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
Response to Amendments
The amendment filed on 01/20/26 has been entered. Claims 1 – 4, 6 – 7, 17, and 21 – 23 have been canceled. Claims 26 – 35 have been added. Claims 12 – 16, 18 – 20, 24 – 35 are pending and under examination.
Claim Interpretation
The combination of “present” in combination with the claimed ranges including 0%, is interpreted as requiring the presence of the element/not including the endpoint of “0”. This is applicable for Ni, Mo, Mn, and B.
Regarding the phrase “consisting essentially of”. The phrase is interpreted as “open” claim language (i.e. comprising) because the specification nor claims provide a clear indication of what the basic and novel characteristics are. “For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising." See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355 ("PPG could have defined the scope of the phrase ‘consisting essentially of’ for purposes of its patent by making clear in its specification what it regarded as constituting a material change in the basic and novel characteristics of the invention.").” (MPEP 2111.03 III)
Claim Objections
Claim 28 is objected to because of the following informalities: “wherein” is repeated.
Appropriate correction is required.
Claim Rejections – U.S.C. §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 the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claim 31 is 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 31 contains subject matter which was not described in the specification as to reasonably convey to one of skilled in the art that the inventor(s) was in possession of the claimed invention. In particular, there does not appear to be any description in the specification or drawings that a second yield strength of 1600 MPa or higher is achieved.
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 13 – 14, 27, and 29 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.
Regarding claim 13, the phrase “at least 0.5 greater” is missing units so the metes and bounds are not clear. It is not clear whether 0.5 is a percentage increase or an absolute value (i.e. grams). For purposes of examination, the latter interpretation is taken.
Regarding claim 27, the value of “10” is missing units so the metes and bounds are not clear. For example, it is not clear whether the second hardness is within 10% of the first hardness or within 10 HRC of the first hardness. The latter interpretation is taken for purposes of examination.
Regarding claims 14 and 29, the language of “5% greater” is indefinite. The phrase is indefinite because elongation is measured in “%” so it is not clear whether “5%” is meant as an absolute value or a percentage difference. To clarify, the language doesn’t make clear whether it is a 5 percent increase (e.g., 20% elongation as-built and 21% or more after heat treatment) or whether it is an absolute value (20% elongation as-built and 25% or more after heat treatment). For purposes of examination, the latter interpretation is taken (absolute value).
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 12 – 16, 18 – 20, and 24 – 35 are rejected under 35 U.S.C. 103 as being unpatentable over Tuffile (US2019/0262944, cited in the IDS of 11/16/2023) in view of Woehrle (DE102018201855, using espacenet translation)
Regrading claims 12 and 16, Tuffile teaches a hard ferrous metallic alloy powder for powder bed fusion [Title], meeting the claimed limitation of a 3D printed part with iron-based alloy, meeting the claimed limitation.
Tuffile teaches the 3D printed parted/iron-based alloy has a composition of:
Element
Claimed Invention (wt%)
Tuffile (wt%)
Relationship
Reference
Chromium (Cr)
9 – 19%
10 – 19%
[0012]
Falls within
Nickel (Ni)
0 – 5.0%
0 – 5.0 wt%
[0012]
Falls within
Molybdenum (Mo)
0 – 3.0%
0.5 – 3.0%
[0012]
Falls within
Manganese (Mn)
0.75 – 3.0%
0 – 3.0%
[0035]
Falls within
Carbon (C)
0.1 – 0.3%
0 – 0.35%
[0012]
Overlaps
Boron (B)
0 – 1.0%
Does not teach
-
-
Copper (Cu)
Up to 2.5%
0 – 5%
[0012]
Overlaps
Tungsten (W)
Up to 7.5 wt%
Does not teach
-
Meets
Vanadium (V)
Up to 3.5 wt%
Does not teach
-
Meets
Iron (Fe)
Balance
Balance
[0012]
Meets
*Shaded indicates optional
*Wherein “consisting essentially of” is interpreted as open claim language (See interpretation above). However, for clarity of the record and compact prosecution the examiner notes that Tuffile does not require any element not expressly listed in the claimed composition including Si.
