DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The amendment of claims 12-13, 15-17, 19-20 are supported by the specification. The new claim 26 is supported by the specification.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The new grounds of rejection set forth below are necessitated by applicant's amendment filed on 4/27/2026. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 103
Claims 12-13, 15-17, 19-20, 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kerby (US 5,189,077).
Claims 12-13, 15-16, 19-20: Kerby teaches a method comprising acid treating stainless steel particles, washing the acid treated particles with water, recovering the treated particle, and mixing the acid treated particles with one polymer (10:15-55, examples 1-3). The mixture comprises 1-80wt% of the stainless steel particles and up to about 75wt% of polymer binder (claim 2). The amount of the stainless steel particles based on the weight of the polymer overlaps the claimed range, for example it is 28wt% when the mixture comprises 20wt% of the stainless steel particles and 70wt% of polymer binder. The acid used to treat the stainless steel particles can be acetic acid or propionic acid. (10:38-42).
Kerby does not teach the acid treating is carried out at an elevated temperature.
However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to adjust the reaction temperature through routine experimentation to balance between reaction rate with cost, because the reaction temperature is a result effective variable where a higher reaction temperature accelerates the reaction but it also leads to higher energy use. Case law holds that "discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). It is a known practice to control the reaction temperature below the boiling temperature of reagents to avoid the loss of reagents.
Claim 17: Kerby does not teach the mass ratio of the acid and metal particles.
However, Kerby teaches the acid treatment would increase the ionization of the surface of the stainless steel, the formed ions are available for forming metal ion bridges with the polymer binder to improve the adhesion and strength of the material (10:15-25, 11:15-20). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to adjust the amount of the acid through routine experimentation to balance between the ionization efficiency with cost, because the amount of the acid is a result effective variable where insufficient acid leads to reduced ionization efficiency, whereas excessive acid results in unnecessary waste. Case law holds that "discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Claim 26: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Additionally, it would have been obvious to one of ordinary skill in the art at the time the invention was made to adjust the reaction temperature through routine experimentation to balance between reaction rate with cost, because the reaction temperature is a result effective variable where a higher reaction temperature accelerates the reaction but it also leads to higher energy use.
Response to Arguments
Applicant's arguments filed 4/27/2026 have been fully considered but they are not persuasive.
In response to applicant's argument that PTO does not identify any disclosure in Kerby of the concentration of treated metal particles relative to the weight of the polymer, nor does it provide any conversion establishing that Kerby teaches the presently recited range, it is noted that PTO identify the concentrations of metal particles and the polymer, the conversion is an elementary school math skill.
In response to applicant's argument that Kerby’s examples do not teach the claimed concentration range, it is noted that case law holds that the disclosure of a reference is not limited to preferred embodiments or specific working examples therein. In re Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 570 (CCPA 1982); In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976). A reference is relevant for all that it contains, including non-preferred embodiments because a non-preferred portion of a reference is just as significant as the preferred portion in assessing the patentability of claims. In re Heck, 669 F.2d 1331, 1333, 216 USPQ 1038, 1039 (Fed. Cir. 1983), In re Nehrenberg, 280 F.2d 161, 126 USPQ 383 (CCPA 1960).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
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 extension fee 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 date of this final action.
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/WENWEN CAI/
Primary Examiner, Art Unit 1763
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