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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/26/2026 has been entered.
Response to Amendment
The Amendment filed 06/26/2026 has been entered. Claims 1-11 remain pending in the application. Claims 6-10 have been withdrawn due to a restriction requirement. New claim 11 has been added. Claims 1-5 and 11 are presented for examination on the merits. Applicant's amendments to the specification have overcome the objections previously set forth in the Final Rejection mailed 02/26/2026.
Claim Objections
Claim 1 is objected to because of the following informalities: claim 1 recites “steel particles” in the plural while the amended limitation recites “steel particle”. While this appears to be a typographical error, the use of “steel particle” may be interpreted as requiring uniform distribution only in one steel particle as opposed to in all steel particles. Appropriate correction is required.
Claim Interpretation
In claim 1, the recitation “for use within an additive manufacturing process” has been given little patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). In the instant case, the preamble merely recites the intended use of the claimed metal powder, wherein the prior art can meet this future limitation by merely being capable of such intended use.
The terms “characterized in”, “comprises” and “comprising” of claims 1, 2, and 5, are interpreted as inclusive or open-ended. The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. In this case, the powder of claims 1-5 and 11 may include additional elements than those recited in the instant claims.
Regarding the median particle diameter of claim 2, MPEP § 2113 states that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”. Similarly, a property of a claimed product is not changed by the method of measuring said property. In the instant case, a median particle diameter reading on the claimed range will be interpreted as reading on the claimed powder despite differences in measurement methods.
Regarding the tool steel composition of claim 5, in the interest of compact prosecution, the Examiner used the composition provided for tool steel 1.2344 H13 (table in page 6 of instant specification) as a reference. However, as explained in the 112(d) rejection in this Office action, the claimed powder cannot have both the composition of claim 1 and the composition of claim 5 at the same time, as presently claimed, since tool steel does not include the titanium and/or zirconium of claim 1.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 1-5 and 11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites the limitation “said steel particles comprising, at a weight fraction greater than or equal to 0.01 wt% and less than or equal to 5 wt%, carbonitrides and/or carbides and/or nitrides selected from the group consisting of titanium, zirconium or mixtures thereof uniformly distributed in the steel particle”. The instant specification recites “the titanium and/or zirconium content is uniformly distributed” (page 7, lines 22-24). The instant specification recites the titanium and/or zirconium are uniformly distributed, not that carbonitrides and/or carbides and/or nitrides are uniformly distributed. Furthermore, Figures 4 and 5 show titanium nitrides which are distributed within the matrix, but not in a manner that one of ordinary skill in the art would consider “uniformly distributed”. For example, the precipitates of Figure 5 vary in both size and location and the lower right corner of the micrograph has no visible precipitates. The precipitates shown in Figure 5 are not “uniform” in size nor are “uniformly distributed” in the metal particle. The instant disclosure does not provide support for the claimed “said steel particles comprising, at a weight fraction greater than or equal to 0.01 wt% and less than or equal to 5 wt%, carbonitrides and/or carbides and/or nitrides selected from the group consisting of titanium, zirconium or mixtures thereof uniformly distributed in the steel particle”.
Claims 5 and 11 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 5 recites the limitation “wherein the steel particles comprise a base composition for tool steel according to 1.2344 or H13”. However, claim 1, on which claim 5 depends, recites “said steel particles comprising, at a weight fraction greater than or equal to 0.01 wt% and less than or equal to 5 wt%, carbonitrides and/or carbides and/or nitrides selected from the group consisting of titanium, zirconium or mixtures thereof uniformly distributed in the steel particle.” One of ordinary skill in the art understands tool steel according to 1.2344 or H13 does not include any titanium or zirconium, as admitted by Applicant in the table of page 6 of the instant specification, which lists a composition of tool steel including C, Si, Mn, P, S, Cr, Mo, and V but no Ti nor Zr, which are required in claim 1. Therefore, claim 5 fails to include all the limitations of the claim upon which it depends. If Applicant is intending to claim the initial composition of the steel particles before adding the titanium, zirconium, or mixture thereof carbonitrides and/or carbides and/or nitrides of claim 1, Applicant is reminded the claims are drawn to a product and a product may only be claimed at one point in time. In this case, the claimed powder can have either the composition of a 1.2344 or H13 tool steel or of a steel with titanium and/or zirconium carbonitrides and/or carbides and/or nitrides.
