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 .
Reopening of Prosecution After Appeal Brief
In view of the appeal brief filed on February 25, 2026, PROSECUTION IS HEREBY REOPENED. New grounds of rejection are set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
Status of Claims
Claims 1-6 and 8 are examined in this office action below as claim 7 is withdrawn as directed to a nonelected invention.
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, 3-6 , and 8 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 recites the limitation “wherein the tungsten material has a crystal grain size of 58 µm or more after performing heat treatment onto the tungsten material at 2000°C for 1 hour” in the last two lines of the claim. Similar limitations exist in claim 4 (“wherein a crystal grain size of the tungsten material is 200 µm or less after performing heat treatment onto the tungsten material at 2000°C for 1 hour”) and claim 5 (“wherein the ratio of the angle of 2 to 15° after performing heat treatment onto the tungsten material at 1500°C for 1 hour is 25% or less”). These claims are all directed to a tungsten material, but these limitations are written in the form of performing method steps. Thus, it is not clear from these limitations whether these are properties that the claimed tungsten material exhibits, whether these are intended future properties that exist if the tungsten material is heat treated to 1500°C or 2000°C for 1 hour, or some other meaning.
Further, as claim 1 requires where a “ratio of an angle of 2 to 15° is 50% or more in an arbitrary surface of the tungsten material” it is not clear how in claim 5, the “ratio of the angle of 2 to 15°” can also be “25% or less”. The ratio of these angles cannot be above 50% while also being 25% or less at the same time. Claims 3, 6, and 8 are also rejected as they depend from claim 1 and do not solve the above issue.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 and 3-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by "Quantitative microstructure and defect density analysis of polycrystalline tungsten reference samples after different heat treatments." of Manhard.
As to claim 1, Manhard discloses a hot-rolled tungsten sample (Manhard, pg. 2, last paragraph), meeting the claim limitation of tungsten material. Manhard discloses where the abundance of low-angle grain boundaries of 2 to 10° after annealing at 1200K is over 50% (Manhard, Figure 5) meeting the claim limitation where a ratio of an angle of 2 to 15° is 50% or more in an arbitrary surface of the tungsten material, the angle being formed between a specific crystal orientation of a first crystal grain and the specific crystal orientation of a second crystal grain adjacent to the first crystal grain as the angles of grain boundaries is the ratio angles between a first and second crystal grain as if the abundance of the angles between grain boundaries between 2 to 10° is over 50%, this ratio must be at least this amount if not greater for 2 to 15°.
It is not clear whether the crystal grain size is 58 µm or more or it this is an intended future property, see 112(b) rejection above. For the purposes of applying prior art this will be interpreted as a future intended property. Manhard discloses an average grain size of 12.1µm once the sample is annealed for 30 min at 2000 K (1726.85 °C) (Manhard, pg. 15, last paragraph). Though Manhard does not explicitly disclose the grain size after heating to 2000°C for 1 hour being 58 µm or more, this is directed to future intended properties of the tungsten material. As Manhard discloses a hot-rolled tungsten sample (Manhard, pg. 2, last paragraph) and where the abundance of low-angle grain boundaries after annealing at 1200K is over 50% (Manhard, Figure 5), this tungsten material with the identical chemical composition and structure would necessarily have the same properties of grain size after heating to 2000°C for 1 hour being 58 µm or more. “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).
As to claim 3, Manhard discloses where 99.97 wt% pure tungsten samples were used as a base material (Manhard, pg. 3, first sentence of first paragraph), falling within the claimed range of a purity of the tungsten material being 99.9 mass% or more.
As to claims 4 and 5, it is not clear whether the crystal grain size is 200 µm or less and the ratio of the angle of 2 to 15° after performing heat treatment onto the tungsten material at 1500°C for one hour is 25% or less, or it these are intended future properties, see 112(b) rejection above. For the purposes of applying prior art these will be interpreted as future intended properties. Manhard discloses an average grain size of 12.1µm once the sample is annealed for 30 min at 2000 K (1726.85 °C) (Manhard, pg. 15, last paragraph). Though Manhard does not explicitly disclose the grain size after heating to 2000°C for 1 hour being less than 200 µm nor where the ratio of the angle of 2 to 15° after performing heat treatment onto the tungsten material at 1500° C. for 1 hour is 25% or less, claims 4 and 5 are directed to future intended properties of the tungsten material of claim 1. As Manhard discloses a hot-rolled tungsten sample (Manhard, pg. 2, last paragraph) and where the abundance of low-angle grain boundaries after annealing at 1200K is over 50% (Manhard, Figure 5), this tungsten material with the chemical composition and structure would necessarily have the same properties of grain size after heating to 2000°C for 1 hour being less than 200 µm and where the ratio of the angle of 2 to 15° after performing heat treatment onto the tungsten material at 1500° C. for 1 hour is 25% or less. “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).
