Detailed Office Action
Notice of Pre-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
Restriction/Election
Applicant's election with traverse of Group I, Claims 1 – 13 in the reply filed on 12/29/2025 is acknowledged. The traversal is on the ground(s) that the Office has not shown evidence that the claimed product can be made by a different process and therefore has not shown the requirement of MPEP 806.05(f)(B). This is not found persuasive.
Applicant cites that the requirements of 806.05(f)(B) have not been shown because there is no evidence in the record. However, as explicitly stated in this section “Allegations of different processes or products need not be documented”. Applicant’s arguments are therefore, not persuasive. The examiner notes, for purposes of compact prosecution, that Kim (KR20090131133) discusses the formation of composite powder via injection of hard particles into a molten matrix such as aluminum as gas atomizing [Abstract and Page 3, of translation].
Applicant also states there is no search burden. This is not found persuasive because, as noted in the restriction requirement, the product and process are classified in different areas and as such would require different search queries and considerations. Therefore, a search burden exists.
The requirement is still deemed proper and is therefore made FINAL.
Claims 14 – 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/29/2025.
Claim Rejections – U.S.C. §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 13 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.
Regarding claim 13, the phrase “based on a density of the aluminum powder” is indefinite. The phrase is indefinite because it is not clear what is meant by this measurement. Specifically, it is not clear what “density” the phrase is meant to represent. It is not clear whether the density is meant to be the powder density (e.g. tap density or bulk density), whether it is meant to be the theoretical density of the aluminum composition of the aluminum powder, or some other density measurement given that the composite requires cBN in addition to aluminum.
Claim Rejections – U.S.C. §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 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 – 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Irshad (“Electrochemical study of aluminum–cubic boron nitride composites synthesized via spark plasma sintering for engineering applications”, NPL, 2023)
The examiner notes that there appears to be named co-inventors in the publication however, because the publication names authors that are not listed as joint inventors of instant invention it is not readily apparent from the publication that it is an inventor-originated disclosure (See MPEP 2153.01(a))
Regarding claims 1 – 2 and 4 – 5, Irshad teaches a method forming an Al-cBN with a pure Al powder of 50 µm, and cBN powder of 20 µm [Page 2, left Col], meeting the claimed ranges of claim 1 and claim 2. The powders are mixed in a solvent of ethanol (meeting claim 5), sonicated, dried, pressed and sintering [Page 2, left Col], meeting the claimed method steps. Irshad states that there is a uniform dispersion of the cBN in the aluminum matrix [Abstract], meeting the claimed limitation of claim 1 and claim 4.
Regarding claim 3, Irshad teaches the invention as applied in claim 1. Irshad does not state the shape of the cBN particles, however, Irshad teaches using ABN800 powder [Page 2, left Col], which is identical to that described in the instant invention, Example 1. As such, there is a reasonable expectation to a person of ordinary skill in the art that the particles of Irshad would possess a cubic or octahedral shape.
Regarding claim 6, Irshad teaches the invention as applied in claim 1. Irshad teaches that the sample (i.e. Sample 2, Table 1) has 8.1 g of Al and 0.9 g of cBN, resulting in a weight ratio of 9:1, meeting the claimed range.
Regarding claims 7 – 8, Irshad teaches the invention as applied in claim 1. Irshad teaches that the powders are pressed at 50 MPa and sintered at 55°C [Page 2, left Col], meeting the claimed ranges/limitations of claims 7 – 8.
Regarding claim 9, Irshad teaches the invention as applied in claim 1. Irshad states that no reaction occurs between Al and cBN following sintering [Section 3.1], meeting the claimed limitation.
Regarding claims 10 – 11, Irshad teaches the invention as applied in claim 1. Irshad teaches that the sample (i.e. Sample 2, Table 1) has a hardness of ~1.7 – 1.8 GPa [Fig 6, Table 4] and an elastic modulus of ~76 – 77 GPa [Fig 6, Table 4], meeting the claimed ranges/limitations of claims 10 – 11.
Regarding claims 12 – 13, Irshad teaches the invention as applied in claim 1. Irshad teaches that the sample (i.e. Sample 2, Table 1) achieves a density of 2.65 g/cm3 and a density of 98.1%, meeting the claimed ranges/limitations of claims 12 – 13.
Claim Rejections – U.S.C. §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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1, 4, 6 – 9, and 11 – 13 are rejected under 35 U.S.C. 103 as being unpatentable over Hu (CN106048278, using machine translation) in view of McHale (US2005/0187093)
Regarding claim 1, Hu teaches a method of making an aluminum matrix composite material containing cubic boron nitride [Abstract]. The method includes the steps of
Mixing aluminum powder and cubic boron nitride powder, the aluminum powder having a diameter of 70 – 80 µm, which falls within the claimed range, and the cBN powder having a size of 38 – 44 µm, which falls within the claimed range [page 3 of translation].
