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 .
Election/Restrictions & Status of Claims
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-3, 7-9 and 19-20, drawn to an improved high speed steel composition, classified in CPC C22C 38/12.
II. Claims 4-6 and 10-15, drawn to a high speed steel article, classified in CPC B22F 10/00.
III. Claims 16-18, drawn to a process for additive manufacturing, classified in CPC B33Y 70/00.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as mutually exclusive species in an intermediate-final product relationship. Distinctness is proven for claims in this relationship if the intermediate product is useful to make other than the final product, and the species are patentably distinct (MPEP § 806.05(j)). In the instant case, the intermediate product is deemed to be useful as a steel rod, bar, powder or sheet and the inventions are deemed patentably distinct because there is nothing of record to show them to be obvious variants.
Inventions I and III are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case the steel can be made into bars or sheets.
Inventions III and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case, instant product, a high speed steel article, can be made via a manufacturing method of casting instead of the instant manufacturing method of additive manufacturing.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The inventions have acquired a separate status in the art in view of their different classification.
The inventions have acquired a separate status in the art due to their recognized divergent subject matter.
The inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with ROBERT GUNDERMAN on 11 FEB 2026 a provisional election was made WITHOUT traverse to prosecute the invention of Group I. Claims 1-3, 7-9 and 19-20, drawn to an improved high speed steel composition. Affirmation of this election must be made by applicant in replying to this Office action. Claims 4-6 and 10-118 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Specification
The disclosure is objected to because of the following informalities:
Instant specification contains blurred characters throughout.
Appropriate correction is required.
Drawings
The drawings are objected to because Fig 1-3 contain blurred characters and curves. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Figures 2 and 3 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 1-3, 7-9 and 19-20 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 claims 1-3, 7-9 and 19-20, claims 1-3 recite “An improved high speed steel” (also recited in claims 19-20 as “The improved high speed steel”). However, it is unclear what is required by the term “improved” as the instant claims do not provide a standard or a property that is improved or compared to thereby making the instant claims and its dependents indefinite.
Regarding claims 1-3, 7-9 and 19-20, claims 1-3 recite “balance iron with residual elements and trace impurities in normal amounts”. However, it is unclear what is meant by the term “normal amounts” as the instant claims define what would be considered as either “normal” or “abnormal” amounts thereby making the instant claims and its dependents indefinite.
Regarding claim 19, claim 19 is missing the units for the elements thereby making it unclear what is being required by the instant claim. For examination purposes, it is interpreted as being weight%, the units of claim 1, the claim it depends upon.
Regarding claim 20, instant claim requires “The improved high speed steel composition of claim 1, wherein sulfur is replaced in all or in part with one or more elements selected from the group consisting of selenium, lead, and tellurium.” Claim 1 recites a range in weight% of “0.00% to 0.25% sulfur”. It is unclear what amounts or ranges of the elements “selenium, lead, and tellurium” are required by the instant claims as it is unclear of what ratios would satisfy the requirement of replacement. For example, if it 1:1, a range of 0.00 – 0.25 wt% would suffice. If it is a ratio of 2:1, 1:2, the ranges of the elements required would be different.
Claim 19 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 19 requires the steel to have tungsten between 7.25 and 20.00 weight% whereas claim 1, the claim on which the instant claim depends upon, requires a tungsten range of greater than 10.00 to 20.00 weight% thereby making the instant claim as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
List 1
Element
Instant Claims
(mass%)
Prior Art
(mass%)
C
0.75 – 1.69 claim 1
1.20 – 1.65 claim 2
1.30 – 1.55 claim 3
1 – 4.2
Mn
0.15 – 0.80 claim 1, 2
0.15 – 0.40 claim 3
0.2 – 5.0
P
0.00 – 0.20 claim 1, 2
0.00 – 0.03 claim 3
0.001 – 0.1
S
0.00 – 0.25 claim 1, 2
0.03 – 0.07 claim 3
0.001 – 0.1
Si
0.20 – 0.65 claim 1, 2, 3
0.2 – 2.5
Cr
3.75 – 4.50 claim 1, 2, 3
3 – 31
V
0.00 – 4.00 claim 1
1.75 – 2.75 claim 2, 3
0.01 – 15
W
> 10.00 – 20.00 claim 1
> 10.00 – 18.00 claim 2
> 10.00 – 11.50 claim 3
between 7.25 and 20 claim 19
0.01 – 15
Mo
1.75 – 4.21 claim 1
2.50 – 3.50 claim 2, 3
0.2 – 11.5
Co
0.00 – 12.00 claim 1, 2
5.50 – 6.50 claim 3
0.01 – 15
N
0.010 – 0.090 claim 1, 2, 3
0.01 – 0.25
Cb (Nb)
0.00 – 4.00 claim 1
0.64 – 1.15 claim 2, 3
0.01 – 5
Cu
0.00 – 0.75 claim 1, 2, 3
0 – 0.5
Ni
0.00 – 0.75 claim 1, 2, 3
0 – 10
Al
0.00 – 0.25 claim 1, 2, 3
-
Ni+Cu
0.00 – 1.00 claim 1, 2
0.00 – 0.75 claim 3
See below
W+1.9Mo
>13.30 – < 28.00 claim 1
14.75 - < 24.75 claim 2
14.75 – 18.15 claim 3
See below
V+Nb
0.00 – 4.00 claim 1
2.39 – 3.90 claim 2, 3
See below
Fe + impurities
Balance
Balance
Claims 1-3, 7-9 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over EP 3428300 A1 of Hamentgen and its English machine translation (EP’300).
