DETAILED ACTION
Claims 1-13 are pending and currently under review.
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 .
Response to Amendment
The amendment filed 1/26/2026 has been entered. Claims 1-13 remain(s) pending in the application.
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 1-2 and 4-13 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. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation of a sum of Cr and Ni up to 23 weight percent, and the claim also recites that Cr is limited to up to 13 weight percent and Ni is limited to up to 9.6 weight percent, which are the narrower statements of the range/limitation. Specifically, the claimed Cr and Ni amounts only allow for a sum of Cr and Ni to be a maximum of 22.6 weight percent. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
Claim(s) 1-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Holmberg (US 2008/0210344) in view of ASM Handbooks (2015, Powder metallurgy).
Regarding claim 1, Holmberg discloses a stainless steel having a composition as seen in table 1 below [abstract]. The examiner notes that the overlap between the composition of Holmberg and that as claimed is prima facie obvious. See MPEP 2144.05(I). Holmberg is silent regarding the necessary requirement of any other non-recited elements, which one of ordinary skill would understand to meet the limitation of “consisting of…” (ie. close-ended).
Holmberg does not expressly teach the form of a stainless steel powder as claimed. ASM Handbooks discloses that it is known to substitute powder metallurgy stainless steels for conventional cast/wrought stainless steels in order to save costs and for large production volumes [p.480]. Therefore, it would have been obvious to one of ordinary skill to modify the steel composition of Holmberg by providing said steel composition in the form of a powder for the aforementioned benefit as taught by ASM Handbooks.
Table 1.
Element (wt.%)
Claim 1 (wt.%)
Holmberg (wt.%)
C
0.02 – 0.04
0 – 0.07
Si
0.2 – 0.4
0 – 1.5
Mn
0.1 – 0.5
0.2 – 5
Cr
11 – 13
10 – 15
Ni
7 – 9.6
7 – 14
Cr+Ni
19 – 23
17 – 29
Mo
1 – 1.6
1 – 6
Al
1.4 – 2
0.2 – 1.5
N
0.01 – 0.15
0 – 0.1
Cu (optional)
0.05 – 2.5
1 – 3
B (optional)
0.002 – 0.007
0
S (optional)
0.01 – 0.25
0.01 – 0.4
Ti (optional)
0 – 0.3
0.3 – 2.5
Zr (optional)
0 – 2
0
Hf (optional)
0 – 2
0
Y (optional)
0 – 2
0
Ca (optional)
0.0003 – 0.009
0
Mg (optional)
0 – 0.01
0
O (optional)
0.003 – 0.8
0
REM (optional)
0 – 0.2
0
Fe & Impurities
Balance
Balance
Regarding claims 2-4, the aforementioned prior art discloses the steel of claim 1 (see previous). The examiner notes that the aforementioned composition of Holmberg further overlaps with the claimed ranges. See MPEP 2144.05(I). The examiner further considers the alloy of Holmberg to be not alloyed with S since the disclosed S amounts of Holmberg can be considered as mere impurity amounts as recognized by one of ordinary skill.
Regarding claims 5-6, the aforementioned prior art discloses the steel of claim 1 (see previous). ASM Handbooks further teaches that stainless steel powders can be manufactured through gas atomization for the benefit of avoiding oxidation, which one of ordinary skill would understand to result in spherical powders [p.424]. The examiner notes that spherical powders naturally meet the claimed sphericity and aspect ratio ranges because spheres naturally achieve sphericity and aspect ratio values of 1.
Regarding claims 7-13, the aforementioned prior art discloses the method of claim 1 (see previous). ASM Handbooks further teaches that it is known to achieve stainless steel particle sizes of less than 150 micrometers [p.425]. The examiner notes that this range overlaps with the claimed ranges. See MPEP 2144.05(I). The examiner notes that the recitations of “for additive manufacturing”, “for metal injection molding”, “for thermal spraying”, and “for overlay welding” are merely instance of intended use and do not impart any further structure to the claimed powder. See MPEP 2111.02. Nonetheless, ASM Handbooks further teaches that metal injection molding powders for example can have a maximum powder size of 20 micrometers [p.421]. ASM Handbooks further teaches controlling particle size to range from approximately 10 to up to 500 micrometers depending on the atomization pressure, which also overlaps with the claimed ranges. See MPEP 2144.05(I).
