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 .
Status of Claims
Claims 1-3 are examined in this office action as claims 4-10 are withdrawn as directed to a nonelected invention and claims 1-2 were amended in the reply dated 4/1/26.
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 1-3 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.
Claims 1-3 all recite in the preamble a “high-entropy austenitic stainless steel”. However, a “steel” definitionally is an iron-carbon alloy and the recited compositions do not include carbon as an alloying element. In the specification, carbon is listed as an impurity (Applicant’s specification, paragraph [0032]), indicating that it is not desired to be a part of the composition. Thus, it is not clear whether the preamble is intended to be limiting and require that some amount of carbon is present in the alloy, whether this recitation of “steel” is incorrect and should not be used for merely an iron-based alloy, or some other meaning.
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 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over CN 104694808 B (cited in IDS dated 7/19/23) and its English machine translation of Lv.
Table A
Element
Claim 1 and 2 limitations (at%)
Lv disclosed range paragraph [0031] (at%)
Cr
Claim 1: 5-30%
Claim 2: 5-19%
0-35%
Ni
Claim 1: 5-50%
Claim 2: 5-29%
0-35%
Ti
Claim 1: 1-15%
Claim 2: 6-15%
0-10%
Al
Claim 1: 1-15%
Claim 2: 5-15%
0-10%
Co
free of cobalt
0-35%
Fe
Balance
0-35%
As to claims 1-2, applicant has amended claim 1 to recite that the composition is “consisting essentially of” instead of “comprising”. Comprising is open language, while consisting essentially of is a partially closed phrasing that “limits the scope of a claim to the specified materials or steps ‘and those that do not materially affect the basic and novel characteristic(s)’ of the claimed invention.” See MPEP § 2111.03. The MPEP further notes that “For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, ‘consisting essentially of’ will be construed as equivalent to ‘comprising.’” See MPEP § 2111.03. As the basic and novel characteristics of the invention and how they relate to the composition are not readily apparent from the specification or claims and applicant has not directed to where in the specification the a description of the basic and novel characteristics is found, for the purposes of applying prior art the composition will be treated as open as consistent with MPEP § 2111.03.
The prior art still applies because Lv relates to high-entropy alloys dispersed with nano-precipitated second phases (Lv, paragraph [0002]), meeting the limitation of a high-entropy alloy. Lv discloses where this is an FCC high-entropy alloy and where the samples are also FCC (Lv, paragraphs [0008] and [0031]), meeting the claim limitation as FCC structure is austenitic. While it is not clear what is meant by stainless steel, see 112(b) rejection above, for the purposes of applying prior art this will be interpreted as an iron-alloy including chromium. To this, Lv discloses the ranges for the high-entropy alloy in comparison to the claim limitations in Table A above. As Lv discloses an FCC high-entropy iron alloy which has a composition which overlaps the claimed range for the composition, 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 excellent room temperature tensile properties (high strength and plasticity, or strong-plasticity product) and outstanding high temperature rheological and creep properties (Lv, paragraph [0002]) 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) . See MPEP § 2144.05 I.
As to claim 3, Lv discloses the high-entropy alloy according to claim 1, see claim 1 rejection above. Lv discloses where the alloy contains precipitates of about 20 to 50 nm in size (Lv, paragraph [0031]), overlapping the claimed range of ≤30 nm. “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.”, see MPEP § 2144.05(I).
However, while Lv discloses that a large number of diffusely precipitated nanoscale phases were also found in the scanned tissue images (Lv, paragraph [0031] and Fig. 2), Lv does not explicitly disclose where the number density of each of the nano-sized precipitates is ≥5.0x1021 m-3. However, as Lv discloses an anticipatory composition, see claim 1 rejection and Table A above, an identical chemical composition would be expected to have patentably indistinct properties of where the number density of each of the nano-sized precipitates is ≥5.0x1021 m-3. “Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)), see MPEP § 2112.01(II).
In the alternative, Lv discloses, in addition to the anticipating composition, a substantially identical method of manufacture involving melting and mixing the claimed elements and casting into an ingot, remelting the ingot, cold working, followed by heat treatment, quenching and aging to produce a high-entropy material reinforced by dispersed nano-precipitates (Lv, claim 1), substantially matching the disclosed method of mixing raw materials, melting and casting, solution/homogenization, cold-rolling, and recrystallizing followed by aging (paragraph [0018] of the specification). As Lv discloses an identical composition and applies a substantially identical method of manufacture, a person of ordinary skill would expect the substantially same method applied to the same material to produce patentably indistinct properties of where the number density of each of the nano-sized precipitates is ≥5.0x1021 m-3. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (emphasis added), see MPEP § 2112.01(I).
Response to Arguments
With respect to the 112(b) rejection, applicant argues that amending the claim to use the transitional phrase “consisting essentially of” excludes C, N, and O which the specification states are only present as unavoidable impurities and thereby this makes the scope of the claim clear (Applicant’s remarks, pg. 5, 1st – 3rd paragraphs).
However, as noted in the rejection above, the definition of steel is an alloy of iron with some amount of carbon. An iron alloy that does not include carbon is not a steel. Therefore, even the exclusion of other elements from the composition does not solve the indefiniteness issue with respect to the use of steel in the preamble. The issue remains that using the term steel requires some amount of carbon while the composition does not recite an amount of carbon. This makes it unclear whether the claim requires some amount of carbon to be present such that there is actually a steel or not. Thus, the 112(b) rejection is maintained.
With respect to the 102 and 103 rejection over Lv, applicant argues that the recitation “free of cobalt” differentiates the claimed composition over the art and the specification identifies the presence of cobalt as a drawback (Applicant’s remarks, pg. 6, 4th – 6th paragraphs). Applicant argues that all of Lv’s working examples include cobalt and Lv does not teach or suggest a cobalt-free composition (Applicant’s remarks, pg. 7, 1st through 4th paragraphs).
While it is agreed that the amendment overcomes the 102 rejection over the specific examples in Lv, the exclusion of cobalt from the composition does not overcome Lv as a whole. Lv, as noted in Table A above, teaches where cobalt has a range of 0-35 at%, thus encompassing embodiments where cobalt is not present. With respect to Lv teaching examples including cobalt, "the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004), see MPEP § 2141.02(VI). "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)), see MPEP § 2123(I). 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). In the instant case, Lv clearly discloses a range where cobalt is not present and as such renders the claimed composition obvious. Further, there is no showing of criticality nor unexpected results of the composition over the art, see MPEP § 716.02(d). Thus applicant’s arguments are not persuasive and the rejection is maintained.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Joshua S Carpenter whose telephone number is (571)272-2724. The examiner can normally be reached Monday - Friday 8:00 am - 5:30 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached at (571) 272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOSHUA S CARPENTER/Examiner, Art Unit 1733
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
Prosecution Insights