DETAILED ACTION
Response to Amendment
The Amendment filed 05/26/2026 has been entered. Claims 1, 2, 4, 6, 8, 11, 16, 18, 20, 21, 24, 26, 27, 31, 32, 33, 34, and 35 remain pending in the application. Claims 3, 5, 7, 9, 10, 12-15, 17, 19, 22-23, 25, 28-30, and 36-52 have been canceled. No new claims have been added. Applicant's amendments to the abstract have overcome the objections previously set forth in the Non-Final Rejection mailed 02/23/2026. Applicant's amendments to the claims have overcome the objections previously set forth in the Non-Final Rejection mailed 02/23/2026. Applicant's amendments to the claims have overcome the 112(a) rejections previously set forth in the Non-Final Rejection mailed 02/23/2026. Applicant's amendments to the claims have overcome the 112(b) rejections previously set forth in the Non-Final Rejection mailed 02/23/2026. Applicant's amendments to the claims have overcome the 112(d) rejections previously set forth in the Non-Final Rejection mailed 02/23/2026.
Claim Objections
Claim 26 is objected to because of the following informalities: claim 26 recites “wherein the non-metallic structures comprise graphene, graphitic ribbons or plates, graphides, graphites a conductive polymer, a nonconductive polymer, or a combination thereof”. It appears that there is a missing comma between “graphites” and “a conductive polymer”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 2, 4, 6, 8, 11, 16, 18, 20, 21, 24, 26, 27, 31, 32, 33, 34, and 35 are rejected under 35 U.S.C. 112(a), 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 contains the limitation “(c) passing the flowing liquid covetic material over a substrate” (emphasis added). The amended limitation “over a substrate” is broader than the originally claimed “onto a substrate” since “over a substrate” encompasses “passing flowing material” in any location above a substrate and does not necessarily require “passing flowing material” onto a substrate (emphasis added). The instant specification recites “(c) continuously depositing the liquid covetic material onto a substrate” (emphasis added, page 2, “Summary of the Invention”) The instant specification does not provide proper antecedent basis for the claimed subject matter, i.e., “(c) passing the flowing liquid covetic material over a substrate” (emphasis added).
Claims 2, 4, 6, 8, 11, 16, 18, 20, 21, 24, 26, 27, 31, 32, 33, 34, and 35 are rejected due to their dependence on rejected claim 1.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 6, 8, 11, 16, 18, 20, 21, 24, 26, 27, and 31-34 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by US 2020/0071796 A1 of Scherer (as cited in prior Office action and as cited in IDS mailed 09/25/2023).
Regarding claim 1, Scherer teaches composite materials, apparatuses, and methods (Title). Scherer teaches methods for continuously producing composite materials (Abstract, continuously producing reads on the claimed continuous flow conditions; composite material reads on the claimed covetic material; examples in [0082] reference a “covetic aluminum” which further reads on the claimed covetic material) where in some embodiments, the methods include providing a reservoir comprising a first feed and a second feed; disposing a liquid metal and a carbon material in the reservoir via the first feed and the second feed, respectively; mixing the liquid metal and the carbon material in a first portion of the reservoir to form a mixture (reads on the claimed (a) continuously introducing one or more carbon materials into a flowing liquid metal material, thereby forming a flowing liquid covetic precursor material); transporting the mixture from the first portion of the reservoir to a second portion of the reservoir; applying an electrical charge to the mixture in the second portion of the reservoir to form a composite material (reads on the claimed (b) passing an electric current through the flowing liquid covetic precursor material, thereby forming a flowing liquid covetic material comprising metal and a plurality of carbon structures); and collecting the composite material (reads on the claimed (c) passing the flowing liquid covetic material over a substrate) ([0035], liquid metal reads on the claimed liquid metal material and carbon material reads on the claimed carbon materials; mixing step: [0038]-[0040], electrical charge step: [0042]-[0046], collecting step: [0047], Fig. 1 shows first feed 160 for feeding liquid metal and second feed 161 for feeding carbon material which reads on the claimed continuously introducing one or more carbon materials into a flowing liquid metal material).
