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 .
Response to Amendment and Status of Claims
Applicant’s amendment, filed 04/23/2026, has been entered. Claim 1 is amended, claims 2, 9, 10, 12, 15, and 18 are cancelled, and claims 21 and 22 are newly added. Accordingly, claims 1, 3-8, 11, 13, 14, 16, 17, and 19-22 are pending and considered in this Office Action.
Claim Rejections - 35 USC § 102
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 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.
Claims 1, 3, 4, and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sato et al. (U.S. 6,221,183).
Regarding claims 1 and 3, Sato teaches a composition (Example 5) as follows:
Element
Claimed
Ex. 5
Analysis
Fe
20-50
43.1
Within
Ni
6-25
10.2
Within
Co
Balance (0-74)
37
Within
Cr
0-30
6.23
Within
W
Permitted by ‘comprising’ but not expressly claimed
3.02
Permitted
Impurities
Impurities
C 0.15
Si 0.13
Mn 0.17
Ca 0.003
Within the BRI of ‘impurities’
Absent a special definition or evidence to the contrary, Sato’s composition would meet the claimed language of the preamble requiring a ‘controlled expansion alloy’ because it lies squarely within the bounds of the claimed invention. Notably, Sato expressly teaches that the alloy is a low-thermal-expansion alloy (Col. 8 lines 44-46).
Regarding claim 4, Sato teaches the composition as applied to claim 1 above and further teaches that the alloy has a primary phase of austenite and a further phase of martensite induced by working (Col. 4 lines 6-7). Thus, the alloy of Sato meets the claimed feature requiring 5% or more of regions with a crystal structure of an ordered phase because both austenite and martensite are ordered phases and comprise the majority, if not all, of the alloy such that there is at least 5% or more of these microstructures.
Regarding claim 11, Sato teaches the composition as applied to claim 3 above and further teaches that the alloy has a primary phase of austenite and a further phase of martensite induced by working (Col. 4 lines 6-7). Thus, the alloy of Sato meets the claimed feature requiring 5% or more of regions with a crystal structure of an ordered phase because both austenite and martensite are ordered phases and comprise the majority, if not all, of the alloy such that there is at least 5% or more of these microstructures.
Claims 21 and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Enokida et al. (JP 63-171850; Cited in IDS of 12/01/2023).
Regarding claim 21, Enokida teaches a composition as follows:
Element
Claimed
Ex. 1 (Table 1)
Analysis
Fe
20-50
40.5
Within
Ni
6-25
21.9
Within
Co
Balance (0-74)
37.6
Within
Cr
0-30
0
Within
There are no additional elements disclosed in the composition. Thus, Enokida meets the closed transitional phrase of claim 21.
Absent a special definition or evidence to the contrary, Enokida’s composition would meet the claimed language of the preamble requiring a ‘controlled expansion alloy’ because it lies squarely within the bounds of the claimed invention.
Regarding claim 22, Enokida teaches the composition as applied to claim 21 above and the machine translation expressly teaches that the austenite is stabilized when the nickel is limited to 15 to 45% (Page 4 of the machine translation provided in the IDS filing); thus, there is an ordered phase in the alloy, i.e., the austenite, and would be expected to constitute at least 5% as claimed in view of the identical composition taught by Enokida that meets the claimed composition.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code, Graham v. Deere factual inquiries, and presumption of common ownership not included in this action can be found in the prior Office action.
Claims 5 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Sato as applied to claims 1, 3, and/or 4 above, and further in view of Uehara et al. (JP 2003173795; Cited in IDS of 12/01/2023).
Regarding claims 5 and 13-14, Sato teaches the alloy as applied to claims 1,3, and/or 4 above but is silent that the alloy should be used as an interconnector for a solid state oxide electrolyte fuel cell.
Uehara et al. (hereinafter “Uehara”) teaches a steel for a solid oxide fuel cell separator (Abstract) that has a small thermal expansion difference (Abstract).
It would be obvious to substitute the alloy of Sato in place of the Uehara steel for a solid oxide fuel cell separator because the ordinarily skilled artisan would recognize and appreciate the selection and substitution of a known alloy with a low, negative, or small thermal expansion, particularly Sato’s alloy because Sato expressly teaches that the alloy is a low-thermal-expansion alloy Col. 8 lines 44-46, for another alloy having a low, negative, or small thermal expansion difference would be routine and prima facie obvious.
Specifically, it has been held that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle. 325 U.S. at 335, 65 USPQ at 301. See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). MPEP 2144.07.
Claims 6 and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Sato as applied to claims 1, 3, and/or 4 above, and further in view of Pike (JP 2014501845; Cited in IDS of 12/01/2023).
Regarding claims 6 and 16-17, Sato teaches the alloy as applied to claims 1, 3, and/or 4 above but is silent that the alloy should be used as an interconnector for a solid state oxide electrolyte fuel cell.
Pike teaches an alloy designed for gas turbine engines having high strength and low coefficient of thermal expansion (Abstract).