Pressing the powder mixture [page 3 of translation].
Sintering the compact [page 3 of translation].
Wherein Hu teaches that the aluminum powder and cBN powder are well mixed [Page 3 of translation] and as such, it would have been obvious to one of ordinary skill in the art before the effective filing date to have ensured uniform distribution of cBN in the formed composite of Hu in order to achieve predictable results. Given that Hu states the powders are uniformly mixed, an ordinarily skilled artisan would have had motivation to ensure that the components remained uniformly distributed in the produced composite and would have had a reasonable expectation of success in controlling Hu to possess this distribution.
Hu teaches mixing the aluminum powder and cBN powder but does not teach including a solvent, mixing by sonication, and drying, prior to pressing and drying.
McHale teaches a method of making a sintered compact including mixing of cubic boron nitride and aluminum powder [Abstract]. McHale teaches that the powder mixture can be mixed via various method including ultrasonic mixing [0032], which meets the claimed limitation, and that the mixing is often conducted in presence of solvents such as isopropyl alcohol and other alcohols [0033], meeting the claimed limitation. Following mixing, the mixture can be dried [0034].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have substituted the mixing step in Hu with a step of ultrasonic mixing in a solvent, followed by drying, disclosed by McHale, to achieve predictable results. Hu and Mchale are in the same field of endeavor of forming composite sintered bodies including the presence of cubic boron nitride and aluminum powder. Additionally, Mchale teaches that ultrasonic mixing is a known method of forming powder mixtures and as such, the substitution of the step would result in no change in their respective functions and achieve predictable results. As such, a person of ordinary skill in the art would have a reasonable expectation of success. Moreover, an ordinarily skilled artisan would have been motivated to include a substitute the steps in order to reduce the chance of oxidation of the aluminum powder in Hu by shielding it from.
Regarding claim 4, Hu in view of McHale teaches the invention as applied in claim 1. Hu teaches that the aluminum powder and cBN powder are well mixed [Page 3 of translation] and as such, it would have been obvious to one of ordinary skill in the art before the effective filing date to have ensured uniform distribution of cBN in the formed composite of Hu in order to achieve predictable results. Given that Hu states the powders are uniformly mixed, an ordinarily skilled artisan would have had motivation to ensure that the components remained uniformly distributed in the produced composite and would have had a reasonable expectation of success in controlling Hu to possess this distribution.
Additionally, the composite has a reinforced aluminum matrix, meeting the claimed limitation of network matrix of aluminum [Page 3 of translation].
Regarding claim 6, Hu in view of McHale teaches the invention as applied in claim 1. Hu teaches an example in which the volume fraction of aluminum to cBN is 9:1 [page 5 of translation], wherein the mass ratio is ~7:1 based on an aluminum density of 2.7 g/cm3 and cBN density of 3.45 g/cm3, which falls within the claimed range.
Regarding claim 7, Hu in view of McHale teaches the invention as applied in claim 1. Hu teaches an example in which the mixture is pressed into a compact at 50 MPa [page 6 of translation], which falls within the claimed range.
Regarding claim 8, Hu in view of McHale teaches the invention as applied in claim 1. Hu teaches an example in which the compact is heated to a temperature of 600°C [Page 6 of translation], which falls within the claimed range.
Regarding claim 9, Hu in view of McHale teaches the invention as applied in claim 1. Hu teaches an advantage of the invention is that aluminum and cBN do not react to form a third phase [page 4 of translation], meeting the claimed limitation.
Regarding claim 11, Hu in view of McHale teaches the invention as applied in claim 1. Hu does not explicitly teach the elastic modulus but discloses forming a sintered composite material with a composition that meets the claimed range/ratio of claim 6 and density of claim 13 [See Embodiment 3].
As such, there is a reasonable expectation to a person of ordinary skill in the art that the composite would have claim the elastic modulus. 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, in this case composite and structure (i.e. sintered), a prima facie case of obviousness is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (SEE MPEP 2112.01)).
Regarding claim 12, Hu in view of McHale teaches the invention as applied in claim 1. Hu teaches that the composite has a relative density of higher than 95%, cBN is 1 – 40 vol%, and Al would be 60 – 99 vol%. Wherein the density of the composite would range from 2.57 g/cm3 to ~3 g/cm3, based on an aluminum density of 2.7 g/cm3 and cBN density of 3.45 g/cm3, which overlaps with the claimed range.
With regards to the overlapping ranges taught, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to have selected overlapping ranges as disclosed. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I). “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)”
Regarding claim 13, Hu in view of McHale teaches the invention as applied in claim 1. Hu teaches that the composite has a relative density of higher than 95% [page 3 of translation], which overlaps with the claimed range. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I). “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)”
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Hu (CN106048278, using machine translation) in view of McHale (US2005/0187093), as applied to claim 1 above, in further view of Lei (CN114351026, using espacenet translation)
Regarding claim 2, Hu in view of McHale teach the invention as applied in claim 1. Hu teaches the aluminum powder is preferably 70 – 80 µm [Page 3 of translation], but does not explicitly teach the aluminum powder can have an average size of about 50 µm.