Regarding step (c) of claim 1, Scherer teaches the composite material then may pass through a control valve 140, which can be opened to take samples of the composite material for quality control or other purposes and the composite material then may pass through a blanket of inert gas before passing into a holding tank where the material can be poured into billets or extruded into shapes ([0050], Fig. 1, pouring into billets and extruding into shapes both further read on the claimed passing the flowing liquid covetic material over a substrate; one of ordinary skill in the art understands an open valve allows for continuous flow). Scherer further teaches extruding samples of the composite material into a rod, then a wire ([0095]-[0099]). One of ordinary skill in the art understands that pouring into billets or extruding into a rod is done on a substrate, such as a mold, plate, or any other surface that can hold the poured or extruded material. A patent need not teach, and preferably omits, what is well known in the art. See MPEP § 2164.01.
Additionally, or alternatively, Scherer teaches disposing liquid metal and a carbon material into a first portion of a reservoir, mixing by rotating auger continuously during continuous process, transporting the mixture to a second portion of the reservoir, passing through an electrical device, applying a charge to convert to the composite material and passing through a control valve which can be opened to take samples ([0050]). one of ordinary skill in the art understands that an open valve to take samples allows for continuous flow of the covetic material mixture onto a substrate.
Scherer therefore reads on the limitation a method for producing a covetic material, the method comprising: (a) continuously introducing one or more carbon materials into a flowing liquid metal material, thereby forming a flowing liquid covetic precursor material; (b) passing an electric current through the flowing liquid covetic precursor material, thereby forming a flowing liquid covetic material comprising a metal and a plurality of carbon structures; and (c) passing the flowing liquid covetic material over a substrate, thereby depositing a covetic material onto the substrate of claim 1.
Regarding claim 2, Scherer teaches the method of claim 1 as described above.
Scherer teaches disposing a liquid metal and a carbon material in the reservoir ([0035]). Scherer teaches the liquid metal is selected from the group consisting of copper, silver, aluminum, lead, zinc, tin, silicon, iron, gold, and a combination thereof ([0017], [0053], listed metals are all solid at room temperature). Since Scherer teaches using a liquid metal and the metals that Scherer teaches are all solid at room temperature, one of ordinary skill in the art understands that solid metal was melted to obtain the liquid metal used in the method of Scherer. A patent need not teach, and preferably omits, what is well known in the art. See MPEP § 2164.01. In this case, using aluminum as an example, solid aluminum had to be melted to obtain the liquid aluminum used in the method of Scherer and melting a solid metal to obtain a liquid reads on the claimed liquifying a solid metal material.
Scherer therefore reads on the limitation further comprising liquifying a solid metal material, thereby forming the flowing liquid metal material of claim 2.
Regarding claim 6, Scherer teaches the method of claim 1 as described above.
Scherer teaches the carbon material includes graphene which may be in any form, such as a powder, flakes, granules or a combination ([0054], powder, flakes and granules are all solid).
Scherer therefore reads on the limitation wherein the one or more carbon materials is a solid or a liquid of claim 6.
Regarding claim 8, Scherer teaches the method of claim 2 as described above.
Scherer teaches a first feed 160 for disposing a liquid metal into the first portion 120 of the reservoir 110 and a second feed 161 for disposing a carbon material into the first portion 120 of the reservoir 110 ([0031], Fig. 1). Since the liquid metal and carbon material are in separate feeds, one of ordinary skill in the art understands the solid metal material molten to obtain the liquid metal will have not been in contact with the carbon material of Scherer before being mixed in the method of Scherer.
Scherer therefore reads on the limitation wherein the solid metal material is not in contact with the one or more carbon materials of claim 8.
Regarding claim 11, Scherer teaches the method of claim 2 as described above.
Scherer teaches the at least one metal is selected from the group consisting of copper, silver, aluminum, lead, zinc, tin, silicon, iron, gold, and a combination thereof ([0017], [0053], at least one metal reads on the claimed solid metal material).
Scherer therefore reads on the limitation wherein the solid metal material is selected from the group consisting of aluminum, copper, silver, gold, iron, magnesium, titanium, zirconium, nickel, zinc, palladium, platinum, molybdenum, tin, metallic alloys thereof, and metallic composites of claim 11.
Regarding claim 16, Scherer teaches the method of claim 1 as described above.
Scherer teaches including a fourth feed for providing an inert gas to the reservoir where the inert gas forms a “blanket” at the top of a reservoir, thereby preventing or reducing the likelihood of oxygen entering the reservoir ([0026], 164 is fourth feed for providing an inert gas in Fig. 1; first feed 160 disposes liquid metal and second feed 161 disposes carbon material as described in [0031] and reading on claimed step (a)). Scherer further teaches the holding tank includes an inert gas ([0047]).