Tuffile suggests that the component contains martensite [0050, 0054]. The as-built component of Tuffile would necessarily possess a hardness (i.e. a first hardness) and an abrasion wear resistance based on ASTM G65-16e1 (i.e. a first abrasion wear resistance). Tuffile teaches that the component can be subjected to heat treatment [0053]. Tuffile teaches that the heat-treated part has an elongation of at least 5% [0065], which falls within the claimed range, and a hardness of at least 475 HV (~47 HRC), which falls within the claimed range [0066].
Tuffile suggests the presence of martensite [0050, 0054], but does not expressly teach forming a martensitic matrix. Tuffile does not explicitly teach the presence of boron or respective borides. Tuffile does not teach the abrasion wear resistance.
Woehrle teaches material suitable for additive manufacturing and in particular iron-based alloys [0005]. Woehrle teaches that the iron-based alloy(s) contain a composition similar to Tuffile [0005] and additionally describes the addition of boron in a range of 0.5 – 2 wt% [0019], which overlaps with the claimed range. The reason for this addition, as described by Woehrle, is to provide improved wear resistance and strength as well as high long-term stability and heat resistance [0009, 0010] due to the boron forming homogenously and finely distributed borides throughout the steel [0011]. Specifically, Woehrle teaches that formation of these borides with a martensitic matrix, meeting the claimed limitation, and achieves an extremely high wear resistance [0018].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have applied/combined the teachings of forming a martensitic matrix with borides in a steel alloy by adding 0.5 – 2 wt% of boron, as disclosed by Woehrle, to the steel alloy of Tuffile. Tuffile and Woehrle are directed to the same field of endeavor of additively manufactured steel alloys and both disclose similar steel alloy composition. Therefore, an ordinarily skilled artisan would have had a reasonable expectation of success in applying the teachings of Woehrle to Tuffile. Additionally, an ordinarily skilled artisan would have been motivated to apply the teachings in order to improve wear resistance and strength as well as achieve high long-term stability and heat resistance.
While Tuffile in view of Woehrle does not explicitly teach the respective borides formed, given that Tuffile in view of Woehrle has an overlapping content of boron and a substantially identical chromium content of the claimed invention, there is a reasonable expectation that a chromium boride would be present in the additive manufactured steel alloy of Tuffile in view of Woehrle, meeting the limitation of claim 12 and 16. Moreover, Tuffile in view of Woehrle does not explicitly teach the abrasion resistance following heat treatment. However, the combination discloses an overlapping composition to the claimed range and a substantially identical manufacturing method of powder bed fusion [Tuffile, Title]. Moreover, Woehrle discloses that the presence of boron and respective borides increases wear resistance. Therefore, there is a reasonable expectation to an ordinarily skilled artisan that the 3D printed part of Tuffile in view Woehrle would achieve the claimed abrasion wear resistance following heat treatment (i.e. the second abrasion wear resistance).
Where the claimed invention and prior art are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, in this case composition and process, a prima facie case of obviousness is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (MPEP 2112.01 I). [I]n order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis – the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art." Id. at 1195-96, 112 USPQ2d at 1952. Persion Pharms. LLC v. Alvogen Malta Operations LTD., 945 F.3d 1184, 1191, 2019 USPQ2d 494084 (Fed. Cir. 2019), where the court stated that a proper finding of inherency does not require that all limitations are taught in a single reference, and that inherency may meet a missing claim limitation when the limitation is "the natural result of the combination of prior art elements." (MPEP 2112 IV)
Lastly, 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 13, Tuffile in view of Woehrle teaches the invention as applied in claim 12. Tuffile in view of Woehrle does not explicitly teach the abrasion resistance following heat treatment.
However, the prior art combination discloses an overlapping composition to the claimed range and a substantially identical manufacturing method of powder bed fusion [Tuffile, Title]. Additionally, Woehrle discloses that the presence of boron and respective borides increases wear resistance,
Therefore, there is a reasonable expectation to an ordinarily skilled artisan that the as-built 3D printed part of Tuffile in view Woehrle would have a first abrasion wear resistance that was at least 0.5 grams greater in loss than the heat-treated part. Where the claimed invention and prior art are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, in this case composition and process, a prima facie case of obviousness is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (MPEP 2112.01 I). Moreover, “...inherency may meet a missing claim limitation when the limitation is "the natural result of the combination of prior art elements." (MPEP 2112 IV)
Regarding claim 14, Tuffile in view of Woehrle teaches the invention as applied in claim 12. Tuffile shows examples in which the 3D printed component has an elongation after heat treatment (“B1”) that is greater than the as-built elongation (“AB”), see for example Alloy 8, Table 3, which has an as-built elongation of 8% and a heat treatment elongation of 13%. Therefore, Tuffile in view of Woehrle reasonably suggests/overlaps with the claimed limitation.
