Detailed Office Action
Notice of Pre-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
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Restriction/Election
Applicant’s election without traverse of Group I, Claims 1 – 8 in the reply filed on 09/17/2025 is acknowledged. Claims 9 – 10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/17/2025.
Claim Objections
Claim 3 is objected to because of the following informalities: the phrase “intermetallic elements” should read “intermetallic alloys”. Appropriate correction is required.
Claim Rejections – U.S.C. § 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 4 – 6 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.
Claims 4 and 5 recite the limitation "the casting alloy”. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, it is interpreted as the second metal matrix.
Claim 5 recites the limitation "third metal matrix” and “the micrometric particles of titanium carbides….”. There is insufficient antecedent basis for this limitation in the claim. In particular, the claim depends upon claim 1 but it appears that it was intended to be dependent upon claim 2 wherein the third metal matrix and the micrometric particles of titanium carbides, nitrides, or carbonitrides is introduced.
Regarding claim 6, the limitation is indefinite. It is not clear how the limitation is intended to further limit claim 1. First, the use of “when same” makes it unclear whether the limitation is conditional on the millimetric areas and inserts being the same for the limitation to apply or whether the phrase is conditional on the insert and millimetric areas containing the same ceramic-metal composite. For purposes of examination, it is interpreted that either the insert or millimetric areas of the reinforcement contain particles of metal carbides, nitrides, borides or intermetallic alloys of D50 of less than 80 µm.
Claim Rejections – U.S.C. §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 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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1, 3 – 4, 6, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Berton (US2011/0226882, cited in the previous OA of 08/21/25) and Olejnik (US2018/0369905, cited in the previous OA of 08/21/25).
Regarding claim 1, Berton discloses forming an impactor [abstract, 0001] containing a reinforced area [Fig 5A-5D]. The reinforced area comprising a plurality of granules of millimetric size [0019, Fig 5A-5D and 4A], meeting the claimed limitation of a reinforcement portion comprising centimetric inserts having a predefine geometry. The reinforced area is infiltrated by a ferrous cast alloy (interpreted as the claimed second metal matrix) [0029].
The granules contain a mixture of titanium and carbon which form titanium carbide upon conducting infiltration casting with a size of 50 µm or less [0013, 0024], meeting the claimed limitation of said inserts comprising micrometric particles of metal carbides.
The granules can further comprise a powder of a ferrous alloy [0029], meeting the claimed limitation of bonded by a first metal matrix.
Wherein the powder of the ferrous alloy (interpreted as the first metal matrix) can be steel [0088] and the cast ferrous alloy can be cast iron [0093], meeting the claimed limitation of the first metal matrix and second metal matrix being different.
Wherein the impact with a structure formed of a casted area and infiltrated area further containing a reinforcing portion (granules) with ceramic and metal matrix, meet the claimed limitation of “hierarchical structure”.
Berton does not explicitly teach that the reinforced structure comprises a periodic alternation of millimetric area of higher and lower concentration of micrometric particles of zirconia or alumina-zirconia alloy.
Olejnik teaches forming a wear-resistant body containing local composite zones produced by casting inserts [Abstract], said casting inserts being capable of being formed into any shape including granules [0016]. Olejnik teaches that the casting inserts contain a powder mixture to form carbide (or boride) during casting [0017] as well as additional powders including ferrous alloys [0013]. Olejnik teaches that the casting inserts are infiltrated/surrounded by a casting alloy [Fig 10, 0029]. Lastly, Olejnik discloses that the ceramic inserts further contain a powder of ZrO2, stabilized ZrO2, and/or Al2O3 that serves as a moderator [0015] (a powder of ZrO2 meeting the claimed limitation of micrometric particle of zirconia). Olejnik states that said powder provides the benefit of increasing wear resistance [0015] as well as controlling the phenomenon of reactive infiltration and reducing the adverse effect of total fragmentation [0026]. Olejnik also states that the moderator also allows for the in-situ produced particles to be stable and predictable in size [0021]
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the granules of Berton and included a powder of ZrO2 as a moderator powder as taught by Olejnik. Berton and Olejnik are directed to the formation of wear components containing a reinforcement area of composite casting inserts infiltrated/surround by casting metal (same field of endeavor). Furthermore, Berton and Olejnik are directed to in-situ formation of hard ceramic during casting in the casting inserts. As such, an ordinarily skilled artisan would have a reasonable expectation of success in including ZrO2 powder in the granules of Berton. Additionally, an ordinarily skilled artisan would have been motivated to include ZrO2 powder in the granules because, as taught by Olejnik, the powder increases wear resistance, controls the phenomenon of reactive infiltration, reduces the adverse effect of total fragmentation, and allows for the in-situ produced particles to be stable and predictable in size.