Claim 11 recites the limitation “wherein the metal powder is homogeneous” (emphasis added). Claim 1, on which claim 11 depends, recites “carbonitrides and/or carbides and/or nitrides selected from the group consisting of titanium, zirconium or mixtures thereof uniformly distributed in the steel particle”. Homogeneity in powder science refers to the uniform distribution of components throughout the mixture, meaning that any given property (e.g., composition, particle size distribution) is consistent across the sample. In this case, since claim 1 already recites a uniform distribution in the powder, and therefore a homogeneous powder, claim 11 fails to further limit the subject matter of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-4 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over US 2006/0201280 A1 of Hwang.
Regarding claims 1-4 and 11, Hwang teaches a sinter-hardening powder (Title, reads on claimed powder). Hwang teaches the powder comprises Fe as its primary component (Abstract, reads on claimed powder comprises steel particles).
List 1
Instant claims (wt%)
H13 1.2344 (wt%, instant spec)
Hwang (wt%)
C
0.25-4 (claim 4)
0.35-0.42
0.1-0.8
Mn
-
0.25-0.5
≤ 1.0 (optional)
Si
-
0.8-1.2
≤ 1.0 (optional)
Cr
-
4.8-5.5
0.1-7.0
Mo
-
1.2-1.5
≤ 2.0
V
-
0.85-1.15
-
P
-
0-0.03
≤ 1.0
S
-
0-0.02
-
Ti and/or Zr
0.01-2.0 (claim 3)
-
Ti: ≤ 1.0 (“at least one of Cu, Ti, Al, Mn, Si, Nb, P”, claim 2)
Nb
-
-
≤ 1.0
Ni
-
-
3.5-12
Fe
Balance (implied in “steel”)
Balance (implied in “steel”)
Balance (implied in “remaining portion is Fe”)
Carbonitiride, carbide and/or nitride
0.01-5
-
(implied)
D50
10 nm-100 μm
-
0.1-30 μm (claim 7)
30-150 μm (claim 8)
Hwang teaches a steel powder with a chemical composition ([0029], [0038]-[0045], claims 1-4 and 7-8) and particle size ([0029], [0038], [0042], claims 7-8, Examples 1, 3, 5, and 6 all teach a mean particle size of 150 μm or less) overlapping with the claimed powder, as shown in List 1. While Hwang teaches a mean particle size rather than a median, one of ordinary skill in the art would reasonably expect median values to be within the claimed 10 nm-100 μm when the mean size is, for example, 0.1-100 μm despite Hwang not explicitly disclosing a median size. 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Hwang teaches homogeneity of the powder by optimizing Ni and Cr addition ([0043]-[0044], reads on the claimed uniformly distributed in the steel particle of claim 1 and wherein the metal powder is homogeneous of claim 11).
Hwang therefore reads on the limitation a metal powder for use within an additive manufacturing process, characterized in that said powder comprises steel particles uniformly distributed in the steel particle of claim 1, wherein the metal powder comprises particles having a median particle diameter, D50, obtained via dynamic laser light scattering of greater than or equal to 10 nm and less than or equal to 100 μm of claim 2, wherein the titanium and/or zirconium weight fraction in the metal powder is greater than or equal to 0.01 wt% and less than or equal to 2.0 wt% of claim 3, wherein the metal powder has a carbon content of greater than or equal to 0.25 wt% and less than or equal to 4 wt% of claim 4, and wherein the metal powder is homogeneous of claim 11.