Regarding claim 15, Tuffile in view of Woehrle teaches the invention as applied in claim 12. Tuffile teaches copper present in a range of 0 – 5% [0012], which overlaps with the claimed range.
Regarding claim 18, Tuffile in view of Woehrle teaches the invention as applied in claim 12. Tuffile does not teach the presence of W or V and therefore, meets the broadest reasonable interpretation of the claimed limitations/ranges.
Regarding claim 19, Tuffile in view of Woehrle teaches the invention as applied in claim 12. Tuffile teaches the 3D printed parted/iron-based alloy has a composition of:
Element
Claimed Invention (wt%)
Tuffile (wt%)
Relationship
Reference
Chromium (Cr)
9 – 19%
10 – 19%
[0012]
Falls within
Nickel (Ni)
0 – 3.0%
0 – 5.0 wt%
[0012]
Falls within
Molybdenum (Mo)
0.2 – 0.8%
0.5 – 3.0%
[0012]
Falls within
Manganese (Mn)
0.75 – 3.0%
0 – 3.0%
[0035]
Falls within
Carbon (C)
0.1 – 0.25%
0 – 0.35%
[0012]
Overlaps
Boron (B)
0.25 – 0.75%
0.5 – 2%
[0019, Woehrle]
Overlaps
Copper (Cu)
Up to 0.8%
0 – 5%
[0012]
Overlaps
Tungsten (W)
Up to 5.5 wt%
Does not teach
-
Meets
Vanadium (V)
Up to 2.5 wt%
Does not teach
-
Meets
Iron (Fe)
Balance
Balance
[0012]
Meets
Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I)
Regrading claim 20, Tuffile teaches a hard ferrous metallic alloy powder for powder bed fusion [Title], meeting the claimed limitation of iron-based alloy for 3D printing, meeting the claimed limitation.
Tuffile teaches the 3D printed parted/iron-based alloy has a composition of:
Element
Claimed Invention (wt%)
Tuffile (wt%)
Relationship
Reference
Chromium (Cr)
9 – 19%
10 – 19%
[0012]
Falls within
Nickel (Ni)
0 – 5.0%
0 – 5.0 wt%
[0012]
Falls within
Molybdenum (Mo)
0 – 3.0%
0.5 – 3.0%
[0012]
Falls within
Manganese (Mn)
0.75 – 3.0%
0 – 3.0%
[0035]
Falls within
Carbon (C)
0.1 – 0.3%
0 – 0.35%
[0012]
Overlaps
Boron (B)
0 – 1.0%
Does not teach
-
-
Copper (Cu)
Up to 2.5%
0 – 5%
[0012]
Overlaps
Tungsten (W)
Up to 7.5 wt%
Does not teach
-
Meets
Vanadium (V)
Up to 3.5 wt%
Does not teach
-
Meets
Iron (Fe)
Balance
Balance
[0012]
Meets
*Shaded indicates optional
*Wherein “consisting essentially of” is interpreted as open claim language (See interpretation above). However, for clarity of the record and compact prosecution the examiner notes that Tuffile does not require any element not expressly listed in the claimed composition including Si.
Tuffile does not explicitly teach the presence of boron.
