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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/30/26 has been entered.
Status of Claims
Claims 16, 18, 20-21, and 31-35 are examined in this office action as claims 22-30 are withdrawn as directed to a nonelected invention, claim 16 was amended, and claims 31-35 are new in the reply dated 6/30/26.
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 16, 18, 20-21, and 31-35 are rejected under 35 U.S.C. 103 as being unpatentable over US 5362791 A of Ebenhoech in view of WO 2018/024892 A1 of Van Angles.
As to claims 16, 18, 31 and 33-35, Ebenhoech discloses a thermoplastic composition for producing metallic moldings containing 40-70% by volume of a sinterable pulverulent metal alloy and 30-60 percent by volume a mixture of B1) 50-100% by weight of a polyoxymethylene homopolymer or copolymer and B2) 0-50% by weight of a polymer which is immiscible with B1) and can be thermally removed without leaving a residue, or a mixture of such polymers, as binder, and C) 0-5% by volume of a dispersant (Ebenhoech, col 1, lines 5-18), reading upon a composition of 40 to 70 % by volume of a metal powder, based on the total volume of the composition and (b) from 30 to 60 % by volume, based on the total volume of the composition, of a polymeric binder as the disclosed binders in Ebenhoech are polymers. However, while Ebenhoech discloses that iron and other alloys can be used (Ebenhoech, col 2, lines 55-58), Ebenhoech does not explicitly disclose the claimed composition.
Van Angles relates to the same field of endeavor of forming tools, dies, pieces or molds from steel using powder metallurgy processes (Van Angles, pg. 2, lines 6-7 and 16-20). Van Angles discloses the steel composition in comparison to the claims in Table A below.
Table A
Element
Claim 16, 18, and 33-35 limitations (by weight %)
Van Angles embodiment (pg. 12, lines 1-9) (wt %)
Cr
Claim 16: 4.5 to 11.0%
Claim 18: 5.0 to 9.0%
4.1-29.5 %
Al
Claim 16: 6.2 to 13%
Claim 18: 6.5 to 10%
0-18%
Mn
Claim 16: 6 to 28%
Claim 18: 10 to 25%
Claim 33: 16.5 to 28%
Claim 34: 19 to 28%
8.2-34.6%
Fe
Claim 16: 44.65 to 82.3 %
Claim 18: 52.95 to 76.95%
Balance so 0-87.18%
Ti
Claim 16: 0.1 to 0.4 %
Claim 18: 0.15 to 0.35 %
0-8 %
Ni
Claim 16: 0 to 0.15 %
Claim 18: 0 to 0.1 %
Claim 35: 0 to 0.05%
0-8%
Si
Claim 16: 0.4 to 1.4 %
Claim 18: 0.6 to 1.3 %
0-8%
C
Claim 16: 0.5 to 1.4 %
Claim 18: 0.7 to 1.3 %
0.52-2.48%
N
Claim 16: 0.0 to 0.6 %
0-2%
Thus, Van Angles discloses a steel composition that overlaps the claimed ranges for all of the elements. Van Angles discloses where the steel is manufactured in the form of a spherical powder with a particle size of 45 micrometers or less (Van Angles, pg. 15, lines 41-45) meeting the claim limitation of a spherical metal powder with a particle size below 100µm as well as the claim 31 limitation of a particle size below 50µm. Van Angles teaches that this composition has high fracture toughness, high corrosion resistance, and high wear resistance (Van Angles, pg. 15, lines 21-26). While Van Angles does not disclose where the powder is gas-atomized, this is claiming the powder in product-by-process manner. 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. The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product, see MPEP § 2113(I). In the instant case, the formation of the powder using a gas-atomization process does not impart any structure beyond what is claimed, namely that it is a spherical powder and has a size of below 100µm.
As Ebenhoech invites the use of metal alloy powders including iron, one of ordinary skill would naturally look to the art to select an appropriate iron alloy powder to use. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the steel disclosed in Van Angles, selecting within the overlapping ranges for the steel alloy and particle size, and substitute this steel into the thermoplastic composition for producing metallic moldings disclosed in Ebenhoech, thereby enabling the production of steel parts having high fracture toughness, high corrosion resistance, and high wear resistance (Van Angles, pg. 15, lines 21-26).
As to claim 20, Ebenhoech discloses a thermoplastic composition for producing metallic moldings containing 40-70% by volume of a sinterable pulverulent metal alloy and 30-60 percent by volume a mixture of B1) 50-100% by weight of a polyoxymethylene homopolymer or copolymer and B2) 0-50% by weight of a polymer which is immiscible with B1) and can be thermally removed without leaving a residue, or a mixture of such polymers, as binder, and C) 0-5% by volume of a dispersant (Ebenhoech, col 1, lines 5-18), where component B2) is precent in the composition preferably from 2 to 20% (Ebenhoech, col 3, lines 9-12) and Ebenhoech discloses where suitable components for B2) are polyolefins (Ebenhoech, col 4, lines 15-22), thus meeting the claim limitations for the binder composition.
