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
Election/Restriction
Applicant's election with traverse of Group I, claims 1-11 in the reply filed on 8 January 2026 is acknowledged. The traversal is on the ground(s) that the claims have unity of invention as spelled out in 37 CFR 1.475 (b). This argument is not found persuasive because applicant’s claims lack unity of invention under 37 CFR 1.475 (a), which requires there to be a general inventive concept shared. Applicant’s claims lack unity of invention under 37 CFR 1.475 (a), and therefore applicant’s arguments that the claims have unity under 37 CFR 1.475 (b) lack persuasive merit.
Applicant prior art US 6,110,305 does not teach the claimed alloy because the Cr listed in Table 2-1 is “not really a component” of the cast iron alloy of the prior art because it is used to form carbides (Remarks at pp. 3-4). This is not found persuasive because the cited prior art Table 2-1 lists “Components” of the prior art inventive and comparative alloys. Applicant’s argument that a Cr “component” (Table 2-1) of the prior art cast iron alloy is “not really a component” (Remarks pp. 3-4) of the prior art cast iron alloy lacks merit. Further still claim 1 recites “elements or compounds of.” Applicant’s argument is not only prima facie contradicted by the prior art, but is also prima facie contradicted by the claim itself. Because applicant’s arguments are contradicted by the text of the claim itself, the arguments lack merit.
Applicant argues further that the Comparative Example 10 in Table 2-1 of US 6,110,305 does not defeat the novelty of claim 1 because the prior art amount of 0.3% of Cr falls outside of the claimed range of “approx. 0.01% to 0.25%.” This argument has been carefully considered, but it is not persuasive because applicant’s arguments are not commensurate in scope with what is claimed. Firstly applicant has claimed “A cast iron material which comprises at least the proportions in percentage by weight.” This means that any additional amounts of chromium above 0.25% would be inside the claimed scope of the alloy. Because of this unique claim language (“at least the proportions”), additional amounts greater than “approx. 0.01% to 0.25%” of Cr would be included within the scope of what is now claimed. In addition to this, the examiner also disagrees with applicant’s position that the value of 0.3% of Cr is outside the range of approximately 0.01-0.25% of Cr. A number of factors can be used to determine what would or would not be included in “approximately” 0.25% of Cr. In this case the cast iron is the same in every other way, and the prior art teaches the Chromium has an effective range of 0.1-6.0% (col 10). It is not clear how the value of 0.3% is outside the range of approximately 0.01-0.25% where the clear function defined by the prior art covers such a range, and no further clarification is given by applicant as to either a preferred amount of chromium, what metes and bounds are meant by “approximately,” or even how chromium affects the cast iron. For these reasons the value in the prior art meets the claim limitation, and the arguments are not persuasive.
Further still, the claims are not considered to involve an inventive step for additional reasons as detailed below, and as such no unity of invention is present.
The requirement is still deemed proper and is therefore made FINAL.
Claims 12-15 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 8 January 2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 1-11 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “at least the proportions in percentage by weight as elements….”, and the claim also recites “Carbon in the range of approx. 1.0% to 4.0%” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. The limitation “at least the proportions” as written in plain language means that the proportions may be greater than those listed later in the claim. Ranges of “approx. 1.0% to 4.0%” would be narrowing for this broad limitation. Each one of the narrower ranges in the claim then is an additional reason for the indefiniteness of claim 1.
Each one of claims 2-11 depends from claim 1 and is also indefinite for these reasons.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation “approx. 0.0% to 5.0%,” and the claim also recites “preferably 0.0% to 1.0%” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Each one of claims 2-10 includes similar language with broad limitations followed by narrow limitations, and is 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.
(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.
Claim(s) 1-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 6110305 A (hereinafter “Nishimura”).
Regarding claim 1, Nishimura teaches a method of forming high-strength low-expansion cast iron (See title). Nishimura teaches that the cast iron is used for silicon wafer manufacture (See col 3). Nishimura teaches a number of examples and comparative examples of the cast iron at cols. 12-18. Nishimura describes the compositions of the cast irons at Table 2-1. Nishimura teaches Comparative Example 10, which includes a composition falling in the ranges as claimed. The composition of the Comparative Example 10 is compared with the claimed composition in the chart below (all values in weight %).
Element
Claim 1
Nishimura Comparative Example 10
Carbon
Silicon
Manganese
Nickel
Chromium
Phosphorus
Copper
Magnesium
Iron/Impurities
At least approximately 1.0-4.0
At least approximately 1.0-5.0
At least approximately 0.1-1.5
At least approximately 36.5-48.0
At least approximately 0.01-0.25
At least up to approximately 0.08
At least up to approximately 0.5
At least up to approximately 0.15
Remainder
2.05
1.9
0.3
36.5
0.3
--
--
(0.02 of Mg+Ca)
Remainder
The lack of disclosure of phosphor or copper reads one essentially zero of those elements, and is considered to meet the claim limitation. The composition of Comparative Example 10 of Nishimura falls entirely within the ranges as claimed, anticipating all of the ranges. Applicant is directed to MPEP 2131.03.
Regarding claim 2, Nishimura teaches other elements in amounts less than 5.0% (Table 2-1), considered to meet the limitation.