Woehrle teaches material suitable for additive manufacturing and in particular iron-based alloys [0005]. Woehrle teaches that the iron-based alloy(s) contains a composition similar to Tuffile [0005] and additionally describes the addition of boron in a range of 0.5 – 2 wt% [0019], which overlaps with the claimed range. The reason for this addition, as described by Woehrle, is to provide improved wear resistance and strength as well as high long-term stability and heat resistance [0009, 0010] due to the boron forming homogenously and finely distributed borides throughout the steel [0011]. Specifically, Woehrle teaches that formation of these borides with a martensitic matrix achieves an extremely high wear resistance [0018].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have added 0.5 – 2 wt% of boron, as disclosed by Woehrle, to the steel alloy of Tuffile. Tuffile and Woehrle are directed to the same field of endeavor of additively manufactured steel alloys and both disclose similar steel alloy composition. Therefore, an ordinarily skilled artisan would have had a reasonable expectation of success in applying the teachings of Woehrle to Tuffile. Additionally, an ordinarily skilled artisan would have been motivated to apply the teachings in order to improve wear resistance and strength as well as achieve high long-term stability and heat resistance.
With regards to the overlapping ranges taught, 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 24, Tuffile in view of Woehrle teaches the invention as applied in claim 20. Tuffile teaches the iron-based alloy has a composition of:
Element
Claimed Invention (wt%)
Tuffile (wt%)
Relationship
Reference
Chromium (Cr)
9 – 19%
10 – 19%
[0012]
Falls within
Nickel (Ni)
0 – 3.0%
0 – 5.0 wt%
[0012]
Falls within
Molybdenum (Mo)
0.2 – 0.8%
0.5 – 3.0%
[0012]
Falls within
Manganese (Mn)
0.75 – 3.0%
0 – 3.0%
[0035]
Falls within
Carbon (C)
0.1 – 0.25%
0 – 0.35%
[0012]
Overlaps
Boron (B)
0.25 – 0.75%
0.5 – 2%
[0019, Woehrle]
Overlaps
Iron (Fe)
Balance
Balance
[0012]
Meets
Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I)
Regarding claim 25, Tuffile in view of Woehrle teaches the invention as applied in claim 20. Tuffile does not teach the presence of W or V and therefore, meets the broadest reasonable interpretation of the claimed limitations/ranges.
Regrading claims 26 and 33 – 34, Tuffile teaches a hard ferrous metallic alloy powder for powder bed fusion [Title], meeting the claimed limitation of a 3D printed part with iron-based alloy, meeting the claimed limitation.
Tuffile teaches the 3D printed parted/iron-based alloy has a composition of:
Element
Claimed Invention (wt%)
Tuffile (wt%)
Relationship
Reference
Chromium (Cr)
9 – 19%
10 – 19%
[0012]
Falls within
Nickel (Ni)
0 – 5.0%
0 – 5.0 wt%
[0012]
Falls within
Molybdenum (Mo)
0 – 3.0%
0.5 – 3.0%
[0012]
Falls within
Manganese (Mn)
0 – 3.0%
0 – 3.0%
[0035]
Falls within
Carbon (C)
0.1 – 0.3%
0 – 0.35%
[0012]
Overlaps
Boron (B)
0 – 1.0%
Does not teach
-
-
Copper (Cu)
Up to 2.5%
0.15 – 0.3% (claim 33, 34)
0 – 5%
[0012]
Overlaps
Tungsten (W)
Up to 7.5%
0.1 – 5.5% (claim 33, 34)
Does not teach
-
Meets
Vanadium (V)
Up to 3.5%
0.1 – 2.25% (claim 33, 34)
Does not teach
-
Meets
Iron (Fe)
Balance
Balance
[0012]
Meets
*Shaded indicates optional
*Wherein “consisting essentially of” is interpreted as open claim language (See interpretation above). However, for clarity of the record and compact prosecution the examiner notes that Tuffile does not require any element not expressly listed in the claimed composition including Si.
The as-built component of Tuffile would necessarily possess an elongation (i.e. a first elongation), a hardness (i.e. a first hardness) and an abrasion wear resistance based on ASTM G65-16e1 (i.e. a first abrasion wear resistance).
Tuffile suggests that the component contains martensite [0050, 0054]. Tuffile teaches that the component can be subjected to heat treatment [0053]. The heat treated part has an elongation of at least 5% [0065], which falls within the claimed range, and a hardness of at least 475 HV (~47 HRC), which falls within the claimed range [0066].
Tuffile suggests the presence of martensite [0050, 0054], but does not expressly teach forming a martensitic matrix. Tuffile does not explicitly teach the presence of boron or respective borides. Tuffile does not teach the abrasion wear resistance.