As to claim 21, Ebenhoech discloses a thermoplastic composition for producing metallic moldings containing 40-70% by volume of a sinterable pulverulent metal alloy and 30-60 percent by volume a mixture of B1) 50-100% by weight of a polyoxymethylene homopolymer or copolymer and B2) 0-50% by weight of a polymer which is immiscible with B1) and can be thermally removed without leaving a residue, or a mixture of such polymers, as binder, and C) 0-5% by volume of a dispersant (Ebenhoech, col 1, lines 5-18), where component B2) is precent in the composition preferably from 2 to 20% (Ebenhoech, col 3, lines 9-12) and Ebenhoech discloses where suitable components for B2) are polyolefins (Ebenhoech, col 4, lines 15-22), thus overlapping the claimed ranges as by not disclosing a further polymer, this percentage is 0%. 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 binder composition over the prior art disclosure since the prior art teaches this produces crack-free and nonporous, economic metallic mouldings (Ebenhoech, col 2, lines 40-45) 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 32, Van Angles discloses where the steel is manufactured in the form of a spherical powder with a particle size of 45 micrometers or less (Van Angles, pg. 15, lines 41-45), overlapping the claimed range of a mean particle size of below 20 µm. “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).
Response to Arguments
With respect to the 103 over Ebenhoech and Van Angles, Applicant argues that claim 16 is amended to require a gas atomized powder and this feature is not recited in the references (Applicant’s remarks, pg 7, 3rd paragraph).
However, this is not a structural limitation, but instead a description of process by which the powder is formed. Gas atomization is the most common method of forming spherical powders for powder metallurgy and does not impart any structure to the powder beyond what is already claimed, namely that the powder is spherical and that the powder has a particle size below 100µm, see MPEP § 2113(I). As such, the powder in Van Angles being spherical and meeting this size limitation meets the claim limitations.
Applicant also argues that there is no reason in Van Angles reference to select within the overlapping ranges to arrive at the claimed alloy and states that Ti and Si are optional and only give ranges of 0-8% (Applicant’s remarks, pg 7, 4th paragraph and pg 8, 2nd full paragraph). Applicant notes that there is nothing in Van Angeles to suggest use as MIM feedstock and claim 16 differs in the low amounts of Ti, Ni, and Si (Applicant’s remarks, pg 7, last paragraph). Applicant also notes that Van Angles does not teach the inclusion of 30-60% by volume of a polymetric binder (Applicant’s remarks, pg 8, 1st paragraph).
However, Van Angles as noted in the rejection above discloses an overlapping range for each of these elements and 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). Applicant is arguing that the ranges are so broad that they would not invite optimization by one of ordinary skill in the art. However, all of the claimed ranges fall within the disclosure in Van Angles or closely overlap. Disclosure of a range means that a piece of art is disclosing the points within that range as part of its invention. As Van Angles discloses these ranges, it is obvious to select within them to reach the claimed invention.
With respect to Van Angles not teaching the use of its metal powder in a MIM process, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In this case, Ebenhoech already invites the use of iron-based powders. Van Angles teaches an iron-based powder that is suitable for powder metallurgy with a size and spherical shape which a person of ordinary skill would understand is suitable for a MIM process. As such, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the iron powder from Van Angles into the method of Ebenhoech, thereby carrying out the method disclosed therein.
Applicant argues that the inventors have discovered that this can produce parts with low densities and exhibit good mechanical properties including elongation at break, tensile strength and non-allergic nature (Applicant’s remarks, pg. 8, 1st full paragraph). Applicant argues that Van Angles is silent on the required properties targeted by the instant invention as it is silent concerning being non-allergenic, non-explosive, and debindable (Applicant’s remarks, pg. 8, 1st paragraph). Applicant argues that as Van Angles does not recognize the need for low density and tensile strength at room temperature (Applicant’s remarks, pg. 8 2nd full paragraph). . Applicant argues that as Van Angles only focuses on heat transfer and wear resistance, there is no reason to solve the problem addressed by the current invention ((Applicant’s remarks, pg. 8 2nd full paragraph).
In response to applicant's argument that Van Angles is silent on the required properties of being non-allergenic, non-explosive, and debindable, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In this case, Ebenhoech discloses a binder composition which includes use of an iron powder but does not disclose an iron composition. Van Angles discloses an iron powder composition that overlaps the claimed ranges. As such, it is obvious to combine the Van Angles powder into the binder composition in Ebenhoech and the properties that applicant notes would flow naturally from this combination.
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., the targeted application of the invention to be non-allergic, non-explosive, and debindable) 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). What applicant is describing is a product that is made with the invention, but these arguments are not directed to the claimed invention itself: the metal powder and polymeric binder composition.
Conclusion
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.
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/JOSHUA S CARPENTER/Examiner, Art Unit 1733
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