Since the liquid metal and carbon material are introduced into the reservoir 110 ([0031]) and inert gas is provided to the reservoir, Scherer reads on the limitation wherein step (a) further comprises introducing an inert gas around the liquid metal material and one or more carbon materials of claim 16.
Regarding claim 18, Scherer teaches the method of claim 1 as described above.
Scherer teaches an electrical current is provided by the shaft, which may act as an electrode, and that the “shaft electrode” may be either positive or negative, and may apply either alternating or direct current ([0051], shaft 172 in Fig. 1, shaft electrode either positive or negative reads on the claimed anode or cathode). Scherer teaches liquid metal and carbon material are in the shaft ([0051], reads on claimed anode and cathode in contact with the flowing liquid covetic precursor material), and therefore in contact with the liquids of Scherer. Scherer further teaches the bottom area of the shaft may host the opposite electrode from the shaft, and its location may permit a material to pass through an area having within a desirable distance of both electrodes ([0051], opposite electrode reads on the claimed anode or cathode). While Scherer does not explicitly disclose which material is used for the shaft and bottom area of the shaft, Scherer teaches they serve as electrodes and an electrical current is provided by the shaft. One of ordinary skill in the art therefore understands the shaft is made of a material which is electrically conducting since the shaft provides an electric current between the two electrodes, and further understands the electric current will pass between anode and cathode and through the liquid of Scherer. A patent need not teach, and preferably omits, what is well known in the art. See MPEP § 2164.01.
Scherer therefore reads on the limitation further comprising an anode and a cathode in contact with the flowing liquid covetic precursor material; wherein passing the electric current through the flowing liquid covetic precursor material comprises passing the electric current between the anode and the cathode, wherein the anode and the cathode independently comprise carbon, a metal, or another electrically conducting or semiconducting material of claim 18.
Regarding claims 20 and 21, Scherer teaches the method of claim 1 as described above.
Scherer teaches applying electrical charge includes applying an electrical current to the mixture and the electrical current can be selected from AC, DC, AC/DC half wave, full wave, square wave, filtered wave, or pulsed wave ([0043], AC reads on the claimed sinusoidal current and time-varying current; DC reads on the claimed constant current). Scherer teaches applying an electrical current to the mixture for a time effective to form a composite material where in some embodiments, the electrical current is applied for about 1 nanosecond to about 5 hours ([0044]). Scherer teaches the electrical current is pulsed, or alternately applied and removed one or more times ([0045]). Scherer teaches the electrical current may have a frequency, current rate, and/or form that may be modified while the current is applied to the mixture, or can remain substantially unchanged while the current is applied to the mixture ([0044], reads on claimed time-varying current and constant current, respectively)
Scherer therefore reads on the limitation wherein the electric current is a sinusoidal current of claim 20 and wherein the electric current is a time-varying current, a constant current, or combination thereof of claim 21.
Regarding claim 24, Scherer teaches the method of claim 1 as described above.
Scherer teaches the graphene has an average particle size of about 10 μm to about 44 μm, or about 10 μm to about 22 μm ([0054]). While Scherer does not explicitly teach a microstructure or nanostructure, one of ordinary skill in the art understands the graphene necessarily has a structure and the graphene sizes of Scherer are considered microstructures given the scale between 10 μm and 44 μm.
Scherer therefore reads on the limitation wherein the carbon structures are microstructures and/or nanostructures of claim 24.
Regarding claim 26, Scherer teaches the method of claim 1 as described above.
Scherer teaches methods of continuously producing composite materials that include a monophasic blend of a metal and a carbon material ([0005]). Scherer teaches the carbon material used in the methods provided herein includes graphene which may be in any form, such as a powder, flakes, granules or a combination ([0054], graphene is made of carbon and therefore reads on the claimed wherein one or more non-metallic precursor materials is a carbon). Scherer teaches adding one of more additives using boron ([0057], reads on claimed boron), silicon carbide ([0059], reads on claimed carbon, silicon, and mixtures thereof), and piezo electric compounds ([0060]).
