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 .
Status of Claims
Claims 1, 3, and 7-9 are examined in this office action as claims 11-14 are directed to a non-elected invention, claims 2 and 10 were canceled, and claims 1, 3, and 7-9 were amended in the reply dated 11/25/25.
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, 3 and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over US 2002/0007546 A1 of Quick.
As to claims 1, 3 and 8-9, Quick discloses a process for producing metallic alloys in the form of a metallic alloy fiber (Quick, paragraph [0002]). Quick discloses using a starting material of Haynes C-22 with the composition in comparison to the claimed invention as shown in Table B below.
Table B
Element
Claim 1 limitation (wt %)
Haynes C-22 (Quick Table 1; wt%)
Chromium
20.00 to 22.50%
22%
Molybdenum
11.50 to 14.50%
13%
Iron
2.00 to 6.00%
3%
Copper
2.10 to 6.00%
Tungsten
2.50 to 3.00%
3%
Cobalt
2.50 max%
2.5%
Carbon
0.10 max%
0.01%
Silicon
max%
0.08 max% (claim 8)
0.08%
Manganese
0.50 max%
0.50%
Phosphorus
0.02 max%
Vanadium
0.35 max%
0.035%
Nickel
Balance
56% (i.e. balance)
Impurities
Less than 0.02%
So the Haynes C-22 alloy disclosed in Quick anticipates all of the elements except for copper which it is silent on the inclusion thereof. However, Quick also discloses that its method of forming a metallic alloy fiber uses alloys such as Haynes C-22 as a starting material wire (Quick, paragraph [0111]) and applies a method of encompassing the wire with a first cladding material, drawing the first cladding material for reducing the outer diameter thereof assembling a multiplicity of the drawn first claddings within a second cladding material to form a second cladding drawing the second cladding for reducing the diameter thereof wherein the step of drawing the second cladding includes successively drawing the second cladding; and
successively annealing the second cladding at a temperature between 1650° F(898°C) and 2050° F (1121°C) (Quick, claims 11 and 14). Quick discloses where the time and temperature of the annealing process is controlled to control the diffusion of the cladding material into the wire (Quick, paragraph [0196]). Quick discloses where the first and second cladding material is copper (Quick, paragraphs [0116] and [0136]). Quick discloses where the cladding material diffuses into the metallic alloy fiber (Quick, paragraph [0164]). Finally Quick discloses where the first and second cladding materials are removed from the multiplicity of fine metallic alloy fibers (Quick, claim 11).
As this is substantially identical to the method disclosed by applicant in claim 13 and pg. 3, lines 6-22 of the specification where nickel-based alloy metal wires having a composition consisting of in percent by weight :Chromium: 20.00 - 22.50 % Molybdenum: 11.50- 14.50 % Iron: 2.00 - 6.00 % Tungsten: 2.50 - 3.00 % Copper: 5.00 max % Cobalt: 2.50 max % Carbon: 0.10 max % Silicon: 0.08 max % Manganese: 0.50 max % Phosphorus: 0.02 max % Vanadium: 0.35 max %with a balance of nickel and impurities less than 0.02 %; b. embedding the nickel-based alloy metal wires in copper or copper alloy as a matrix material; c. enveloping the embedded nickel-based alloy metal wires with enveloping material to form a composite wire; d. alternatingly subjecting said composite wire to a diameter reduction, subjecting said reduced composite wire to a heat treatment at a temperature in the range of 800 to 1100°C for 0.05 to 5 minutes, and applying a final reduction ; e. providing nickel-based alloy fibers by removing the matrix material and enveloping material from the composite wire a person of ordinary skill would expect the same result of copper diffusing into the fiber in an amount of 2.10 to 6.00 wt%. “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).
Quick also discloses where there is enhanced concentration of the diffused cladding material at the periphery of the fine metallic alloy fiber (Quick, paragraph [0081] and Fig. 18). However, Quick does not disclose where the material contains sigma phase, where the sigma phase is in a range of 4-8 vol %, whereby the copper content is in a range of more than 2.1 wt % and less than 10 wt % at a depth of 100 nm below the surface of said fibers, nor where the copper content in the sigma phase is less than the remainder of the nickel-based alloy material.
However, as noted above, as Quick discloses a Haynes C-22 alloy as a starting material and applies a substantially identical method of enveloping wires in copper, alternating drawing and annealing, and removing the enveloping material, the fibers in the Quick process would have the same properties of contains sigma phase, where the sigma phase is in a range of 4-8 vol %, where the distribution of copper gradually decreases from the surface of said nickel-based alloy fiber to the bulk of said nickel-based alloy fiber and whereby the copper content is in a range of more than 2.1 wt % and less than 10 wt % at a depth of 100 nm below the surface of said fibers, and where the copper content in the sigma phase is less than the rest bulk of the nickel-based alloy material, see MPEP § 2112.01(I).
