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 of Invention I, claims 1-8 in the reply filed on 4/28/26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim 9 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4/28/26.
As such, claims 1-8 are examined in this office action.
Claim Objections
Claim 3 is objected to because of the following informalities: claim 3 recites "aluminumis" as one word in line 3. This should be written as two word as "aluminum is". Appropriate correction is required.
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 2, 3, and 6 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.
Claim 2 recites the limitation “corrosion resistance is 1.2 times or more higher than that in the base material” in the last two lines of the claim. It is not clear what “corrosion resistance” encompasses, what a value for corrosion resistance is, nor how it is calculated. While paragraph [0043] of the specification gives an example as to how corrosion resistance can be calculated, this is not a definition of the term.
Claim 3 recites the limitation “erosion resistance to aluminumis 20% or more higher than that in the base material” in the last line of the claim. It is not clear what “erosion resistance” encompasses, what a value for erosion resistance is, nor how it is calculated. While paragraph [0043] of the specification gives an example as to how erosion resistance can be calculated, this is not a definition of the term.
Claim 6 recites the limitation “wherein the enhanced-property sections are at least one alloy selected from a Ni- Cr-Mo-based alloy, a Cr-Mo-Ni-Al-based alloy, a WC-Co-based alloy, a WC-Co-Cu-based alloy” in lines 2-4. It is not clear what is meant by a multi-element “based” alloy. It is not clear whether this merely requires these elements to be present in some amount in the alloy, whether this requires these elements to be the largest elements in the alloy, whether these are the only elements in the alloy, or some other meaning.
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.
(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.
Claims 1-8 are rejected under 35 U.S.C. 102(a)(1) or (a)(2) as being anticipated by WO 2019/069701 A1 with reference to English equivalent US 2020/0299814 A1 (as cited on IDS dated 9/27/23) of Shiratori.
As to claim 1, Shiratori discloses a composite material with a substrate part 2 made of Nickel accounting for 50 mass% or more (meeting a base material that is made of an alloy), a cemented carbide part 1 made of WC-Co, and an intermediate layer between the two containing components of the cemented carbide and substrate (Shiratori, paragraph [0031] and Fig 1B), meeting the limitation of two or more enhanced property sections that include an alloy of a different composition from that of the base material. Thus Shiratori is disclosing two enhanced-property sections (the cemented carbide portion and the intermediate layer between the two) that each include an alloy of a different composition from the base metal (in this case the substrate) and these enhanced property sections are continuous and integrated with the base material as there is no break between the materials and the base material forming a continuous and integrated composite member.
As to claims 2 and 5, it is not clear how corrosion resistance is calculated, see 112(b) rejection above. For the purposes of applying prior art, this will be interpreted as requiring the method for calculating corrosion resistance recite in paragraph [0043] of the specification. Shiratori discloses where the Vickers hardness of the alloy part is 200HV or higher and less than 500HV (Shiratori, paragraph [0041]) and alloy number 3 in the example where a Ni alloy is used with a HV of 307.5 (Shiratori, paragraph [0070]). Shiratori discloses where the cemented carbide part is 400 HV or higher and 1000 HV or less (Shiratori, paragraph [0035]), meeting the claim 2 limitation of where this enhanced property section is a hardness value 50HV or more higher than in the base material as well as the claim 5 limitation where the enhanced property section is 200HV or more. Shiratori discloses where the intermediate layer has a Vickers hardness less than 700 HV (Shiratori, paragraph [0042]) and in alloy 3 Shiratori discloses where the intermediate layer has a hardness of about 600 HV, meeting the claim 2 limitation of where this enhanced property section is a hardness value 50HV or more higher than in the base material as well as the claim 5 limitation where the enhanced property section is 200HV or more.
As to claims 3-4, it is not clear how erosion resistance is calculated, see 112(b) rejection above. For the purposes of applying prior art, this will be interpreted as requiring molten aluminum to erode 20% less material than the base material. Shiratori does not explicitly disclose where in the enhanced-property sections, erosion resistance to aluminum is 20% or more higher than that in the base material nor where in the enhanced-property sections, a thermal conductivity is 5 W/(m-K) or more higher than that in the base material. However, as Shiratori discloses the same composite member with a substrate part 2 made of Nickel accounting for 50 mass% or more (meeting a base material that is made of an alloy), a cemented carbide part 1 made of WC-Co, and an intermediate layer between the two containing components of the cemented carbide and substrate (Shiratori, paragraph [0031] and Fig 1B) and Shiratori discloses identical hardness values (see claims 2 and 5 rejection above) this identical material would necessarily prosses the properties of aluminum is 20% or more higher than that in the base material nor where in the enhanced-property sections, a thermal conductivity is 5 W/(m-K) or more higher than that in the base material. “Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (emphasis added), see MPEP § 2112.01(I).
As to claim 6, it is not clear what is meant by “based” alloy, see 112(b) rejection above. For the purposes of applying prior art, this will be interpreted as requiring each element to be present in their respective alloys as this would allow the alloy to be based on these elements. Shiratori discloses constructing the carbide enhanced portion using WC-Co cemented carbide powder having the Co content of 40 mass% (Shiratori, paragraph [0071]), meeting the claim limitation where the alloy of the enhanced property sections is WC-Co based. Shiratori discloses where the intermediate layer including the components of the substrate part and the components of the cemented carbide part (Shiratori, paragraph [0071]). As the intermediate part contains both the substrate as well as the cemented carbide, it would contain WC and Co and meet the claim limitation of a WC-Co based alloy.
Shiratori discloses where 10mm of material was deposited onto the substrate (Shiratori, paragraph [0071], meeting the claim limitation of a thickness of 0.1 mm or greater. Shiratori discloses where the center of the intermediate layer is 1 to 2 mm from the boundary (Shiratori, paragraph [0083]), meaning the thickness is 2-4 mm, meeting the claim limitation of a thickness of 0.1 mm or greater.
As to claim 7, Shiratori discloses a cemented carbide tool including the cemented carbide composite material with the claimed enhanced property sections (Shiratori, claim 15), meeting the claim limitation of a product comprising the composite member.
As to claim 8, the claim recites where the product is a cylinder or a screw in a tool, a mold and die, a material extruder, or an injection molding machine. The claim is directed to a cylinder or a screw and the recitation concerning tool, a mold and die, a material extruder, or an injection molding machine is merely an intended use for the cylinder or screw and while intended use recitations and other types of functional language are not entirely disregarded, the intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function, see MPEP § 2111.02(II). In this case, the intended use does not add any more than what is already claimed, a cylinder or screw with two or more enhanced property sections as in claim 1.
Shiratori discloses where the part has a cylindrical shape (Shiratori, Fig. 1B), meeting the claim limitation of a cylinder.
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
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