been considered. (It is further noted with respect to Non-Patent Literature Document 6 on the latter statement, only a single page Abstract of that document has been provided and has been considered to that extent).
Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
Objection
4. Claim 18 is objected to because the word “or” is missing between “alloy” and “a”. Appropriate correction is required.
Rejections -- 35 U.S.C. 112
5. 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.
6. Claim 3 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
In line 2 of this claim, “the homogeneous alloy” lacks proper antecedent basis.
Rejections -- 35 U.S.C. 103
7. 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.
8. Claims 1-9, 11-22 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Holtz et al. (US 2018/0053316) in view of Levesque et al. (US 2009/0091745).
Holtz disclose a method for assessing the degree of sensitization of an alloy that includes selective etching of the beta phase on the surface of the alloy, using “one or more alloy etchants” as claimed and specifically ammonium persulfate in accord with claim 4; see Holtz para [0028]. The alloy in Holtz is an aluminum alloy (see Abstract) in accord with claims 2 and 18. With respect to claim 3, the beta phase is a magnesium-rich phase formed on grain boundaries when the alloy is exposed to elevated temperatures (see Holtz para [0003]), and such a phase would have a localized composition different from the overall composition of the alloy in accord with this claim. With respect to claims 5, 6 and 19, Holtz para [0028] states that the alloy “is polished and then is etched”.
Following etching, Holtz makes a metallographic recording of the polished and etched surface and uses image enhancement and image analysis (specifically a statistical distribution analysis; see Holtz para [0040]) to determine the percentage of beta phase present in all of the grain boundaries in the image, which is then converted into an expression of the degree of sensitization in the sample being analyzed; see Holtz para [0043]. However, Holtz does not employ laser-induced breakdown spectroscopy or LIBS for that purpose, as required by the instant claims.
Levesque indicates it was conventional in the art, at the time of filing of the present invention, to employ LIBS as a technique for measuring the content of constituent elements in an inhomogeneous material. The various techniques of that method as disclosed in Levesque para [0023-0047] can be considered equivalent to the claimed “semi-quantitatively probe” the composition at a variety of locations in the material in accord with the instant claims. With respect to claims 7 and 16, Levesque discloses that LIBS is a technique that uses a pulsed laser focused on a sample to create a microplasma near the surface thereof; see Levesque para [0003]. With respect to claims 8 and 9, Levesque para [0082] discloses an embodiment where a camera used to produce images of the sample is synchronized with the pulse laser (in accord with claim 8), and clearly a simplified version of that would carry out the method without synchronization of the laser pulse, in accord with claim 9. With respect to claim 17, the LIBS system in Levesque includes one or more spectrometers (which one can define as either “compact” or “bulk”), and an optical component such as a camera; see Levesque para [0080-0081]. Therefore the combined disclosures of Holtz and Levesque suggest a method as set forth in instant claims 15-19.
Holtz and Levesque do not employ an artificial intelligence (AI) algorithm as required by instant claims 1-14, 20-22 and 24. However:
i) Holtz para [0052] suggest the use of computational algorithms to automatically find and select grain boundaries in the prior art process.
ii) An “algorithm” is seen as nothing more than a series of computational steps or manipulations to be performed, whether mathematical or otherwise. Whether determined by AI or by human intelligence, an actual devised algorithm would be the same in either instance. The computational techniques set forth in both Holtz and Levesque can be considered equivalent to such an algorithm. In other words, the claimed limitation of using an “AI” algorithm amounts to nothing more than carrying out a known technique but “do it on a computer”, generally held unpatentable in Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972), or Alice Corp. v. CLS Bank, 573 U.S. 208, 110 USPQ2d 1976 (2014).
With respect to claims 11 and 12, Holtz para [0044] indicates determining degree of sensitization in accord with ASTM G-67 and provides “quantitative information” of the degree of sensitization of the alloy. With respect to claims 13, 21 and 24, the techniques used in Holtz and Levesque in analyzing the data obtained by their respective optical data can at the very least be considered to be a version of “discriminant analysis” as claimed. With respect to claims 14 and 20, the use of “computer intelligence” or an AI algorithm alternative to that of human intelligence or human-derived algorithm does not patentably distinguish the claimed method from those of the prior art; see Gottschalk or Alice, supra.
With respect to claim 22, the LIBS system in Levesque employs a pulsed laser source which emits pulses directed at a surface of a material being analyzed, and a spectrometer which would measure spectra of that material in some semi-quantitative manner, and any technique which calculates the measured correlation between the beta phase percentage and the degree of sensitization in Holtz can be considered to be accomplished using “one or more processors”.
Therefore, the disclosure of etching and determining the degree of sensitization as disclosed by Holtz et al., combined with the known use of LIBS technique to determine composition of material as disclosed by Levesque et al., would have suggested a method as presently claimed to one of ordinary skill in the art.
9. Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Holtz et al. in view of Levesque et al., as above, and further in view of Tse et al. (WO 2015/138035).
Neither Holtz nor Levesque, discussed supra, disclose the use of any of the signal enhancement approaches recited in the instant claim. Tse is directed to LIBS analysis of material to determine emission spectra thereof, i.e. to determine composition of the material at specific points. Thus Tse is in a related field of endeavor. Tse indicates it was known in the art, at the time of filing of the present invention, to confine the laser-generated plasma around the material being analyzed, considered equivalent to the presently claimed “spatial confinement”. Given this disclosure of Tse et al., one of ordinary skill in the art would have been motivated to practice a signal enhancement approach as presently claimed when carrying out a method as suggested by the combination of Holtz et al. and Levesque et al.
Additional Prior Art
10. The remainder of the art cited on the attached PTO-892 and SB/08 forms is of interest. This art is held to be no more relevant to the claimed invention than the art as applied in the rejections supra.
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to GEORGE WYSZOMIERSKI whose telephone number is (571) 272-1252. The examiner can normally be reached on Monday thru Friday from 8:30 am to 5:00 pm Eastern time.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks, can be reached on 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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/GEORGE WYSZOMIERSKI/ Primary Examiner, Art Unit 1733 August 13, 2025
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