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 .
DETAILED ACTION
Status of Claims
Responsive to the amendment filed 29 December 2025 claims 1, 38-40, 42, and 43 are amended and claims 7-37 and 43 are cancelled. Claims 1-6, 38-40, 42, and 43 are currently pending.
Election/Restriction
Applicant's election with traverse of Group II, claims 39 ,40, 42, and 43 in the reply filed on 29 December 2025 is acknowledged. The traversal is on the ground(s) that the prior art does not teach or fairly suggest the claimed HCCI, and therefore the shared technical feature is a special technical feature, and unity of invention is not lacking. This is not found persuasive because the claims are rejected as being anticipated by Yilmaz, as detailed below. The shared technical feature is still not considered a special technical feature and unity is lacking.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-6 and 38 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 29 December 2025.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The disclosure is objected to because of the following informalities: at p. 38 of the specification as filed, the composition of Example 3 is listed as “30 wt. % C, 4-4.5 wt. % C.” This is an obvious typographical error, as the chromium (Cr) content should be listed at 30%.
Appropriate correction is required.
Drawings
The drawings were received on 12 June 2023. These drawings are accepted.
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.
Claims 39. 40. 42. And 43 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.
Claim 39 recites a HCCI casting which comprises a carbide modifier, which is one or more borides, and further wherein the carbide modifier boride converts into a nitride during a casting. It is not clear what is being claimed now.
Applicant’s claim describes that during a casting procedure, the carbide modifier is converted from the boride into a nitride ( which nitride will ultimately generate the desirable carbide structure). In the Remarks of 29 December 2025 (pp. 5-6), applicant cites the specification which describes this casting process. Via the amendment, what is claimed now is that the casting is what comprises the boride. It is not clear what is being claimed, as the casting is required to include an intermediate carbide modifier which is transformed into another structure while forming the casting. Does applicant wish to actually claim an alloy prior to a casting, which would include the borides, or a casting, in which the borides have been converted into carbides through casting? The point of infringement of claim 39 cannot be determined, and the claim is indefinite.
Each of claims 40, 42, and 43 are dependent on claim 39, and so are also indefinite for the same reasons.
Claim 40 recites the limitation "the carbide-modified hypereutectic high-chromium cast iron defined in claim 39." There is insufficient antecedent basis for this limitation in the claim. Claim 39 requires a carbide-modified hypereutectic high-chromium cast iron casting. As described above, it is not clear what is being claimed. Claim 39 seems to invoke elements of a casting, but also of an alloy preparation in general. Claim 40 then recites the alloy, without reference to the casting. The point of infringement of claim 40 cannot be determined, and the claim is indefinite.
Similar limitations are invoked in claims 42 and 43, which are also indefinite for the same reasons.
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) 39, 40, and 43 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yilmaz, Serdar Osman. "Wear behavior of TiB2 inoculated 20Cr–3Mo–4C high chromium white cast irons." Journal of materials science 42.16 (2007): 6769-6778 (hereinafter “Yilmaz”).
Regarding claim 39, it is noted that the claim is indefinite, as discussed in the rejections above under 35 USC 112. The claims are examined as if a casting were claimed, which is formed by the boride addition, rather than as a casting including the borides.
Yilmaz teaches a TiB2 inoculated high chromium white cast iron (See title). Yilmaz teaches that the cast iron has a structure containing hard carbide particulates distributed homogeneously in microstructure (see Conclusion or p. 6775 and Fig 9). Yilmaz teaches examples of the high chromium cast iron (see Experimental Procedure on pp. 6770-6771). Yilmaz teaches that the procedure of making the inoculated high chromium white cast irons includes addition of a particulate which includes a TiB2 material (see p 6771 and pp 6773-6774). Yilmaz teaches that the examples include 4% of C (see Table 2), thus meeting the definition of “hypereutectic” cast iron (see Table 2). Yilmaz teaches that the examples include 1 wt% B and 0.5 wt% Ti (See p. 6771 and Table 2). Therefore, the examples all meet the limitation of including an added titanium boride material prior to the casting procedure.
The structure of the white cast iron of Yilmaz is the same as what is claimed.
Regarding the composition of the carbide modifier, which is a boride, but converts to a nitride, this is considered to be a product-by-process limitation. "[E]ven 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) (citations omitted). In this case, the limitation of the claim is considered met by Yilmaz, as Yilmaz adds the same material as claimed (titanium boride) in order to generate a desired carbide structure. The same additive, added to the same HCCI composition would have inherently generated the same structures. Applicant is directed to MPEP 2112. Yilmaz teaches that the examples include 4% of C (see Table 2), thus meeting the definition of “hypereutectic” cast iron (see Table 2). Yilmaz teaches that the examples include 1 wt% B and 0.5 wt% Ti (See p. 6771 and Table 2). Therefore, the composition is the same as what is claimed, anticipating the entire claimed ranges. Applicant is directed to MPEP 2131.03.
Yilmaz describes that the addition of the boride material facilitates the generation of desired primary carbides (see Microstructure at pp. 6772-6775). Yilmaz teaches that the additive generates nucleation sites for the carbides during the casting (see p. 6774). Yilmaz describes the primary carbides (p. 6775). The same material is added to the HCCI at the same time, in order to generate the carbide nucleation sites on casting. Thus the structure that is claimed is the same as described by Yilmaz.
Regarding the limitation of wherein the primary carbides are smaller in size than those that would have formed if no carbide former were added, the properties not disclosed by the prior art would have been inherently present in the casting.
Regarding claim 40, the properties not disclosed by the prior art would have been inherently present in the casting.
Regarding claim 43, Yilmaz teaches that the target materials have application as wear parts for grinding or milling (see Introduction), therefor clearly envisioning a component made from the cast iron.
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) 42 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yilmaz.
Regarding claim 42, Yilmaz is applied to the claim as stated above.
What is claimed is considered to be a product-by-process limitation, please see discussion above related to claim 39. In this case, Yilmaz does not teach any example having an amount of the boride added to the casting as is claimed, or the resultant amounts of the boride in the cast iron casting.
Yilmaz teaches that the microstructures which are generated have nucleated from the added particles (See pp. 6773-6774). Thus the amount of the inoculant added in the invention of Yilmaz would have been recognized as a results-effective variable with regard to nucleation of carbides in the casting. It would have been an obvious matter t the skilled artisan to have practiced the invention of Yilmaz, and to have optimized the amount of the inoculant added (and therefore the amount of TiB2), in order to affect the nucleation of carbides as taught by Yilmaz (pp. 6773-6774).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 20230313331 A1 teaches a HCCI with boron and nitrogen. US 20190185975 A1 teaches that borides or carbides or nitrides can be added to an HCCI, but does not embellish further. US 9580777 B1 teaches to create a HCCI with refined carbide-boride-nitride microstructure. US 20060292026 A1 teaches to add TiB2 as a nodularizer for ductile cast iron.
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CHRISTOPHER S. KESSLER
Primary Examiner
Art Unit 1734
/CHRISTOPHER S KESSLER/Examiner, Art Unit 1759
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