Woehrle teaches material suitable for additive manufacturing and in particular iron-based alloys [0005]. Woehrle teaches that the iron-based alloy(s) contains a composition similar to Tuffile [0005] and additionally describes the addition of boron in a range of 0.5 – 2 wt% [0019], which overlaps with the claimed range. The reason for this addition, as described by Woehrle, is to provide improved wear resistance and strength as well as high long-term stability and heat resistance [0009, 0010] due to the boron forming homogenously and finely distributed borides throughout the steel [0011]. Specifically, Woehrle teaches that formation of these borides with a martensitic matrix, meeting the claimed limitation, achieves an extremely high wear resistance [0018].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have applied/combined the teachings of forming a martensitic matrix with borides in a steel alloy by adding 0.5 – 2 wt% of boron, as disclosed by Woehrle, to the steel alloy of Tuffile. Tuffile and Woehrle are directed to the same field of endeavor of additively manufactured steel alloys and both disclose similar steel alloy composition. Therefore, an ordinarily skilled artisan would have had a reasonable expectation of success in applying the teachings of Woehrle to Tuffile. Additionally, an ordinarily skilled artisan would have been motivated to apply the teachings in order to improve wear resistance and strength as well as achieve high long-term stability and heat resistance.
While Tuffile in view of Woehrle does not explicitly teach the respective borides formed, given that the combination has an overlapping content of boron and a substantially identical chromium content as the claimed invention, there is a reasonable expectation that a chromium boride rich phase would be present in the additive manufactured steel alloy of Tuffile in view of Woehrle, meeting the claimed limitation.
Moreover, Tuffile in view of Woehrle does not explicitly teach the abrasion resistance following heat treatment. However, the combination discloses an overlapping composition to the claimed range and a substantially identical manufacturing method of powder bed fusion [Tuffile, Title]. Moreover, Woehrle discloses that the presence of boron and respective borides increases wear resistance. Therefore, there is a reasonable expectation to an ordinarily skilled artisan that the 3D printed part of Tuffile in view Woehrle would achieve the claimed abrasion wear resistance following heat treatment (i.e. the second abrasion wear resistance).
Where the claimed invention and prior art are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, in this case composition and process, a prima facie case of obviousness is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (MPEP 2112.01 I)."[I]n order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis – the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art." Id. at 1195-96, 112 USPQ2d at 1952. Persion Pharms. LLC v. Alvogen Malta Operations LTD., 945 F.3d 1184, 1191, 2019 USPQ2d 494084 (Fed. Cir. 2019), where the court stated that a proper finding of inherency does not require that all limitations are taught in a single reference, and that inherency may meet a missing claim limitation when the limitation is "the natural result of the combination of prior art elements." (MPEP 2112 IV)
Lastly, 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 27, Tuffile in view of Woehrle teaches the invention as applied in claim 26. Tuffile shows examples in which the 3D printed component has a hardness after heat treatment (“B1”) that is within 10 HRC of the as-built hardness (“AB”), see for example Alloy 8, Table 3, which has an as-built hardness of 455 HV (~45 HRC) and a heat treatment hardness of 561 HV (52 HRC). Therefore, Tuffile in view of Woehrle reasonably suggests the claimed limitation.
Regarding claim 28, Tuffile in view of Woehrle teaches the invention as applied in claim 26. Tuffile shows examples in which the 3D printed component has an elongation after heat treatment (“B1”) that is greater than the as-built elongation (“AB”), see for example Alloy 8, Table 3, which has an as-built elongation of 8% and a heat treatment elongation of 13%. Therefore, Tuffile in view of Woehrle reasonably suggests the claimed limitation.
Regarding claim 29, Tuffile in view of Woehrle teaches the invention as applied in claim 26. Tuffile shows examples in which the 3D printed component has an elongation after heat treatment (“B1”) that is greater than the as-built elongation (“AB”), see for example Alloy 8, Table 3, which has an as-built elongation of 8% and a heat treatment elongation of 13%. Therefore, Tuffile in view of Woehrle reasonably suggests/overlaps with the claimed limitation.