As to claim 7, Quick discloses where the fibers have a diameter of less than 50 microns (Quick, paragraph [0035]), overlapping the claimed range of more than 0.1 µm and less than 100 µm. “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.”, see MPEP § 2144.05(I).
Response to Arguments
With respect to the drawing objection, applicant’s amendments to the drawing and specification cures the previous issues and the objection is withdrawn.
With respect to the 112(b) rejections, applicant’s amendments to remove “gradually” and to recite that the nickel-based alloy material in the fiber form cures the indefiniteness rejections.
With respect to the 103 rejection over Mochizuki, it is agreed that the incorporation of the subject matter of claims 2 and 10 into claim 1 overcomes the rejection as Mochizuki neither teaches nor suggests the presence of a sigma phase nor where the copper content in the sigma phase is less than a copper content in a remainder of said nickel-based alloy material. Thus the rejection over Mochizuki is withdrawn.
With respect to the 103 rejection over Quick, applicant notes that claim 1 has been amended to require the presence of a sigma phase where a copper content in the sigma phase is less than a copper content in a remainder of the material (Applicant’s remarks, pg. 10, section B, 1st paragraph). Applicant argues that while this limitation is similar to what was in original claim 10 and the previous office action noted that Quick disclosed the same starting materials and same method to thereby achieve the same properties, Quick provides no specific disclosure of Haynes C-22 being clad with Cu, nor is there a disclosure of 2.1 -6 wt% Cu being allowed to diffuse into the alloy wire (Applicant’s remarks, pg. 10, section B, 2nd and 3rd paragraphs).
While Quick discloses no specific example where Haynes C-22 being clad with Cu, as noted in the rejection above, Quick does disclose where Haynes C-22 is a material which the metallic alloy fibers are made from (Quick, paragraph [0111]) and Quick also discloses where the first and second cladding material is copper (Quick, paragraphs [0116] and [0136]) and Quick goes on to disclose a substantially identical method to applicant’s disclosed method of diffusing the copper into the nickel alloy wire (Quick, claims 11 and 14). As Quick discloses a starting material that anticipates the disclosed starting wire composition, discloses cladding with copper, and discloses a substantially identical method involving cladding, drawing, and annealing, it is not clear how the same method applied to the same starting materials could produce anything other than the same properties. "The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004), see MPEP § 2141.02(VI).
Applicant also argues that Example III in Quick is the only example which deals with Cu diffusion in a Ni-based alloy where in this example the Cu content is increased from 0 to 1.6 wt% and thus even if example III were followed, it is outside the scope of amended claim 1 (Applicant’s remarks, pg. 11, section B, 1st paragraph).
However, the Example in Quick cited by applicant is for a different starting composition of a Haynes C-2000 alloy with 59% Ni, 23 Cr, 16% Mo, 0.08% Si, and 0.01% C in weight percent (Quick, Table 1). This is in contrast to C-22 alloy that includes Co, Fe, W, Mn, and V, as well as differing amounts of Ni, Cr, and Mo. Thus, the mere fact that when the method is applied to a different composition it achieves a different result does not mean that when the method is applied to the Haynes C-22 alloy it will not achieve the claimed result. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971), see MPEP§ 2123(II).
Further, Example III in Quick provides support for the finding of obviousness in the rejection. Example III shows that when the cladding, drawing, and annealing process that matches the claimed process is applied to a Ni-based alloy wire as a starting material, copper is diffused into the material and Quick also discloses that the concentration of diffused material is enhanced at the periphery of the wire (Quick, Fig. 18), matching applicant’s disclosure and claim 9.
Applicant argues that the finding that diffusion of 2.1 to 6 wt% of Cu is obvious in view of Quick can only be based on hindsight (Applicant’s remarks, pg. 11, section B, 2nd paragraph).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Finally, applicant argues that the sigma phase is not inherent too Quick as this is linked to Cu concentration (Applicant’s remarks, pg. 11, section B, 3rd paragraph).
However, as noted above, Quick discloses the same Haynes C-22 starting material, clads the wire in Cu, and then applies the substantially identical method of drawing and annealing. As Quick applies the same method to the same starting materials, it would necessarily result in the same product with the same properties, see MPEP § 2112.01(I).
Conclusion
THIS ACTION IS MADE FINAL. 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 Joshua S Carpenter whose telephone number is (571)272-2724. The examiner can normally be reached Monday - Friday 8:00 am - 5:30 pm.
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/JOSHUA S CARPENTER/Examiner, Art Unit 1733
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733