Claim(s) 1-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Naumann et al. (EP2460904, machine translation referred to herein) in view of ASM Handbooks (2015, Powder metallurgy).
Regarding claim 1, Naumann et al. discloses a stainless steel having a composition as seen in table 2 below [0001, 0004]. The examiner notes that the overlap between the composition of Naumann et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I). Naumann et al. further discloses that non-recited element (ie. Nb, V, etc.) can be included in 0% amounts and are therefore optional and not required, which one of ordinary skill would understand to meet the limitation of “consisting of…” (ie. close-ended).
Naumann et al. does not expressly teach the form of a stainless steel powder as claimed. ASM Handbooks discloses that it is known to substitute powder metallurgy stainless steels for conventional cast/wrought stainless steels in order to save costs and for large production volumes [p.480]. Therefore, it would have been obvious to one of ordinary skill to modify the steel composition of Naumann et al. by providing said steel composition in the form of a powder for the aforementioned benefit as taught by ASM Handbooks.
Table 1.
Element (wt.%)
Claim 1 (wt.%)
Naumann et al. (wt.%)
C
0.02 – 0.04
0.01 – 0.4
Si
0.2 – 0.4
0.1 – 8
Mn
0.1 – 0.5
0.1 – 25
Cr
11 – 13
2 – 20
Ni
7 – 9.6
4 – 12
Cr+Ni
19 – 23
6 – 32
Mo
1 – 1.6
0 – 4
Al
1.4 – 2
0 – 15
N
0.01 – 0.15
0.01 – 0.5
Cu (optional)
0.05 – 2.5
0 – 10
B (optional)
0.002 – 0.007
0
S (optional)
0.01 – 0.25
0 – 0.05
Ti (optional)
0 – 0.3
0
Zr (optional)
0 – 2
0
Hf (optional)
0 – 2
0
Y (optional)
0 – 2
0
Ca (optional)
0.0003 – 0.009
0
Mg (optional)
0 – 0.01
0
O (optional)
0.003 – 0.8
0
REM (optional)
0 – 0.2
0
Fe & Impurities
Balance
Balance
Regarding claims 2-4, the aforementioned prior art discloses the steel of claim 1 (see previous). The examiner notes that the aforementioned composition of Naumann et al. further overlaps with the claimed ranges. See MPEP 2144.05(I). The examiner further considers the alloy of Naumann et al. to be not alloyed with S since S is disclosed only in impurity amounts and the range of Naumann et al. also includes 0% (ie. not included).
Regarding claims 5-6, the aforementioned prior art discloses the steel of claim 1 (see previous). ASM Handbooks further teaches that stainless steel powders can be manufactured through gas atomization for the benefit of avoiding oxidation, which one of ordinary skill would understand to result in spherical powders [p.424]. The examiner notes that spherical powders naturally meet the claimed sphericity and aspect ratio ranges because spheres naturally achieve sphericity and aspect ratio values of 1.
Regarding claims 7-13, the aforementioned prior art discloses the method of claim 1 (see previous). ASM Handbooks further teaches that it is known to achieve stainless steel particle sizes of less than 150 micrometers [p.425]. The examiner notes that this range overlaps with the claimed ranges. See MPEP 2144.05(I). The examiner notes that the recitations of “for additive manufacturing”, “for metal injection molding”, “for thermal spraying”, and “for overlay welding” are merely instance of intended use and do not impart any further structure to the claimed powder. See MPEP 2111.02. Nonetheless, ASM Handbooks further teaches that metal injection molding powders for example can have a maximum powder size of 20 micrometers [p.421]. ASM Handbooks further teaches controlling particle size to range from approximately 10 to up to 500 micrometers depending on the atomization pressure, which also overlaps with the claimed ranges. See MPEP 2144.05(I).
Response to Arguments
Applicant’s arguments regarding the previous 103 rejections have been considered but are moot in view of the new grounds of rejection above.
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 NICHOLAS A WANG whose telephone number is (408)918-7576. The examiner can normally be reached usually M-Th: 7-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 5712721177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734
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