While Hwang does not explicitly teach said steel particles comprising, at a weight fraction greater than or equal to 0.01 wt% and less than or equal to 5 wt%, carbonitrides and/or carbides and/or nitrides selected from the group consisting of titanium, zirconium or mixtures thereof of claim 1, one of ordinary skill in the art would reasonably expect the formation of titanium carbonitrides and/or carbides and/or nitrides due to overlapping carbon and titanium composition between the powder of Hwang and the claimed powder.
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). See MPEP § 2112.01 I. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Therefore, it is expected that the powder of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (see compositional analysis above), and b) the claimed and prior art products are identical or substantially identical in structure (both are powders of overlapping sizes). Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
Hwang therefore reads on the limitation said steel particles comprising, at a weight fraction greater than or equal to 0.01 wt% and less than or equal to 5 wt%, carbonitrides and/or carbides and/or nitrides selected from the group consisting of titanium, zirconium or mixtures thereof uniformly distributed in the steel particle of claim 1.
As further evidence that one of ordinary skill in the art would reasonably expect particle formations from the titanium, the instant specification recites “due to the carbon content, carbonitrides will essentially form” (page 5, line 7).
Hwang therefore reads on all the limitations of claims 1-4 and 11.
Claims 1-5 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over US 2006/0201280 A1 of Hwang in view of CN 108103499 A of Wang (with reference to its English machine translation).
Regarding claims 1-5 and 11, Hwang teaches a sinter-hardening powder (Title, reads on claimed powder). Hwang teaches the powder comprises Fe as its primary component (Abstract, reads on claimed powder comprises steel particles).
List 2
Instant claims (wt%)
H13 1.2344 (wt%, instant spec)
Hwang (wt%)
Wang (mass%)
C
0.25-4 (claim 4)
0.35-0.42
0.1-0.8
0.03-2
Mn
-
0.25-0.5
≤ 1.0 (optional)
0.3-1.60
Si
-
0.8-1.2
≤ 1.0 (optional)
0.5-2.80
Cr
-
4.8-5.5
0.1-7.0
2-12
Mo
-
1.2-1.5
≤ 2.0
0.5-4
V
-
0.85-1.15
-
0.5-3
P
-
0-0.03
≤ 1.0
≤ 0.030
S
-
0-0.02
-
≤ 0.030
Ti and/or Zr
0.01-2.0 (claim 3)
-
Ti: ≤ 1.0 (“at least one of Cu, Ti, Al, Mn, Si, Nb, P”, claim 2)
(from TiC)
B
0.05-3.0
Nb
-
-
≤ 1.0
0.3-1
Ni
-
-
3.5-12
-
Fe
Balance (implied in “steel”)
Balance (implied in “steel”)
Balance (implied in “remaining portion is Fe”)
Balance
Carbonitiride, carbide and/or nitride
0.01-5
-
(implied)
2-50% TiC
D50
10 nm-100 μm
-
“mean particle size”
0.1-30 μm (claim 7)
30-150 μm (claim 8)
D50: 25-50 μm
Hwang teaches a steel powder with a chemical composition ([0029], [0038]-[0045], claims 1-4 and 7-8) and particle size ([0029], [0038], [0042], claims 7-8, Examples 1, 3, 5, and 6 all teach a mean particle size of 150 μm or less) overlapping with the claimed powder, as shown in List 2. While Hwang teaches a mean particle size rather than a median, one of ordinary skill in the art would reasonably expect median values to be within the claimed 10 nm-100 μm when the mean size is, for example, 0.1-100 μm despite Hwang not explicitly disclosing a median size. 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Hwang teaches homogeneity of the powder by optimizing Ni and Cr addition ([0043]-[0044], reads on the claimed uniformly distributed in the steel particle of claim 1 and wherein the metal powder is homogeneous of claim 11).
Hwang therefore reads on the limitation a metal powder for use within an additive manufacturing process, characterized in that said powder comprises steel particles uniformly distributed in the steel particle of claim 1, wherein the metal powder comprises particles having a median particle diameter, D50, obtained via dynamic laser light scattering of greater than or equal to 10 nm and less than or equal to 100 μm of claim 2, wherein the titanium and/or zirconium weight fraction in the metal powder is greater than or equal to 0.01 wt% and less than or equal to 2.0 wt% of claim 3, wherein the metal powder has a carbon content of greater than or equal to 0.25 wt% and less than or equal to 4 wt% of claim 4, wherein the steel particles comprise a base composition for tool steel according to 1.2344 or H13 of claim 5 with the exception of vanadium content, and wherein the metal powder is homogeneous of claim 11.