Scherer therefore reads on the limitation wherein the carbon structures comprise graphene, graphitic ribbons or plates, graphides, graphites a conductive polymer, a nonconductive polymer, or a combination thereof of claim 26.
Regarding claim 27, Scherer teaches the method of claim 1 as described above.
Scherer teaches extruding samples of the composite material into a rod, then a wire ([0095]-[0099], extruding samples further reads on the claimed continuously depositing the liquid covetic material onto a substrate). Scherer teaches using an extrusion pressure of about 90 tons ([0098]). Since the extrusion of covetic material occurs in air, one of ordinary skill in the art understands the extrusion occurs under atmospheric pressure. A patent need not teach, and preferably omits, what is well known in the art. See MPEP § 2164.01.
Scherer therefore reads on the limitation wherein passing the flowing liquid covetic material over a substrate occurs under atmospheric pressure or under pressure greater than atmospheric pressure of claim 27.
Regarding claims 31 and 32, Scherer teaches the method of claim 1 as described above.
Scherer teaches the composite materials include a monophasic blend including (i) at least one metal, and (ii) graphene ([0014], composite material reads on claimed covetic material). Scherer further teaches the phrase “monophasic blend”, as used herein, generally refers to a blend including at least one metal and a carbon material, such as graphene, wherein one or more interactions between the at least one metal and the carbon material prevent the at least one metal and the carbon material from separating from the monophasic blend when the monophasic blend is heated to a temperature that exceeds the melting point of the at least one metal or the monophasic blend ([0015], monophasic blend reads on the claimed single-phase material and further reads on claimed wherein the covetic material does not separate into compositional phases upon remelting and solidification).
Scherer therefore reads on the limitations wherein the covetic material is a single-phase material of claim 31 and wherein the covetic material does not separate into compositional phases upon remelting and solidification of claim 32.
Regarding claim 33, Scherer teaches the method of claim 1 as described above.
Scherer teaches the mixer, such as a rotating auger, creates a uniform mixture of the contents of the reservoir ([0027], uniform mixture of the contents of the reservoir reads on the claimed wherein the non-metallic structures are homogeneously distributed throughout the covetic material since the liquid metal and carbon material are mixed in the reservoir of Scherer).
Scherer therefore reads on the limitation wherein the carbon structures are homogeneously distributed throughout the covetic material of claim 33.
Regarding claim 34, Scherer teaches the method of claim 1 as described above.
Scherer teaches a holding tank may collect a composite material ([0029], composite material reads on claimed covetic material). Under broadest reasonable interpretation, a “three-dimensional pattern” is any material that exists in three-dimensional space and has any pattern. One of ordinary skill in the art understands the holding tank depicted in Fig. 1 and the substrates to hold extruded rods or billets are in three-dimensional space and contain a composite material in a three-dimensional pattern.
Scherer therefore reads on the limitation wherein the covetic material is deposited onto the substrate in a three-dimensional pattern of claim 34.
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 4 and 35 are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0071796 A1 of Scherer (as cited in prior Office action and as cited in IDS mailed 09/25/2023), as applied to claims 1-2 above.
Regarding claim 4, Scherer teaches the method of claim 2 as described above.
Scherer teaches mixing the liquid metal and the carbon material in a first portion of the reservoir to form a mixture ([0035]). Since Scherer teaches using a liquid metal and the metals that Scherer teaches are all solid at room temperature, one of ordinary skill in the art understands that solid metal was melted to obtain the liquid metal used in the method of Scherer. A patent need not teach, and preferably omits, what is well known in the art. See MPEP § 2164.01.
Selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946). See MPEP 2144.04 (IV)(C). In this case, one of ordinary skill in the art would reasonably expect combining the solid metal material and carbon material of Scherer via coatings before liquifying the solid metal to yield a comparable mixture than when mixing a liquid metal and carbon material of Scherer once the solid metal is liquified.
Scherer therefore reads on the limitation wherein the solid metal material is coated by the one or more carbon materials, or the one or more carbon materials is coated by the solid metal material of claim 4.
Regarding claim 35, Scherer teaches the method of claim 1 as described above.
Scherer teaches providing an inert gas to the reservoir in the apparatus to prevent oxygen entering the reservoir ([0026]). One of ordinary skill in the art understands that using an inert gas to prevent oxygen entering the apparatus would result in a covetic material “substantially free” of oxides since there will not be sufficient oxygen inside the apparatus to form oxides.