Lei teaches a PCBN material containing cBN and metal-based binder material [0005] which is produced by combining metal powders including aluminum powder and a cBN powder [0007] and subjecting it to mixing, molding, and sintering [0013 – 0016]. Lei teaches that the metal powder used with the cBN powder can have a size ranging from 10 – 45 µm [0014]. Wherein 45 µm is interpreted to overlap with the claimed amount of “about 50 µm”. Alternatively, “A range can be disclosed in multiple prior art references instead of in a single prior art reference depending on the specific facts of the case. Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1322, 73 USPQ2d 1225, 1228 (Fed. Cir. 2004).” (MPEP 2114.05 I). Wherein Hu and Lei make clear that a sintered cBN composite can be produced by using metal powders that range in size from as low as 10 µm to up to 80 µm.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have used a metal powder size of 10 – 45 µm, as disclosed by Lei, in the method of Hu in view of McHale. Hu, McHale, and Lei are in the same field of endeavor of cBN sintered composites. Moreover, given that the Lei is directed to using this metal powder size with cBN powder, an ordinarily skilled artisan would have had a reasonable expectation of success in using this powder size to achieve predictable results. Further still, Lei suggests that more uniform mixing occurs by using this powder size range when cubic boron nitride powder is a range of 5 – 30 µm.
Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I). “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)”
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Hu (CN106048278, using machine translation) in view of McHale (US2005/0187093) as applied to claim 1 above, in further view of Hakeem (US 10,858,292)
Regarding claim 3, Hu in view of McHale teaches the invention as applied in claim 14. Hu teaches that the cBN powder preferably has a size of 38 – 44 µm, which falls within the claimed range [page 3 of translation].
Hu does not expressly teach a shape of the cBN particles.
Hakeem teaches a method/product comprising alumina and cBN which is subjected to sintering [abstract]. Hakeem teaches that the process can use cubic boron nitride particles commercially available from Element Six as ABN800 [Example 1].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have used the commercially available cBN particles disclosed by Hakeem of ABN800 as the cBN particles in the composite of Hu to attain predictable results. Hu, McHale, and Hakeem are in the same field of endeavor of cBN sintered composites. Additionally, an ordinarily skilled artisan would have had a reasonable expectation of success because both Hakeem and Hu use cBN particles and an ordinarily skilled artisan would have been motivated by the particles being commercially available.
Moreover, changes in shape are a prima facie case of obvious absent evidence that the shape is significant (MPEP 2144.04 IV B)
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Hu (CN106048278, using machine translation) in view of McHale (US2005/0187093) as applied to claim 1, in further view of Ishii (WO2021/010475, using espacenet translation)
Regarding claim 5, Hu in view of McHale teaches the invention as applied in claim 1. McHale teaches that the powder mixture can be mixed and that mixing is often conducted in presence of solvents such as isopropyl alcohol and other alcohols [0033]. McHale does not expressly teach using an alcohol of methanol, ethanol, or propanol.
Ishii teaches a method of producing a cBN sintered body by mixing cBN powder and a binder powder [0086 – 0087] and subjecting it to sintering [0106 – 0107]. Ishii discloses that the mixing step can be performed as wet mixing to achieve a homogenous mixture [0104] and the solvent used can be ethanol [0105], meeting the claimed limitation.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have used ethanol as the solvent (as disclosed by Ishii) in the method of Hu as-modified by McHale to achieve predictable results. Hu, McHale, and Ishii are directed to the same field of endeavor of making sintered compacts with a mixing of metal and cBN. Moreover, Hu in view of McHale appreciates that alcohols can be used as the solvent in wet mixing and Ishii teaches ethanol is one such alcohol. As such, an ordinarily skilled artisan would have had a reasonable expectation of success in achieving predictable results. The selection of a known material based on its suitability for its intended use is a prima facie case of obviousness (In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960)) (See MPEP 2144.07).
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 11,148,201 – Sintered composition using boron nitride nanotube reinforcement and
aluminum matrix with lightweight applications
CN111515404 – cBN/Al sintered composite and method
CN119260004 – Injection molding and sintering of aluminum alloy and reinforcing phase including cBN
CN109082553 – Mixing a combination of metal powders including aluminum to form metal alloy matrix with cBN dispersed therein.
Sithebe (NPL) – discusses formation of cBN – Al composites and effects of changing parameters
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUSTIN POLLOCK whose telephone number is (571)272-5602. The examiner can normally be reached M - F (8 - 5).
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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738