While Hwang does not explicitly teach said steel particles comprising, at a weight fraction greater than or equal to 0.01 wt% and less than or equal to 5 wt%, carbonitrides and/or carbides and/or nitrides selected from the group consisting of titanium, zirconium or mixtures thereof of claim 1, one of ordinary skill in the art would reasonably expect the formation of titanium carbonitrides and/or carbides and/or nitrides due to overlapping carbon and titanium composition between the powder of Hwang and the claimed powder.
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). See MPEP § 2112.01 I. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Therefore, it is expected that the powder of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (see compositional analysis above), and b) the claimed and prior art products are identical or substantially identical in structure (both are powders of overlapping sizes). Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
Hwang therefore reads on the limitation said steel particles comprising, at a weight fraction greater than or equal to 0.01 wt% and less than or equal to 5 wt%, carbonitrides and/or carbides and/or nitrides selected from the group consisting of titanium, zirconium or mixtures thereof uniformly distributed in the steel particle of claim 1.
As further evidence that one of ordinary skill in the art would reasonably expect particle formations from the titanium, the instant specification recites “due to the carbon content, carbonitrides will essentially form” (page 5, line 7).
However, Hwang does not explicitly teach the vanadium content of a tool steel according to 1.2344 or H13 of claim 5.
Wang teaches a particle-reinforced iron-based alloy powder (Abstract). Wang and Hwang are considered analogous art since they are both similarly concerned with iron-based powders with similar compositions and particle sizes (see List 1 above).
Wang teaches an iron-based powder with a composition of 0.5-3% V ([0011]) and further teaches that the iron-based alloy powder of the invention significantly improves wear resistance, corrosion resistance, heat resistance, oxidation resistance, and other process properties, and is economical ([0007], [0035]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to add the vanadium content of Wang, such as within the claimed ranges, to the powder of Hwang to improve wear, corrosion, heat, and oxidation resistance of the powder, as taught by Wang.
Hwang therefore reads on all the limitations of claims 1-5 and 11.
Claims 1-4 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over DE 102013/110417 A1 of Fechte-Heinen (as cited in IDS mailed 11/15/2022 and with reference to its English machine translation).
Regarding claims 1-4 and 11, Fechte-Heinen teaches a metal powder according to the invention has a particle size distribution in the range of 5–150 μm and contains mainly iron and unavoidable impurities, with its iron content ranging from 89.6 to over 99.9 wt.%, and is a steel powder (Abstract, reads on claimed metal powder comprises steel particles). Fechte-Heinen teaches using its metal powder in additive manufacturing processes ([0008], reads on claimed for use within an additive manufacturing process).
List 3
Instant claims (wt%)
H13 1.2344 (instant spec)
Fechte-Heinen (wt%)
C
0.25-4 (claim 4)
0.35-0.42
0.001-0.54
Mn
-
0.25-0.5
0-3.8
Si
-
0.8-1.2
-
Cr
-
4.8-5.5
0.01-0.4
Mo
-
1.2-1.5
-
V
-
0.85-1.15
0.005-0.25
P
-
0-0.03
-
S
-
0-0.02
-
Ti and/or Zr
0.01-2.0 (claim 3)
-
Ti: 0.005-0.3
Nb
-
0.002-0.18
Fe
Balance (implied in “steel”)
Balance (implied in “steel”)
89.6 to over 99.9 wt%
Carbonitiride, carbide and/or nitride
0.01-5
-
(implied)
D50
10 nm-100 μm
-
5-150 μm
In the range of 10-60 μm, 10-36 μm, or 25-45 μm (“preferred embodiments” in [0010])
Fechte-Heinen teaches a steel powder with a chemical composition ([0008], [0012]-[0031], [0039]-[0050], claims 3-12) and particle size ([0007], [0010], [0035], claims 1 and 13) overlapping with the claimed powder, as shown in List 3. While Fechte-Heinen teaches a particle size distribution rather than a median, one of ordinary skill in the art would reasonably expect median values to be within the claimed 10 nm-100 μm with the particle size distributions of 5-150 μm, and the preferred embodiments with 10-60 μm, 10-36 μm, or 25-45 μm particle size ranges of Fechte-Heinen despite Fechte-Heinen not explicitly disclosing a median size. 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I. Regarding the uniformity of the powder, Feichte-Heinen teaches using atomization for producing the metal powder ([0011]). One of ordinary skill in the art would reasonably expect the resulting powder to be homogeneous and have a uniform distribution due to the use of atomization despite Fechte-Heinen not explicitly disclosing the powder is homogeneous. A patent need not teach, and preferably omits, what is well known in the art. See MPEP § 2164.01.