Regarding claims 1-3 and 19, EP 3428300 A1 of Hamentgen and its English machine translation (EP’300) teaches [0001] "a roller for a grinding and/or pressing device, in particular a roller roller for a press for the production of pellets" [0004]-[0009] with a "core area" and an "outer area" {[0012], claim 4} "the outer area (2) and/or the core area (3) are made of steel" [0012] "While it would be conceivable to form the core area from tool steel or heat-treated steel, in the preferred embodiment of the invention it is formed from a hot-work steel" [0018] "the outer area is formed from a powder" wherein {[0013], claim 8} "the powder and/or the steel of the outer surface" has a composition therefore reading on the high speed steel composition wherein the claimed ranges of the constituent elements of the instant alloy of the instant claims overlap or lie inside the ranges of various elements of the alloy of the prior art as shown in the List 1 above. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed composition over the prior art disclosure since the prior art teaches the similar property/utility throughout the disclosed ranges. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
It is noted that the prior art is silent regarding the various formulaic expressions involving the combinations of the constituent elements and their ranges as recited in the instant claims 1-3. However, as the prior art discloses a composition wherein the claimed ranges of the various elements of the instant alloy overlap or lie inside the ranges of various elements of the alloy of the prior art (see compositional analysis above), the ranges of the formulaic expression of the instant claims would also overlap or lie inside the values of the prior art resulting from the instant formulaic expressions. In addition, it is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art, In re Cooper and Foley 1943 C.D. 357, 553 O.G. 177; 57 USPQ 117, Saklatwalla v. Marburg, 620 O.G. 685, 1949 C.D. 77, and In re Pilling, 403 O.G. 513, 44 F(2) 878, 1931 C.D. 75.
Regarding claims 7-9, instant claims are product-by-process claims. MPEP provides that product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP § 2113. Since the prior art teaches a product, a steel with substantially identical composition (see above), the product of the prior art reads on the instant claimed product thereby meeting the instant claimed limitations. Moreover, the prior art also teaches [0016] "While it would be conceivable to connect the core area and the outer area by diffusion welding, in a preferred embodiment of the invention they are connected by hot isostatic pressing." [0017] "The materials for manufacturing the core area and the outer area can be in the form of powder and/or pre-formed bodies, especially those produced by melt metallurgy, for diffusion welding or hot isostatic pressing. For hot isostatic pressing, the materials are conveniently placed in a capsule, which serves to transfer the gas pressure to the powder during hot isostatic pressing. The filled capsule is evacuated and sealed gas-tight, placed in an autoclave of a hot isostatic press, and pressurized and heated using a gas, for example argon gas." [0018] "In a first variant, the core area is formed from a core body, preferably a single piece, which preferably has a cylindrical, in particular hollow cylindrical, shape, and the outer area is formed from a powder. The powder used for the production of the exterior is produced from molten steel, preferably by atomization. The resulting powder grains have a spherical shape and/or a diameter between 0.01 and 1 mm. The capsule expediently has an inner diameter that is larger than the outer diameter of the core body, so that when the core body is arranged centrally in the capsule, a cavity is formed between the surface of the core body and the inside of the capsule, which is filled with the powder to form the outer surface." thereby reading on the process limitations.
Regarding claim 20, the prior art allows the presence of Pb: 0.001-1 in its alloy and allows S to be adjusted in the range of S: 0.001 – 0.1 thereby meeting the instant recited limitations.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 2-3 and 8-9 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 2-3 and 8-9 of prior U.S. Patent No. US 12,234,536 B2. This is a statutory double patenting rejection.
It is noted that the claims of the patent recite “A high speed steel composition” whereas instant claims recite “An improved high speed steel composition”. The term “improved” does not differentiate the inventions because the body of the claims are identical in chemical composition and ranges.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 7 and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7 and 19 of U.S. Patent No. US 12,234,536 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent teaches a high speed steel with substantially identical composition (identical for almost all constituents with overlapping ranges for molybdenum).
It is noted that the instant claims (claim 1) recite the limitation “the combination of tungsten plus 1.9 times the amount of molybdenum in weight percent is greater than 13.30% and less than 28.00%” whereas the claims of the patent does not. However, as the claims of the patent teaches substantially identical ranges of W and Mo, the range of the formulaic expression of the instant claims would also overlap or lie inside the values of the prior art resulting from the instant formulaic expression. In addition, it is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art, In re Cooper and Foley 1943 C.D. 357, 553 O.G. 177; 57 USPQ 117, Saklatwalla v. Marburg, 620 O.G. 685, 1949 C.D. 77, and In re Pilling, 403 O.G. 513, 44 F(2) 878, 1931 C.D. 75.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOPHY S. KOSHY whose telephone number is (571)272-0030. The examiner can normally be reached M-F 8:30 AM- 5:00 PM.
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/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733