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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 30 March 2026 has been entered.
Status of Claims
Responsive to the amendment filed 30 March 2026, claims 1, 2, 5, 13, 18, 21 and 23 are amended. Claims 3 and 15 are cancelled. Claims 1-2, 4-14, and 16-25 are currently under examination.
Status of Previous Rejections
Responsive to the amendment filed 30 March 2026 new grounds of rejection are presented.
Claim Rejections - 35 USC § 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.
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 1-2, 4-14, and 16-25 are 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 1 requires that a metallic system is thermally stable, with an absence of substantial gross grain growth, such that an internal grain size of the solvent metal is substantially suppressed to no more than about 10 microns at approximately 98% of a melting point temperature of the solvent metal as measured in K and the solute metal remains substantially uniformly dispersed in the solvent metal at that temperature. This limitation is not found in the specification as filed, and is new matter. At no point is the limitation expressed that internal grain size of the solvent metal is substantially suppressed to no more than about 10 microns at approximately 98% of a melting point temperature of the solvent metal as measured in K. No temperature scale is given in the specification . Further than this the melting point of copper is believed to be approximately 1085 °C. The greatest temperature that is contemplated by the specification is 900 °C (Figs 3A and 3B and corresponding portions of the Description). 900 °C is not particularly close to what is now claimed, “approximately 98% of a melting point temperature of the solvent metal as measured in Kelvin.” There is no basis either literal or implied for “internal grain size of the solvent metal is substantially suppressed to no more than about 10 microns at approximately 98% of a melting point temperature of the solvent metal as measured in Kelvin.” The claim is new matter.
Independent claim 13 includes a similar limitation and is also new matter not found in the specification. Claims 2, 4-12, 14, and 16-25 depend from claims 1 and 13 respectively, and are also new matter.
Claims 1-2, 4-14, and 16-25 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation referring to the first solute “0.01”, and the claim also recites “1 to 25 at. %” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. It is not clear whether the newly added “1” endpoint was intended to be added, whether it was an optional range, or how the claim is limited. The point of infringement of claim 1 cannot be determined and the claim is indefinite.
Claim 13 similarly includes a broad recitation referring to a second solute, of 0.01 to 50, and the claim also recites 1 to 30 which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. The point of infringement of claim 1 cannot be determined and the claim is indefinite.
Claims 2, 4-12, 14, and 16-25 depend from claims 1 and 13 respectively, and are also indefinite.
Claim 1 requires that the second solute has atoms that are “free, uncombined atoms of the second solute that segregate to free boundaries and/or free surfaces to create a passivation film or a passivation layer.” It is not clear what is meant in this context.
“Free, uncombined atoms” is a term that is not literally in the specification, and it is not clear what is meant. Does this term mean that the atoms are present above a solubility limit of the second solute? Does it mean that the atoms merely perform the function of passivating the metal? The term “uncombined” would prima facie seem to mean that no passivation layer has been formed. Is applicant intending to claim a virgin article only, which has not been exposed to a temperature or to air to for passivation, where a used article would not fall in the scope of the claim? Does this mean something else altogether? The point of infringement of claim 1 cannot be determined and the claim is indefinite.
Claim Rejections - 35 USC § 102
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.
Claim(s) 13, 16-17 and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li, Mingyang, and Yongqin Chang. "Improving tensile property and thermal stability of the Cu-Ta alloy by alloying with Cr." Journal of Alloys and Compounds 905 (2022): 164181 (hereinafter “Li”).
Regarding claim 13, Li teaches a nanocrystalline Cu-Ta system is alloyed with Cr (see abstract or 1. Introduction). Li teaches that the Cu-0.6Ta-0.6Cr system is created by planetary milling for mechanical alloying and SPS (see 2. Experimental). The composition of Li falls entirely within the claimed ranges, anticipating the ranges. Applicant is directed to MPEP 2131.03. Li envisions creating an engine (see 1. Introduction).
Regarding the properties of being “thermally stable” at 98% of Tm as measured in K, Li does not describe this feature as claimed. Li teaches that the system has an improved thermal stability as by the hardness dropping a small amount when annealed at 900 C for 300h, with an “extremely low grain growth rate” (see 3.2.1. Softening temperature and thermal stability). Li teaches that the grains are approximately 240 nm after 600h (see 3.2.1. Softening temperature and thermal stability). This is considered to meet the limitation of the claim. Alternatively the material system is considered to have the property inherently.
Regrading wherein the material is oxidation and/or corrosion resistant, the same material with the same composition made by the same method would have had the same properties as claimed inherently. Applicant is directed to MPEP 2112.01.
Regarding claims 16-17, Li teaches that the Cu-0.6Ta-0.6Cr system is created by planetary milling for mechanical alloying and SPS (see 2. Experimental).
Regarding claims 19-20, the material system is considered to have the property inherently.
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.
Claim(s) 18 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li.
Regarding claim 18 and 21, Li does not teach any example of a system in which the second solute (Cr) is present in the amount as claimed.
Li teaches that the purpose of the alloying elements in the copper is to create thermal stability, for example, by the mechanism of Zener pinning (see 1. Introduction). Li proposes that the Cr2Ta Laves phase would additionally strengthen the alloy (see 1. Introduction). Li demonstrates this phase in the example materials (see 3.1.3. Nanoparticles).
Thus the presence of the Cr alloying element in the system of Li is considered to be a results-effective variable with regard to the generation of the Cr2Ta Laves phase and associated strengthening.
The amount of this Cr alloying element would therefore have been optimized by a skilled artisan through a routine investigation of the disclosure of Li. Applicant is directed to MPEP 2144.05.
Response to Arguments
Applicant's arguments filed 16 September 2025 have been fully considered Applicant argues that Li does not teach a Cu-Ta alloy having free, uncombined Cr atoms. This argument is considered, but the claims are considered to be indefinite for the reasons stated above.
Upon a further consideration of Li, it is noted that Li is directed to stabilization of alloys with “extremely low Ta concentration” (p. 2). Li teaches that 0.65% or less of Ta is needed in the system. Therefore, notwithstanding the rejections under 35 USC 112, it is believed that Li does not teach or fairly suggest an alloy with 1% or more of a Ta solute element.
Regarding claim 13, new grounds of rejection are presented as detailed above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER S KESSLER whose telephone number is (571)272-6510. The examiner can normally be reached 9-5:30.
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CHRISTOPHER S. KESSLER
Primary Examiner
Art Unit 1734
/CHRISTOPHER S KESSLER/ Examiner, Art Unit 1759
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