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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-9, in the reply filed on 11/18/2025 is acknowledged.
Claims 10-28 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/18/2025.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 08/07/2023 and 03/05/2024 have been considered by the examiner.
Claim Rejections - 35 USC § 112
Claim 7 is 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 7 recites the limitation "the pressing and heating" in line 3 which technically lacks sufficient antecedent basis because the claim introduces ‘the pressing’ in line 1 followed by ‘the heating in line 2’. Thus, ‘the pressing and heating’ renders the claim indefinite because it is not clear if the duration of ‘about 5 minutes to 2 hours’ is referring to the combination of both ‘the pressing’ of line 1 and ‘the heating’ of line 2, a new step of ‘pressing and heating’, or the duration of a treatment step such as sintering which would necessarily be conducted under ‘pressing and heating’ conditions by the nature of sintering itself. Phrased another way, the claim is open to multiple steps and thus could embrace multiple pressing steps and multiple heating steps such that it is unclear if ‘the pressing and heating’ at line 3 is actually a third process step, such as sintering, or actually limiting ‘the pressing’ and ‘the heating’ of lines 1 and 2 together even though those steps may not occur simultaneously. In the interest of advancing prosecution, Examiner has attempted to treat the claim using both interpretations.
Examiner’s best guess is that claim 9 is attempting to require a preliminary pressing to fit and/or conform the powder mixture into the vessel/die (note: the claim dependency, as-is, does not require that), followed by heating, further followed by sintering. Appropriate clarification or amendment is required.
Claim Rejections - 35 USC § 102
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 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, 2, and 4-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shkodich et al. “Refractory High-Entropy HfTaTiNbZr-Based Alloys by Combined Use of Ball Milling and Spark Plasma Sintering: Effect of Milling Intensity” NPL (Cited in IDS of 08/07/2023).
Regarding claims 1 and 2, Shkodich et al. (hereinafter “Shkodich”) teaches a method for producing a refractory bcc HfTaTiNbZr-based high-entropy alloy (meeting BRI of claim language in preamble ‘bulk high-entropy superconductor’; also expressly meeting instant dependent claim 2), wherein the method comprising a first step of mixing Nb, Ta, Ti, Hf, and Zr by way of ball milling (2. Experimental 1st paragraph) and followed by a second step of SPS-consolidating (i.e., sintering) the “starting and milled HfTaTiNbZr powder mixtures” (2. Experimental 2nd paragraph).
With regard to the claimed values of each x1 to xn, Shkodich teaches that the elemental powder blends are taken in equiatomic amounts (2. Experimental 1st paragraph as well as 1. Introduction where equiatomic or nearly equiatomic amounts are disclosed to range between 5 and 35 at%; also meeting instant dependent claim 2). As such, equal amounts of each element would render each value to be approximately 20% (i.e., 100 total/5 elements = 20). This is also expressable such that each value for the claimed Formula 1 would be 1 which meets the claimed range requiring ‘an integer greater than or equal to 1’.
Regarding claim 4, Shkodich teaches the method as applied to claim 1 above and further teaches that the milling in the first step is ball milling (2. Experimental 1st paragraph).
Regarding claim 5, Shkodich teaches the method as applied to claim 4 above and further teaches that the ball milling is performed for about 1 to 10 hours at about 200/400 rpm (LEBM) (2. Experimental 1st paragraph) which anticipates the claimed ranges of ‘about 9 to 24 hours at about 200 to 600 RPM’ with sufficient specificity due to the shared duration range of ‘about 9 to 10 hours’ and the disclosed range of ‘about 200/400 rpm’ lying squarely within the claimed range of 200 to 600 RPM.
Regarding claim 6, Shkodich teaches the method as applied to claim 4 above and further teaches that the vial is evacuated and then filled with Ar gas (2. Experimental 1st paragraph), after which, the ball-milling began.
Regarding claim 7, Shkodich teaches the method as applied to claim 1 above and further teaches that the powder mixture is placed into a cylindrical graphite die, uniaxially compressed, and then ramped to sintering temperature (meeting claimed ‘placing the mixed metal powders in a mold and then pressing and heating the mixed metal powders in the mold’) (2. Experimental 2nd paragraph)
Regarding claim 8, Shkodich teaches the method as applied to claim 7 above and the cylindrical graphite die is a carbon mold because graphite is an allotropic form of carbon (2. Experimental 2nd paragraph).