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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over "Quantitative microstructure and defect density analysis of polycrystalline tungsten reference samples after different heat treatments." Of Manhard.
As to claim 1, Manhard discloses a hot-rolled tungsten sample (Manhard, pg. 2, last paragraph), meeting the claim limitation of tungsten material. Manhard discloses where the abundance of low-angle grain boundaries of 2 to 10° after annealing at 1200K is over 50% (Manhard, Figure 5) meeting the claim limitation where a ratio of an angle of 2 to 15° is 50% or more in an arbitrary surface of the tungsten material, the angle being formed between a specific crystal orientation of a first crystal grain and the specific crystal orientation of a second crystal grain adjacent to the first crystal grain as the angles of grain boundaries is the ratio angles between a first and second crystal grain as if the abundance of the angles between grain boundaries between 2 to 10° is over 50%, this ratio must be at least this amount if not greater for 2 to 15°.
It is not clear whether the crystal grain size is 58 µm or more or it this is an intended future property, see 112(b) rejection above. In the alternative, if a grain size were interpreted to be 58 µm or more, Manhard discloses an average grain size of 12.1µm once the sample is annealed for 30 min at 2000 K (1726.85 °C) (Manhard, pg. 15, last paragraph). Manhard discloses where grains with sizes up to about 50µm exist after annealing at 2000K for 30 min (Manhard, pg. 15, last paragraph). It has been held that when the difference between a claimed invention and the prior art is the range or value of a particular variable, then a prima facie rejection is properly established when the difference in the range or value is minor, see MPEP § 2144.05 Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Further, as Manhard discloses the same starting material of a hot-rolled tungsten sample (Manhard, pg. 2, last paragraph) with the abundance of low-angle grain boundaries after annealing at 1200K is over 50% (Manhard, Figure 5), and applies the substantially same method of annealing at a temperature just 275 degrees less than claimed, this would be expected to produce the same properties of grain size being 58 µm or more. “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).
As to claim 2, Manhard discloses a hot-rolled tungsten sample (Manhard, pg. 2, last paragraph), meeting the claim limitation of tungsten material. Manhard discloses where the abundance of low-angle grain boundaries of 2 to 10° after annealing at 1200K is over 50% (Manhard, Figure 5) meeting the claim limitation where a ratio of an angle of 2 to 15° is 50% or more in an arbitrary surface of the tungsten material, the angle being formed between a specific crystal orientation of a first crystal grain and the specific crystal orientation of a second crystal grain adjacent to the first crystal grain as the angles of grain boundaries is the ratio angles between a first and second crystal grain as if the abundance of the angles between grain boundaries between 2 to 10° is over 50%, this ratio must be at least this amount if not greater for 2 to 15°. However, Manhard does not explicitly disclose where in arbitrary ten visual fields of the tungsten material, an average value of a lattice strain of (100) is 0.25% or less.
Nevertheless, Manhard discloses where the tungsten samples are formed by hot-rolling (Manhard, pg. 2, last paragraph), and Manhard discloses where these samples possess the same crystalline structure of a ratio of an angle of 2 to 15° is 50% or more. This matches the disclosed method where forging, rolling, extrusion or the like can be employed to form the tungsten material (Applicant’s specification, paragraph [0033]). As Manhard discloses the same tungsten starting material and applies the same method thereto of rolling thereby forming the same claimed crystalline structure, the same method applied to the same starting material would necessarily produce a product with the same properties average value of a lattice strain of (100) is 0.25% or less. “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).
As to claim 3, Manhard discloses where 99.97 wt% pure tungsten samples were used as a base material (Manhard, pg. 3, first sentence of first paragraph), falling within the claimed range of a purity of the tungsten material being 99.9 mass% or more.
