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 .
Election/Restrictions and Status of Claims
Applicant's election with traverse of Invention I, claims 16-21 in the reply filed on 11/21/25 is acknowledged. The traversal is on the ground(s) that the composition of claim 16 has unexpected results as to maintaining mechanical properties while also having relatively low densities. This is not found persuasive because these properties would be a function of the composition and as Valls Angles discloses a patentably indistinct composition, these properties would naturally flow therefrom.
The requirement is still deemed proper and is therefore made FINAL.
Claims 22-30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 11/21/25.
As such, claims 16-21 are examined in this office action of which claims 16-21 were new in the preliminary amendment dated 7/13/23.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it is 179 words long, exceeding the allowed length and the abstract includes implied phraseology such as the invention relates to. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Interpretation
Claim 19 uses the transitional phrase “consists essentially of” rather than the open phrase “comprising” as used in the other claims. 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. While applicant notes on pg. 7, lines 1-3 of the specification that “essentially means that there may be minor amounts of other components”, this does not describe the basic and novel characteristics of the invention and does not clearly set forth the scope encompassed by the use of “consists essentially of”. As the basic and novel characteristics of the invention and how they relate to the composition are not otherwise 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.
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.
Claim 21 is 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 21 recites where the composition comprises “(b3) 0 % by weight of at least one further polymer”. The plain meaning of this limitation both requires “at least one further polymer” while also reciting a composition of 0%, thereby rendering it not a part of the composition. Thus, it is not clear what the scope of this limitation is. It is not clear whether this is a negative limitation banning other polymers, whether merely one other polymer must be 0%, or some other meaning.
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 16-21 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 16-19, 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 16-19 limitations (by weight %)
Van Angles embodiment (pg. 12, lines 1-9) (wt %)
Cr
Claim 16: 4.0 to 13.0%
Claim 17: 4.5 to 11.0%
Claim 18: 5.0 to 9.0%
Claim 19: 4.5 to 11.0%
4.1-29.5 %
Al
Claim 16: 6 to 15%
Claim 17: 6.2 to 13%
Claim 18: 6.5 to 10%
Claim 19: 6.2 to 13%
0-18%
Mn
Claim 16: 4 to 30%
Claim 17: 6 to 28%
Claim 18: 10 to 25%
Claim 19: 6 to 28%
8.2-34.6%
Fe
Claim 16: 38.4 to 85.95 %
Claim 17: 44.65 to 82.3 %
Claim 18: 52.95 to 76.95%
Claim 19: 44.65 to 82.3 %
Balance so 0-87.18%
Ti
Claim 16: 0.05 to 0.5%
Claim 17: 0.1 to 0.4 %
Claim 18: 0.15 to 0.35 %
Claim 19: 0.1 to 0.4 %
0-8 %
Ni
Claim 16: 0 to 0.2 %
Claim 17: 0 to 0.15 %
Claim 18: 0 to 0.1 %
Claim 19: 0 to 0.15 %
0-8%
Si
Claim 16: 0 to 1.5 %
Claim 17: 0.4 to 1.4 %
Claim 18: 0.6 to 1.3 %
Claim 19: 0.4 to 1.4 %
0-8%
C
Claim 16: 0 to 1.5 %
Claim 17: 0.5 to 1.4 %
Claim 18: 0.7 to 1.3 %
Claim 19: 0.5 to 1.4 %
0.52-2.48%
N
Claim 19: 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 (Van Angles, pg. 15, lines 41-42). Van Angles teaches that this composition has high fracture toughness, high corrosion resistance, and high wear resistance (Van Angles, pg. 15, lines 21-26).
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 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, it is not clear what is meant by 0% of one further polymer, see 112(b) rejection above. For the purposes of applying prior art, this will be interpreted as merely requiring that some further polymer is 0%. 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.
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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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.
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/JOSHUA S CARPENTER/Examiner, Art Unit 1733
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733