Scherer therefore reads on the limitation wherein the covetic material is substantially free of carbides, oxides, or both carbides and oxides of claim 35.
Response to Arguments
Applicant's arguments filed 05/26/2026 have been fully considered but they are not persuasive.
Applicant argues that Scherer teaches an intermediate storage step, which is incongruent with the continuous flow conditions under which the covetic materials are made in the present invention and Scherer states at paragraph [0029] “In some embodiments, the apparatuses include a holding tank” (remarks, page 11). Applicant argues that the covetic materials made by the methods of the invention are not stored in a reservoir or holding tank as disclosed in US 2020/0071796 A1 (remarks, page 11). Applicant argues that Scherer is silent regarding any composite materials produced using continuous flow conditions, as required by amended claim 1 (remarks, page 12).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., covetic materials not stored in a reservoir or holding tank) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). In this case, Scherer explicitly teaches methods for continuously producing composite materials (Abstract, continuously producing reads on the claimed continuous flow conditions; composite material reads on the claimed covetic material; examples in [0082] reference a “covetic aluminum” which further reads on the claimed covetic material). Scherer teaches disposing liquid metal and a carbon material into a first portion of a reservoir, mixing by rotating auger continuously during continuous process, transporting the mixture to a second portion of the reservoir, passing through an electrical device, applying a charge to convert to the composite material and passing through a control valve which can be opened to take samples ([0050]). Absent any clear and convincing evidence and/or arguments to the contrary, Scherer reads on the instant claims as currently amended despite some embodiments of Scherer including a holding tank. Furthermore, 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).
Regarding claim 4, Applicant argues that Scherer does not teach or suggest the continuous flow conditions described in the amended claims, let alone a feature in which the solid metal material is coated by the one or more carbon materials, or the one or more carbon materials is coated by the solid metal material and based on the disclosure of Scherer one of ordinary skill in the art would not have had a reasonable expectation of success in developing the invention of claim 4 (remarks, page 13).
In response, Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. In this case, Scherer explicitly teaches continuously producing covetic materials, as discussed above, and Scherer teaches mixing the liquid metal and the carbon material in a first portion of the reservoir to form a mixture ([0035]). Since Scherer teaches using a liquid metal and the metals that Scherer teaches are all solid at room temperature, one of ordinary skill in the art understands that solid metal was melted to obtain the liquid metal used in the method of Scherer. A patent need not teach, and preferably omits, what is well known in the art. See MPEP § 2164.01.
Selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946). See MPEP 2144.04 (IV)(C). In this case, one of ordinary skill in the art would reasonably expect combining the solid metal material and carbon material of Scherer via coatings before liquifying the solid metal to yield a comparable mixture than when mixing a liquid metal and carbon material of Scherer once the solid metal is liquified. Applicant asserts that one of ordinary skill in the art would not have had a reasonable expectation of success in developing the invention of claim 4, but does not provide evidence as to why making a mixture by coating metal with carbon would not work in making the mixture of metal and carbon of Scherer. Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). See MPEP 716.02.
Regarding claim 35, Applicant argues that Scherer does not teach or suggest the continuous flow conditions described in the amended claims, let alone wherein the covetic material is substantially free of carbides, oxides, or both carbides and oxides and based on the disclosure of Scherer one of ordinary skill in the art would not have had a reasonable expectation of success in developing the invention of claim 35 (remarks, page 13).
In response, Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. In this case, Scherer explicitly teaches continuously producing covetic materials, as discussed above, and Scherer teaches providing an inert gas to the reservoir in the apparatus to prevent oxygen entering the reservoir ([0026]). One of ordinary skill in the art understands that using an inert gas to prevent oxygen entering the apparatus would result in a covetic material “substantially free” of oxides since there will not be sufficient oxygen inside the apparatus to form oxides. Applicant asserts that one of ordinary skill in the art would not have had a reasonable expectation of success in developing the invention of claim 35, but does not provide evidence as to why one of ordinary skill in the art would not reasonably expect a lack of oxygen to result in a lack of oxides in the resulting covetic materials of Scherer. Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). See MPEP 716.02.
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 extension fee 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 date of this final action.
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/M.A./Examiner, Art Unit 1733
/REBECCA JANSSEN/Primary Examiner, Art Unit 1733
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