As to claims 4 and 5, it is not clear whether the crystal grain size is 200 µm or less and the ratio of the angle of 2 to 15° after performing heat treatment onto the tungsten material at 1500°C for one hour is 25% or less, or it these are intended future properties, see 112(b) rejection above. In the alternative, if a grain size were interpreted to be 200 µm or less and angle of 2 to 15° is 25% or less, Manhard discloses an average grain size of 12.1µm once the sample is annealed for 30 min at 2000 K (1726.85 °C) (Manhard, pg. 15, last paragraph). Though Manhard does not explicitly disclose the grain size after heating to 2000°C for 1 hour being less than 200 µm nor where the ratio of the angle of 2 to 15° after performing heat treatment onto the tungsten material at 1500° C. for 1 hour is 25% or less, as Manhard discloses the same starting material of a hot-rolled tungsten sample (Manhard, pg. 2, last paragraph) with the abundance of low-angle grain boundaries after annealing at 1200K is over 50% (Manhard, Figure 5), and applies the substantially same method of annealing at a temperature just 275 degrees less than claimed, this would be expected to produce the same properties of a grain size being 58 µm or more and 200 µm or less and the ratio of the angle of 2 to 15° after performing heat treatment onto the tungsten material at 1500° C. for 1 hour is 25% or less. “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 6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over "Quantitative microstructure and defect density analysis of polycrystalline tungsten reference samples after different heat treatments." Of Manhard in view of CN 110181050 A and its English machine translation of Zhang.
As to claims 6 and 8, Manhard discloses the tungsten material according to claims 1 and 2, see claims 1 and 2 rejections above. However, Manhard does not disclose where the tungsten material contains a total of 20 mass% or less of at least one element selected from a group consisting of 5-20 mass% of Re, 5-20 mass% of Ta, and 0.1-1 mass% of Cr.
Zhang relates to the same field of endeavor of materials for nuclear fusion reactors (Zhang, paragraph [0004]). Zhang teaches adding 5% of Re to form a W-Re alloy (Zhang, paragraph [0010]). Zhang teaches that the inclusion of Re can significantly improve the room temperature brittleness of W, reduce the ductile-brittle transition temperature, and enhance the mechanical properties of W in a certain high temperature range (Zhang, paragraph [0004]).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add 5% of Re as taught by Zhang into the tungsten material disclosed in Manhard thereby significantly improve the room temperature brittleness of W, reduce the ductile-brittle transition temperature, and enhance the mechanical properties of W in a certain high temperature range (Zhang, paragraph [0004]).
Response to Arguments
With respect to the rejection over 102 in view of Manhard, applicant argues that as Manhard only discloses annealing at 2000K for 30 minutes which results in a grain size of 12.1 µm (Appeal Brief, pg. 9, 2nd paragraph). Applicant argues that as Manhard is silent concerning the heat treatment at 2000°C for 1 hour and the grain size being 58 µm or more, Manhard cannot disclose these properties (Appeal Brief, pg. 9, last paragraph).
However, as noted in the 112(b) rejection above, it is not clear whether this is directed to future intended properties of the tungsten material or whether the grain size must exist in the material as claimed. As noted above, claim 1 requires a “ratio of an angle of 2 to 15° is 50% or more in an arbitrary surface of the tungsten material”, but it is not clear how in claim 5, the “ratio of the angle of 2 to 15°” can also be “25% or less”. Thus, it is unclear whether applicant is claiming that the material will have these properties when annealed at these temperatures, whether it is claiming these properties are a part of the tungsten material, or some other meaning. As such, presuming that these are intended properties, as Manhard discloses a hot-rolled tungsten sample (Manhard, pg. 2, last paragraph) and where the abundance of low-angle grain boundaries after annealing at 1200K is over 50% (Manhard, Figure 5), this tungsten material with the identical chemical composition and structure would necessarily have the same properties of grain size after heating to 2000°C for 1 hour being 58 µm or more, see MPEP § 2112.01(II).
Further, in the alternative, if the claim requires a grain size of 58 µm or more, what is claimed is not an average grain size so reference to the average grain size in Manhard does not differentiate the claims from the art. All that is required by the limitation is that a singular grain has the size of 58 µm or more. Manhard does not disclose where no grains are larger than 50 microns, but instead recites that “grains with sizes up to about 50µm exist” (Manhard, pg. 15, last paragraph) and 58 µm or more is not patentably distinct from “about 50 µm”.
Further, as Manhard discloses a substantially identical method of annealing and rolling to the same starting material, it would have the same properties, see MPEP § 2112.01(I).
Applicant argues that materials with the same chemical composition can have different properties and points to the Pink reference for showing that materials of the same chemical composition can have different properties when having different grain sizes (Appeal Brief, pg. 10, last paragraph – pg. 11, 3rd paragraph).