Lastly, the inclusion of the ZrO2 power in the granules of Berton would create periodically alternating areas of millimetric higher concentration areas (granules) and millimetric lower concentration areas (non-granules) as disclosed by Berton (in regards to titanium carbide formation) [0026], meeting the claimed limitation.
Regarding claim 3, Berton in view of Olejnik teaches the invention as applied in claim 1. Berton teaches that the areas concentrated with titanium carbide (i.e. the granules interpreted as the claimed inserts) can have a titanium carbide volume % of 36.9 – 72.2 [0018], which falls within the claimed range.
Regarding claim 4, Berton in view of Olejnik teaches the invention as applied in claim 1. Wherein the ferrous alloy of the granules (interpreted as the binder of the insert(s)) can be steel [0088], meeting the claimed limitation of the ferrous alloy, and the casting alloy can be a cast ferrous alloy of cast iron [0093], meeting the claimed limitation of the matrices being different.
Regarding claim 6, Berton in view of Olejnik teaches the invention as applied in claim 1. Berton teaches that the titanium carbide formed has a size of less than 50 µm [0016], which meets the claimed limitation.
Regarding claim 8, Berton in view of Olejnik teaches the invention as applied in claim 1. Berton teaches that the component produced is an impactor [0001], meeting the claimed limitation.
Claims 1 – 2 and 4 – 8 are rejected under 35 U.S.C. 103 as being unpatentable over Mirchandani (WO2011/008439) in view of Desiles (US2017/0157667)
Regarding claim 1, Mirchandani teaches an article containing a metal matrix composite of metal or metal alloy and hard elements interspersed in the metal matrix composite [0011]. The hard elements can be 10 – 40 mm [0039], meeting the claimed limitation of centimetric inserts. The article(s) can be placed in the working surface of grinding rolls [0010]. Wherein the article(s) placed within the working surface of grinding rolls meets the limitation of a hierarchical wear part. The working surface meeting the claimed limitation of reinforced portion containing centimetric inserts.
Mirchandani teaches that the hard elements can contain a high hardness metal such as a tool steel [0035], meeting the claimed limitation of a first metal matrix. The hard elements can also contain a ceramic material such as a carbide of Group IVB metals [0036], meeting the claimed limitation of the metal carbides. Wherein the combination of tool steel and metal carbide meets the limitation of metal carbide bonded by a first metal matrix.
Mirchandani shows in Fig 3A an article which contains the hard elements (labeled “24”) placed in a larger area and surrounded by the metal matrix composite (labeled “21”). The metal or metal alloy of the metal matrix composite can be introduced by infiltration [0053], meeting the claimed limitation of inserts placed in a reinforcement structure infiltrated by a second metal matrix.
Mirchandani teaches that hard metal of the insert (interpreted as the first metal matrix) can be a tool steel and also teaches that the metal or metal alloy of the metal matrix composited (interpreted as the second metal matrix) can be, for example, a copper alloy [0049]. As such, Mirchandani reasonably suggests that the metal/metal alloy of the hard element (interpreted as the first metal matrix) and the metal/metal alloy of the metal matrix composite surrounding the hard elements (interpreted as the second metal matrix) can be different, meeting the claimed limitation.
Mirchandani teaches that the metal matrix composite contains inorganic particles can be uniformly distributed [0033] and can include an oxide with a hardness of at least 60 HRC [0048], but does not expressly teach that the oxide is zirconia or alumina-zirconia alloy.
Desiles teaches a ceramic grain composition for use in comminution devices [0001]. Desiles teaches that the composition is an alloy/combination of alumina and zirconia [0107 – 0109] and comprise a hardness of 900 – 1600 HV (900 HV being ~67 HRC). Desiles teaches that alumina contributes to the hardness of the ceramic grains [0061] whereas zirconia contributes to the toughness [0064].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have used the wear resistant ceramic grain composition disclosed by Desiles as the inorganic particles of the metal matrix composite in Mirchandani. Desiles and Mirchandani are directed to the same field of endeavor of wear resistant articles for crushing/comminution. Furthermore, Mirchandani teaches that the inorganic particles can be oxides with a hardness of at least 60 HRC and Desiles teaches an oxide composition with a hardness of at least ~67 HRC. As such, an ordinarily skilled artisan would have had a reasonable expectation of success in combining the teachings of Mirchandani and Desiles. Additionally, Desiles teaches that the combination of alumina and zirconia provides both hardness and toughness respectively, providing motivation to an ordinarily skilled artisan. Lastly, “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)” (MPEP 2144.07)
Regarding claim 2, Mirchandani in view of Desiles teaches the invention as applied in claim 1. Desiles teaches that the ceramic composition can further include titanium carbide or nitride in amounts down to essentially 0 wt% [0066], wherein minute contents of titanium carbide/nitride would fall within the claimed range of the amount being 50 vol% or less relative to the content of alumina/alumina-zirconia. As such, the range disclosed in Desiles overlaps with the claimed range.