Fechte-Heinen therefore reads on the limitation a metal powder for use within an additive manufacturing process, characterized in that said powder comprises steel particles uniformly distributed in the steel particle of claim 1, wherein the metal powder comprises particles having a median particle diameter, D50, obtained via dynamic laser light scattering of greater than or equal to 10 nm and less than or equal to 100 μm of claim 2, wherein the titanium and/or zirconium weight fraction in the metal powder is greater than or equal to 0.01 wt% and less than or equal to 2.0 wt% of claim 3, wherein the metal powder has a carbon content of greater than or equal to 0.25 wt% and less than or equal to 4 wt% of claim 4 and wherein the metal powder is homogeneous of claim 11.
While Fechte-Heinen does not explicitly teach said steel particles comprising, at a weight fraction greater than or equal to 0.01 wt% and less than or equal to 5 wt%, carbonitrides and/or carbides and/or nitrides selected from the group consisting of titanium, zirconium or mixtures thereof of claim 1, one of ordinary skill in the art would reasonably expect the formation of titanium carbonitrides and/or carbides and/or nitrides due to overlapping carbon and titanium composition between the powder of Fechte-Heinen and the claimed powder.
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). See MPEP § 2112.01 I. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Therefore, it is expected that the powder of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (see compositional analysis above), and b) the claimed and prior art products are identical or substantially identical in structure (both are powders of overlapping sizes). Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
Fechte-Heinen therefore reads on the limitation said steel particles comprising, at a weight fraction greater than or equal to 0.01 wt% and less than or equal to 5 wt%, carbonitrides and/or carbides and/or nitrides selected from the group consisting of titanium, zirconium or mixtures thereof uniformly distributed in the steel particle of claim 1.
As further evidence that one of ordinary skill in the art would reasonably expect particle formations from the titanium, the instant specification recites “due to the carbon content, carbonitrides will essentially form” (page 5, line 7).
Fechte-Heinen therefore reads on all the limitations of claims 1-4 and 11.
Response to Arguments
New grounds of rejection are presented in this Office action in light of amended claim 1 requiring uniform distribution of titanium and/or zirconium carbonitrides and/or carbides and/or nitrides and claim 11 requiring a homogenous powder. Applicant’s arguments with respect to claims 1-5 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The Examiner notes that CN108103499A of Wang, used in the 35 U.S.C. 103 rejections above, was not used as a primary reference in any 35 U.S.C. 103 rejection since Wang teaches the TiC particles are mixed with the iron-based alloy powder and therefore the TiC particles are not part of the steel particles as presently claimed in claim 1 of the instant invention and as argued by Applicant (remarks, pages 5-8) regarding the physical mixture of powders of Heikkinen.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAYELA ALDAZ whose telephone number is (571)270-0309. The examiner can normally be reached Monday -Thursday: 10 am - 7 pm and alternate Friday: 10 am - 6 pm.
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/M.A./Examiner, Art Unit 1733
/REBECCA JANSSEN/Primary Examiner, Art Unit 1733
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