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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/01/2023 and 05/07/2025 has been considered by the examiner.
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 1-4 and 9-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoshida JP 2011-74454 (Cited in IDS of 12/01/2023).
Regarding claims 1-3, 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 anticipates the claimed ranges.
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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 anticipates 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 9, Yoshida anticipates the claim as applied to claim 2 above and the relied upon example shows a Cr content of 9.25% which anticipates the claimed range.
Regarding claims 10 and 11, Yoshida anticipates the composition as applied to claims 2 and/or 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 1, 3, 4, 7, 19, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mihashi (JP 2003-81647; Cited in IDS of 12/01/2023).
Regarding claim 1, Mihashi teaches, at Table 1 Example 1 (screenshot below), a composition having 24.2% Fe, 10.8% Cr, 0.82% Si, and remainder Co and impurities which anticipates the claimed range.
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Notably, Si is permitted due to the open-ended transitional phrase ‘comprising’. Additionally, 0.82% would also fit the BRI of ‘impurities’ as claimed.
Regarding claim 3, Mihashi anticipates the composition as applied to claim 1 above and the example further includes 10.8% Cr which anticipates the claimed range of 5 to 30% Cr.
Regarding claim 4, Mihashi anticipates 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 Mihashi 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 Mihashi alloy is amorphous and does not possess 5% or more of regions with a crystal structure of an ordered phase.
Regarding claims 7, 19, and 20, Mihashi anticipates the composition as applied to claims 1, 3, and/or 4 above and 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’.
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 5 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshida as applied to claims 1, 2, 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 12-14, Yoshida teaches the alloy as applied to claims 1-4 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 ally 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 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshida as applied to claims 1, 2, 3, and/or 4 above, and further in view of Pike (JP 2014501845; Cited in IDS of 12/01/2023).
Regarding claims 6 and 15-17, Yoshida teaches the alloy as applied to claims 1-4 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 ally of Yoshida, which possesses a controlled thermal expansion in place of the Pike ally 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.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Yoshida as applied to claim 1 above.
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.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Yoshida as applied to claim 2 above, and further in view of Mihashi (JP 2003-081647 A; Cited in IDS of 12/01/2023).
Regarding claim 18, 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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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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Sato et al. (U.S. 6,221,183) directed to a high-strength low-thermal-expansion alloy consisting of 0.06-0.50% C, 25-65% in total of one or both of 65% or less Co and less than 30% Ni, and balance of Fe having a primary phase of austenite and martensite phase (Abstract).
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ALEXANDRA M MOORE
Primary Examiner
Art Unit 1738
/ALEXANDRA M MOORE/Primary Examiner, Art Unit 1738