Regarding claim 30, Tuffile in view of Woehrle teaches the invention as applied in claim 26. Tuffile shows examples in which the 3D printed component has a yield strength after heat treatment (“B1”) that is greater than the as-built yield strength (“AB”), see for example Alloy 8, Table 3, which has an as-built yield strength of 1041 MPa and a heat treatment yield strength of 1345 MPa. Therefore, Tuffile in view of Woehrle reasonably suggests the claimed limitation.
Regarding claim 31, Tuffile in view of Woehrle teaches the invention as applied in claim 26. Tuffile states that heat treated alloys can have a yield strength of at least 1600 MPa [0064], meeting the claimed range.
Regarding claim 32, Tuffile in view of Woehrle teaches the invention as applied in claim 26. Tuffile teaches that the heat-treated alloy can have a hardness of at least 525 HV (~51 HRC) [0066], meeting the claimed range.
Regarding claim 35, Tuffile in view of Woehrle teaches the invention as applied in claim 26.
Element
Claimed Invention (wt%)
Tuffile (wt%)
Relationship
Reference
Chromium (Cr)
9 – 19%
10 – 19%
[0012]
Falls within
Nickel (Ni)
0 – 3.0%
0 – 5.0 wt%
[0012]
Overlaps
Molybdenum (Mo)
0.2 – 0.8%
0.5 – 3.0%
[0012]
Overlaps
Manganese (Mn)
0.75 – 3.0%
0 – 3.0%
[0035]
Overlaps
Carbon (C)
0.1 – 0.25%
0 – 0.35%
[0012]
Overlaps
Boron (B)
0.25 – 0.75%
0.5 – 2%
[0019, Woehrle]
Overlaps
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)”
Claims 20 and 24 – 25 are rejected under 35 U.S.C. 103 as being unpatentable over Woehrle (DE102018201855, using espacenet translation)
Regrading claim 20, Woehrle teaches material suitable for additive manufacturing and in particular iron-based alloys [0005]. Woehrle teaches the iron-based alloy has a composition of:
Element
Claimed Invention (wt%)
Woehrle (wt%)
Relationship
Reference
Chromium (Cr)
9 – 19%
13 – 20%
[0019]
Overlaps
Nickel (Ni)
0 – 5.0%
0 – 20%
[0019]
Overlaps
Molybdenum (Mo)
0 – 3.0%
0 – 10%
[0005]
Overlaps
Manganese (Mn)
0.75 – 3.0%
0.25 – 10%
[0019]
Overlaps
Carbon (C)
0.1 – 0.3%
0 – 0.3%
[0019]
Overlaps
Boron (B)
0 – 1.0%
0.5 – 2 wt%
[0019]
Overlaps
Copper (Cu)
Up to 2.5%
2 wt% or less
[0020]
Overlaps
Tungsten (W)
Up to 7.5 wt%
Does not teach
-
Meets
Vanadium (V)
Up to 3.5 wt%
0 – 10%
[0019]
Overlaps
Iron (Fe)
Balance
Balance
[0012]
Meets
*Shaded indicates optional
*Wherein “consisting essentially of” is interpreted as open claim language (See interpretation above).
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 24, Woehrle teaches the invention as applied in claim 20. Woehrle teaches the iron-based alloy has a composition of:
Element
Claimed Invention (wt%)
Woehrle (wt%)
Relationship
Reference
Chromium (Cr)
9 – 19%
13 – 20%
[0019]
Overlaps
Nickel (Ni)
0 – 3.0%
0 – 20%
[0019]
Overlaps
Molybdenum (Mo)
0.2 – 0.8%
0 – 10%
[0005]
Overlaps
Manganese (Mn)
0.75 – 3.0%
0.25 – 10%
[0019]
Overlaps
Carbon (C)
0.1 – 0.25%
0 – 0.3%
[0019]
Overlaps
Boron (B)
0.25 – 0.75%
0.5 – 2 wt%
[0019]
Overlaps
Iron (Fe)
Balance
Balance
[0019]
Meets
Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I)
Regarding claim 25, Woehrle teaches the invention as applied in claim 20. Woehrle does not require the presence of W or V and therefore, meets the broadest reasonable interpretation of the claimed limitations/ranges.