However, it is not clear that applicant is claiming required properties, see 112(b) rejections above. A tungsten material with the same ratio of angles between the crystal grains, manufactured in the same manner would necessarily properties when heated to the same temperatures. Further, applicant describes that “Production conditions are also not restricted” and that “for the plastic working method, there is no restriction and forging, rolling, extrusion, or the like can be employed” (Applicant’s specification, paragraph [0030]). As Manhard discloses applicant’s proffered method, the tungsten material disclosed in Manhard would be expected to exhibit the same properties.
Applicant also argues that the structure in Manhard is not the same as the percentage of low angle grain boundaries of samples heated at 1700K for 30 min is about 25% while in contrast in the instant application is lower at 14.9% when heated to a similar temperature and applicant disagrees that the dramatic differences in the angle between grains cannot be explained by the difference in temperature and time (Appeal Brief, pg. 11, 1st paragraph).
However, these heat treatments are not identical. Manhard is disclosing a heat treatment that is 73 degrees less in temperature for 30 minutes less time a difference in result would be expected. Also, these are not mere small differences as 73 degree difference in heating combined with a doubling of annealing time would allow for greater grain growth and produce the difference in low angle grain boundaries. Further, as noted in the rejection above, Manhard discloses the composition of the tungsten structure, that it has abundance of low-angle grain boundaries of 2 to 10° after annealing at 1200K is over 50% (Manhard, Figure 5) meeting the claim limitation where a ratio of an angle of 2 to 15° is 50% or more in an arbitrary surface of the tungsten material, and that it is formed in a substantially identical manner of hot-rolling (Manhard, pg. 2, last paragraph), matching the disclosed method where forging, rolling, extrusion or the like can be employed to form the tungsten material (Applicant’s specification, paragraph [0033]). As such, the same structure formed using the same starting materials and same method would exhibit the same properties. Thus, applicant’s argument is not persuasive and the rejection is maintained.
With respect to the 103 rejection over claim 2, applicant argues that despite the apparently similar processes disclosed by the instant disclosure and Manhard, the process in Manhard does not produce materials with similar properties and thus a person of ordinary skill would not expect the material in Manhard to exhibit the claimed lattice strain of (100) is 0.25% or less (Appeal Brief, pg. 13, last two paragraphs). Applicant argues that the data in Table 4 demonstrates that there is criticality and unexpected results in reduced thermal shock cracking and there being no thermal deformation where the inventive examples are “A” for these properties while the comparative examples have “B” values for these properties (Applicant’s remarks, pg. 14 – pg. 16).
However, as noted in the rejection above, Manhard discloses the composition of the tungsten structure, that it has abundance of low-angle grain boundaries of 2 to 10° after annealing at 1200K is over 50% (Manhard, Figure 5) meeting the claim limitation where a ratio of an angle of 2 to 15° is 50% or more in an arbitrary surface of the tungsten material, and that it is formed in a substantially identical manner of hot-rolling (Manhard, pg. 2, last paragraph). It is applicant that describes that “Production conditions are also not restricted” and that “for the plastic working method, there is no restriction and forging, rolling, extrusion, or the like can be employed” (Applicant’s specification, paragraph [0030]). As Manhard discloses applicant’s proffered method, the tungsten material disclosed in Manhard would be expected to exhibit the same properties.
Further, the data in Table 4 does not demonstrate criticality nor unexpected results. As applicant notes, there is no quantitative data given about either thermal shock cracking nor thermal deformation. All that is noted is that no cracks achieve “A” value while 1-2 cracks garner “B” values and likewise with thermal deformation, 3mm or less of clearance garners “A” value while more than 3mm but less than 10 mm garners “B” values. No quantification is given on what parameters constitutes a crack; merely this is an observation made and quantified by applicant. Thus, it is not clear that 1-2 cracks is significantly different from a finding of no cracks. Likewise, given the broadness of the ranges encompassed within “A” and “B” values for thermal deformation, it is not clear that there are critical and unexpected differences related to the lattice strain. These ranges encompass small differences in values with 2.99mm being satisfactory while 3.01mm falling into the “B” category and without hard data on the cracking and thermal deformation for these examples in Table 4, it is difficult to show that these parameters are critical with respect to lattice strain values.
With respect to claims 6 and 8, as these claims patentability are not challenged separately, the rejections of these claims are maintained for the reasons stated above.
Conclusion
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/JOSHUA S CARPENTER/Examiner, Art Unit 1733
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