Additionally, Mirchandani teaches that the inorganic particles can further contain a metal or metal alloy [0046] wherein the metal can contain a metal/metal alloy selected independently from the metal/metal alloy of the hard elements as well as the metal/metal alloy of the metal matrix composite, meeting the claimed limitation of a binder of a third metal matrix.
With regards to the overlapping ranges taught, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to have selected overlapping ranges as disclosed. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I). “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)”
Regarding claim 4, Mirchandani in view of Desiles teaches the invention as applied in claim 1. Mirchandani teaches that the high hardness metal of the insert (interpreted as the first metal matrix) can be a tool steel [0035], meeting the claimed limitation of a ferrous alloy. Mirchandani also teaches that the metal or metal alloy of the metal matrix composited (interpreted as the second metal matrix) can be, for example, a copper alloy [0049]. As such, Mirchandani reasonably suggests the limitation of the first metal matrix being a ferrous alloy and different from the casting alloy (i.e. second metal matrix).
Regarding claim 5, Mirchandani in view of Desiles teaches the invention as applied in claim 1. Mirchandani teaches that the inorganic particles can further contain a metal or metal alloy [0046], for example a nickel alloy [0046], wherein this metal/metal alloy can be selected independently from the metal/metal alloy of the metal matrix composite, meeting the claimed limitation of a binder of a third metal matrix.
Regarding claim 6, Mirchandani in view of Desiles teaches the invention as applied in claim 1. Mirchandani teaches that the inorganic particles have an average size of 0.5 – 250 µm, which overlaps with the claimed range [0046], and can include a metal carbide [0048], meeting the claimed limitation. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I).
Regarding claim 7, Mirchandani in view of Desiles teaches the invention as applied in claim 1. Wherein the inorganic particles of zirconia/zirconia-alumina in the metal matrix composite (as taught by Mirchandani in view of Desiles) would have a different metal matrix (e.g. a copper alloy) [0053] than the metal matrix of the insert (i.e. tool steel) [0035], meeting the claimed limitation.
Regarding claim 8, Mirchandani in view of Desiles teaches the invention as applied in claim 1. Mirchandani teaches the article(s) are placed in the working surface of grinding rolls [0010], meeting the claimed limitation of the wear part being a grinding roller.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Mirchandani (WO2011/008439) in view of Desiles (US2017/0157667), as applied to claim 1, in further view of Standke (EP3366389, using espacenet translation)
Regarding claim 3, Mirchandani in view of Desiles teaches the invention as applied in claim 1. Mirchandani teaches that the hard elements (interpreted as the insert) can contain a high hardness metal (interpreted as the first metal matrix) [0035] and the hard elements can also contain a ceramic material such as a carbide of Group IVB metals [0036] (interpreted as the metal carbide). Mirchandani does not explicitly teach a vol% of the ceramic material.
Standke teaches composites with very high resistance [Title] for use in crushing/comminution [0001, 0002]. Standke discloses hard particles with a binding phase [0040] which can be formed into various shapes and sizes and then inserted into a casting mold (i.e. an insert) [0079]. Standke teaches that the binding phase is contained in amount of 2 – 40 vol% based on the volume of the hard particles [0050]. As such, the volume of the binding phase would be 2 – 29 vol% (2/(100+2) to 40/(100+40)) based on the total of the hard particles and binding phase and therefore the hard particles would be ~71 – 98 vol% based on the total, which overlaps with the claimed range.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have used the insert composition disclosed by Standke as the composition of the hard elements in Mirchandani. Standke and Mirchandani are directed to the same field of endeavor of wear resistant articles for crushing/comminution including cast inserts. Furthermore, Mirchandani teaches that the hard elements can contain both a metal and a ceramic material. As such, an ordinarily skilled artisan would have had a reasonable expectation of success in combining the teachings of Mirchandani and Standke to achieve predictable results and the combination would result in no change in their respective functions.
The combination of prior art elements to yield predictable results is a prima facie case of obviousness (See MPEP 2143 A). “The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art”. KSR, 550 U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976)
Lastly, selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I).
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 7,513,295 – cast wear component with reinforcement area
WO2020144028 – Component with a metal matrix composite as well as an insert
WO2017091859 – a component with wear elements embedded in a wear element body made of metal matrix composite
WO2014125034 – Formation of metal matrix composite with titanium carbide, alumina, and zirconia
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Austin M Pollock whose telephone number is (571)272-5602. The examiner can normally be reached M - F (11 - 8 ET).
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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738