Response to Arguments
Applicant's amendments have overcome the previous rejection of claims 20 – 23 and 25 under 102(a)(1) as anticipated by Ding (CN108559996). Ding does not teach or suggest having a Mn in an amount of 0.75 – 3 wt%.
Applicant’s arguments filed have been fully considered but they are not persuasive.
Applicant’s argues that Tuffile nor Woehrle discloses the claimed limitation of Cr-boride, W-boride, or V-boride. This is not persuasive. Woehrle teaches that boron forms borides [0011] and the prior art combination has an overlapping content of boron as well as a substantially identical chromium content as the claimed invention. As such, there is a reasonable expectation that chromium boride would be present in the additive manufactured steel alloy of Tuffile in view of Woehrle, meeting the claimed limitation.
Applicant’s argues that “consisting essentially of” excludes the composition of Tuffile and Woehrle because Tuffile requires silicon and Woehrle requires nitrogen. This is not persuasive. As discussed above in paragraph 4, the phrase “consisting essentially of” is interpreted as “open” claim language (i.e. comprising) because the specification nor claims provide a clear indication of what the basic and novel characteristics are. “For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising." See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355 ("PPG could have defined the scope of the phrase ‘consisting essentially of’ for purposes of its patent by making clear in its specification what it regarded as constituting a material change in the basic and novel characteristics of the invention.").” (MPEP 2111.03 III). The examiner also notes that Tuffile does not require silicon as applicant asserts.
Applicant argues that Tuffile nor Woehrle disclose wear resistance. As discussed above, the prior art combination discloses an overlapping composition to the claimed range and a substantially identical manufacturing method of powder bed fusion [Tuffile, Title]. Moreover, Woehrle discloses that the presence of boron and respective borides increases wear resistance. Therefore, there is a reasonable expectation to an ordinarily skilled artisan that the 3D printed part of Tuffile in view Woehrle would achieve the claimed abrasion wear resistance following heat treatment (i.e. the second abrasion wear resistance).
Where the claimed invention and prior art are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, in this case composition and process, a prima facie case of obviousness is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (MPEP 2112.01 I)."[I]n order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis – the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art." Id. at 1195-96, 112 USPQ2d at 1952. Persion Pharms. LLC v. Alvogen Malta Operations LTD., 945 F.3d 1184, 1191, 2019 USPQ2d 494084 (Fed. Cir. 2019), where the court stated that a proper finding of inherency does not require that all limitations are taught in a single reference, and that inherency may meet a missing claim limitation when the limitation is "the natural result of the combination of prior art elements." (MPEP 2112 IV). Applicant has not provided evidence to the contrary and therefore, the arguments are not persuasive.
Applicant argues that there would not be a reasonable expectation of success in combining Tuffile and Woehrle and would have unpredictable results. Applicant asserts that an ordinarily skilled artisan would understand that adding boron to Tuffile would have unpredictable results and no reasonable expectation of success. Applicant further argues that boron behavior in Fe-based alloy in additive manufacturing is unpredictable and would not ensure the selective formation of Cr-borides while maintaining a martensitic matrix. Applicant states that Woehrle acknowledges that the addition of boron can lead to brittleness [0015, Woehrle]. This is not persuasive.
Both Tuffile and Woehrle are directed to the same field of endeavor of additive manufacturing of iron-based alloys. Tuffile and Woehrle both contain similar alloy compositions and produce steel compositions with martensitic microstructures, as such a reasonable expectation of success exists. Additionally, applicant’s citation of Woehrle is not persuasive because Woehrle is expressly discussing that melt metallurgy of steel with boron produce brittle coarse borides. Woehrle states that powder metallurgy (i.e. atomization) and generative processes (i.e. additive manufacturing) produce fine, evenly dispersed borides. This is also how Tuffile is produced [0037, Tuffile].
Lastly, Woehrle provides motivation for an ordinarily skilled artisan including providing improved wear resistance and strength as well as high long-term stability and heat resistance [0009, 0010] due to the boron forming homogenously and finely distributed borides throughout the steel [0011]. Additionally, applicant has not provided evidence that the combination would have been unpredictable with no reasonable expectation of success (MPEP 2143.02 II). Therefore, the applicant’s arguments are not persuasive.
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 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
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