Regarding claim 3, Nishimura teaches carbon at 2.05 (Table 2-1).
Regarding claim 4, Nishimura teaches carbon at 2.05 (Table 2-1).
Regarding claim 5, Nishimura teaches nickel at 36.5 (Table 2-1), falling in the range as claimed.
Regarding claim 6, Nishimura teaches Mg+Ca at 0.02% (Table 2-1), considered to meet the limitation.
Regarding claim 7, Nishimura teaches silicon at 1.9 (Table 2-1).
Regarding claim 8, Nishimura is silent as to niobium content, reading on essentially no niobium.
Regarding claim 9, Nishimura teaches cobalt at 0 (Table 2-1).
Regarding claim 10, Nishimura is silent as to aluminum content, reading on essentially no aluminum.
Regarding claim 11, Nishimura does not specifically describe a structure of the graphite within cast iron of Comparative Example 10. Nishimura teaches that as cast Comparative Example 1 has a nodular graphite (cols 13-14). Given the field of invention of nodular cast irons in Nishimura, and the nodular nature of Comparative Example 1 as-cast, the Comparative Example 10 would have had a nodular (Spheroidal) shape. The properties not disclosed by the prior art would have been inherently present. Applicant is directed to MPEP 2112.01.
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) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 6110305 A (hereinafter “Nishimura”).
Regarding claim 1, Nishimura teaches a method of forming high-strength low-expansion cast iron (See title). Nishimura teaches that the cast iron is used for silicon wafer manufacture (See col 3). Nishimura teaches a broad composition of the cast iron at cols 4-5. Nishimura teaches that the composition of the cast iron includes 0.1-6.0% of a carbide forming element (see col. 4). Nishimura further describes the purpose and function of each of the alloying elements in the cast iron (cols. 8-10). Nishimura teaches that the carbide forming element is selected from at least one element selected from groups Iva, Va, and Via, which elements including Cr (see col. 9-10). Nishimura teaches a number of examples and comparative examples of the cast iron at cols. 12-18. Nishimura describes the compositions of the cast irons at Table 2-1. Nishimura specifies the composition further in claims 1-2. The composition of the prior art claim 1 is compared with the instantly claimed composition in the chart below (all values in weight %).
Element
Claim 1
Nishimura claim 1-2
Carbon
Silicon
Manganese
Nickel
Chromium
Phosphorus
Copper
Magnesium
Iron/Impurities
At least approximately 1.0-4.0
At least approximately 1.0-5.0
At least approximately 0.1-1.5
At least approximately 36.5-48.0
At least approximately 0.01-0.25
At least up to approximately 0.08
At least up to approximately 0.5
At least up to approximately 0.15
Remainder
0.3-2.5
Not more than 1.2
Not more than 1.0
25-40
(0.1-6.0 carbide forming element)
--
--
(not more than 0.1 of Mg+Ca)
Remainder
Nishimura is silent with regard to copper. The lack of disclosure of copper reads one essentially zero, and is considered to meet the claim limitation. Nishimura teaches that impurities such as phosphorus and sulfur should be limited to no more than 0.2% (col 9).
It would have been an obvious matter to the skilled artisan to have practiced the invention of Nishimura and to have selected chromium as the carbide forming element, because Nishimura teaches that this is one of a limited number of suitable chromium forming elements (cols 9-10). The composition of Nishimura overlaps the range as claimed, establishing a prima facie case of obviousness for that range. It would have been obvious to one of ordinary skill in the art at time of invention to have selected a composition in the ranges as claimed because Nishimura teaches the same utility over an overlapping range. Applicant is further directed to MPEP 2144.05.
Regarding claim 2, Nishimura teaches that other impurities such as phosphorus and sulfur should be limited to no more than 0.2% (col 9).
Regarding claims 3-4, Nishimura teaches carbon at 0.3-2.5 (claim 1), overlapping the claimed ranges and establishing a prima facie case of obviousness.
Regarding claim 5, Nishimura teaches nickel at 25-40 (claim 1), overlapping the claimed range and establishing a prima facie case of obviousness.
Regarding claim 6, Nishimura teaches Mg+Ca at 0.1% or less (claim 1), overlapping the claimed range and establishing a prima facie case of obviousness.
Regarding claim 7, Nishimura teaches silicon at 1.2% or less (claim 2), overlapping the claimed range and establishing a prima facie case of obviousness.
Regarding claim 9, Nishimura is silent as to niobium content, reading on essentially no niobium.
Regarding claim 10, Nishimura is silent as to aluminum content, reading on essentially no aluminum.
Regarding claim 11, Nishimura teaches spheroidal graphite (see col 9, Examples 13-15, Fig 3).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 10,683,567 teaches a cast iron alloy with high amounts of Nickel and cobalt with a chromium addition. US 5,173,253 teaches a cast iron with high nickel contents.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER S KESSLER whose telephone number is (571)272-6510. The examiner can normally be reached 9-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curt Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CHRISTOPHER S. KESSLER
Primary Examiner
Art Unit 1734
/CHRISTOPHER S KESSLER/ Examiner, Art Unit 1759