Regarding claim 9, Shkodich teaches the method as applied to claim 7 above and further teaches that the uniaxial compression occurs at 50 MPa (meeting claimed ‘pressing the mixed metal powders at about 5 to 500 MPa), heating the mixed metal powders at a rate of 100C/min up to some preset sintering temperature in the range of 1100-1700C (meeting claimed range of ‘about 500 to 1300C’ for at least the ramping of the sample up to the preset sintering temperature range and/or for the sintering dwell temperature), and the pressing and heating is performed for about 10 minutes (i.e. the sintering dwell temperature)(meeting the claimed range of ‘about 5 minutes to 2 hours’). In the interest of the clarity of the record, it is noted that the conditions during SPS-consolidation would necessarily have the sample exposed to pressure such that the sample is being ‘pressed and heated’. Notably, the claim is open-ended such that multiple pressing and/or heating steps are embraced.
Claim Rejections - 35 USC § 103
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 3, 5, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Shkodich as applied to claims 2, 4, and/or 7 above.
Regarding claim 3, Shkodich teaches the method as applied to claim 2 above but is silent to the alloy having a formula such that y1 is 2, y2 is 1, y3 is 1, y4 is 1, and y5 is 1.
However, Shkodich teaches that the elements for the alloy can be provided at equiatomic or near equiatomic amounts (ranging from 5 to 35 at%).
Thus, it would be obvious to the ordinary skilled artisan before the effective filing date of the claimed invention to optimize the elemental proportions such that y1 (Nb) is included in an amount such that y1 of Chemical Formula II is 2 and the remainder of each of the elements are balanced to 1.
It has been held that ‘where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.’ In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 5, Shkodich teaches the method as applied to claim 4 above and further teaches that the ball milling is performed for about 1 to 10 hours at about 200/400 rpm (LEBM) (2. Experimental 1st paragraph) which overlaps the claimed ranges of ‘about 9 to 24 hours at about 200 to 600 RPM’ due to the shared duration range of ‘about 9 to 10 hours’ and the disclosed range of ‘about 200/400 rpm’ lying squarely within the claimed range of 200 to 600 RPM.
It has been held that a prima facie case of obviousness exists where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 9, Shkodich teaches the method as applied to claim 7 above and further teaches that the uniaxial compression occurs at 50 MPa (meeting claimed ‘pressing the mixed metal powders at about 5 to 500 MPa), heating the mixed metal powders at a rate of 100C/min up to some preset sintering temperature in the range of 1100-1700C (meeting claimed range of ‘about 500 to 1300C’ for at least the ramping of the sample up to the preset sintering temperature range and/or for the sintering dwell temperature), and the pressing and heating is performed for about 10 minutes (i.e. the sintering dwell temperature)(meeting the claimed range of ‘about 5 minutes to 2 hours’). In the interest of the clarity of the record, it is noted that the conditions during SPS-consolidation would necessarily have the sample exposed to pressure such that the sample is being ‘pressed and heated’. Notably, the claim is open-ended such that multiple pressing and/or heating steps are embraced.
However, if ‘the pressing and heating’ is intended such that a single occurrence of ‘pressing and heating’ must be about 5 to 500 MPa and from about 5 minutes to 2 hours, Shkodich is silent to the duration of the uniaxial compression and/or the temperature during such treatment. Likewise, Shkodich is silent to the pressure during the SPS-consolidation.
Nevertheless, it has been held that ‘where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.’ In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
In the instant case, it would be obvious to the person having ordinary skill in the art before the effective filing date of the claimed invention to determine the appropriate temperature and pressure conditions during the uniaxial compression as well as during the SPS consolidation in view that Shkodich provides the general conditions of these treatments. Said person would be so motivated such that the appropriate densification and desired properties of the SPS-treated disc are achieved.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRA M MOORE whose telephone number is (571)272-8502. The examiner can normally be reached M-F 8am-5pm, EST.
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/ALEXANDRA M MOORE/Primary Examiner, Art Unit 1738
ALEXANDRA M MOORE
Primary Examiner
Art Unit 1738