It would be obvious to substitute the alloy of Sato, which is disclosed to be a low-thermal-expansion alloy (Col. 8 lines 44-46) in place of the Pike alloy suitable for gas turbines because the ordinarily skilled artisan would recognize and appreciate the selection and substitution of a known alloy with a low coefficient of thermal expansion for another alloy having a low coefficient of thermal expansion would be routine and prima facie obvious.
Specifically, it has been held that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle. 325 U.S. at 335, 65 USPQ at 301. See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). MPEP 2144.07.
Claims 1, 3, 4, 8, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshida JP 2011-74454 (Cited in IDS of 12/01/2023; Of Record).
Regarding claims 1 and 3, Yoshida teaches a low thermal expansion alloy containing 37.1% Fe, 4.91% Ni, 9.25% Cr, and 48.7% Co (screenshot from Table 1 below with rectangular annotation applied by Examiner to denote the relied upon example) which meets the claimed ranges because the values of Yoshida’s example lie inside, are overlapping, and/or are reasonably close. Specifically, the 4.91% value for Ni is reasonably close to the claimed lower bound of ‘6.0%’. It is a difference of 1.09% which appears to be a difference in degree rather than in kind. Evidence demonstrating that the Ni range is critical and/or produces unexpected results would be necessary to overcome the obviousness of such a difference.
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656
598
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In the interest of the clarity of the record, the presence of additional elements C, Si, and Mn are permissible because the claim utilizes the open-ended transitional phrase ‘comprising’ and/or alternatively could be interpreted as ‘impurities’ as claimed in view of the very small amounts listed for those elements.
Regarding claim 4, Yoshida teaches the composition as applied to claim 1 above and while not reporting the particular crystalline structure of the example selected from Table 1 relied upon above, the alloy of Yoshida would necessarily possess a crystalline structure of an ordered phase in an amount of 5% or more inherently.
USPTO does not possess the capabilities to procure, manufacture, and/or test compositions of the prior art and so, in view of the identical composition, there is a reasonable basis to shift the burden to Applicant to prove that the Yoshida alloy is amorphous and does not possess 5% or more of regions with a crystal structure of an ordered phase.
Notably, Figures 1a-1c of Yoshida, particularly 1c, demonstrates that the comparative example 7 is completely ferrite (i.e., 100% or more of regions with a crystal structure of an ordered phase).
Regarding claim 8, Yoshida teaches the alloy as applied to claim 1 above but is silent that the alloy is used to make a heat sink. However, it would be obvious to use the alloy of Yoshida to make a heat sink because Yoshida’s alloy has excellent low thermal expansion properties such that it would be obviously advantageous for use in a heat sink.
Specifically, it has been held that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle. 325 U.S. at 335, 65 USPQ at 301. See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). MPEP 2144.07.
Regarding claim 11, Yoshida anticipates the composition as applied to claim 3 above and while not reporting the particular crystalline structure of the example selected from Table 1 relied upon above, the alloy of Yoshida would necessarily possess a crystalline structure of an ordered phase in an amount of 5% or more inherently.
Notably, Figures 1a-1c of Yoshida, particularly 1c, demonstrates that the comparative example 7 is completely ferrite (i.e., 100% or more of regions with a crystal structure of an ordered phase).
USPTO does not possess the capabilities to procure, manufacture, and/or test compositions of the prior art and so, in view of the identical composition, there is a reasonable basis to shift the burden to Applicant to prove that the Yoshida alloy is amorphous and does not possess 5% or more of regions with a crystal structure of an ordered phase.
Claims 5 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshida as applied to claims 1, 3, and/or 4 above, and further in view of Uehara et al. (JP 2003173795; Cited in IDS of 12/01/2023).
Regarding claims 5 and 13-14, Yoshida teaches the alloy as applied to claims 1,3, and/or 4 above but is silent that the alloy should be used as an interconnector for a solid state oxide electrolyte fuel cell.
Uehara et al. (hereinafter “Uehara”) teaches a steel for a solid oxide fuel cell separator (Abstract) that has a small thermal expansion difference (Abstract).
It would be obvious to substitute the alloy of Yoshida, which possesses a controlled thermal expansion in place of the Uehara steel for a solid oxide fuel cell separator because the ordinarily skilled artisan would recognize and appreciate the selection and substitution of a known alloy with a low, negative, or small thermal expansion difference for another alloy having a low, negative, or small thermal expansion difference would be routine and prima facie obvious.
Specifically, it has been held that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle. 325 U.S. at 335, 65 USPQ at 301. See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). MPEP 2144.07.
Claims 6 and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshida as applied to claims 1, 3, and/or 4 above, and further in view of Pike (JP 2014501845; Cited in IDS of 12/01/2023).
Regarding claims 6 and 16-17, Yoshida teaches the alloy as applied to claims 1, 3, and/or 4 above but is silent that the alloy should be used as an interconnector for a solid state oxide electrolyte fuel cell.
Pike teaches an alloy designed for gas turbine engines having high strength and low coefficient of thermal expansion (Abstract).
It would be obvious to substitute the alloy of Yoshida, which possesses a controlled thermal expansion in place of the Pike alloy suitable for gas turbines because the ordinarily skilled artisan would recognize and appreciate the selection and substitution of a known alloy with a low coefficient of thermal expansion for another alloy having a low coefficient of thermal expansion would be routine and prima facie obvious.
Specifically, it has been held that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle. 325 U.S. at 335, 65 USPQ at 301. See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). MPEP 2144.07.
Claims 7, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Sato as applied to claims 3 and/or 4 above, and further in view of Mihashi (JP 2003-081647 A; Cited in IDS of 12/01/2023).
Regarding claims 7, 19, and 20, Yoshida teaches the composition as applied to claim 2 above but is silent to the alloy being use as a die for shaping glass.
Mihashi teaches a similarly compositioned alloy to that of Yoshida, at Table 1 Example 1 (screenshot below), specifically having a composition of 24.2% Fe, 10.8% Cr, 0.82% Si, and remainder Co and impurities.
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84
374
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In the interest of the clarity of the record, Si is permitted due to the open-ended transitional phrase ‘comprising’. Additionally, 0.82% would also fit the BRI of ‘impurities’ as claimed.
Mihashi further teaches that the alloy is used for a die for press-forming an optical glass lens (see “Problem to be solved” section of translation submitted in IDS of 12/01/2023), meeting claimed ‘a die for shaping glass’.
Thus, it would be obvious to use the alloy of Yoshida to make a die for shaping optical glass in view that the teachings of Mihashi demonstrate that such alloys are suitable to make a die for shaping optical glass.
The substitution of Yoshida’s alloy for Mihashi’s alloy would be a routine substitution that would yield predictable results. The person of ordinary skill in the art would recognize and appreciate that both Yoshida’s alloy and Mihashi’s alloy have beneficially low thermal expansion coefficients which render them particularly useful for the purpose of a die for shaping optical glass as demonstrated by Mihashi.
It has been held that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle. 325 U.S. at 335, 65 USPQ at 301. See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). MPEP 2144.07.
Claims 7, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Sato as applied to claims 3 and/or 4 above, and further in view of Mihashi (JP 2003-081647 A; Cited in IDS of 12/01/2023).
Regarding claims 7, 19, and 20, Sato teaches the composition as applied to claims 3 and/or 4 above but is silent to the alloy being use as a die for shaping glass.
Mihashi teaches a similarly compositioned alloy to that of Sato, at Table 1 Example 1 (screenshot below), specifically having a composition of 24.2% Fe, 10.8% Cr, 0.82% Si, and remainder Co and impurities.
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84
374
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Greyscale
In the interest of the clarity of the record, Si is permitted due to the open-ended transitional phrase ‘comprising’. Additionally, 0.82% would also fit the BRI of ‘impurities’ as claimed.
Mihashi further teaches that the alloy is used for a die for press-forming an optical glass lens (see “Problem to be solved” section of translation submitted in IDS of 12/01/2023), meeting claimed ‘a die for shaping glass’.
Thus, it would be obvious to use the alloy of Sato to make a die for shaping optical glass in view that the teachings of Mihashi demonstrate that such alloys are suitable to make a die for shaping optical glass.
The substitution of Sato’s alloy for Mihashi’s alloy would be a routine substitution that would yield predictable results. The person of ordinary skill in the art would recognize and appreciate that both Sato’s alloy and Mihashi’s alloy have beneficially low thermal expansion coefficients, i.e., are low-thermal-expansion alloys, which render them particularly useful for the purpose of a die for shaping optical glass as demonstrated by Mihashi.
It has been held that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle. 325 U.S. at 335, 65 USPQ at 301. See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). MPEP 2144.07.
Response to Arguments
Applicant’s amendment has necessitated the new grounds of rejection in this Office Action.
Applicant argues that Yoshida cannot meet the instantly claimed invention because Yoshida teaches a Ni content of 0.03 to 1.5% while the claimed range is 6.0-25%. However, this is not consonant with the facts used in the rejection. To make the record clear, the example of Yoshida has a Ni content of 4.91% and it has been held that a reference is good for all it teaches (see In re Heck at MPEP 2123).
Applicant argues that Mihashi cannot meet the instantly claimed invention because Mihashi teaches an alloy without any Ni while the claimed range is 6.0-25%. To make the record clear, the anticipation rejection over Mihashi has been withdrawn in view of the amended claim. However, Mihashi is now applied as a secondary reference as described above. In the interest of compact prosecution, it is noted that Mihashi is still valuable prior art that would commend itself to the POSITA’s attention because it is directed to low-thermal expansion alloys. Additionally, it has been held that a reference is good for all it teaches (see In re Heck at MPEP 2123).
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 ALEXANDRA M MOORE whose telephone number is (571)272-8502. The examiner can normally be reached M-F 8am-5pm, EST.
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ALEXANDRA M MOORE
Primary Examiner
Art Unit 1738
/ALEXANDRA M MOORE/Primary Examiner, Art Unit 1738
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